Recent Developments in Patent Law
Peter E. Heuser and Laura A. Zager, Ph.D.
Schwabe, Williamson & Wyatt
February 13, 2015
Bend, OR | Portland, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington D.C. 1
AMERICAN INVENTS ACT (AIA) DEVELOPMENTS
Post Grant Review (PGR)
• Permitted only within first nine months of issuance
• Permitted for patents filed after
March 16, 2013
• Can be based on any invalidity ground
• Just starting to be filed
Inter Partes Review (IPR)
• Permitted more than nine months after issuance
• Allowed for any patent
• Can be based on § § 102 and
103; printed publications only
• 1700 IPRs filed through August
• IPR challenges have been overwhelmingly successful
Bend, OR | Portland, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington D.C. 2
Advantages of PGR and IPR
• Expedited resolution (within one year of initiation)
• Lower standard of proof (“more likely than not”)
• Claim construction amenable to validity challenges (“broadest reasonable construction”)
• Higher likelihood of success than if decided by court or jury
• Action can be terminated with settlement
Concerns regarding PGR and IPR
• Needs to be timely
• PGR within 9 months
• Prior to DJ action being filed
• Within one year of being sued
• Need to move for stay before litigation is too far along
• PTO fees are substantial
• $12,000 + $18,000 for PGR
• $9,000 + $14,000 for IPR
Bend, OR | Portland, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington D.C. 3
Covered Business Method (CBM) Review
• Only allowed for business method patents
• Similar to PGR for those charged with infringement of business method patents
• Applies to all patents that fall within definition (“method or apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service…”)
• Only 211 CBM Reviews filed through August 31, 2014
• Printed publications may be submitted by those not under a duty of disclosure
• Must be submitted in a timely fashion (prior to notice of allowance and normally within 6 months of publication)
• Needs to include explanation of relevance
• 1896 preissuance submissions filed through August 31, 2014
Bend, OR | Portland, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington D.C. 4
• Designed to eliminate duty of disclosure issues
• Filed by patent owner
• Only 81 supplemental examinations have been filed
Track I Prioritized Examination
• Increasingly used (855→5024 →
6872 → 9054 filed for FYs 2011-
• $4000/$2000 filing fee for large/small entities ($5600/$2800 including search fees)
• Final disposition within 12 months of prioritized status being granted
• Significantly higher odds of getting allowance (but not clear why)
Bend, OR | Portland, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington D.C. 5
PATENT LEGISLATION BEING CONSIDERED IN 2015
• Patent Reform
– Legislation to Curb NPEs
• Expanded fee shifting to the prevailing party, but is it necessary in view of Octane and states’ efforts to curb abuses?
– Raising Pleading Standards
• The issue of whether Twombly and Iqbal pleading standards should apply in patent litigation continues to be a troubling one, especially as to indirect infringement.
Bend, OR | Portland, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington D.C. 6
• Patent Eligibility
• Some have suggested the way to clarify patent-eligible subject matter is through legislation, but the present thinking is that the courts and the PTO are doing what they can to clarify this important issue.
• Drug Patent Terms
• Drug manufacturers spend many years trying to get FDA approval and have been lobbying for an increased patent term when FDA approval has been delayed.
Bend, OR | Portland, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington D.C. 7
• Federal Trade Secrets Act
• Adding federal question for trade secrets
• Five year statute of limitations
• Possibility of ex parte seizures
• Otherwise based largely on Uniform Trade Secrets Act
Bend, OR | Portland, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington D.C. 8
PATENT CASES TO BE DECIDED IN 2015
• Commil USA LLC v. Cisco Systems Inc.
– Is defendant’s good faith belief in invalidity a defense to induced patent infringement?
• Kimble v. Marvel Enterprises Inc.
– The Court will review its 50 year old Brulotte decision barring the recovery of royalties beyond the expiration of a licensed patent.
Bend, OR | Portland, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington D.C. 9
• SCA Hygiene Prods. Aktiebolag v. First Quality Baby
Products, LLC, en banc Federal Circuit
– The “Raging Bull” case (Petrella v. Metro-Goldwyn-Mayer, 134
S.Ct. 1962 (2014)) held that laches does not apply to copyright infringement occurring within the window of the statute of limitations. The en banc Circuit will decide (1) whether the same should apply to patent cases and (2) whether laches should in some cases constitute an entire bar to enforcement.
Bend, OR | Portland, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington D.C. 10
• In re Cuozzo Speed Technologies LLC
– Likely to be the first case decided under the AIA, and is expected to resolve two significant issues:
– (1) For claims being examined as part of an IPR, should claim construction be based on the broadest reasonable interpretation or on a proper construction?
– (2) Does the PTO have the authority to institute an IPR for claims not identified in the petition for IPR?
Bend, OR | Portland, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington D.C. 11
• Carnegie Mellon University v. Marvell Semiconductor, Inc.
– The Circuit will review a $1.5 billion award to Carnegie for willful infringement of a patent to methods for improving the accuracy of data read from hard-disk drives.
• Ariosa Diagnostics, Inc. v. Sequenom, Inc.
– The “next case up” involving patentable subject matter will decide the patentability of a non-invasive method of detecting birth defects by testing cell-free fetal DNA in a mother’s blood.
Bend, OR | Portland, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington D.C. 12
Supreme Court patent cases
decided in 2014, and subsequent Federal Circuit decisions attempting to interpret those decisions
Bend, OR | Portland, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington D.C. 13
• Teva Pharmaceuticals USA, Inc, v. Sandoz, 134 S.Ct. 1761 (2014)
– The Supreme Court decided what had been a troubling issue for
a long time - what should the standard be for the Federal Circuit’s review of claim construction rulings by the district courts? The Court decided on a hybrid approach, using a "clear error" standard of review for factual matters, but noting that the ultimate question of construction remains a legal question to which de novo review applies.
Bend, OR | Portland, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington D.C. 14
• Alice Corporation Pty. Ltd. v. CLS Bank International et al.,
134 S.Ct. 2347 (2014)
– The Supreme Court unanimously ruled that the claimed invention is no more than an abstract concept for managing risk in computerized trading, and using an unspecified, generic computer is not enough to transform the abstract idea into a patent-eligible invention.
– It first must be asked if the claims at issue are directed to a patent-ineligible concept, and if so, whether the claims’ elements transform the nature of the claim into a patent-eligible application. Simply stating an abstract idea and adding that it is applied with a computer is deficient under § 101; that is, wholly generic
computer implementation is not the sort of additional feature that provides any practical assurance that the process is more than a drafting effort designed to monopolize the abstract idea itself.
Bend, OR | Portland, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington D.C. 15
December 16, 2014 USPTO Guidelines
Bend, OR | Portland, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington D.C. 16
• Digitech Image Technologies, LLC v. Electronics for
Imaging, Inc., et al., 758 F.3d 1344 (Fed. Cir. 2014)
– In this first patentable subject matter case decided by the Circuit since Alice, the panel affirmed a decision by the district court and ruled that claims defining a “device profile” and a method for creating a device profile within a digital image processing system are not patent eligible under § 101.
• Planet Bingo LLC v. VKGS LLC., 576 Fed. Appx. 1005 (Fed.
– In a non-precedential decision, the Circuit refers to this as a straight-forward application of Alice, affirming the district court’s finding that patents claiming computer-aided management of bingo games do not recite patentable subject matter.
Bend, OR | Portland, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington D.C. 17
• buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir.
– Claims directed to a system for ensuring security for online sales are no different than Alice’s computerized method of managing risk in financial trading, so the patent is invalid under § 101.
• DDR Holdings, LLC v. Hotels.com, et al., 2014 U.S. App.
LEXIS 22902 (Fed. Cir. Dec. 5, 2014)
– The most in-depth discussion of Alice, upholding patentability and providing some guidance as to the drafting of patent-eligible claims.
Bend, OR | Portland, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington D.C. 18
• Content Extraction and Transmission LLC v. Wells Fargo Bank, Nat’l. Assoc. et al., 2014 U.S. App. LEXIS 24258 (Fed. Cir. Dec. 23, 2014); Diebold, Inc. v. Content Extraction and Transmission LLC, et al., 2014 U.S. App. LEXIS 24258 (Fed. Cir. Dec. 23, 2014)
– The Circuit affirms dismissal under Rule 12(b)(6) of patentee’s infringement suit due to the asserted patents being patent ineligible under § 101.
Bend, OR | Portland, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington D.C. 19
• Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120 (2014)
– The Supreme Court reverses the Federal Circuit’s holding that a claim meets the dictates of § 112 as long as it is “amenable to construction” or not “insolubly ambiguous,” rejecting the Circuit’s standard, which “tolerates
some ambiguous claims but not others.” While § 112’s definiteness requirement must take into account the inherent limitations of language, a patent must be precise enough to afford clear notice of what is claimed, thereby apprising the public of what is still open to them.
Bend, OR | Portland, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington D.C. 20
• Triton Tech of Texas, LLC v. Nintendo of America, Inc., 753
F.3d 1375 (Fed. Cir. 2014)
– In an infringement case directed against Nintendo’s Wii product, the asserted claims are determined to be indefinite because structure for the claimed “integrator means” is not adequately disclosed in the specification.
• Interval Licensing, LLC v. AOL, Inc. et al., 766 F.3d 1364 (Fed. Cir. 2014)
– In its first application of Nautilus, the phrase “unobtrusive manner that does not distract a user,” in reference to the manner in which an attention manager displays images, fails to inform those
skilled in the art about the scope of the invention with reasonable certainty; invalid under § 112, ¶ 2.
Bend, OR | Portland, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington D.C. 21
• Limelight Networks, Inc. v. Akamai Technologies, Inc., 134
S.Ct. 2111 (2014)
– The Supreme Court reverses the Circuit’s en banc ruling that a defendant who performed some steps of a method patent and encouraged others to perform the rest could be liable for inducement of infringement, even if no one was liable for direct infringement.
Bend, OR | Portland, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington D.C. 22
• Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134
S.Ct. 1749 (2014)
– The Court holds that district courts should determine whether a case is “exceptional” in a case-by-case exercise
of their discretion, considering the totality of the circumstances. The Court thereby eliminates the requirement of Brooks Furniture that defined an exceptional case as one that either involves “material inappropriate conduct” or is both “objectively baseless” and “brought in subjective bad faith.”
Bend, OR | Portland, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington D.C. 23
• Kilopass Technology, Inc. v. Sidense Corp., 2014 U.S. Dist.
LEXIS 112321, 112 U.S.P.Q.2D (BNA) 1376, 2014 WL
3956703 (N.D. Cal. Aug. 12, 2014)
− On remand, the Northern District of California reversed its prior ruling denying attorney fees, in which the strict Brooks Furniture test was applied, and granted attorney fees, ruling that (1) Kilopass failed to conduct an adequate pre-filing investigation, (2) its theories of infringement were objectively baseless, and (3) Kilopass litigated the case in an unreasonable manner by shifting its theories of infringement and engaging in litigation “gamesmanship.”
• Highmark, Inc. v. AllCare Health Management System, Inc.,
134 S.Ct. 1744 (2014)
− The Supreme Court ruled that the district court’s decision on whether a case is exceptional should be reviewed on appeal for abuse of discretion and not de novo.
Bend, OR | Portland, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington D.C. 24
• Medtronic, Inc. v. Mirowski Family Ventures, LLC, 134
S.Ct. 843 (2014)
− Even though the patentee was barred from filing an infringement suit due to a license agreement, the Court ruled that the public interest in maintaining a well-functioning patent system should not favor changing the “ordinary burden of proof” rule in patent cases. There was no convincing reason why burden of proof case law should favor the patentee and force a declaratory judgment plaintiff to prove non-infringement.
Bend, OR | Portland, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington D.C. 25
Significant Federal Circuit Patent Cases
Decided in 2014
Bend, OR | Portland, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington D.C. 26
Bristol-Myers Squibb Company v. Te va Pharmaceuticals USA, Inc., 769 F. 3d 1339 (Fed. Cir. 2014)
A party seeking to invalidate a patent as obvious must demonstrate that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success from doing so.
Leo Pharmaceutical Products, Ltd. v. Teresa Stanek Rea, 726 F. 3d 1346
(Fed. Cir. 2013)
Hoffman-La Roche Inc. and Genentech, Inc. v. Apotex Inc., 748 F. 3d 1326 (Fed. Cir. 2014)
Sanofi-Aventis Deutschland GmbH et al. v. Glenmark Pharmaceuticals Inc., USA et al., 748 F. 3d 1354 (Fed. Cir. 2014)
In order to invalidate claims as being invalid as “obvious to try”, there must be a limited number of specific alternatives offering a likelihood of success in light of the prior art and common sense.
Bend, OR | Portland, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington D.C. 27
Par Pharmaceutical, Inc. and Alkermes Pharma Ireland Ltd. v. TWI Pharmaceuticals, Inc., 2014 U.S. App. LEXIS 22737, 112 U.S.P.Q.2D (BNA) 1945 (Fed. Cir. Dec. 3,
A bench trial determination of invalidity is reversed, with the Circuit ruling that the district court failed to apply a sufficiently high standard in order to rely on inherency. The limitation at issue necessarily must be present, or must be the natural result of the combination of elements explicitly disclosed by the prior art in order for a claimed invention to be rendered obvious.
Tyco Healthcare Group LP and United States Surgical Corp. v. Ethicon Endo- Surgery, Inc., 2014 U.S. App. LEXIS 22777, 112 U.S.P.Q.2D (BNA) 1979 (Fed. Cir. Dec. 4, 2014)
The district court improperly excluded § 102(g) prior art in its obviousness determinations, even though that art was considered in its anticipation analysis.
Bend, OR | Portland, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington D.C. 28
Suffolk Technologies, LLC v. AOL Inc. and Google Inc., 752 F. 3d 1358 (Fed. Cir. 2014)
Summary judgment of anticipation is affirmed based on a 1995 newsgroup post by a college student, despite the patentee’s argument that the post would not have been accessible to those with ordinary skill in the art.
In Re Rambus, 753 F. 3d 1253 (Fed. Cir. 2014)
Tobinick v. Olmarker and Rydevik, 753 F. 3d 1220 (Fed. Cir. 2014)
Rambus reverses a determination of anticipation by the PTAB in an inter partes reexamination, and Tobinick reverses an interference determination based on inadequate disclosure in the specification to support copied claims. The cases show that the Circuit is not reluctant to reverse determinations by the PTAB.
Bend, OR | Portland, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington D.C. 29
Delano Farms Company, et al. v. The California Table Grape Commission, et al.,
2015 U.S. App. LEXIS 346 (Fed. Cir. Jan. 9, 2015)
The Circuit affirms a judgment that two plant patents are not invalid based on the plants being in “public use” more than one year prior to the filing date. Two individuals obtained samples of patented plant varieties in an unauthorized manner and planted them in their fields. The district court found, and the panel agreed, that there were sufficient confidentiality assurances that the uses could not be
considered “public” under §102(b).
Bend, OR | Portland, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington D.C. 30
Halo Electronics, Inc. v. Pulse Electronics, Inc., 769 F. 3d 1371 (Fed. Cir. 2014)
Actions taking place entirely outside of the U.S. do not subject the defendant to liability for infringement.
Bend, OR | Portland, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington D.C. 31
Apotex, Inc. v. UCB, Inc., 763 F. 3d 1354 (Fed. Cir. 2014)
American Calcar, Inc. v. American Honda Motor Co., Inc., 768 F. 3d 1185 (Fed. Cir. 2014)
The Circuit affirms judgments of unenforceability that properly followed the requirements of Therasense (“clear and convincing evidence that the patent applicant (1) misrepresented or omitted information material to patentability, and (2) did so with specific intent to mislead or deceive the PTO.” Intent and materiality must be separately established”).
Bend, OR | Portland, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington D.C. 32
Golden Bridge Technology, Inc. v. Apple, Inc., 758 F. 3d 1362 (Fed. Cir. 2014);
X2Y Attenuators, Inc. v. ITC and Intel Corp., 757 F. 3d 1358 (Fed. Cir. 2014);
Hill-Rom Services, Inc. et al. v. Stryker Corporation, 755 F. 3d 1367 (Fed. Cir. 2014);
GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F. 3d 1304 (Fed. Cir. 2014)
There must be a clear and unambiguous disavowal of a broad definition in the specification (or the prosecution history) for the patentee to be bound.
Bend, OR | Portland, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington D.C. 33
In re Gianelli, 739 F. 3d 1375 (Fed. Cir. 2014)
The claim at issue recites: “A row exercise machine comprising an input assembly including a first handle portion adapted to be moved from a first position to a second position by a pulling force….”
The Circuit reversed a determination of obviousness by the PTAB, holding that “adapted to” is not synonymous with “capable of” when considering the operation of prior art exercise machines.
Bend, OR | Portland, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington D.C. 34
Use or non-use of “means” creates a rebuttable presumption to apply a construction under § 112, ¶ 6, depending on the presence of structure descriptions in the claims and the specification.
Williamson v. Citrix Online, LLC, Microsoft Corp., et al., 770 F. 3d 1371 (Fed. Cir. 2014)
To rebut the strong presumption that § 112, ¶ 6 does not apply, it must be demonstrated that skilled artisans, after reading the patent, would conclude that the claim limitation is so devoid of structure that the drafter constructively engaged in means plus function claiming. A claimed expression cannot be said to be devoid of structure if it is used in common parlance or by those skilled in the art to designate structure even if the terms covers a broad class of structures and even if the term identifies the structures by their functions. Here the district court failed to consider the phrase “distributed learning
control module” as a whole. One of ordinary skill would understand the expression to connote structure.
Robert Bosch, LLC v. Snap-On Inc., 769 F. 3d 1094 (Fed. Cir. 2014)
The presumption against § 112, ¶ 6 construction is overcome as to the terms “program recognition device” and “program loading device” because the claim terms, construed in light of the specification, fail to provide sufficiently definite structure to one of skill in the art.
Bend, OR | Portland, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington D.C. 35
EnOcean GmbH v. Face Int’l. Corp., 742 F. 3d 955 (Fed. Cir. 2014)
The Board held that the word "receiver" was defined in the claims solely in terms of functional language, thus creating no difference between a "receiver" and "signal receiving means." The Circuit reverses, holding that the presumption had not been overcome, noting that the term "receiver" (i.e., without the term "means") sufficiently defines the structure to those in the art and therefore should not invoke § 112, ¶ 6.
The panel refers to similar terms that do not overcome the presumption against applying § 112, ¶ 6: "height adjustment mechanism," "computing unit . . . for . . . evaluating," the term "circuit" in the phrase "circuit for monitoring a signal from the output terminal to generate a first feedback signal," "digital detector," and "detent mechanism."
Elcommerce.com, Inc. v. SAP AG and SAP America, Inc., 745 F. 3d 490 (Fed. Cir. 2014)
Expert witness testimony is usually necessary to decide whether there is adequate structure in the patent specification to support means-plus-function claims.
Bend, OR | Portland, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington D.C. 36
Promega Corp. v. Life Tech. Corp., 2014 U.S. App. LEXIS 23482 (Fed. Cir. Dec. 15, 2014)
A majority of the panel ruled that under 35 U.S.C. section 271(f)(1):
“induce” means a specific intent to cause; that is, it does not require a second entity or person to be induced; and
“a substantial portion of the components” includes “a single important or essential component
Chief Judge Prost, in dissent, reads section 271(f)(1) and its requirement of active inducement to necessarily mean inducement of another. She cites to Global-Tech Appliances, Inc. v. SEB SA, 131 S. Ct. 2060 (2011) as holding that the phrase “induces infringement” in § 271(b) requires that the inducer “lead another” or “persuade another.”
This may be a case that the Supreme Court will accept for cert.
Bend, OR | Portland, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington D.C. 37
SSL Services, LLC v. Citrix Systems, Inc. and Citrix Online, LLC, 769 F. 3d 1073 (Fed. Cir. 2014)
The Circuit agreed with the district court’s determination as to the objective prong of intent, and found substantial evidence to support the verdict as to the subjective prong, thereby affirming the denial of JMOL as to willful infringement by Citrix’s “GoTo” products .
Aqua Shield v. Inter Pool Cover Team, et. al., 2014 U.S. App. LEXIS 24132 (Fed. Cir. Dec. 22, 2014)
The panel vacated a ruling of no willful infringement since that determination was improperly based on the denial of a motion for preliminary injunction and the court failed to consider all of the factors relevant to recklessness under Seagate.
Halo Electronics, Inc. v. Pulse Electronics, Inc., 769 F. 3d 1371 (Fed. Cir. 2014)
Infringement of patents is not willful here because the defendant had an engineer perform a “cursory examination” of the patents and conclude that the patents were invalid.
Bend, OR | Portland, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington D.C. 38
Trebro Manufacturing, Inc. v. FireFly Equipment, LLC, 748 F. 3d 1159 (Fed. Cir. 2014)
The Circuit reverses a denial of a motion for preliminary injunction, even though the patentee did not practice the patented invention.
Bend, OR | Portland, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington D.C. 39
VirnetX v. Cisco Systems, 767 F. 3d 1308 (Fed. Cir. 2014)
Apple successfully appealed a $368 million judgment that its Face Time feature infringes. The panel
vacated and remanded, based on faulty claim construction, the improper denial of a motion for JMOL based on non-infringement under the doctrine of equivalents, and the admission of improper expert witness testimony as to damages. The panel’s comments on the expert testimony could make it significantly more difficult for patentees to argue for big damage awards.
Ericsson, Inc. v. D-Link Systems, Inc., et al., 2014 U.S. App. LEXIS 22778 (Fed. Cir.
Dec. 4, 2014)
The Circuit reversed denial of JMOL following a $10 million verdict, and remanded based on improper jury instructions relating to application of the “entire market value rule” to standard essential patents.
Bend, OR | Portland, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington D.C. 40
Aqua Shield v. Inter Pool Cover Team, et. al., 2014 U.S. App. LEXIS 24132 (Fed. Cir.
Dec. 22, 2014)
The panel vacated a decision granting patentee damages of only $10,800 since the award was inappropriately limited to the defendants’ profits.
Bend, OR | Portland, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington D.C. 41
In re Dinsmore and Caruso, 757 F. 3d 1343 (Fed. Cir. 2014)
Applicants’ filing of a terminal disclaimer is not an error that can be remedied by a reissue application, even though applicants mistakenly thought their application and a cited patent were commonly owned at the time of the disclaimer.
Fleming v. Escort Inc. and Beltronics USA, Inc., 2014 U.S. App. LEXIS 24419 (Fed. Cir. Dec. 24, 2014)
The panel affirmed a ruling that reissuance was appropriate, rejecting the argument that the reason for seeking reissue did not meet the “error” precondition for reissuance, as this was a classic case of the patentee claiming less than it had the right to claim.
Antares Pharma, Inc. v. Medac Pharma Inc. and Medac GmbH, 771 F. 3d 1354 (Fed. Cir. 2014)
The panel affirmed the denial of Antares’ motion for preliminary injunction based on the finding that the patent in suit, a reissue patent, is invalid due to the failure of Antares to comply with the "original patent" requirement of § 251.
Bend, OR | Portland, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington D.C. 42
STC.UNM v. Intel Corp. 754 F. 3d 940 (Fed. Cir. 2014)
Rejecting the argument that the involuntary joinder provisions of Rule 19(a) should be applied, a
divided panel of the Circuit affirmed the dismissal for lack of standing because a co-owner of the patent elected not to join the suit.
Bend, OR | Portland, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington D.C. 43
Azure Networks, LLC and Tri-County Excelsior Foundation v. CSR PLC, et al.,
771 F. 3d 1336 (Fed. Cir. 2014)
The panel affirmed the district court ruling dismissing Tri-County, an exclusive licensor, for lack of standing.
Consumer Watchdog v. Wisconsin Alumni Research Foundation, 753 F. 3d 1258 (Fed. Cir. 2014)
A consumer advocacy group does not have standing to appeal the loss of a patent reexamination, even though it was able to file a reexamination request under the patent statute.
Bend, OR | Portland, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington D.C. 44
Videx, Inc. v. Tr iteq Lock and Security, LLC, 2014 U.S. Dist. LEXIS 63653 (D. Or. May 8, 2014)
In a ruling dealing with patent pleading requirements under Iqbal and Twombly, the Oregon District granted defendants’ motion to dismiss where the plaintiff failed to set forth sufficient details regarding infringement following inter partes reexamination of the patent in suit.
Bend, OR | Portland, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington D.C. 45
Transfer of Cases
In re Apple Inc., 743 F. 3d 1377 (Fed. Cir. 2014)
In re Toyota Motor Corporation and Gulf States Toyota, Inc., 747 F. 3d 1338 (Fed. Cir. 2014)
In re Nintendo of America, Inc., 756 F. 3d 1363 (Fed. Cir. 2014)
When moving to transfer or resisting such a motion, care must be taken to submit specific evidence of witnesses and evidence that would be easier or more difficult to present if the case is transferred.
Bend, OR | Portland, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington D.C. 46
Subject Matter Jurisdiction in DJ Actions
Sandoz Inc. v. Amgen Inc. and Hoffmann-La Roche Inc., 2014 U.S. App. LEXIS
22903, 112 U.S.P.Q.2D (BNA) 2004 (Fed. Cir. Dec. 5, 2014)
The Circuit affirmed dismissal of a declaratory judgment action because the complaint did not allege an injury of sufficient immediacy to create jurisdiction; the complaint was filed even before plaintiff Sandoz filed an application for approval with the FDA, and had just begun to test the drug accused of infringement.
Microsoft Corporation and SAP America, Inc. v. Datatern, Inc., 755 F. 3d 899 (Fed. Cir. 2014)
A divided panel ruled there is a lack of sufficient controversy to support subject matter jurisdiction where a declaratory judgment action is based on an infringement action against a customer.
Danisco US Inc. v. Novozymes A/S , 744 F. 3d 1325 (Fed. Cir. 2014)
The Circuit reversed the dismissal of a declaratory judgment action filed the day a patent issued based upon pre-patent-issuance conduct by the patentee.
Bend, OR | Portland, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington D.C. 47
Stay Pending PTO Proceedings
Versata Software, Inc., et al. v. Callidus Software, Inc., 771 F. 3d 1368 (Fed. Cir. 2014)
VirtualAgility, Inc. v. Salesforce.com, 759 F. 3d 1307 (Fed. Cir. 2014)
The Circuit reversed refusals to grant stays pending Covered Business Method (CBM) reviews, even when some of the asserted patents are not part of the CBM review.
Bend, OR | Portland, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington D.C. 48
Claim and Issue Preclusion, and Collateral
Brain Life, LLC v Elekta Inc., 746 F. 3d 1045 (Fed. Cir. 2014)
The Circuit affirmed the dismissal of a subsequent case brought against the same defendant for the same imaging system found not to infringe in a prior action, relying on Kessler Doctrine.
e.Digital Corporation v. Futurewei Technologies, Inc., et al., 772 F. 3d 723 (Fed. Cir. 2014)
The Circuit affirmed a judgment of non-infringement based on a determination that e.Digital
was collaterally estopped from seeking construction of a limitation presented in a claim added during reexamination of a first patent, but held that the doctrine was improperly applied to a second, unrelated patent.
Bend, OR | Portland, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington D.C. 49
Source Vagabond Systems Ltd. and Pearl Cohen Zedek Latzer LLP v. Hydrapak, Inc., 753 F. 3d 1291 (Fed. Cir. 2014)
The district court did not abuse its discretion in sanctioning a law firm $200,000 under Rule 11 where arguments submitted in support of claim construction violated all of the applicable canons of construction.
AntiCancer, Inc. v. Pfizer, Inc., et al., 769 F. 3d 1323 (Fed. Cir. 2014)
The district court ordered that AntiCancer would be permitted to supplement Preliminary Infringement Contentions on the condition that it concurrently pay the attorney fees incurred by defendants in connection with their motion for summary judgment. The Circuit ruled that the fee-shifting condition was improperly imposed, so the judgment was vacated.
Intellect Wireless Inc. v. HTC Corp. et al., N.D. Ill. Case 1:09-cv-02945 (January 9, 2015)
The Niro Haller law firm is ordered to pay attorney fees of between $2.4 and $4.8 million based on the district court holding that the attorneys were aware of the inventor’s false statements when they filed the lawsuit.
Bend, OR | Portland, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington D.C. 50
Content Extraction and Transmission LLC v. Wells Fargo Bank, Nat’l. Assoc. et al.,
2014 U.S. App. LEXIS 24258 (Fed. Cir. Dec. 23, 2014); Diebold, Inc. v. Content
Extraction and Transmission LLC, et al., 2014 U.S. App. LEXIS 24258 (Fed. Cir.
Dec. 23, 2014);
The Circuit affirmed dismissal of patentee’s infringement suit due to the asserted patents being patent ineligible under § 101, and the dismissal of counterclaims for tortious interference and RICO violations.
Tyco Healthcare Group LP v. Mutual Pharmaceutical Company, Inc., 762 F. 3d 1338 (Fed. Cir. 2014)
In a split decision, the Circuit vacated summary judgment that Tyco’s infringement claims are not a sham, remanding the case for a determination of whether the sham exception to Noerr-Pennington immunity is applicable.
Bend, OR | Portland, OR | Salem, OR | Seattle, WA | Vancouver, WA | Washington D.C. 51