Monday, March 2, 2020

Myco Industries, Inc. v. BlephEx, LLC, No. 19-2374, Courtroom 203

At a trade show, representatives of two competing companies displayed their respective products. Upon seeing the Myco product, the BlephEx representative allegedly asserted, both to the Myco representative and to others at the trade show, that the product infringed his patent. Myco filed suit, seeking among other things a declaratory judgment of noninfringement and invalidity. Myco also sought a preliminary injunction against BlephEx that would enjoin it from making allegations of patent infringement and threatening litigation against Myco’s customers. The court granted the preliminary injunction, based in part on its finding that Myco’s customers are medical practitioners who, under 35 U.S.C. § 287(c)(1), cannot be liable for patent infringement.

On appeal, BlephEx frames the issue as a constitutional one, i.e., that the decision of the trial court threatens its right to free speech. BlephEx argues that a patentee has the right to inform others of his patent rights, including the right to threaten infringers with suit. The injunction was erroneous, BlephEx claims, because the district court pointed to no evidence of bad faith, which it argues is necessary to prohibit communications about patent infringement. Myco responds that BlephEx waived its arguments regarding its constitutional rights and bad faith because it did not raise them at the trial level. And in any event, Myco argues, the First Amendment does not allow a patentee to threaten medical practitioners who are immune from liability under § 287(c)(1).

Wednesday, March 4, 2020

Iron Oak Technologies, LLC v. Microsoft Corp., No. 19-1802, Courtroom 201

This argument will address the timely issue of whether a presuit infringement notice letter meets the requirements for actual notice under 35 U.S.C. § 287. Prior to filing suit, the patentee sent letters to various laptop computer manufacturers indicating that they were believed to be infringing Iron Oak’s patents. The letters identified the patents and claims allegedly infringed, as well as the allegedly infringing products. The letters did not, however, mention that Microsoft software might also be infringing. The district court thus found that that the defendants were not provided notice that they may be liable for infringement by Microsoft products installed on their devices.

Iron Oak argues on appeal that § 287 does not require the patentee to explain why it believes the accused products infringe, only what patents are allegedly infringed and by which products or group of products. By providing notice of specific allegedly infringing products, Iron Oak argues that it put the defendants on notice that those products, including their software, could infringe its patents. Microsoft argues that the burden is on the patentee to notify alleged infringers with “sufficient specificity” about what the alleged infringement is. Because Iron Oak could have included language regarding Microsoft products but chose not to, Microsoft argues, it cannot recover damages for the presuit period.

Thursday, March 5, 2020

Corcamore, LLC v. SFM, LLC, No. 19-1526, Courtroom 201

Corcamore attempted to register the mark SPROUT for vending machine services. SFM requested cancellation of that registration, citing its prior use and registration of SPROUTS and SPROUTS FARMERS MARKET for retail grocery store services. In the ensuing Trademark Trial and Appeal Board (“Board”) action, Corcamore filed multiple motions, all of which were denied. For a time, the Board prohibited Corcamore from filing any additional motions without its permission. After a discovery conference, the Board lifted the prohibition on Corcamore, but warned that it may impose future sanctions if necessary. Corcamore continued to file motions, all of which were again denied by the Board. Finding that Corcamore committed discovery violations, the Board entered judgment against it as a sanction, granting SFM’s petition for cancellation.

On appeal, Corcamore argues that the Board’s terminating sanction was in excess of its statutory jurisdiction, and in any event was in error. Corcamore argues that its conduct was not prejudicial to SFM and thus that the cancellation of its trademark rights without notice and hearing is reversible error. In its brief, SFM asserts that many motions filed by Corcamore were procedurally deficient, and emphasizes what it calls “Corcamore’s obstructionist practices.” In SFM’s view, the Board acted within its inherent authority to sanction a party for bad conduct like that allegedly displayed by Corcamore.

Nippon Shinyaku Co., Ltd. v. Iancu, No. 19-1824, Courtroom 203

The USPTO granted two patents to Nippon Shinyaku: one, granted in 2007, was given a patent term adjustment (“PTA”) of 344 days; the other, granted in 2009, was given a PTA of 99 days. In 2010, after the Federal Circuit’s decision in Wyeth v. Kappos (which held that the USPTO had improperly shortened patent terms without first allowing the public to comment on the procedure), the USPTO began calculating PTA differently. But before it did so, it established an Interim Procedure for patentees seeking recalculation of PTA. Under that Procedure, Nippon Shinyaku was ineligible for recalculation of the PTA of its two patents because its requests were untimely. Nippon Shinyaku brought an action under the Administrative Procedure Act (“APA”), challenging the Procedure as arbitrary and capricious. The district court denied Nippon’s motion for summary judgment, finding the Procedure not arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with the law.

Nippon Shinyaku argues on appeal that the USPTO’s Interim Procedure is arbitrary and capricious because it causes disparate treatment of patents based exclusively on an event outside the patentee’s control: when the USPTO rules on the patentee’s request for PTA recalculation. If a patentee whose patent issued before August 5, 2009 filed a recalculation request, it is entitled to that recalculation provided the USPTO denied the initial request on or after December 1, 2009. But if the USPTO denied the request before that date, the patentee is not entitled to a recalculation. Nippon Shinyaku characterizes this procedure as “disparate and unfair,” contrary to the principles of administrative law. The USPTO argues instead that post-Wyeth precedent made clear that the USPTO did not abuse its discretion in creating regulations to streamline the procedure for recalculation requests. Nippon Shinyaku should not be allowed to belatedly seek modification of its PTA by challenging the Procedure, the USPTO asserts.