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The Judicial Panel On Multidistrict Litigation Consolidates Four Patent Cases In The Eastern District Of Texas
08/16/2022
On August 3, 2022, the Judicial Panel on Multidistrict Litigation (“JPML”) ordered that four patent cases—two patent infringement actions in the United States District Court for the Eastern District of Texas and one declaratory judgment action each in the United States District Courts for the Southern District of New York and the Northern District of Texas—be consolidated in the Eastern District of Texas and that the Honorable J. Rodney Gilstrap shall preside over the multidistrict district litigation. In re Taasera Licensing, LLC, Pat. Litig., No. MDL 3042 (J.P.M.L.).
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Federal Circuit Affirms Award Of Attorneys’ Fees For Patentee’s Forum-Shopping To Avoid An Adverse Section 101 Ruling
08/03/2022
On July 27, 2022, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed a decision by the United States District Court for the Central District of California (C.D. Cal.) awarding fees incurred by defendant for two proceedings under its inherent equitable powers and denying fees incurred in earlier, related proceedings. Realtime Adaptive Streaming LLC v. Netflix, Inc., Nos. 2021-1484, 2021-1485, 2021-1518, 2021-1519 (Fed. Cir. July 27, 2022). The CAFC found that the C.D. Cal. did not abuse its discretion in granting attorney’s fees incurred in the C.D. Cal. as a result of the patentee’s improper forum shopping to avoid an adverse ruling, but denying fees incurred in earlier district court and inter partes review (IPR) proceedings because there was no evidence that plaintiff knew or should have known at that time that its claims were weak.
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Federal Circuit Affirms Decision Finding Organ Transplant Diagnosis Claims Unpatentable
07/28/2022
On July 18, 2022, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued a precedential opinion affirming a judgment by the United States District Court for the Eastern District of Delaware (Chief Judge Colm F. Connolly) that plaintiff's organ transplant diagnosis patents encompassed unpatentable subject matter. CareDx, Inc. v. Natera, Inc., __ F.3d __ (Fed. Cir. July 18, 2022). In its decision, the CAFC held that the district court correctly found the asserted claims to be directed to a natural phenomenon and that the claimed combination of steps is not inventive.
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Federal Circuit Grants Attorneys’ Fees For Frivolous Appeal
07/20/2022
On July 14, 2022, the Court of Appeals for the Federal Circuit (CAFC) sanctioned plaintiff-appellant Pop Top Corp. for the filing of a frivolous appeal, granting defendant-appellee Rakuten Kobo Inc. $107,748 in attorney’s fees and doubled costs. Pop Top Corp. v. Rakuten Kobo Inc., No. 21-2174 (Fed. Cir. July 14, 2022).
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District Court Revisits Claim Construction On Motion For Summary Judgment Of Indefiniteness
07/12/2022
On June 30, 2022, Judge Noreika of the Federal District Court for the District of Delaware denied defendants’ motion for summary judgment that certain asserted claims were indefinite and modified her construction of the term that formed the basis of defendants’ indefiniteness argument. Chemours Company FC, LLC v. Daikin Industries, Ltd., Case No. 17-1612, (D. Del. June 30, 2022).
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Federal Circuit On Rehearing Vacates Prior Decision Holding That Patent Claim With Negative Limitation Did Not Lack Written Description
07/06/2022
On June 21, 2022, the Court of Appeals for the Federal Circuit (CAFC) granted a request for rehearing, vacated its prior decision, and reversed the district court’s decision that the patent claim was not invalid for inadequate written description. Novartis Pharmaceuticals v. Accord Healthcare Inc., No. 2021-1070 (Fed. Cir. June 21, 2022).
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Federal Circuit Finds That Reliance On An Obvious Minor Clerical Error Is Not A Defense To Willful Infringement
06/14/2022
On June 3, 2022, the United States Court of Appeals for the Federal Circuit (“CAFC”) affirmed the correction of an obvious minor clerical error in the asserted claim language and a judgment of willfulness by the United States District Court for the Central District of California (“CDCA”). Pavo Sols. LLC v. Kingston Tech. Co., Inc., No. 2021-1834 (Fed. Cir. June 3, 2022). The CAFC found that the CDCA properly corrected an obvious minor clerical error in the asserted claims and held that defendant’s reliance on such error was not a defense to willful infringement.
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Eastern District Of New York Transfers Patent Case For Improper Venue
06/07/2022
On May 26, 2022, Judge Joan M. Azrack of the United States District Court for the Eastern District of New York granted defendants’ motion to dismiss or transfer for improper venue on account of plaintiffs’ failure to plead sufficient venue-related allegations, and further denied plaintiffs’ request for venue discovery. UI Technologies, Inc., et al. v. Ricoma International Corp., et al., 2-22-cv-00220 (May. 26, 2022).
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Federal Circuit Orders Transfer From E.D. Texas To N.D. California Where Accused Product Was Developed
06/02/2022
On May 23, 2022, the Court of Appeals for the Federal Circuit (CAFC) granted writs of mandamus to the United States District Court for the Eastern District of Texas in No. 2:19-cv-00362-JRG, Chief Judge J. Rodney Gilstrap, directing the district court to transfer patent cases to the United States District Court for the Northern District of California. In re Google LLC, __ F.3d __ (Fed. Cir. May 23, 2022). In its order, the CAFC held that the district court abused its discretion in failing to weigh the local interest factor in favor of transferee forum and erred in its analysis of other factors.
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Federal Circuit Asks Whether Prior Art Reference Is “By Another”
05/24/2022
On May 20, 2022, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) vacated a final written decision from the U.S. Patent Trial and Appeal Board (“PTAB”), remanding for the PTAB to resolve a factual dispute over inventorship that it had left unaddressed. Google LLC v. IPA Technologies Inc., No. 2021-1179 (Fed. Cir. May 19, 2022).
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Federal Circuit Affirms PTAB Decision Finding Claims Unpatentable Based On A Patent Application Publication’s Incorporation By Reference Of A Provisional Application
05/17/2022
On May 6, 2022, the United States Court of Appeals for the Federal Circuit (“CAFC”) affirmed a final written decision from the U.S. Patent Trial and Appeal Board (“PTAB”) of the U.S. Patent and Trademark Office. Konda v. Flex Logic Techs., Inc., No. 2022-1162, __ F. App’x __ (Fed. Cir. May 6, 2022). The PTAB agreed that a prior art reference rendered unpatentable the challenged claims.
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Federal Circuit Vacates PTAB Determination That Claims Were Not Obvious Because Of Flawed Motivation-To-Combine Analysis
05/17/2022
On April 29, 2022, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) vacated and remanded the final written decision of the Patent Trial and Appeal Board (“PTAB”), which found that the Petitioner, Auris Health, Inc. (“Auris”), had failed to demonstrate that the challenged claims were unpatentable as obvious based on evidence of general skepticism about the field of invention. Auris Health, Inc. v. Intuitive Surgical Operations, __ F.4th __ (Fed. Cir. April 29, 2022).
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Central District Of California Finds A Presumption Of Patent Infringement And Shifts The Burden To Defendants Pursuant To Section 295
04/27/2022
On April 7, 2022, Judge Selna of the United States District Court for the Central District of California (CDCA) granted plaintiff’s motion for a presumption of patent infringement and to shift the burden pursuant to 35 U.S.C. § 295. PureCircle USA Inc. et al v. SweeGen, Inc. et al, 8-18-cv-01679.
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Federal Circuit Again Finds Communications Attempting To Resolve A Patent Dispute Can Be A Basis For Personal Jurisdiction In Declaratory Judgment Action
04/27/2022
On April 18, 2022, the United States Court of Appeals for the Federal Circuit (CAFC) reversed the dismissal of a declaratory judgment action for lack of personal jurisdiction by the United States District Court for the Norther District of California (NDCA). Apple, Inc. v. Zipit Wireless, Inc., No. 2021-1760 (Fed. Cir. Apr. 18, 2022). The CAFC found that the NDCA erred in applying a bright-line rule that patent infringement notice letters can never form the basis for personal jurisdiction.
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Federal Circuit Rules A “Fastening Stem” Need Not Fasten Separate Pieces
04/19/2022
On April 4, 2022, the Court of Appeals for the Federal Circuit (CAFC) issued a precedential opinion vacating claim constructions ordered by the United States District Court for the District of Massachusetts in No. 1:17-cv-12375-IT, Judge Indira Talwani. Littelfuse, Inc. v. Mersen USA EP Corp., __ F.3d __ (Fed. Cir. April 4, 2022). In its order, the CAFC concluded that the district court’s constructions incorrectly limited claim scope to a preferred embodiment and rendered certain dependent claims superfluous.
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Federal Circuit Cites Limits Of Extrinsic Evidence In Prosecution Disclaimer
04/05/2022
On April 1, 2022, the Court of Appeals for the Federal Circuit (CAFC) reversed a district court’s claim construction and corresponding summary judgement of non-infringement decisions. The lower court had improperly relied on extrinsic evidence to determine what had been disclaimed by the applicant during prosecution. Genuine Enabling Tech. v. Nintendo Co., Ltd., No. 2020-2167 (Fed. Cir. Apr. 1, 2022).
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PTAB Exercises Discretion To Deny IPR Institution Due To ITC Investigation Despite Multiple Stayed District Court Cases
04/05/2022
On March 18, 2022, the Patent Trial and Appeal Board of the United States Patent and Trademark Office exercised its discretion under 35 U.S.C. § 314(a) to deny institution of a petition for inter partes review filed by Google LLC challenging a patent asserted against it in an ITC investigation and a parallel district court case. Google LLC v. EcoFactor, Inc., IPR2021-01578, Paper 9 (PTAB Mar. 18, 2022). The PTAB’s denial relied primarily on the late stage of the ITC investigation.
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Federal Circuit Affirms Dismissal Of Complaint Asserting Ineligible Patent Claims
03/23/2022
On March 15, 2022, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) affirmed the judgment of the U.S. District Court for the Eastern District of Texas, dismissing the complaint of plaintiff Repifi Vendor Logistics, Inc. (“Repifi”) for failure to state a claim upon which relief can be granted, because the asserted claims are ineligible for patent protection under 35 U.S.C. § 101. Repifi Vendor Logistics, Inc. v. IntelliCentrics, Inc., __ F.4th __ (Fed. Cir. Mar. 15, 2022).
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Western District Of Texas Rejects Expert’s Hypothetical Negotiation Analysis That Used The Wrong Parties
03/15/2022
On March 3, 2022, the United States District Court for the Western District of Texas entered a redacted copy of its February 24, 2022 order striking plaintiff’s expert report on damages and excluding the testimony of its damages expert. Daedalus Blue LLC v. SZ DJI Technology Co., Ltd., No. 6:20-cv-00073-ADA, Dkt. No. 173 (W.D. Tex. Mar. 3, 2022). The Court found the expert’s initial, timely-served report used the wrong parties in his hypothetical negotiation analysis and, for that reason, could not withstand defendant’s Daubert challenge. On the other hand, the expert’s “supplemental” report re-doing his analysis with the correct parties was untimely and thus stricken.
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Western District Of Texas Relies On Relaxed Alter Ego Theory To Deny Motion To Dismiss For Improper Venue
03/08/2022
On February 25, 2022, the United States District Court for the Western District of Texas (WDTX) filed a redacted copy of its February 11, 2022 order denying a motion to dismiss for improper venue. WSOU Investments LLC d/b/a Brazos Licensing & Dev. v. Canon Inc., No. 6:20-cv-00980-ADA, Dkt. No. 137 (W.D. Tex. Feb. 25, 2022). The WDTX, applying a more relaxed burden for purposes of establishing venue through an alter ego theory, found that defendant had a regular and established place of business in the District through the office of its wholly-owned subsidiary.
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U.S. District Court For The Eastern District Of Texas Bifurcates Trial Over Counterclaims Asserting Patent Infringement Claims Directed To Distinct Technologies
03/01/2022
On February 23, 2022, Judge Payne of the United States District Court for the Eastern District of Texas (“EDTX”) granted plaintiff’s motion to sever defendant’s counterclaims asserting patent infringement of claims directed to technologies that are distinct from those at-issue in plaintiff’s offensive case. United Services Automobile Association v. PNC Bank, NA, 2-20-cv-00319.
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Federal Circuit Holds That A Price “Quotation” Can Trigger An On-Sale Bar
02/24/2022
On February 10, 2022, the Court of Appeals for the Federal Circuit (CAFC) issued an order reversing a decision by the United States District Court for the District of New Jersey, No. 2:13-cv-04606-MSG, Judge Mitchell S. Goldberg, granting plaintiff-appellee’s motion for summary judgment of no invalidity of an asserted design patent under the on-sale bar. Junker v. Medical Components, Inc., __ F.3d __ (Fed. Cir. Feb. 10, 2022). In its order, the CAFC held that a letter offering a quotation for product covered by the patent does constitute an offer for sale under pre-AIA 35 U.S.C. § 102(b).
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Federal Circuit Affirms IPR Estoppel Under 35 U.S.C. § 315(e)(1) For Simultaneous Petitions
02/17/2022
On February 11, 2022, the Court of Appeals for the Federal Circuit (CAFC) affirmed a decision of the Patent Trial and Appeal Board (PTAB) terminating a petitioner’s participation in an inter partes review (IPR) based on the estoppel provision of 35 U.S.C § 315(e)(1). Intuitive Surgical Inc. v. Ethicon LLC, No. 2020-1481 (Fed. Cir. Feb. 11, 2022).
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Federal Circuit Holds That Applicant Admitted Prior Art Cannot Be The Basis For An IPR Challenge
02/08/2022
On February 2, 2022, the United States Court of Appeals for the Federal Circuit vacated a decision from the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office, finding that the Board erred in concluding that applicant admitted prior art (“AAPA”) constitutes “prior art consisting of patents or printed publications” under 35 U.S.C. § 311(b). Qualcomm Inc. v. Apple Inc., __ F.4th __ (Fed. Cir. Jan. 27, 2022).
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Federal Circuit Reverses District Court’s Indefiniteness Ruling For Applying Incorrect Legal Standard
02/01/2022
On January 27, 2022, the Court of Appeals for the Federal Circuit (“CAFC”) reversed the judgment of the United States District Court for the Northern District of California finding certain claims invalid on the ground of claim indefiniteness under 35 U.S.C. § 112(b), because the district court erred by applying an incorrect legal standard. Nature Simulation Sys. Inc. v. Autodesk, Inc., __ F.4th __ (Fed. Cir. Jan. 27, 2022).
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Federal Circuit Grants Mandamus Directing Transfer From Eastern District Of Texas To Northern District Of California
01/25/2022
On January 19, 2022, the United States Court of Appeals for the Federal Circuit (CAFC) granted mandamus directing the United States District Court for the Eastern District of Texas (EDTX) to transfer the case against petitioner to the United States District Court for the Northern District of California (NDCA). In re Netflix, Inc., No. 2022-110 (Fed. Cir. Jan. 19, 2022). The CAFC found that Chief Judge Rodney Gilstrap’s denial of transfer under 28 U.S.C. 1404(a) was a clear abuse of discretion.
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The District Court For The Eastern District Of Texas Denies Motion To Stay Pending Ex Parte Reexamination
01/19/2022
On January 6, 2022, Chief Judge Gilstrap of the United States District Court for the Eastern District of Texas denied a motion to stay pending ex parte reexamination (“EPR”) of the patent asserted in the litigation, and found that defendant was relying on the EPR as part of a strategy of “examiner shopping.” Longhorn HD LLC v. NetScout Systems, Inc., 2-20-cv-00349.
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Federal Circuit Describes Written Description Requirement For Negative Claim Limitations
01/11/2022
On January 3, 2022, the Court of Appeals for the Federal Circuit (CAFC) affirmed the district court’s finding that a patent claim does not fail the written description requirement merely because the specification fails to explicitly state a negative claim limitation. Novartis Pharmaceuticals v. Accord Healthcare Inc., No. 2021-1070 (Fed. Cir. Jan. 3, 2022).
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Judge Albright Of The Western District Of Texas Grants Motion To Transfer On Convenience Grounds
12/21/2021
On December 8, 2021, Judge Albright of the U.S. District Court for the Western District of Texas issued a sealed opinion granting the defendants’ motion to transfer venue to the Northern District of Georgia. Lynk Labs, Inc v. Home Depot USA, Inc., No. 6:21-cv-00097-ADA (W.D. Tex. Dec. 8, 2021). A public, redacted version has since published, in which the court addresses the public and private interest convenience factors, finding that the Northern District of Georgia was a clearly more convenient forum.
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Federal Circuit Affirms Finding That Patent Challenger Failed To Show Claims Relating To Accessing Web Content Outside Of A Browser Unpatentable
12/21/2021
On December 8, 2021, the Court of Appeals for the Federal Circuit (“CAFC”) affirmed the decision of the Patent Trial and Appeal Board (“Board”), finding that petitioner Lenovo Holding Company, Inc. (“Lenovo”) had failed to show by a preponderance of the evidence that the claims it challenged in an inter partes review (“IPR”) were unpatentable. Lenovo Holding Company, Inc. v. DoDots Licensing Solutions LLC, __ F.4th __ (Fed. Cir. Dec. 8, 2021).
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Federal Circuit Decides IPR Petitioner’s Standing In Two Appeals, With Different Outcomes
12/08/2021
On December 1, 2021, the United States Court of Appeals for the Federal Circuit (CAFC) issued two opinions related to the same inter partes review (IPR) petitioner’s standing to appeal two decisions of the Patent Trial and Appeal Board (PTAB). ModernaTx, Inc. v. Arbutus Biopharma Corp, — F.4th — (Fed. Cir. Dec. 1, 2021); ModernaTx, Inc. v. Arbutus Biopharma Corp f/k/a Protiva Biotherapeutics, Inc., — F.4th — (Fed. Cir. Dec. 1, 2021). In the first opinion, the CAFC found that petitioner had established standing by demonstrating a sufficient risk of an infringement suit based on the patent owner’s statements and actions. In the second opinion, the CAFC found that petitioner lacked standing at the time the appeal was filed because petitioner’s evidence of financial burden from the validity of the patent at issue was too speculative.
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Eastern District Of Texas Denies Motion To Dismiss Patent Case Asserting Claims Directed To Abstract Idea
11/24/2021
On November 15, 2021, the United States District Court for the Eastern District of Texas found that the asserted claims directed at data collection, storage, management, and access were abstract, but refused to dismiss the claims under the second step in the Alice analysis. Gravel Rating Systems, LLC v. McAfee, LLC, Case No. 4:21-CV-259-ALM.
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Federal Circuit Affirms Dismissal For Improper Venue And Failure To State A Claim As To Domestic And Foreign Defendants Respectively
11/16/2021
On November 5, 2021, the Court of Appeals for the Federal Circuit (CAFC) issued an order affirming a decision by the United States District Court for the District of New Jersey, No. 2:19-cv-05802-ES-MAH, Judge Esther Salas, dismissing a patent infringement suit for improper venue and failure to state a claim. Celgene Corp. v. Mylan Pharmaceuticals Inc., __ F.3d __ (Fed. Cir. Nov. 5, 2021). In its order, the CAFC affirmed that plaintiff had not established that the domestic defendants committed acts of infringement in New Jersey or had regular and established places of business there and had not sufficiently pleaded a claim against the foreign parent defendant.
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Federal Circuit Reverses PTAB Finding Of Obviousness
11/09/2021
On November 04, 2021, the Court of Appeals for the Federal Circuit (CAFC) reversed the Patent Trial and Appeal Board’s (PTAB’s) holding that a patent claim was obvious, rejecting both the PTAB’s finding that the prior art disclosed all claim limitations and the PTAB’s finding that the combination of references would result in a reasonable expectation of success. University of Strathclyde v. Clear-Vu Lighting LLC, No. 2020-2243 (Fed. Cir. Nov. 04, 2021).
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Federal Circuit Orders Transfer Of Another Judge Albright Case
11/03/2021
On October 19, 2021, the United States Court of Appeals for the Federal Circuit (“CAFC”) granted a petition for writ of mandamus ordering the United States District Court for the Western District of Texas to transfer the underlying action to the United States District Court for the District of Colorado. In re DISH Network, L.L.C., No. 2021-182 (Fed. Cir. Oct. 19, 2021). The CAFC held that Judge Albright abused his discretion when denying DISH’s motion to transfer on convenience grounds pursuant to 28 U.S.C. § 1404(a).
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Federal Circuit Affirms Exceptional Case Finding And Award Of Attorneys’ Fees
10/26/2021
On October 14, 2021, the Court of Appeals for the Federal Circuit (CAFC) affirmed the decision of the United States District Court for the District of North Dakota awarding attorneys’ fees on remand after it had previously found a patent unenforceable due to inequitable conduct. Energy Heating, LLC v. Heat On-The-Fly, LLC, __ F.4th __ (Fed. Cir. Oct. 14, 2021).
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Federal Circuit Rejects Arguments That The USPTO Is Unconstitutionally Structured
10/19/2021
On October 13, 2021, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued an opinion rejecting a patentee’s arguments challenging the constitutionality of the U.S. Patent and Trademark Office’s (USPTO’s) structure based on its purported financial interest in instituting inter partes reviews (IPRs). Mobility Workx, LLC v. Unified Patents, LLC, --- F.3d --- (Fed. Cir. Oct. 13, 2021). The CAFC found that the financial interests of the Patent Trial and Appeal Board (PTAB) leadership and of individual administrative patent judges (APJs) were too remote to violate due process under the U.S. Supreme Court’s decision in Tumey v. Ohio.
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Federal Circuit Denies Mandamus Request Seeking To Require Service Under Hague Convention
10/06/2021
On September 10, 2021, the Court of Appeals for the Federal Circuit (CAFC) issued an order denying a petition for a writ of mandamus to the United States District Court for the Western District of Texas, Nos. 6:20-cv-00952-ADA, 6:20-cv-00953-ADA, 6:20-cv-00956-ADA, 6:20-cv-00957-ADA, and 6:20-cv-00958-ADA, Judge Alan D. Albright, directing dismissal of five patent infringement actions for insufficient service of process and lack of personal jurisdiction. In re: ONEPLUS TECHNOLOGY (SHENZEN) CO., __ F.3d __ (Fed. Cir. Sept. 10, 2021). In its order, the CAFC let stand Judge Albrights’s decision finding that the mandamus petitioner’s right to service only under the Hague Convention is not clear and indisputable.
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District Of Delaware Determines “Translator Device” Limitations Are Subject To Means-Plus-Function Strictures And Invalidates Claims As Indefinite
09/21/2021
On September 10, 2021, Judge Richard G. Andrews of the U.S. District Court for the District of Delaware issued a Memorandum Opinion on claim construction. Peloton Interactive, Inc. v. ICON Health & Fitness, Inc., No. 20-662-RGA, slip. op. (D. Del. Sept. 10, 2021). Judge Andrews held that certain claims of the asserted patent containing “translator device…” limitations were invalid as indefinite under 35 U.S.C. § 112 ¶ 6 because they failed to disclose corresponding structure for the claimed function.
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Federal Circuit Affirms Post-Grant Review Decision Finding Claims Indefinite
09/15/2021
On September 9, 2021, the Court of Appeals for the Federal Circuit (CAFC) affirmed the decision of the Patent Trial and Appeal Board in a post-grant review proceeding construing the claim term “pressure control assembly” as a means-plus-function limitation and finding the challenged claims indefinite for lack of corresponding structure. Team Worldwide Corp. v. Intex Recreation Corp., __ F.3d __ (Fed. Cir. Sept. 9, 2021)
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The Federal Circuit Reverses Damages Award For Sales Of Infringing Products Prior To Actual Notice Of Infringement
09/09/2021
On September 1, 2021, the United States Court of Appeals for the Federal Circuit (CAFC) found that the District Court for the Central District of California erred in awarding damages for sales of infringing products prior to the date that the infringer received actual notice of infringement for failure to prove its compliance with the patent marking statute. Lubby Holdings LLC v. Henry Chung, __ F.3d __ (Fed. Cir. Sep. 1, 2021).
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Federal Circuit Affirms Exclusion Of Damages Expert’s Royalty Rate Opinions
08/31/2021
On August 26, 2021, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an order affirming orders from the United States District Court for the Northern District of California excluding certain opinions of plaintiff’s damages expert. MLC Intellectual Property LLC v. Micron Technology Inc., __ F.3d __ (Fed. Cir. August 26, 2021). In its decision, the CAFC let stand the district court judge’s orders precluding plaintiff’s damages expert from characterizing certain license agreements as supporting his reasonable royalty rate determination.
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District Of Delaware Finds Patent Claims To Be Patent Ineligible Under Section 101
08/26/2021
On August 12, 2021, the United States District Court for the District of Delaware issued an opinion granting plaintiff Microsoft Corporation’s (“Microsoft”) motion for judgment on the pleadings related to infringement counterclaims brought by SynKloud Technologies, LLC (“SynKloud”). SynKloud Techs. LLC v. HP, Inc., et al., No. 19-1360-RGA (D. Del. Aug. 12, 2021). The Court ruled that the patents at issue related to the patent-ineligible abstract idea of “requesting an institution to obtain data from remote locations and to store that data in storage space assigned to a specific user.”
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Eastern District Of Texas Finds Patent Unenforceable Due To Prosecution Laches
08/19/2021
On August 5, 2021, Judge Gilstrap of the U.S. District Court for the Eastern District of Texas issued a Memorandum Opinion and Order Supported by Findings of Fact and Conclusions of Law regarding defendant Apple’s counterclaim for prosecution laches. Personalized Media Communications, LLC v. Apple, Inc., No. 2:15-cv-01366-JRG, slip op. (E.D. Tex. Aug. 5, 2021). Judge Gilstrap found and declared the asserted patent unenforceable under the doctrine of prosecution laches. In doing so, Judge Gilstrap overturned a $308.5 million jury verdict.
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Federal Circuit Grants Writ Of Mandamus Ordering Transfer Of Venue Based On Convenience
08/10/2021
On August 2, 2021, the United States Court of Appeals for the Federal Circuit (“CAFC”) granted a petition for a writ of mandamus ordering the United States District Court for the Western District of Texas to transfer the underlying action to the Central District of California. In re Hulu, LLC, __ F.3d __ (Fed. Cir. Aug. 2, 2021).
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District Court Limits Expansion Of IPR Estoppel Law
08/03/2021
On July 21, 2021, the United States District Court for the Eastern District of Texas, Marshall Division, denied plaintiff’s motion for summary judgement that its patent was not invalid due to inter partes review (“IPR”) estoppel pursuant to 35 U.S.C. § 315(e)(2). General Access Solutions, Ltd. v. Sprint Spectrum LLC, 2-20-cv-00007 (Robert W. Schroeder, III).
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Federal Circuit Denies Petition To Transfer Case Out Of Western Texas
07/28/2021
On July 13, 2021, the Court of Appeals for the Federal Circuit (CAFC) issued an order denying a petition for a writ of mandamus to the United States District Court for the Western District of Texas, No. 6:20-cv-00622-ADA, Judge Alan D. Albright, directing transfer. In re: TCO AS, __ F.3d __ (Fed. Cir. July 13, 2021). In its order, the CAFC let stand Judge Albright’s decision denying Petitioner’s motion to transfer.
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Federal Circuit Finds District Court’s Element-By-Element Infringement Pleading Standard Overly Demanding
07/20/2021
On July 13, 2021, the United States Court of Appeals for the Federal Circuit (“CAFC”) affirmed in part, reversed in part, and remanded appellant Bot M8 LLC’s (“Bot M8”) appeal of several underlying orders related to the dismissal of its patent infringement action against Sony Corporation of America (“Sony”). Bot M8 LLC v. Sony Corporation of America, ___ F.3d ___ (Fed. Cir. July 13, 2021). The CAFC clarified that while a plaintiff need not plead infringement on an element-by-element basis, reciting claim elements and merely concluding that the accused products have those elements is insufficient.
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District Of Delaware Denies Motion To Preclude Plaintiff From Asserting At Trial Patent Claims Found Unpatentable By The US Patent Office’s Patent Trial And Appeal Board
07/13/2021
On July 6, 2021, Judge Noreika of the United States District Court for the District of Delaware issued an Order denying defendant’s motion in limine to preclude plaintiff from asserting claims of a patent that were found unpatentable by the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office in an inter partes review. TrustID, Inc. v. Next Caller Inc., Slip. Op. (D. Del. July 6, 2021). The Court determined that plaintiff was not collaterally estopped.
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Federal Circuit Grants Writs Of Mandamus Ordering Transfer Of Venue
07/07/2021
On June 30, 2021, the Court of Appeals for the Federal Circuit (CAFC) granted petitions for writs of mandamus ordering the United States District Court for the Western District of Texas to transfer the underlying actions to the Northern District of California. In re Samsung Elecs. Co., LTD, __ F.3d __ (Fed. Cir. June 30, 2021).