On August 2, 2019, the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office designated as precedential two Decisions on Institution.  Valve Corp. v. Elecs. Scripts Prods. Inc., IPR Case Nos. IPR2019-00064, -00065, -00085, Paper 10 (PTAB May 1, 2019) (designated: Aug. 2, 2019); Becton, Dickinson & Co. v. B Braun Melsungen AG, Case No. IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (designated: Aug. 2, 2019).  In Valve, the PTAB held that General Plastic factor 1—concerning discretionary denials under 35 U.S.C. § 314(a) for “follow-on” petitions—applied to a joined petitioner.  In Becton, Dickinson, the PTAB delineated a list of factors to consider when determining whether to exercise its discretion to deny a petition under 35 U.S.C. § 325(d) where “the same or substantially the same prior art or arguments previously were presented to the Board.”

On July 29, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming a decision of the District Court for the District of Delaware dismissing a patent-infringement complaint for failure to state a claim.  Amgen Inc. v. Computer Biosciences. Inc., __ F.3d __ (Fed. Cir. July 29, 2019).  The CAFC affirmed the District Court’s application of the doctrine of argument-based estoppel and held that the patent owner could not succeed on its infringement claim.

On July 23, 2019, the Court of Appeals for the Federal Circuit (“CAFC”) made public an opinion affirming a district court’s sua sponte summary judgment that design patents covering the hood and headlamps of Ford’s F-150 truck are not invalid for claiming functional features.  Automotive Body Parts Assoc. v. Ford Global Techs., LLC, ___ F.3d ___ (Fed. Cir. July 23, 2019).  The CAFC rejected arguments that the aesthetic appeal of replacement parts that match the original equipment makes the designs functional.  The CAFC also rejected an argument for a design-patent-specific exception to the permissible-repair doctrine.

On Monday, July 15, 2019, the International Trade Commission (ITC) issued the public version of an opinion affirming in part an initial determination issued by Administrative Law Judge (ALJ) Dee Lord.  In re Certain Road Construction Machines and Components Thereof, Investigation No. 337-TA-1088,—Fed. Reg.—(July 15, 2019).  The ITC affirmed the ALJ’s determination that asserted patent claims directed to automated paving machines were directed to patent-ineligible subject matter and therefore invalid.

On July 10, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion dismissing for lack of standing an appeal of a Patent Trial and Appeal Board (PTAB) inter partes review (IPR) decision finding certain patent claims not unpatentable.  General Electric Co. v. United Technologies Corp., —F.3d—, (Fed. Cir. July 10, 2019).  The CAFC ruled that the patent challenger lacked standing to appeal the adverse decision even though, among other things, it is a direct competitor of the patent owner.

On June 24, 2019, the United States Supreme Court granted certiorari to review whether a decision by the Patent Trial and Appeal Board (PTAB) to institute an inter partes review (IPR) is an appealable decision.

On June 14, 2019, the Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming Patent Trial and Appeal Board (“PTAB”) decisions declining to dismiss petitions for inter partes review (IPR).  Regents of the Univ. of Minn. v. LSI Corp. et al., —F.3d—, (Fed. Cir. June 14, 2019).  The CAFC ruled that the doctrine of sovereign immunity does not bar IPR of state-owned patents.

On May 23rd, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming the Patent Trial and Appeal Board’s inter partes review (IPR) unpatentability decision.  Papst Licensing GmbH v. Samsung Elec. Am. Inc., __ F.3d __(Fed. Cir. May 23, 2019).  The CAFC ruled that claim-construction and prior-art rulings in an earlier IPR created issue preclusion barring the patent owner from contesting those issues in the appeal of a later IPR.

On May 21, 2019, the Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion reversing a summary judgment of patent invalidity granted by the U.S. District Court for the District of Delaware.  Quest Integrity USA, LLC, v. Cokebusters USA Inc., __ F.3d__ (Fed. Cir. May 21, 2019).  The CAFC ruled that the district court abused its discretion and wrongly applied the sham-affidavit doctrine when it disregarded affidavits submitted by the patent owner, and that those affidavits created a material issue of disputed fact and should have blocked summary judgment.

On May 13, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion on an appeal from a Final Written Decision in an inter partes review (IPR) proceeding before the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office.  AVX Corp. v. Presidio Components, Inc., __ F.3d__ (Fed. Cir. May 13, 2019).  The CAFC held that the appellant, AVX, lacked standing to appeal the decision and therefore dismissed the appeal.

On May 1, 2019, the Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming a grant of attorney’s fees and costs under 35 U.S.C. § 285 by the United States District Court for the Southern District of California.  Thermolife Int’l LLC et al. v. GNC Corp. et al., __ F.3d__ (Fed. Cir. May 1, 2019).  The CAFC ruled that the district court had correctly decided that the (consolidated) cases were exceptional under § 285 because plaintiffs failed to conduct an adequate pre-filing investigation and because they engaged in a pattern of bringing suit against numerous defendants without carefully reviewing their claims.

On April 22, 2019, the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO) made public its Final Written Decision on the patentability of challenged claims in a covered business method patent review (CBM) proceeding.  Fidelity Information Services, LLC v. Mirror Imaging, LLC, CBM Case No. CBM2017-00064 (PTAB Apr. 22, 2019).  The PTAB held the challenged claims were patent ineligible under 35 U.S.C. § 101, consistent with the USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019).

On April 19, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion reversing a decision of the U.S. District Court for the District of Oregon.  Versatop Support Sys. v. Georgia Expo, Inc., —F.3d—, (Fed. Cir. April 19, 2019).  The CAFC ruled that the district court had incorrectly found no infringement based on the “use in commerce” requirement of the Lanham Act.

On April 5, 2019, the Patent Trial and Appeal Board (“PTAB”) at the United States Patent and Trademark Office designated as “Informative” two prior decisions relating to the PTAB’s discretion about whether to institute inter partes review (“IPR”) proceedings for trial.  In each, the PTAB exercised its discretion to deny institution of an IPR proceeding, even though the Petitioner demonstrated a reasonable likelihood of prevailing on some claims.

On April 1, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming a dismissal under Federal Rule of Civil Procedure 12(b)(6) by the United States District Court for the Eastern District of Virginia.  Cleveland Clinic Foundation et al. v. True Health Diagnostics, —F. App’x—, (Fed. Cir. Apr. 1, 2019).  The CAFC ruled that the district court had correctly decided that the asserted claims are invalid as patent ineligible abstract ideas under 35 U.S.C. § 101.

On March 18, 2019, the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office designated as precedential a Decision on Patent Owner’s Request for Rehearing.  Amazon.com, Inc. v. Uniloc Luxembourg S.A., IPR Case No. IPR2017-00948 (PTAB Jan. 18, 2019).  The PTAB held that, while a Petitioner may only challenge patent claims in an inter partes review based on prior art patents and publications under 35 U.S.C. §§ 102 and 103, it is nonetheless proper to consider patent eligibility under 35 U.S.C. § 101 for any proposed substitute claims.

On Monday, March 4, 2019, the United States Supreme Court issued an opinion affirming a dismissal of the plaintiff’s copyright claim. Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, 586 U.S. ____ (2019). The Supreme Court held that a copyright plaintiff may not commence a lawsuit until after the Register of Copyrights officially registers the copyright.

On Tuesday, February 26, 2019, the Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming a dismissal under Federal Rule of Civil Procedure 12(b)(6) by the U.S. District Court for the Northern District of Florida. University of Florida Research Foundation, Inc. v. General Electric Company, —F.3d— (Fed. Cir. Feb. 26, 2019). The CAFC ruled that the district court had correctly decided that the patent claims are invalid under 35 U.S.C. § 101.


On February 14, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion reversing and remanding a decision by the United States District Court for the District of Delaware granting summary judgment of invalidity for lack of written description.  CenTrak, Inc. v. Sonitor Techs., Inc., —F.3d—, (Fed. Cir. Feb. 14, 2019).  The CAFC ruled that there were genuine issues of material fact as to whether it was necessary to disclose in the patent specification particular implementation details to satisfy the written description requirement.

On February 13, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion vacating covered-business-method review (CBM) decisions by the Patent Trial and Appeal Board (PTAB).  Trading Technologies International, Inc. v. IBG LLC, —F.App’x—, (Fed. Cir. Feb. 13, 2019).  The CAFC ruled that the challenged patents were not eligible for CBM review because they were for “technological inventions.”

On Wednesday, January 30, 2019, Judge Kiyo A. Matsumoto of the United States District Court for the Eastern District of New York denied the request of defendant Presidio Components, Inc., (the “Company”) to supplement its invalidity contentions.  American Technical Ceramics Corp. et al. v. Presidio Components, Inc., Case No. 14-cv-6544 (E.D.N.Y. Jan. 30, 2019).  Judge Matsumoto determined that the Company was statutorily estopped from raising invalidity grounds that it did not include in its petition for inter partes review (“IPR”) to the U.S. Patent and Trademark Office (“USPTO”), and, thus barred the Company from supplementing its invalidity contentions in the subsequent district court proceeding. 

On Thursday, January 24, 2019, the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO) issued a decision exercising its statutorily authorized discretion to deny institution of a petition for inter partes review (IPR).  Deeper, UAB v. Vexilar, Inc., IPR Case No. 2018-01310 (PTAB Jan. 24, 2019).  The PTAB determined that instituting IPR would be an inefficient use of the PTAB’s finite resources because the petitioner had shown a reasonable likelihood of prevailing on its invalidity challenges with respect to only two of the twenty-three challenged claims as to one of the four grounds.
 

On January 22, 2019, the United States Supreme Court issued an opinion affirming a decision by the Court of Appeals for the Federal Circuit (CAFC) that the Leahy-Smith America Invents Act (AIA) did not change the “on sale” bar.  Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., 586 U.S., case no. 17-1229.  The Supreme Court held that a commercial sale to a third party may still place the invention “on sale” under 35 U.S.C. § 102(a)(1) of the AIA, even if the third party was required to keep confidential the details of the invention.

On Monday, January 14, 2019, the Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion vacating and remanding a decision by the Trademark Trial and Appeal Board (“TTAB”) refusing to register a design mark based on likelihood of confusion.   In re Guild Mortgage Co., —F.3—, (Fed. Cir. January 14, 2019).  The CAFC ruled that the TTAB failed to consider the relevant evidence and argument directed to DuPont factor 8.

On January 9, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming a decision on reconsideration by the Patent Trial and Appeal Board (PTAB) that held challenged claims to be unpatentable on a non-instituted ground that was not addressed by the PTAB in its final written decision.  AG Technologies S.A. v. Amazon.com Inc., —F.3d—, (Fed. Cir. Jan. 9, 2019).  The CAFC ruled that the PTAB had not exceeded its statutory authority or deprived the patent owner of fair process by belatedly considering the additional ground.

On Thursday, December 20, 2018, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming a dismissal under Federal Rule of Civil Procedure 12(b)(6) by the U.S. District Court for the Western District of Washington.  Glasswall Solutions Ltd. v. Clearswift Ltd., —F.App’x—, (Fed. Cir. Dec. 20, 2018).  The CAFC ruled that the district court had correctly decided that the asserted claims are invalid as patent ineligible abstract ideas under 35 U.S.C. § 101.

On Friday, December 7, 2018, the Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion reversing and remanding a decision by the United States District Court for the Northern District of Texas, in which the district court dismissed plaintiff’s declaratory judgment action against defendant for lack of personal jurisdiction.  Jack Henry & Associates, Inc. v. Plano Encryption Technologies LLC, —F.3d— (Fed. Cir. Dec. 7, 2018).  The CAFC ruled that defendant’s patent assertion campaign against multiple banks in the Northern District of Texas was sufficient to establish the minimum contacts necessary to subject PET to personal jurisdiction in that venue.

On Thursday, November 29, 2018, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming a decision by the District Court for the Eastern District of Tennessee dismissing Maxchief Investments Limited’s (“Maxchief”) declaratory judgment action against Wok & Pan, Ind., Inc. (“Wok”) for lack of personal jurisdiction.  Maxchief Investments Limited v. Wok & Pan, Ind., Inc., —F.3d— (Fed. Cir. Nov. 29, 2018).  The CAFC ruled that Wok lacked sufficient contacts with the forum state of Tennessee to support a finding of specific personal jurisdiction.

On November 19, 2018, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion reversing in part a patent-infringement judgment of the United States District Court for the Northern District of California.  Enplas Display Device Corp. v. Seoul Semiconductor Co., —F.3d—, (Fed. Cir. November 19, 2018).  The CAFC ruled that the jury’s damages award was based on sales of non-infringing products, and reversed the District Court’s denial of judgment as a matter of law as to the damages award.

On Friday, November 9, 2018, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming in part a final written decision by the Patent Trial and Appeal Board (PTAB).   Arista Networks, Inc. v. Cisco Sys., Inc., —F.3d— (Fed. Cir. Nov. 9, 2018).  The CAFC ruled that the PTAB had correctly decided that the equitable doctrine of assignor estoppel does not apply in inter partes review (“IPR”) proceedings.

On November 6, 2018, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming a final written decision by the Patent Trial and Appeal Board (PTAB) finding the patent claims that had been challenged by inter partes review (IPR) to be not unpatentable.   Acceleration Bay, LLC v. Activision Blizzard Inc., —F.3d—, (Fed. Cir. November 6, 2018).  The CAFC ruled that the patent challenger had not proved that an article available on the Internet before the critical date was a “printed publication,” and that the article therefore was not available as prior art.

On October 30, 2018, the Court of Appeals for the Federal Circuit issued an opinion vacating an earlier decision from the International Trade Commission (“ITC”) regarding a shoe company’s (the “Company”) trademark in its All Star shoes trade dress.  Converse, Inc. v. Int’l Trade Comm’n, —F.3d—, (Fed. Cir. October 20, 2018).  The Court held that the presumption of secondary meaning that applies to registered marks does not apply before the registration.  The Court also clarified the considerations to be assessed in determining whether a mark has acquired secondary meaning. 

On October 23, 2018, the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office issued a final written decision in an inter partes review (IPR) challenging United States Patent No. 9,073,641.  C&D Zodiac, Inc. v. B/E Aerospace, Inc., Case IPR2017-01275, paper no. 41 (October 23, 2018).  In that decision, the PTAB relied on evidence of prior-art designs to show unpatentability, even though prior art in IPRs is limited to patents and printed publications.

On Tuesday, October 2, 2018, the International Trade Commission (ITC) issued the public version of an initial determination issued by Administrative Law Judge (ALJ) Clark S. Cheney. In re Certain Magnetic Tape Cartridges and Components Thereof, Investigation No. 337-TA-1058,—Fed. Reg.— (October 2, 2018).  The ALJ applied prior art to find asserted patent claims invalid, even though the respondents may have been estopped by statute from relying on that prior art.

 

On October 10, 2018, the United States Patent and Trademark Office (“USPTO”) announced that it had published its final rule changing the America Invents Act (“AIA”) trial proceeding claim-construction standard to the same standard used in district court and International Trade Commission (“ITC”) proceedings.  (83 FR 51340.)  As we previously reported, see Shearman & Sterling LLP, USPTO Issues Proposed Rulemaking to Adopt District-Court Claim Construction Standard for AIA Trial Proceedings, the USPTO in May 2018 proposed this change as part of its ongoing efforts to “shape and improve” AIA trial proceedings.

On October 1, 2018, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming a decision by the Patent Trial and Appeal Board (PTAB) cancelling a patent in inter partes reexamination.  Natural Alternatives Int’l, Inc. v. Iancu, —F.3d— (Fed. Cir. Oct. 1, 2018).  The PTAB and the CAFC both rejected the patent-owner’s argument that the patent in question was entitled to claim priority to one of the owner’s earlier patent applications.

On September 28, 2018, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion reversing a decision by the United States District Court for the Southern District of New York in which the District Court had sanctioned plaintiff’s counsel with an award of attorneys’ fees pursuant to 28 U.S.C. § 1927.  Gust, Inc. v. AlphaCap Ventures, LLC, —F.3d— (Fed. Cir. September 28, 2018).  Applying an “exacting” abuse-of-discretion standard, the CAFC ruled that the District Court erred in finding plaintiff’s lawyers to have litigated in bad faith, and therefore reversed the award of attorneys’ fees.

On Monday, September 17, 2018, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion reversing a final written decision by the Patent Trial and Appeal Board (PTAB) and finding the patent claims that had been challenged by inter partes review (IPR) to be unpatentable for obviousness.  E.I. du Pont de Nemours & Co. v. Synvina C.V., —F.3d—, (Fed. Cir. September 17, 2018).  The CAFC first ruled that the patent challenger had standing to appeal, and then on the merits determined that the PTAB had applied the wrong legal standard for obviousness, and therefore reversed.

On September 12, 2018, the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office issued a decision exercising its statutorily authorized discretion to deny institution of a petition for inter partes review (IPR).  NHK Spring Co., Ltd. v. Intri-Plex Techs., Inc., IPR Case No. 2018-00752 (PTAB Sept. 12, 2018).  In doing so, the PTAB ruled that the IPR petition’s reliance on substantially the same arguments that the patent owner overcame during original prosecution justified a discretionary denial in this instance, as did the advanced stage of a parallel litigation involving the same parties.

On September 4, 2018, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming a judgment of the United States District Court for the District of Delaware finding a patent claim invalid for indefiniteness.  Intellectual Ventures I LLC v. T-Mobile USA, Inc. et al., —F.3d—(Fed. Cir. September 4, 2018).  The CAFC ruled that the claim was invalid because it included a limitation that was entirely subjective and user-defined.

On August 20, 2018, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion reversing a decision of the Patent Trial and Appeal Board (PTAB) in which the PTAB had rejected a design patent application for indefiniteness.  In re Ron Maatita, —F.3d—, (Fed. Cir. Aug. 20, 2018).  The CAFC ruled that the PTAB had wrongly applied the indefiniteness standard in the context of a design patent claiming the design of the sole of an athletic shoe.

On Thursday, August 16, 2018, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion denying a patent challenger’s petition for a writ of mandamus in connection with the Patent Trial and Appeal Board’s decision not to institute requested inter partes reviews (IPR).  In re. Power Integrations, Inc., —F.3d—, (Fed. Cir. August 16, 2018).  The CAFC ruled that the mandamus petition was tantamount to an appeal of the non-institution decision, which is foreclosed by statute.

On Thursday, August 16, 2018, the Court of Appeals for the Federal Circuit (CAFC), sitting en banc, issued an opinion reversing the Patent and Trial Board’s determination that a dismissal without prejudice of a district-court complaint resets the statutory clock for filing inter partes reviews (IPR), and vacating the Patent and Trial Board’s final written decision.  Oracle Corp. v. Click-to-Call Techs. LP, —F.3d—, (Fed. Cir. August 16, 2018).  The CAFC held that service of an infringement complaint triggers the one-year bar regardless of whether that complaint is later dismissed without prejudice.

On Friday, August 3, 2018, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion dismissing the patent challenger’s appeal in an inter partes review (IPR) proceeding. JTEKT Corp. v. GKN Automotive Ltd., —F.3d—, (Fed. Cir. August 3, 2018).  The CAFC determined that the unsuccessful patent challenger lacked standing to pursue the appeal and so dismissed it, leaving the unsuccessful patent challenger subject to the estoppel attached to an unsuccessful IPR under the America Invents Act, without any review by an Article III court.

On Wednesday, August 1, 2018, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion reversing a district court dismissal in a design-patent case.  Advantek Marketing, Inc. v. Shanghai Walk-Long Tools Co., —F.3d—, (Fed. Cir. August 1, 2018).  The CAFC determined that prosecution-history estoppel did not bar the patent owner’s infringement claim, and remanded the case for further proceedings.

On July 24, 2018, the Court of Appeals for the Federal Circuit (“CAFC”) unsealed an opinion vacating a final written decision in two inter partes reviews (“IPRs”).  Applications in Internet Time, LLC v. RPX Corp., —F.3d— (Fed. Cir. July 9, 2018).  The CAFC remanded the IPRs to the Patent Trial and Appeal Board (“PTAB”) for further consideration of whether an RPX client was a real party-in-interest (“RPI”) to the IPRs, in which RPX had claimed to be the sole RPI.

In Saint Regis Mohawk Tribe et al. v. Mylan Pharmaceuticals Inc. et al., the Federal Circuit held that tribal sovereign immunity cannot be asserted in inter partes review (“IPR”) proceedings before the Patent Trial and Appeal Board (“Board”).

On July 10, 2018, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion in an appeal from a District Court decision in a patent-infringement case, affirming the District Court’s finding of patent validity, but vacating the District Court’s award of enhanced damages of two-and-a-half times the original damages amount. Polara Eng. Inc. v. Campbell Co., Appeal Nos. 2017-1974 and 2017-2033 (Fed. Cir. July 10, 2018). The CAFC found that the District Court wrongly assessed the closeness of the case, and remanded the enhanced-damages issue to the District Court for further consideration.

On July 2, 2018, a motions panel of the Court of Appeals for the Federal Circuit (CAFC) issued an order remanding an inter partes review (IPR) to the Patent Trial and Appeal Board (PTAB). Adidas AG v. Nike, Inc., Appeal Nos. 2018-1180 and 2018-1181. The CAFC noted that the final written decision that was the subject of the appeal had addressed only one of the two sets of grounds of unpatentability that had been asserted in the petition for inter partes review, and directed the PTAB to issue a new decision addressing both grounds.

On June 22, 2018, the United States Supreme Court reversed the Court of Appeals for the Federal Circuit (CAFC) on the issue of whether damages suffered overseas can be recovered as remedy for infringement under the U.S. patent laws. WesternGeco LLC v. ION Geophysical Corp., 585 U.S. ____, case no. 16-1011. The Supreme Court ruled that such damages can be recoverable.