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  • Federal Circuit Affirms PTAB Finding That Article Is Not A “Printed Publication”
     
    11/13/2018

    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.
  • Federal Circuit Clarifies Secondary Meaning And Infringement Tests For Trade Dress
     
    11/06/2018

    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. 
    CATEGORIES: PTABTrademarkITC
  • Patent Trial And Appeal Board Relies On References Not Available As IPR Prior Art In Unpatentability Decision
     

    10/31/2018


    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.

  • ITC Administrative Law Judge Rules That Staff Participation Can Avoid Estoppel Effect Of Respondent’s Earlier IPR
     
    10/23/2018

    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.
    CATEGORIES: IPRsITC
  • USPTO Issues Final Rule Adopting District-Court Claim Construction Standard For AIA Trial Proceedings
     
    10/16/2018
     

    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.

    CATEGORY: PTAB
  • Federal Circuit Affirms PTAB’s Treatment Of Priority-Date Claims
     
    10/09/2018

    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.
    CATEGORY: PTAB
  • Federal Circuit Reverses Award Of Attorneys’ Fees In NPE Patent Case
     
    10/02/2018

    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.
  • Federal Circuit Reverses PTAB Finding Of Patentability
     
    09/25/2018

    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.
  • PTAB Exercises Its Discretion To Deny Inter Partes Review Institution Because Of The Advanced Stage Of Parallel District Court Litigation
     
    09/17/2018

    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.
    CATEGORY: PTAB
  • Federal Circuit Affirms Judgment Of Patent Claim Indefiniteness
     
    09/10/2018

    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.
    CATEGORY: Section 112
  • Federal Circuit Reverses PTAB Rejection Of Design Patent Application
     
    08/28/2018

    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.
    CATEGORIES: PTABSection 112Design Patents
  • Federal Circuit Denies Mandamus Petition Regarding IPR Institution Decision
     
    08/21/2018

    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.
  • En Banc Federal Circuit Holds That Dismissal Without Prejudice Of District Court Action Does Not Reset IPR Time-Bar Clock
     
    08/21/2018

    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.
  • Federal Circuit Dismisses IPR Appeal For Lack Of Standing
     
    08/14/2018

    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.
  • Federal Circuit Rules On Issue Of Prosecution-History Estoppel In Design-Patent Case
     
    08/07/2018

    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.
    CATEGORY: Design Patents
  • Federal Circuit Considers Whether RPX Client Is A Real Party-In-Interest To RPX IPRs
     
    07/31/2018

    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.
    CATEGORIES: PTABIPRs
  • Federal Circuit Rejects Indian Tribe’s “Sovereign Immunity” Argument Regarding A Validity Challenge To A Patent It Acquired From Allergan, Inc.
     
    07/24/2018

    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”).
    CATEGORIES: PTABIPRs
  • Federal Circuit Vacates Enhanced Damages Award
     
    07/17/2018

    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.
    CATEGORIES: WillfulnessDamages
  • Federal Circuit Expands The Supreme Court’s SAS Holding To Require Institution On All Grounds Argued In An IPR Petition
     
    07/10/2018

    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.
  • Supreme Court Reverses Federal Circuit And Holds That Patent-Infringement Damages Suffered Overseas May Be Recoverable Under U.S. Patent Law
    06/26/2018
    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.
  • Recovery Of “Exceptional Case Attorneys” Fees Denied Because Wronged Party Delayed In Making Its Position Clear
    06/19/2018
    On June 11, 2018, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed a district court’s denial of a motion for recovery of attorneys’ fees. Stone Basket Innovations, LLC v. Cook Medical LLC, appeal no. 2017-2330. The CAFC ruled that the fee-seeking defendant had not made its litigation position sufficiently clear early enough in the litigation to justify an award of attorneys’ fees pursuant to the “exceptional case” provision of 35 U.S.C. § 285.

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  • Patent Trial And Appeal Board Designates As Precedential Opinion Instructing On Claim Amendments.
    06/13/2018

    On June 1, 2018, the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office designated as precedential an opinion in which it issued instructions concerning patent claim amendments in inter partes review (“IPR”) proceedings.  Western Digital v. SPEX Techs., Case No. IPR2018-00082, paper no. 13 (April 25, 2018).  The PTAB also made a specific note of the duty of candor applicable to both patent owners and petitioners.

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  • Federal Circuit Emphasizes Factual Nature Of Section 101 Determinations
     
    06/05/2018

    On May 31, 2018, the United States Court of Appeals for the Federal Circuit (CAFC) denied a request for en banc rehearing of its Berkheimer patent-eligibility panel opinion.  Berkheimer v. HP Inc., Appeal No. 2017-1437.  (See our prior post on the CAFC’s Berkheimer opinion here.)  Eight of the Court’s twelve judges who decided the issue signed opinions concurring in or dissenting from the decision declining en banc rehearing.  The concurring opinion filed by five of the judges (Judges Moore, Dyk, O’Malley, Taranto, and Stoll) is of particular interest because of its emphasis on the fact issue the Court recently found to be underlying the question of patent eligibility under 35 U.S.C. § 101.

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  • Patent Notice Printed In Surgical Guide Ruled Insufficient Marking Of Patented Surgical Implant
     
    05/30/2018

    On May 19, 2018, the United States District Court for the Eastern District of Wisconsin denied a patent owner’s request for reconsideration of a decision that the patent owner had not complied with the marking statute, and that therefore its damages in the pending infringement case would be limited, pursuant to that statute.  Acantha LLC v. Depuy Orthopaedics, Inc., et al., Case No. 15-C-1257 (E.D. Wis. May 19, 2018).  The Court rejected the patent owner’s argument that placing a patent notice in its surgical guide constituted sufficient marking.

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    CATEGORY: Damages
  • Federal Circuit Continues To Clarify Patent Venue Rules In The Wake Of The Supreme Court’s TC Heartland Decision 
     
    05/22/2018

    Between May 8, 2018 and May 11, 2018, the United States Court of Appeals for the Federal Circuit issued a series of three opinions clarifying questions left open in the wake of the Supreme Court’s decision in TC Heartland LLC v. Kraft Foods Grp. Brands LLC, which held that for purposes of the patent venue statute, 28 U.S.C. § 1400(b), a domestic corporation “resides” only in its state of incorporation.

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  • USPTO Issues Proposed Rulemaking To Adopt District-Court Claim Construction Standard For AIA Trial Proceedings
     
    05/15/2018

    As part of its ongoing efforts to “shape and improve” post-grant trial proceedings under the America Invents Act (AIA), the United States Patent and Trademark Office (USPTO) announced on May 8, 2018, a Notice of Proposed Rulemaking to change the AIA trial proceeding claim-construction standard to the same standard used in district court and International Trade Commission (ITC) proceedings.  83 FR 21221.    

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    CATEGORY: PTAB
  • Federal Circuit Holds That There Is No Right To A Jury Trial On A Claim For Disgorgement As A Remedy For Trade Secret Misappropriation
     
    05/08/2018

    On Tuesday, May 1, 2018, the United States Court of Appeals for the Federal Circuit issued a decision affirming liability of plaintiff’s trade secret misappropriation claim, but vacating the monetary damages award.  Texas Advanced Optoelectronic Solutions, Inc. v. Renesas Electronics America, Inc., f/k/a Intersil Corp., Appeal Nos. 2016-2121, 2016-2208, and 2016-2235.  The Court held that plaintiff Texas Advanced Optoelectronic Solutions (“TAOS”) did not have a jury trial right on its claim for disgorgement of defendant Intersil’s profits, since disgorgement is equitable in nature and was not historically heard by law courts, at least as it concerned intellectual property claims. 

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    CATEGORIES: DamagesTrade Secrets
  • US Supreme Court Approves IPRS, But Requires Decision On All Challenged Claims
     
    05/01/2018

    On April 25, 2018, the United States Supreme Court ruled on two cases concerning inter partes review (“IPR”) proceedings:  Oil States Energy Svcs. v. Green’s Energy Grp., case no. 16-712, and SAS Inst. Inc. v. Iancu, case no. 16-969.  In the first case, the Court ruled that IPRs can be a Constitutionally permissible way for the Patent Office to revoke already-issued patents, and in the second case, the Court ruled that the Patent Office is required to rule on either all or none of the patent claims challenged in a request for IPR.

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  • Supreme Court Hears Oral Argument In Key Patent Damages Case
     
    04/24/2018

    On April 16, 2018, the United States Supreme Court heard oral argument in the case of WesternGeco LLC v. ION Geophysical Corporation, which presents the question whether a patent owner can recover damages suffered outside of the United States for infringing acts that occurred within the United States.

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  • ITC ALJ Permits Evidence Of Post-Complaint Domestic Industry
     
    04/17/2018

    On April 5, 2018, the United States International Trade Commission (ITC) published the public version of an earlier order by an ITC administrative law judge (ALJ) denying a motion in limine seeking to exclude evidence of the development of a domestic industry after the filing of the complaint.  In re Certain Digital Cameras, Software, and Components Thereof, Inv. No. 337-TA-1059, Order No. 52.  The ALJ ruled that, while the filing date “may be the bench mark,” there is “no rigid rule that the Commission must consider only at [sic] the investments in a domestic industry at the time of the filing of the complaint.”

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  • In Split Opinion, Federal Circuit Holds PTO Has Standing To Proceed Without Patent Challenger, As Sole Party Defending PTAB Inter Partes Invalidity Decision

    04/10/2018


    On April 6, 2018, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming an examiner’s rejection of various patent claims in an inter partes reexamination. Knowles Elec. LLC v. Iancu, case no. 2016-1954.  The United States Patent and Trademark Office (“PTO”) had intervened in the appeal to defend the examiner’s rejection.  In its opinion, the CAFC ruled that the PTO had standing to defend the examiner’s rejection even though the petitioner in the inter partes reexamination had abandoned the appeal.
     

  • District Court Grants Judgment Of Patent Invalidity On The Pleadings, Finding Insufficient Allegations Of Validity In Complaint
     
    04/03/2018

    On March 27, 2018, Judge Leonard P. Stark of the United States District Court for the District of Delaware granted a motion to dismiss, finding the subject matter of plaintiff’s patent claims to be unpatentable pursuant to the abstract-idea exception to 35 U.S.C. § 101.  Triplay, Inc. v. WhatsApp, Inc., No. 13-1703 (D. Del. Mar. 27, 2018).  The Court based its ruling on, among other things, the lack of allegations relating to patentability in the complaint, explicitly declining to convert the motion from one for judgment on the pleadings into one for summary judgment.

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  • Federal Circuit Argues Over IPR Appeal Procedure
     
    03/27/2018

    On March 23, 2018, a divided panel of the United States Court of Appeals for the Federal Circuit (CAFC) found that the Patent Trial and Appeal Board (PTAB) had not sufficiently explained its reasoning in a final written decision invalidating certain patent claims, and reversed the invalidity ruling.  DSS Tech. Mgmt. v. Apple Inc., appeal nos. 2016-2523 and 2016-2524.  One member of the panel (Newman, J.) dissented, both on the merits, and on whether the panel should have ordered remand instead of reversing.

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  • Federal Circuit Finds Sufficient Written Description In Species/Genus Disclosure Case
     
    03/20/2018

    On March 14, 2018, the United States Court of Appeals for the Federal Circuit (“CAFC”) ruled that a patent that discloses a technological species (“a fibre optics bundle”) provides written-description support for claims directed to a technological genus (“a light guide”).  Hologic, Inc. v. Smith & Nephew, Inc., appeal no. 2017-1389.  The opinion presents the inverse of the situation in the Knowles case summarized in last week’s Litigation Weekly.

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    CATEGORIES: PTABSection 112
  • In IPR Appeal, Federal Circuit Holds That Collateral Estoppel Arises From Prior Claim-Construction Ruling
     
    03/20/2018

    On March 13, 2018, the United States Court of Appeals for the Federal Circuit (CAFC) ruled that a party was collaterally estopped to challenge a Patent Trial and Appeal Board (PTAB) ruling on a claim-construction issue.  The estoppel arose from a previous IPR decision concerning a related patent.  Nestle USA, Inc. v. Steuben Foods, Inc., appeal no. 2017-1193.

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  • Federal Circuit Finds No Written Description In Genus/Species Disclosure Case
     
    03/13/2018

    On March 1, 2018, the United States Court of Appeals for the Federal Circuit (CAFC) ruled that a patent that disclosed a technological genus (solder pads) did not provide written-description support for claims to one species within that genus (solder pads configured for connection via a solder reflow process), even though the record showed that the species was known to those of skill in the art at the time of the invention.  Knowles Electronics LLC v. Cirrus Logic, Inc., appeal no. 2016-2010.

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    CATEGORIES: PTABSection 112
  • Delaware Court Finds Industrial Invention Unpatentable Under Section 101
     
    03/06/2018

    On February 27, 2018, the United States District Court for the District of Delaware granted summary judgment that claims of a patent directed to manufacturing driveline shaft assemblies are invalid under 35 U.S.C. § 101 because the claims are directed to unpatentable subject matter.  American Axle & Mfg. v. Neapco Drivelines LLC, case no. 15-CV-1168.  The decision is particularly interesting because it applies section 101 of the United States patent laws to mechanical inventions, outside of the computer context where recently such defenses have most often been raised.

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  • District Court Dismisses Trade-Dress Complaint On Multiple Grounds 
     
    02/27/2018

    ​On February 22, 2018, the United States District Court for the Eastern District of New York dismissed a trade-dress complaint with prejudice on the grounds that the complaint failed to identify the features of the claimed trade dress, failed to plead that any features are non-functional, and failed to plead a likelihood of confusion.  Eliya Inc. v. Steve Madden, Ltd., No. 2:15-CV-1272 (E.D.N.Y. Feb. 22, 2018).  In its already-amended complaint, plaintiff Eliya asserted product-configuration-type trade-dress rights under the Lanham Act in features of three of its shoe models, and claimed that defendant Steve Madden had infringed on those rights. Steve Madden moved to dismiss the complaint for failure to state a claim; a magistrate judge entered a report and recommendation to grant the motion; and the district judge adopted the recommendation, dismissing the complaint with prejudice.   The opinion illustrates the importance of making a detailed, fully articulated pleading when asserting product-configuration trade-dress rights.

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  • Federal Circuit Waves Caution Flag On Section 101
     
    02/21/2018

    On February 8, 2018, the United States Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming in part and vacating in part a finding of section 101 unpatentability. Berkheimer v. HP Inc., ___ F.3d ___ (appeal no. 2017-1437).  The district court had granted a motion to dismiss on section 101 grounds, and while the CAFC affirmed the dismissal as to some claims, as to other claims it remanded the case to the district court, emphasizing the role of fact issues in section 101 analyses and thus complicating resolution of section 101 issues.

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  • Federal Circuit Transfers Walker Process Appeal To Regional Circuit
     
    02/13/2018

    On February 9, 2018, the United States Court of Appeals for the Federal Circuit (“CAFC”) entered an order transferring the appeal in a Walker Process antitrust action to the United States Court of Appeals for the Fifth Circuit.  Xitronix Corp. v. KLA-Tencor Corp., ___ F.3d ___ (appeal no. 2016-2746).  Despite language in earlier decisions suggesting the contrary, and over both sides’ objections, the CAFC held that patent law is not a necessary element of a Walker Process claim, and that therefore the CAFC lacked subject-matter jurisdiction over the appeal.

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  • Patent Trial And Appeal Board Awaits Ruling From Bankruptcy Court On Automatic-Stay Provision
     
    02/06/2018

    On February 1, 2018, the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office, faced with a motion to stay proceedings pending resolution of the patent owner’s bankruptcy filing, entered an order requiring further briefing and requiring the parties to report on the bankruptcy court’s view of whether the automatic-stay bankruptcy statute applies to inter partes review (IPR) proceedings.  Twitter, Inc. v. Youtoo Techs., LLC, case no. IPR2017-00829, paper no. 27. 

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  • Ninth Circuit Holds Copyright In Drawing Of Dolphins Not Infringed, Even If Drawing Copied
     
    02/06/2018

    On February 2, 2018, the United States Court of Appeals for the Ninth Circuit affirmed a district court’s ruling that even if a gallery owner had copied an artist’s drawing of two dolphins, the copied elements were unprotectable “ideas that nature has already expressed for all.”  Folkens v. Wyland Worldwide, No. 16-15882 (9th Cir. Feb. 2, 2018). 

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    CATEGORY: Copyright
  • Patent Trial And Appeal Board Denies Discovery On Real-Party-In-Interest Issue
     
    02/06/2018

    On February 2, 2018, the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office denied a patent owner’s motion for discovery concerning a petitioner’s identification of the real party in interest in an inter partes review (IPR).  Artesian Home Prods. v. Gutterglove, Inc., No. IPR2018-00015. 

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  • Federal Circuit Upholds Texas Trial Court On Section 101 And On Claim-Construction Burden-Of-Proof Issues, And Again Takes Appellate Jurisdiction While Damages Issues Remain Pending In The Trial Court
     
    01/30/2018

    On January 25, 2018, the United States Court of Appeals for the Federal Circuit issued an opinion affirming the trial court’s decisions that a user-interface patent claims patentable subject matter and that unrebutted expert testimony did not require a jury to find anticipation, as well as its claim-construction decisions, all while damages issues remained unresolved in the trial court.  Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., appeals nos. 2016-2684 and 2017-1922.

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  • Federal Circuit Affirms That Obligation-To-Assign Term In Employment Agreement Is Not Sufficient To Give Employer Standing To Sue For Infringement
     
    01/23/2018

    ​On January 11, 2018, the United States Court of Appeals for the Federal Circuit issued an opinion affirming the district court’s decision that an obligation to assign, without an actual assignment, does not transfer ownership in a patent.  Advanced Video Technologies LLC v. HTC Corp., appeal nos. 2016-2309, 2016-2310, 2016-2311.  Ownership in a patent initially vests with the named inventors, each of whom is a co-owner of a pro rata undivided interest in the patent.  Because each inventor owns a pro rata undivided interest, he or she may take actions without approval of any other co-owner.  For example, the inventor may make or sell a product covered by the patent, non-exclusively license others to make or sell such a product, or transfer by assignment ownership to a third party.  Where a patent is co-owned by more than one party, Federal Circuit jurisprudence requires that all co-owners must be joined to confer standing to bring a lawsuit against an alleged infringer. 

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    CATEGORY: Licensing
  • Federal Circuit Finds Computer Security Method Patentable, But Overturns Damages Award 
     
    01/17/2018

    ​On January 10, 2018, the United States Court of Appeals for the Federal Circuit issued an opinion considering the apportionment problem in patent damages and overturning a jury’s $40M reasonable-royalty award.  Finjan, Inc. v. Blue Coat Systems, appeal no. 2016-2520.
     
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  • Court Bars Second Patent Suit Under Claim-Preclusion Doctrine 
     
    01/17/2018

    On January 11, 2018, Judge William J. Martinez of the United States District Court for the District of Colorado granted a defendant’s motion to dismiss some patent-infringement claims, ruling they were barred in light of an earlier patent suit between the two parties, but withheld for later decision the question of whether other patent-infringement claims were barred.  XY, LLC v. Trans Ova Genetics, LC, case no. 1:17-CV-944-WJM-NYW.

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  • Massachusetts District Court Declines To Compel Inventor Testimony
     
    01/10/2018

    On January 2, 2018, the United States District Court for the District of Massachusetts entered an order denying an accused infringer’s motion to compel the testimony of the named inventor of a patent in suit, even though the inventor was an employee of the plaintiff patent owner when the suit was filed, and was obligated by contract to testify if requested by the patent owner.  Koninklijke Philips N.V. v. Wangs Alliance Corp., case no. 14-CV-12298-DJC.

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  • Eastern District Of Wisconsin Upholds Jury’s Willful-Infringement Finding And Awards Prejudgment Interest, But Declines To Enhance Damages; Employee Engineer’s Invalidity Analysis An Issue
     
    01/10/2018

    Last fall, a jury found Snap-On Inc. to be a willful patent infringer and awarded patent owner Milwaukee Electric Tool Corp. (Milwaukee) approximately $28 million in damages.  On December 29, 2017, Judge J. P. Stadtmueller of the United States District Court for the Eastern District of Wisconsin entered an order resolving the parties’ post-trial motions.  In the order, Judge Stadtmueller upheld the jury’s finding of willful infringement and required Snap-On to pay prejudgment interest for part of the time period requested by Milwaukee, but denied Milwaukee’s request to further enhance damages.  Milwaukee Electric Tool Corp. v. Snap-On Inc., case no. 14-CV-1296-JPS.

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  • District Of Delaware Magistrate Judge Recommends Denial Of Amazon’s Section 101 Motion To Dismiss
     
    12/19/2017

    On December 11, 2017, Magistrate Judge Christopher J. Burke of the United States District Court for the District of Delaware issued a report and recommendation to Chief Judge Leonard Stark recommending denial of defendant Amazon.com, Inc.’s (Amazon) Section 101 motion to dismiss for failure to state a claim.  M2M Sols. v. Amazon, Inc., case no. 17-cv-202.

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