Shearman & Sterling LLP | IP Blog | Home | ANDA
IP Litigation
This links to the home page

FILTERS
  • Product Operating Manuals Distributed To Customers Are “Printed Publications,” Notwithstanding Confidentiality Provisions And Limited Dissemination
     
    02/21/2024


    On February 8, 2024, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) reversed and vacated several Patent Trial and Appeal Board decisions related to the patentability of U.S. Patent Nos. 10,639,812 and 10,625,436. The patents relate to high-speed slicers used to slice and package food products.

    CATEGORIES : Prior ArtPTAB
  • Federal Circuit Affirms Findings Of The International Trade Commission With Respect To Media Device Patent
     
    02/13/2024


    On January 19, 2024, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming the final determination of the International Trade Commission (“ITC”), which found that: (i) intervenor Universal Electronics, Inc. (“Universal”) had ownership rights to assert the ’196 patent in the investigation, (ii) Universal satisfied the domestic industry requirement of 19 U.S.C. § 1337 (Section 337) and (iii) appellant Roku failed to establish the ’196 patent was obvious over prior art.

  • Federal Circuit Finds PTAB Implicitly And Incorrectly Construed Claim In Final Decision
     
    02/13/2024


    On February 7, 2024, the Court of Appeals for the Federal Circuit (“CAFC”) reversed a final written decision from the U.S. Patent Trial and Appeal Board (“PTAB”) finding the challenged claims of the ’753 patent not unpatentable. Google LLC v. EcoFactor, Inc., __ F.3d __ (Fed. Cir. Feb. 7, 2024). In its precedential decision reversing and remanding, the CAFC found that the PTAB relied on an implicit construction of a claim limitation and that this construction was wrong.

    CATEGORIES : IPRsPTAB
  • Federal Circuit Affirms PTAB’s Final Written Decision, Holding That Obviousness Does Not Require An Actual, Physical Substitution Of Elements
    01/31/2024

    On January 22, 2024, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming the decision of the Patent Trial and Appeal Board (“Board”) invalidating the claims of U.S. Patent No. 9,458,814 (“’814 patent”) on obviousness grounds. The ’814 patent is directed to a remote start system for a vehicle. The system includes a remote start transmitter physically separate from the vehicle. The transmitter is configured to receive a signal from a user and transmit the signal to the vehicle. The vehicle, upon receiving the transmitted signal, automatically performs multiple functions: a vehicle brake is operated, a climate control system is activated, and the engine is started.

    CATEGORIES : IPRsObviousnessPTAB
  • Patent Claims That “Do Nothing More Than Improve A User’s Experience” Are Abstract
     
    01/23/2024

    On January 9, 2024, the United States Court of Appeals for the Federal Circuit affirmed a decision by the Western District of Washington, determining that claims in two of plaintiff’s patents were directed to ineligible subject matter under 35 U.S.C. § 101.  IBM Corp. v. Zillow Group, Inc., No. 2022-1861 (Fed. Cir. Jan. 9, 2024).  Plaintiff had asserted the patents, which claim methods and systems for improving how search results are displayed to users.  Defendant moved to dismiss under Rule 12(b)(6).  The district court found the claims constituted ineligible subject matter as they are directed to abstract ideas and lack an inventive concept.  The Federal Circuit panel (Judges Prost, Hughes, and Stoll) agreed, stating that the claims “do not disclose any technical improvement to how computer applications are used.”  Judge Stoll dissented in part, on the basis that plaintiff’s proposed construction of “user context vector” in the ’676 patent should have been addressed.
  • Federal Circuit Affirms PTAB Decision Finding Challenged Claims Unpatentable and Denying Motion to Amend the Claims
     
    01/23/2024
    On January 18, 2024, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming the decision of the Patent Trial and Appeal Board (“Board”) finding unpatentable the challenged claims of a patent directed to a 3D pointing device for outputting yaw, pitch, and roll angles in a 3D reference frame and denying the patent owner’s motion to amend its claims.  CyWee Group Ltd. v. ZTE (USA), Inc., __ F.4th __ (Fed. Cir. Jan. 18, 2024).
    CATEGORIES : ObviousnessMotion to Amend
  • Federal Circuit Finds District Court’s Construction Of “Barcode” Too Narrow
     
    01/09/2024


    On December 26, 2023, the United States Court of Appeals for the Federal Circuit (“CAFC”) reversed a decision from the United States District Court for the Central District of California in Case No. 2:21-cv-03402-GW-AGR, Judge George H. Wu, granting appellee motion for summary judgment of non-infringement. K-Fee System Gmbh v. Nespresso USA, Inc., __ F.3d __ (Fed. Cir. December 26, 2023). In its precedential decision, the CAFC found that the district court’s non-infringement finding was based on an erroneous construction of the claim term “barcode.”

  • The Federal Circuit Nullifies $2.2 Billion Judgment
     
    01/09/2024


    On December 4, 2023, the United States Court of Appeals for the Federal Circuit (the “Federal Circuit”) issued an opinion, affirming in part, reversing in part, vacating in part, and remanding the decision of the United States District Court for the Western District of Texas (the “district court” or “Western District”) that U.S. Patent Nos. 7,523,353 (the “’353 patent”) and 7,725,759 (the “’759 patent”), (collectively, the “asserted patents”) were infringed and damages should be awarded. VLSI Tech. LLC v. Intel Corp., No. 2022-1906, 2023 WL 8360083 (Fed. Cir. Dec. 4, 2023). More specifically, the Federal Circuit affirmed the infringement of the ’373 patent but reversed the infringement of the ’759 patent; vacated the damages award for the ’373 patent; reversed the denial of Appellant’s, Intel Corporation (“Intel”), motion for leave to amend; and remanded the matter.

    CATEGORIES : DamagesLicensing
  • Federal Circuit Rules That Defendants’ Abbreviated New Drug Applications Did Not Infringe Plaintiffs’ Drug Patents
    12/19/2023


    On December 7, 2023, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming the decision of the District Court of Delaware, which found non-infringement by Lupin Ltd., Lupin Pharmaceuticals, Inc. (“Lupin”) and other defendants of U.S. Patent Nos. 9,278,096 and 9,125,910 (’096 and ’910 patents, respectively), and infringement by Lupin of claim 12 of U.S. Patent No. 9,101,626 (’626 patent). All three patents are owned by H Lundbeck A/S (“Lundbeck”).

    CATEGORY : Patent Infringement
  • Federal Circuit Affirms PTAB’s Final Written Decision, Holding That The Passing Of The Statutory Deadline Did Not Deprive The Board Of Authority To Issue Its Decision
     
    12/13/2023

    On November 21, 2023, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming the decision of the Patent Trial and Appeal Board (“Board”) finding claims 1–17 of U.S. Patent No. 9,693,961 (“’961 patent”) unpatentable for lack of written description and anticipation.
    CATEGORIES : Post-Grant ReviewPTAB
  • Federal Circuit Affirms PTAB’s Decision Finding Semiconductor Patent Unpatentable After Addressing Threshold Question Relating To Original Assignee’s Interest In Patent
     
    11/21/2023

    On November 17, 2023, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming the decision of the Patent Trial and Appeal Board (“Board”) finding unpatentable the challenged claims of a patent directed to methods for making semiconductor devices. Bell Semiconductor LLC v. Advanced Semiconductor Eng’g, Inc., __ F.4th __ (Fed. Cir. Nov. 17, 2023).
  • Federal Circuit Affirms Attorneys’ Fees Award Against Patentee PersonalWeb
     
    11/14/2023

    On November 3, 2023, the U.S. Court of Appeals for the Federal Circuit affirmed an award of $5.2 million in attorneys’ fees entered against PersonalWeb Technologies LLC under 35 U.S.C. § 285.  In re PersonalWeb Techs. LLC, Nos. 2021-1858, 2021-1859, 2021-1860 (Fed. Cir. Nov. 3, 2023).  The court (Reyna, Dyk, and Lourie) reviewed the district court’s exceptional case determination and fee calculation for abuse of discretion.
  • Federal Circuit Finds PTAB Sufficiently Addressed Arguments Actually Raised In IPR Petitions
     
    11/07/2023

    On October 25, 2023, the Court of Appeals for the Federal Circuit (“CAFC”) affirmed two final written decisions from the U.S. Patent Trial and Appeal Board (“PTAB”), determining that appellant IPR petitioner did not meet its burden of proving unpatentability.  Netflix Inc. v. DivX LLC, __ F.3d __ (Fed. Cir. October 25, 2023).  In its precedential decision, the CAFC found no error in how the PTAB understood appellant’s petition arguments and further found that certain other arguments newly raised by appellant on appeal had been forfeited.
    CATEGORIES : IP Litigation ProcedureIPRsPTAB
  • Federal Circuit Affirms Western District Of Texas’s Final Judgment Of Invalidity
     
    11/01/2023

    On October 6, 2023, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming the Western District of Texas’s holding of indefiniteness as to certain claims of U.S. Patent No. 8,751,585 (the “’585 Patent”).  WSOU Investments LLC (“WSOU”) accused Google LLC (“Google”) of infringing independent claim 9, and claims 10-16 dependent therefrom, of the ’585 Patent.  The ’585 Patent is directed to a management method for electronic messages in a user’s inbox in a communication system.  The district court construed the limitation, “a collaborative application management processor configured to manage collaborative application,” to be indefinite as a means-plus-function limitation without sufficient corresponding structure.
  • Federal Circuit Reverses District Court Ruling As To Nonobviousness And Damages
     
    11/01/2023

    On October 16, 2023, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion that (i) reversed the District Court for the Northern District of California’s pre-verdict judgment as a matter of law (JMOL) of nonobviousness, (ii) affirmed the district court’s decision to deny defendant’s pre-verdict and post-trial motions for JMOL regarding noninfringement, (iii) reversed the district court’s denial of defendant’s pre and post-trial motions to exclude the testimony of patent owner’s damages expert, (iv) vacated the lost profits award, and (v) remanded the case for further consistent proceedings.  Cyntec Co. v. Chilisin Electronics Corp., No. 2022-1873, --F.4th.--, 2023 WL 6798376 (Fed. Cir. Oct. 16, 2023).
  • The Federal Circuit Reminds The PTAB Of The Meaning Of “A”
     
    11/01/2023

    On October 19, 2023, the United States Court of Appeals for the Federal Circuit issued an opinion that reversed-in-part, vacated, and remanded the United States Patent and Trademark Office’s Patent Trial and Appeal Board (the “Board”) decision that the prior art, including Claire Simonnet & Alex Groisman, High-Throughput and High-Resolution Flow Cytometry in Molded Microfluidic Devices, 78 Analytical Chemistry 5653 (2006) (“Simonnet”), did not render unpatentable Appellee Cytonome/ST, LLC’s (“Cytonome”) U.S. Patent No. 10,583,439 (the “’439 patent”), pursuant to 35 U.S.C. §§ 102 and 103.  ABS Glob., Inc. v. Cytonome/St, LLC, No. 2022-1761, 2023 WL 6885009 (Fed. Cir. Oct. 19, 2023).
    CATEGORIES : IPRsObviousnessPrior ArtPTAB
  • Federal Circuit Affirms PTAB Claim Construction Interpretation And Upholds Refusal To Allow Impermissibly Broad Substitute Claims
     
    10/11/2023

    On September 1, 2023, the United States Court of Appeals for the Federal Circuit issued an opinion upholding the Patent Trial and Appeal Board’s (“PTAB”) (i) construction of the claim term “connection rejection message” as having its plain and ordinary meaning; (ii) finding that the proposed substitute independent claim was impermissibly broader than the original claim; and (iii) finding that the proposed substitute claims that were dependent on the impermissible independent claim were also impermissibly broadened.  Sisvel International S.A. v. Sierra Wireless, Inc., No. 2022-1387, -- F.4th --, 2023 WL 5659063 (Fed. Cir. Sept. 1, 2023).
    CATEGORIES : IP Litigation ProcedureIPRsPTAB
  • Federal Circuit Tells PTAB To Base Its Decision On Grounds The Parties Raise
     
    10/11/2023

    On September 11, 2023, the United States Court of Appeals for the Federal Circuit issued an opinion, vacating the United States Patent and Trademark Office’s Patent Trial and Appeal Board (the “Board”) decision that the prior art, including U.S. Patent No. 7,859,588 (“Parulski”), did not render unpatentable Appellee Corephotonics, Ltd.’s (“Corephotonics”) U.S. Patent No. 10,225,479 (the “’479 patent”) pursuant to 35 U.S.C. § 103.  Apple Inc. v. Corephotonics, Ltd., No. 2022-1350, 2023 WL 5838695 (Fed. Cir. Sept. 11, 2023).
    CATEGORIES : IPRsObviousnessPrior ArtPTAB
  • Federal Circuit Finds Antibody Claims Invalid For Lack Of Enablement In View Of Amgen
     
    10/11/2023

    On September 20, 2023, the Court of Appeals for the Federal Circuit affirmed a decision of the United States District Court for the District of Delaware in Case No. 1:17-cv-00509-TBD, Judge Timothy B. Dyk, finding claims of asserted U.S. Patent No. 7,033,590 (“the ’590 patent”) invalid for lack of enablement.  Baxalta Inc. et al. v. Genentech Inc., __ F.3d __ (Fed. Cir. September 20, 2023).  In its precedential decision, the CAFC held that the asserted claims are indistinguishable from those recently found invalid by the Supreme Court in Amgen Inc. v. Sanofi, 598 U.S. 594, 610–12 (2023).
    CATEGORY : Section 112
  • Federal Circuit Affirms PTAB On Motivation To Combine And Reasonable Expectation Of Success
     
    10/11/2023

    On September 21, 2023, the United States Court of Appeals for the Federal Circuit affirmed a decision by the United States Patent and Trademark Office, Patent Trial and Appeal Board (“PTAB”), holding that claims of U.S. Patent No. 7,295,648 (the “’648 patent”) owned by Elekta Limited (“Elekta”) were unpatentable as obvious.  Elekta Ltd. v. ZAP Surgical Sys., Inc., No. 2021-1985 (Fed. Cir. Sept. 21, 2023).  The CAFC panel (Reyna, Stoll and Stark) reviewed the PTAB’s legal conclusions de novo and its factual findings for substantial evidence.  In affirming the PTAB, the CAFC concluded that the PTAB’s factual findings as to both the motivation to combine prior art references and the reasonable expectation of success in making the combination were supported by substantial evidence.
    CATEGORIES : IPRsObviousnessPTAB
  • Federal Circuit Affirms PTAB’s Unpatentability Finding Of Medical Alarm Patent
     
    10/10/2023

    On September 28, 2023, the U.S. Court of Appeals for the Federal Circuit issued an opinion affirming the decision of the Patent Trial and Appeal Board finding unpatentable the challenged claims of a patent directed to an adaptive alarm system, used in combination with pulse oximetry sensors, for medical applications. Masimo Corp. v. Sotera Wireless, Inc., F.4th (Fed. Cir. Sept. 28, 2023).
    CATEGORY : Obviousness
  • Federal Circuit Affirms Western District Of Texas’s Order Granting Summary Judgment To Defendant Under § 101
     
    09/06/2023

    USC IP Partnership, L.P. (“USC”) filed a patent infringement lawsuit against Facebook, Inc., succeeded by Meta Platforms, Inc. (collectively, “Meta”), in the United States District Court for the Western District of Texas.  USC accused Meta’s “News Feed” feature of infringing U.S. Patent No. 8,645,300 (“the ’300 Patent”).  The ’300 Patent claims a method for predicting which webpages to recommend to a web visitor based on inferences of the visitor’s intent by using an “intent engine.”  Meta moved for summary judgment of invalidity of all claims of the ’300 Patent on the ground that they are ineligible for patenting, under 35 U.S.C. § 101.  A week before trial was scheduled, Judge Alan Albright granted summary judgment.  USC IP P’ship, L.P. v. Facebook, Inc., 576 F. Supp. 3d 446 (W.D. Tex. 2021) (“Dist. Ct. Order”).
  • Seventh Circuit Clarifies Forum Selection Clause Applies Only To Contracting Parties
     
    08/16/2023

    On August 7, 2023, the United States Court of Appeals for the Seventh Circuit reversed in part a decision by the Northern District of Illinois, holding that an agreed forum selection clause applies only to the parties to the agreement and cannot be invoked by a co-defendant that did not have a similar agreement.  Nulogy Corp. v. Menasha Packaging Co., LLC, No. 22-1583, 2023 WL 5010784, at *1 (7th Cir. Aug. 7, 2023).  The Court reviewed the district court’s threshold determinations regarding the forum selection clause de novo.
    CATEGORIES : Civil LitigationContracting
  • Federal Circuit Refuses To Import Safety And Efficacy Limitations Into Method Of Treatment Claims And Affirms Induced Infringement Finding
     
    08/08/2023

    On July 24, 2023, the Court of Appeals for the Federal Circuit (CAFC) affirmed a decision of the United States District Court for the District of Delaware in Case No. 1:20-cv-00755-RGA-JLH, Judge Richard G. Andrews, finding claims of one asserted patent valid and infringed and claims of another asserted patent anticipated but otherwise infringed.  United Therapeutics Corp. v. Liquidia Techs., Inc., __ F.3d __ (Fed. Cir. July 24, 2023).  In its precedential decision, the CAFC held, inter alia, that the district court did not err in declining to import safety and efficacy limitations into method of treatment claims in the first patent, and also did not err in finding that a decision of unpatentability by the U.S. Patent Trial and Appeal Board (“PTAB”) of the U.S. Patent and Trademark Office, currently on appeal, did not bar liability for induced infringement.
    CATEGORIES : Prior ArtSection 112
  • The Federal Circuit Tells Trinity That Its Poll-Based Network Patents Are Invalid
     
    08/08/2023

    On July 14, 2023, the United States Court of Appeals for the Federal Circuit (the “Federal Circuit”) issued an opinion, affirming the decision of the United States District Court for the Central District of California (the “district court” or “Central District of California”) that U.S. Patent Nos. 9,087,321 (the “’321 patent”) and 10,936,685 (the “’685 patent”), (collectively, the “asserted patents”) are invalid under 35 U.S.C. § 101.  Trinity Info Media, LLC v. Covalent, Inc., No. 2022-1308, 2023 WL 4536366 (Fed. Cir. July 14, 2023).
  • Federal Circuit Vacates PTAB’s Final Written Decisions Because The Board Erred In Its Obviousness Analysis
     
    08/01/2023

    Medtronic, Inc., asserted U.S. Patent Nos. 8,626,314 and 8,036,756 against Axonics, Inc., in a patent infringement lawsuit.  In response, Axonics challenged various claims of the Medtronic patents for obviousness in inter partes reviews (IPRs).  In both IPRs, the Patent Trial and Appeal Board concluded that Axonics had failed to prove any of the challenged claims unpatentable.  Axonics appealed.  On July 10, 2023, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion vacating the Board’s final written decisions in both IPRs.
    CATEGORIES : IPRsObviousnessPTAB
  • Federal Circuit Holds That Pure AIA Patents Are Not Subject To Interferences
     
    08/01/2023

    On July 14, 2023, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion reversing the decision of the Patent Trial and Appeal Board (“PTAB”), holding that a patent that has only ever contained claims with an effective filing date that postdates the effective date of the America Invents Act (“AIA”) may not be subject to an interference—even if the allegedly interfering patent has a priority date prior to the AIA.  SNIPR Technologies Limited v. Rockefeller University, No. 2022-1260, -- F.4th --, 2023 WL 4536369 (Fed. Cir. July 14, 2023).
    CATEGORIES : IP Litigation ProcedurePTAB
  • Federal Circuit Reverses District Court’s Preclusion-Based Dismissal Of Induced Infringement Suit
     
    07/11/2023

    On July 5, 2023, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion reversing the U.S. District Court for the Western District of Wisconsin’s decision dismissing—on the basis of res judicata—the induced infringement suit of Appellant, Inguran, LLC (“Inguran”). Inguran, LLC v. ABS Global, Inc., __ F.4th __ (Fed. Cir. July 5, 2023).
    CATEGORY : Claim Preclusion
  • Federal Circuit Affirms Dismissal For Failure To Comply With Discovery Order And Under Kessler Doctrine
     
    07/06/2023

    On June 21, 2023, the Court of Appeals for the Federal Circuit (CAFC) affirmed a decision of the United States District Court for the Middle District of Florida in Case No. 6:21-cv-01366-PGB-DCI, Judge Paul G. Byron, dismissing plaintiff’s patent infringement suit.  Yoldas Askan v. Faro Techs., Inc.,__F.3d__(Fed. Cir. June 21, 2023).  In its order, the CAFC held that the district court did not abuse its discretion in dismissing the case as a sanction for plaintiff’s failure to comply with a discovery order and as precluded under the Kessler doctrine, under which “an adjudged non-infringer” can “avoid repeated harassment for continuing its business as usual post-final judgment in a patent action where circumstances justify that result.”
  • Federal Circuit Affirms PTAB, Citing Recent SCOTUS Opinion On Enablement
     
    07/06/2023

    On June 27, 2023, the United States Court of Appeals for the Federal Circuit (“CAFC”) affirmed a decision by the United States Patent and Trademark Office, Patent Trial and Appeal Board (“PTAB”), holding that proposed substitute claims were not patentable for lack of written description and lack of enablement under 35 U.S.C. § 112.  Medytox, Inc., v. Galderma S.A., No. 2022-1165 (Fed. Cir. June 27, 2023).  The CAFC panel (Dyk, Reyna, and Stark) reviewed the PTAB’s legal conclusions de novo and its factual findings for substantial evidence.  In affirming the PTAB, the CAFC concluded that the substitute claims were not enabled because a skilled artisan would not have been able “to make and use all of what is claimed.”
  • PTAB Finds Unified Patents’ Members Are Real Parties In Interest, But USPTO Director Says Determination Was Unnecessary And Vacates
     
    06/21/2023

    The PTAB recently released public versions of earlier decisions about the implications of Unified Patents’ business model and when the PTAB should decide disputes about identification of real parties in interest (“RPIs”).  On March 8, 2023, the PTAB issued a determination that Unified Patents should have identified its members Apple and Samsung as RPIs in its IPR challenge of MemoryWeb’s patent, which had been asserted against those members.  Unified Patents, LLC v. MemoryWeb, LLC, IPR2021-01413, Paper 56 (P.T.A.B. Mar. 8 2023).  On May 16, 2023, USPTO Director Vidal granted director review of the decision and vacated the RPI determination, finding it had been unnecessary to resolve the proceeding.  Unified Patents, LLC v. MemoryWeb, LLC, IPR2021-01413, Paper 76 (P.T.A.B. May 22, 2023).
    CATEGORIES : IPRsPTABReal Party In Interest
  • The Federal Circuit Affirms Patentability Of Teleflex Patents And Confirms Low Bar For Corroboration Of Prior Inventorship
     
    06/13/2023

    On May 24, 2023, the United States Court of Appeals for the Federal Circuit (the “Federal Circuit”) issued an opinion affirming the United States Patent and Trademark Office’s Patent Trial and Appeal Board (the “Board”) decision that U.S. Patent 7,736,355 to Itou, et al. (“Itou”) could not be used as prior art to invalidate five Teleflex Innovations S.à.R.L. (“Teleflex”) patents, which were on appeal.  Medtronic, Inc. v. Teleflex Innovations S.à.R.L., No. 2021-2356, 2023 WL 3606143 (Fed. Cir. May 24, 2023).
    CATEGORIES : IPRsObviousnessPrior ArtPTAB
  • Federal Circuit Affirms Unpatentability Of Gaming Machine Patent
     
    06/01/2023

    On May 9, 2023, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming the unpatentability decision of the Patent Trial and Appeal Board (“Board”), finding, with respect to the independent claims, that the Board either did not misconstrue the claims or that any error with respect to the Board’s claim construction was harmless.  With respect to the dependent claims, the CAFC found that there was a sufficient motivation to combine the asserted prior art references.  Bot M8 LLC v. Sony Interactive Entertainment LLC, No. 2022-1291, -- F.4th --, 2023 WL 3311550 (Fed. Cir. May 9, 2023).
    CATEGORIES : IPRsObviousnessPTAB
  • Federal Circuit Rejects Anticipation Based On Misapplication Of “At Once Envisage” Framework
     
    05/09/2023

    On April 12, 2023, the Court of Appeals for the Federal Circuit (“CAFC”) affirmed a decision of the United States District Court for the District of Delaware in Case No. 1:19-cv-00474-KAJ, Judge Kent A. Jordan, invalidating asserted claims of plaintiff’s ’589 patent as obvious. UCB Inc. v. Actavis Laboratories UT Inc., __ F.3d __ (Fed. Cir. Apr. 12, 2023). In its order affirming invalidity, the CAFC affirmed the district court’s holding of invalidity for obviousness but found legal error in the district court’s anticipation holding because it misapplied the CAFC’s decision in Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015).
    CATEGORIES : ObviousnessPrior Art
  • Federal Circuit Reverses $20M Patent Infringement Award
     
    05/09/2023

    On April 18, 2023, the United States Court of Appeals for the Federal Circuit (“CAFC”) reversed a decision by the United States District Court for the Eastern District of Texas holding that certain claims of three reissued U.S. patents were not invalid under 35 U.S.C. § 251. Cioffi v. Google LLC, No. 2018-1049 (Fed. Cir. Apr. 18, 2023). The CAFC panel (Reyna, Bryson, and Taranto) reviewed the district court’s decision de novo and reversed the district court, concluding that the asserted claims failed to satisfy the “original patent” requirement.
  • Federal Circuit Affirms PTAB Final Written Decision Finding Fluorescence Detection Patent Not Unpatentable as Obvious
     
    05/09/2023

    On April 24, 2023, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming the decision of the U.S. Patent and Trademark Office Patent Trial and Appeal Board (“Board”) finding that Leica Microsystems, Inc. (“Leica”) failed to show that the claims of a patent directed to a fluorescence detection system were unpatentable as obvious. Leica Microsystems, Inc. v. Regents of the University of Michigan, Appeal No. 22-1445 (Fed. Cir. Apr. 24, 2023).
    CATEGORIES : IPRsObviousnessPTAB
  • Federal Circuit Affirms The United States District Court For The Western District Of Texas’s Claim Construction Order And Entry Of Final Judgment Of Non-Infringement
     
    05/09/2023

    Canopy Growth Corp. (“Canopy”) filed a patent infringement lawsuit against GW Pharma Ltd. and GW Research Ltd. (collectively, “GW”) in the United States District Court for the Western District of Texas. Judge Alan Albright issued an order construing the sole disputed claim limitation: “CO2 in liquefied form under subcritical pressure and temperature conditions.” Based on the issued claim construction order, the parties stipulated to non-infringement, and the court entered final judgment in favor of GW as to infringement and dismissed GW’s remaining affirmative defenses and counterclaims without prejudice. Canopy appealed the court’s claim construction. On April 24, 2023, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming Judge Albright’s claim construction and the entry of final judgment of non-infringement.
    CATEGORY : Claim Construction
  • Circuit Judge Allows Limited Path Forward For Patent Plaintiff After Its Expert’s Damages Theories Are Excluded
     
    04/18/2023

    On March 22, 2023, Circuit Judge Bryson, as visiting judge in the United States District Court for the District of Delaware, ruled on competing motions about the next steps in a case where the patent plaintiff’s damages theories, as set forth in expert reports, had been repeatedly rejected by Delaware District Court judge Andrews. Judge Bryson allowed the case to proceed to trial, albeit with a very limited damages case. Acceleration Bay LLC v. Activision Blizzard Inc., C.A. No. 16-453-WCB (D. Del. Mar. 22, 2023).
    CATEGORY : Damages
  • Federal Circuit Clarifies Claim Construction Of Indefinite Articles
     
    04/18/2023

    On April 5, 2023, in a precedential order, the Court of Appeals for the Federal Circuit (CAFC) affirmed the Eastern District of Texas’s claim construction of U.S. Patent No. 5,802,467 (the “’467 patent”), as well as the jury’s corresponding finding of non-infringement. Salazar v. AT&T Mobility LLC, No. 2021-2320 (Fed. Cir. Apr. 5, 2023).
  • The United States District Court For The Southern District Of New York Finds That Patent Claims Directed To Picking An Outfit Are Not Patentable
     
    03/24/2023

    On February 21, 2023, Magistrate Judge Aaron of the United States District Court for the Southern District of New York recommended that the District Court grant defendant’s Rule 12(b)(6) motion to dismiss patent claims, finding that the claims of the asserted patent were directed to patent-ineligible subject matter.  Stylitics, Inc. v. Findmine, Inc., Case No. 1-22-cv-02983 (S.D.N.Y. February 21, 2023).
  • Federal Circuit Revives Lawsuit Challenging The USPTO Director’s Fintiv Instructions On A Limited Basis To Determine Whether They Were Improperly Issued Without A Notice-and-Comment Period
     
    03/24/2023

    ​On March 13, 2023, the United States Court of Appeals for the Federal Circuit (“CAFC”) affirmed-in-part and reversed-in-part an order of the United States District Court for the Northern District of California (N.D. Cal.) dismissing as unreviewable a lawsuit challenging the instructions of the Director of the U.S. Patent and Trademark Office (“USPTO”) regarding the standard for discretionary denial of petitions for inter partes review (IPR) based on pending parallel litigation involving the same patents.  Apple Inc. v. Vidal, No. 2022-1249, —F.4th— (Fed. Cir. Mar. 13, 2023).  The CAFC affirmed the unreviewability dismissal of the challenge to the Fintiv instructions as contrary to statute and arbitrary and capricious but reversed and remanded the dismissal of the challenge to the instructions as improperly issued without a notice-and-comment period.
    CATEGORIES : IP Litigation ProcedureIPRsPTAB
  • Federal Circuit Reverses PTAB’s Finding That Challenged Claim Was Not Unpatentable Where PTAB Committed Legal Error By Requiring “Bodily Incorporation” Of Obviousness Combination
     
    03/24/2023

    On February 24, 2023, the United States Court of Appeals for the Federal Circuit (CAFC) reversed a final written decision by the Patent and Trademark Office’s Patent Trial and Appeal Board (“PTAB”), finding the challenged claim not unpatentable as obvious.  Intel Corp. v. PACT XPP Schweiz AG, No. 2022-0138 (Fed. Cir. Feb. 24, 2023).  In doing so, the CAFC held that the PTAB improperly required the petitioner to show the prior art references could be “bodily incorporated.”
  • Federal Circuit Finds Disclosure Of Devices At Major Industry Event Constituted “Public Use” That Barred Patenting
     
    02/28/2023

    On February 15, 2023, the Federal Circuit affirmed a district court’s grant of summary judgment of invalidity under the public use bar of pre-AIA 35 U.S.C. § 102(b), based on the patentee’s disclosure of devices having the patented technology at an industry event.  Minerva Surgical, Inc. v. Hologic, Inc., No. 2021-2246 (Fed. Cir. Feb. 15, 2023).  The Court found that the patentee had allowed sophisticated industry members to scrutinize the devices closely, such that they would have understood the invention, without any obligations of confidentiality.
  • USPTO Director Affirms Rejection Of Invalidity Arguments Supported Only By Expert Declaration Parroting IPR Petition
     
    02/28/2023

    On February 10, 2023, Director of the U.S. Patent & Trademark Office Katherine K. Vidal issued a decision affirming a Patent Trial and Appeal Board decision to deny institution of inter partes review. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 12 (Feb. 10, 2023). The Board had found, and Director Vidal agreed, that Petitioners’ expert testimony was entitled to little weight because it merely repeated, verbatim, the conclusory arguments in the petition itself. Director Vidal’s decision is “word from the top” that the practice of simply “parroting” a petition’s arguments in the expert declaration is strongly disfavored and unlikely to carry the day on invalidity.
    CATEGORY : IPRs
  • Federal Circuit Vacates Preliminary Injunction Barring Patent Owner From Notifying Customers Of Competitor’s Alleged Infringement
     
    02/28/2023

    On February 17, 2023, the Court of Appeals for the Federal Circuit (CAFC) vacated a decision of the United States District Court for the District of Nebraska in Case No. 8:22-cv-00314-CRZ, where Judge Brian C. Buescher had granted a preliminary injunction against appellant plaintiff.  Lite-Netics LLC v. Nu Tsai Capital LLC, __ F.3d __ (Fed. Cir. February 17, 2023).  In its order, the CAFC held that the district court abused its discretion by barring plaintiff from suggesting to customers that appellee defendant is a patent infringer and that they might be sued.
  • Federal Circuit Holds That Court Congestion Factor Of The Transfer-For-Convenience Analysis Has Less Significance For Plaintiffs Not Engaged In Product Competition In The Marketplace
     
    02/14/2023

    On February 1, 2023, the United States Court of Appeals for the Federal Circuit (CAFC) granted a petition for writ of mandamus directing the United States District Court for the Western District of Texas (W.D. Tex.) to vacate its order denying transfer and to transfer the case to the United States District Court for the Northern District of California (N.D. Cal.).  In re Google LLC, No. 2023-101, —F.4th— (Fed. Cir. Feb. 1, 2023).  The Federal Circuit found that the W.D. Tex. clearly abused its discretion in, inter alia, weighing the court congestion factor against transfer where plaintiff did not compete in the market and is not threatened in the market in a way that might otherwise add urgency to case resolution.
     
  • Federal Circuit Denies Application of IPR Time Limits To Director Review
     
    02/14/2023

    On February 8, 2023, in a precedential order, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed the decision by the Director of the U.S. Patent and Trademark Office to deny CyWee Group Ltd.’s (“CyWee’s”) request for rehearing of two IPR proceedings.  In doing so, the CAFC rejected CyWee’s argument that the Director is required to actually review, or be able to review, all institution decisions and final written decisions within the statutory time frames set by 35 U.S.C. §§ 316(a)(11) and 314(b).  CyWee Group Ltd. v. Google LLC, No. 2020-1565 (Fed. Cir. Feb. 8, 2023).
     
    CATEGORIES : Director ReviewIPRs
  • Federal Circuit Vacates Order Transferring Case To District Where Foreign Defendants Had Consented To Personal Jurisdiction
     
    02/03/2023

    On January 9, 2023, the United States 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 Nos. 2:21-cv-00045-JRG and 2:21-cv-00046-JRG, Chief Judge J. Rodney Gilstrap, vacated district court orders transferring two patent cases to the United States District Court for the Central District of California and instructing the court to recall the cases.  In re Stingray IP Solutions, LLC, __F.3d _(Fed. Cir. January 9, 2023).  In its order, the CAFC held that defendants could not avoid application of Federal Rule of Civil Procedure 4(k)(2) by merely consenting to jurisdiction in a district other than the one chosen by plaintiff.
  • Federal Circuit Affirms District Court Decision Finding Patent Invalid Under § 101
     
    02/03/2023

    On January 17, 2023, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed a decision by the United States District Court for the District of Massachusetts holding that certain claims of U.S. Pat. No. 7,299,067 (’067 patent) were not patentable under 35 U.S.C. § 101. Riggs Tech. Holdings, LLC. v. Cengage Learning, Inc., No. 2022-1468, (Fed. Cir. Jan. 17, 2023).  The CAFC panel (Taranto, Chen, and Stoll) reviewed the district court’s dismissal de novo and reached the same conclusion as the district court:  the representative claim is directed to an abstract idea containing no inventive concept and the patent is not eligible for patent protection.
  • Federal Circuit Lacks Jurisdiction Over Interlocutory Appeal Of Order Denying In-House Counsel Access To Opposing Party’s Source Code
     
    01/18/2023

    On December 29, 2022, the Court of Appeals for the Federal Circuit dismissed an interlocutory appeal of an order by the District of Utah maintaining the confidentiality of defendant’s source code and denying access by plaintiff’s in-house counsel.  Modern Font Applications LLC v. Alaska Airlines, Inc., No. 2021-1838 (Fed. Cir. Dec. 29, 2022).  The Federal Circuit found that the district court decision did not satisfy the factors of the collateral order doctrine so as to permit interlocutory review because the order would be reviewable after a final judgment.
    CATEGORIES : JurisdictionProcedure
View All