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  • You’ve Got To Know When To Fold’em: Federal Circuit Affirms Dismissal Of Folding Table Patent Case On Personal Jurisdiction Grounds
     
    12/05/2018

    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.
  • Federal Circuit Reverses Damages Award Based On Hypothetical Freedom-to-Operate Royalty Negotiation
     
    11/27/2018

    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.
  • Federal Circuit Affirms PTAB Finding That Assignor Estoppel Does Not Apply To IPRs
     
    11/20/2018

    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.
  • 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.

  • 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.
  • 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 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.
  • 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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  • 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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  • 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 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 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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  • 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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  • District Of Delaware Orders Production Of Expert Materials Over FRCP 26(a)(2)(B), 26(b)(4)(B), And Work Product Objections
     
    12/19/2017

    On December 11, 2017, Judge Richard Andrews of the United States District Court for the District of Delaware ordered plaintiff Ansell Healthcare Products LLC (Ansell) to produce two documents that it had exchanged with its damages expert, Mr. John Hansel, in connection with his review of an internal settlement proposal.  Ansell Healthcare Prods. LLC v. Reckitt Benckiser LLC, case no. 1:15-cv-00915.  The first document addresses Ansell’s settlement position with respect to a lump sum paid-up worldwide license to defendant Reckitt Benckiser LLC (Reckitt) for Ansell’s polyisoprene article patents.  The second document contains analysis of the business case for Ansell’s global patent litigation against Reckitt.

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  • PTAB Grants Motion For Modified Protective Order To Prevent Patent Owner’s Expert-Witness/CEO From Accessing Petitioner’s Highly-Confidential Documents
     
    12/19/2017

    On December 13, 2017, a panel of Administrative Patent Judges (Judges Grace Karaffa Obermann, Bart Gerstenblith, and Robert Kinder) of the Patent Trial and Appeal Board (PTAB) for the United States Patent and Trademark Office granted Petitioner Campbell Soup’s motion for a modified protective order in inter partes review (IPR) proceedings brought against patents owned by Gamon Plus.  Campbell Soup Co. v. Gamon Plus, Inc., IPR case nos. IPR2017-00087, IPR2017-00091, IPR2017-00094.

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  • Suppliers’ Intervention In Retailer Suit Previews Post-T.C. Heartland Venue Disputes
     
    12/12/2017

    On December 7, 2017, Judge Rodney Gilstrap of the United States District Court for the Eastern District of Texas (ED Tex.) granted motions by three suppliers to intervene in a patent lawsuit brought against retailer Wal-Mart in the Marshall Division of that district.  Team Worldwide Corp. v. Wal-Mart, case no. 2:17-cv-235.  The ED Tex. has been a notoriously popular district for patent suits for more than a decade, a period when patent suits typically could be brought in any district where the defendant was subject to personal jurisdiction.  Earlier this year, however, the United States Supreme Court limited patent venue to districts (i) where the defendant corporation is incorporated, or (ii) where the defendant has a place of business and is alleged to have infringed.  T.C. Heartland LLC v. Kraft Foods Group, 137 S.Ct. 1514 (2017).  One result of the ruling was predicted to be an upswing in E.D. Tex. suits naming national retailers as the defendants instead of their suppliers, on the theory that the retailers would be subject to venue in that district even if their suppliers were not.

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