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  • Federal Circuit Affirms PTAB’s Substitution-Based Obviousness Decision Related to Refrigerant Mixture
     
    03/02/2021

    On February 24, 2021, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming the obviousness decision of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB). Daikin Indus., LTD v. The Chemours Co. FC, LLC, __ F.3d __ (Fed. Cir. Feb. 24, 2021).  The CAFC found that the petition for inter partes review (IPR) properly set forth a substitution-based theory of obviousness and that the PTAB’s substitution analysis was supported by substantial evidence.
     
    CATEGORIES: IPRsObviousnessPTAB
  • Federal Circuit Finds Claim Terms “Computer” And “Passive Link” Indefinite
     
    02/23/2021

    On February 10, 2021, the Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming a decision by the United States District Court for the District of Delaware, invalidating all asserted claims of appellant’s four related patents under 35 U.S.C. § 112.  Infinity Computer Products v. Oki Data Americas Inc., __ F.3d __ (Fed. Cir. Feb. 10, 2021).  In its decision, the CAFC ruled that the asserted claims were rendered indefinite by conflicting statements made by appellant during prosecution of the asserted patents.
     
    CATEGORY: Section 112
  • Plaintiff’s Refusal To Articulate A Hypothetical Claim Warrants Summary Judgment Of Noninfringement Under The Doctrine Of Equivalents
     
    02/11/2021

    On January 28, 2021, the U.S. District Court for the Northern District of California (NDCA) issued an order granting summary judgment of noninfringement under the doctrine of equivalents.  Fluidigm Corp. v. IONpath, Inc., Case No. 3:19-cv-05639-WHA, Dkt. No. 210 (N.D. Cal. Jan. 28, 2021).  The NDCA found that the patentee “abdicated” its burden under the doctrine of equivalents by refusing to engage in the hypothetical claim analysis required under defendant’s ensnarement defense.
     
  • United States District Court Strikes Patentee’s Expert’s Testimony That Contradicted The Patentee’s Statements Made In A Vacated Reexamination Proceeding
     
    02/03/2021

    On January 21, 2021, the United States District Court for the Western District of Pennsylvania adopted the report and recommendation of the special master recommending the court grant defendant’s motion to exclude options set forth in an expert report prepared on behalf of patentee-plaintiff, because those opinions were contradicted by patentee-plaintiff’s statements to the patent office made during reexamination of the at-issue patent.
     
  • Central District Of California Finds Marking Of Product Packaging Insufficient Under 35 U.S.C. § 287.
     
    01/26/2021

    On January 6, 2021, Judge James V. Selna of the United States District Court for the Central District of California granted, in part, defendant Feit Electric Co., Inc.’s (“Feit”) motion for partial summary judgment related to plaintiff Zadro Prods, Inc.’s (“Zadro”) alleged failure to properly mark certain products.  Zadro Prods, Inc. v. Feit Electric Co., Inc., Case No. SACV-20-101-JVS (C.D. Cal. Jan. 6, 2021).  Judge Selna found that:  (1) Zadro’s alleged failure to disclose that it marked its products in a discovery response was not grounds for summary judgment; (2) an issue of material fact remained as to whether Zadro’s products practiced one of the patents in suit; and (3) Zadro’s marking of the packaging of its products which practiced one of the patents in suit (rather than the products themselves) was insufficient under 35 U.S.C § 287.
     
  • Judge Alsup Partially Grants Section 285 Request For Attorneys’ Fees Due To Exceptional Nature Of Case, Lamenting “Standard Patent BS By Bought-And-Paid-For Experts”
     
    01/20/2021

    On January 9, 2021, Judge Alsup of the U.S. District Court for the Northern District of California granted, in part, a request for attorneys’ fees to the prevailing defendant.  Finjan, Inc. v. Juniper Network, Inc., case no. C 17-05659 (N.D. Cal. Jan. 9, 2021).  Judge Alsup found that plaintiff’s case stood out as exceptional in certain respects and, accordingly, issued a limited award for attorneys’ fees under 35 U.S.C. § 285.
     
  • Federal Circuit Finds Video Signal Conversion Claims Patent Ineligible
     
    12/22/2020

    On December 14, 2020, the Court of Appeals for the Federal Circuit (CAFC) affirmed a decision by the United States District Court for the Central District of California holding all asserted claims of appellant’s ’305 patent ineligible under 35 U.S.C. § 101.  Adaptive Streaming Inc. v. Netflix, Inc., __ F.3d __ (Fed. Cir. December 14, 2020).  The CAFC concluded that the district court correctly found that the claims were directed to an abstract idea and lacked any inventive concept, and that dismissal of appellant’s complaint under Rule 12(b)(6) was proper.
     
  • UK Defendant’s Interactive Website Insufficient To Establish Personal Jurisdiction In Texas
     
    12/15/2020

    On December 8, 2020, the U.S. District Court for the Eastern District of Texas (EDTX) unsealed its November 30, 2020, order granting dismissal without prejudice for lack of personal jurisdiction.  TriOptima AB v. Quantile Techs. Ltd., Case No. 2:19-cv-00390-JRG, Dkt. No. 154 (E.D. Tex. Dec. 8, 2020); TriOptima AB v. Quantile Techs. Ltd., Case No. 2:19-cv-00390-JRG, Dkt. No. 149 (E.D. Tex. Nov. 30, 2020).  The EDTX found that the United Kingdom-based defendant was not subjected to specific personal jurisdiction in Texas by providing financial services that can affect Texas interests through a secure customer portal website.
     
  • U.S. District Court For The Northern District of Illinois Finds Patent Claims Related To HIV DNA Replication To Be Patent Eligible Under Section 101
     
    12/08/2020

    On December 1, 2020, the United States District Court for the Northern District of Illinois issued an opinion denying plaintiff Abbott Laboratories’ motion to dismiss infringement counterclaims brought by defendants Grifols Diagnostic Solutions Inc., Grifols Worldwide Operations Ltd., and Novartis Vaccines and Diagnostics, Inc.  Abbott brought a declaratory judgment action against defendants asserting that U.S. Patent No. 7,205,101 (“the ’101 patent”) is invalid.  Defendants filed a counterclaim asserting that Abbott infringes claim 7 of the ’101 patent.  Abbott moved to dismiss the counterclaim on the basis that claim 7 is invalid as a matter of law under 35 U.S.C. § 101 because it is directed to a patent-ineligible natural phenomenon.
     
  • PTAB Denies IPR Institution Due To Co-Pending ITC Investigation
     
    11/24/2020

    On November 18, 2020, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) denied institution of a petition for inter partes review (IPR).  Google LLC v. EcoFactor Inc., case no. IPR2020-00946 (PTAB Nov. 18, 2020).  In its decision, the PTAB exercised its discretion under 35 U.S.C. § 314(a) to deny institution because of a co-pending investigation before the International Trade Commission (ITC) involving the challenged patent.
     
  • Federal Circuit Articulates Rule Clarifying Relationship Between “Printed Matter” Doctrine And “Subject Matter Eligibility” Under Alice
     
    11/17/2020

    On November 10, 2020, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion reversing-in-part the invalidity judgment of the United States District Court for the District of Delaware, as it pertained to patent eligibility, and vacating its remaining infringement, willfulness, and prior art invalidity findings.  C.R. Bard Inc. et al. v. Angiodynamics, Inc., __ F.3d __ (Fed. Cir. Nov. 10, 2020).
     
  • Federal Circuit Denies Petition For Writ Of Mandamus Requesting It Vacate The District Court’s Spoliation-Based Sanctions Order
     
    11/10/2020

    On Tuesday, November 3, 2020, the Court of Appeals for the Federal Circuit (CAFC) denied a petition for a writ of mandamus requesting the CAFC vacate the United States District Court for the Central District of California’s (C.D. Cal.) order granting an adverse inference instruction in connection with Ivantis Inc.’s failure to preserve relevant evidence for litigation.  In re Ivantis, Inc., F.3d __, (Fed. Cir. Nov. 3, 2020).  The CAFC found no reason to depart from the usual practice of waiting until after final judgment to review the C.D. Cal.’s order.
     
  • Federal Circuit Vacates Ruling From Bench On Patent Eligibility As Insufficient To Enable Appellate Review
     
    11/03/2020

    On October 23, 2020, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion vacating and remanding a bench ruling of the United States District Court for the District of Delaware holding all 159 claims in five asserted patents ineligible under 35 U.S.C. § 101. Realtime Data LLC v. Reduxio Systems, Inc., __ F.3d __ (Fed. Cir. October 23, 2020).  In its decision, the CAFC concluded that the district court’s analysis of patent eligibility under Section 101 was too cursory to allow for meaningful appellate review, and directed the district court to consider the issue further and elaborate on its reasoning.
     
  • Northern District Of California Finds Importation Of Medical Device Samples Protected Under The Section 271(e)(1) Safe Harbor
     
    10/27/2020

    On October 16, 2020, the United States District Court for the Northern District of California issued an order granting summary judgment of noninfringement under 35 U.S.C. § 271(e)(1). Edwards Lifesciences Corp. v. Meril Life Sciences Pvt. Ltd. , Case No. 4:19-cv-06593-HSG, Dkt. No. 98 (N.D. Cal., Oct. 16, 2020).  The Court found that defendant’s importation of samples into the United States for conducting preclinical investigations and for intended demonstrations at a clinical conference were exempt from patent infringement liability, regardless of whether there was a commercial purpose underlying such conduct.
     
  • Northern District Of Illinois Uses Collateral Estoppel To Find Patents Invalid Based On PTAB’s Unpatentability Rulings On Similar Patents
     
    10/20/2020

    On October 8, 2020, Judge Andrea R. Wood of the United States District Court for the Northern District of Illinois denied plaintiff Think Product, Inc.’s motion to reconsider a finding of patent invalidity.  Think Products, Inc. v. Acco Brands Corp. and Acco Brands, USA LLC, No. 18-cv-07506 (N.D. Ill. Oct. 8, 2020).  The Court had previously granted defendants Acco Brands Corporation’s and Acco Brands, USA LLC’s motion for summary judgment invalidating two patents based on collateral estoppel arising from rulings by the Patent Trial and Appeal Board (“PTAB”) invalidating for obviousness two similar patents.
     
  • PTAB Institutes IPR Over Patent Owner’s Section 325(d) Argument That The Same Art And Arguments Were Already Considered By The Patent Office
     
    10/13/2020

    On October 6, 2020, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) instituted an inter partes review (IPR) proceeding, rejecting Patent Owner’s argument that the PTAB should exercise its discretion under 35 U.S.C. § 325(d) to deny institution because the same prior art and arguments were before the Patent Office Examiner during original prosecution.  Sony Interactive Entertainment LLC v. Bot M8, LLC, Case No. IPR2020-00726 (PTAB Oct. 6, 2020).  In doing so, the PTAB agreed with Petitioner that the Examiner overlooked a reference’s teaching. 
     
  • Federal Circuit Affirms PTAB’s Claim Construction, Despite Recitation Of Incorrect Legal Standard, And Concludes That Substantial Evidence Supports Its Unpatentability Findings
     
    10/08/2020

    On September 30, 2020, 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’s Patent Trial and Appeal Board (“PTAB”), finding certain challenged claims unpatentable under the PTAB’s claim construction of “low-power radio frequency signal,” and finding that substantial evidence supports the PTAB’s underlying factual findings relating to the challenged claims.  Emerson Electric Co. v. SIPCO, LLC, __ F.3d __ (Fed. Cir. Sept. 30, 2020).
     
    CATEGORIES: IPRsPTAB
  • Federal Circuit Limits Scope Of IPR Estoppel, And Vacates Claim Construction That Was Based On Expert Testimony
     
    09/29/2020

    On September 24, 2020, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming-in-part, reversing-in-part, vacating, and remanding a final judgment of the United States District Court for the Eastern District of Texas that Appellant’s patent claims are not infringed; that Cross-appellant is estopped from raising certain validity challenges based on its joinder to an inter partes review (“IPR”) before the Patent Trial and Appeal Board (“PTAB”); and that asserted claim 6 was not improperly broadened during reexamination.  Network-1 Technologies, Inc. v. Hewlett-Packard Co., __ F.3d __ (Fed. Cir. Sept. 24, 2020).  In its decision, the CAFC vacated the district court’s judgment of non-infringement as based on incorrect claim construction, vacated the district court’s judgment as a matter of law (“JMOL”) on validity for improperly applying statutory estoppel, and affirmed the district court’s decision with respect to improper claim broadening.
     
  • Northern District Of California Holds Claims Invalid, Finding Them Not Directed To A Patent-Eligible Category, And Moreover Directed To An Abstract Idea
     
    09/22/2020

    On September 10, 2020, the United States District Court for the Northern District of California granted a motion to dismiss allegations of patent infringement pursuant to 35 U.S.C. § 101.  FullView, Inc. v. Polycom, Inc., No. 18-CV-00510-EMC, 2020 WL 5430309 (N.D. Cal. Sept. 10, 2020).  The district court found that the at-issue claims were ineligible for two reasons.  First, the claims were not directed to a patent-eligible category under Section 101.  Second, the claims were directed to the abstract idea of combining multiple pictures to create one larger picture without offering an inventive concept, as required under the two-step test in Alice Corp. Pty. v. CLS Bank Int’l, 573 U.S. 208 (2014).
     
  • ITC Suspends Enforcement Of Remedial Orders Pending Appeal Of IPR Final Written Decision
     
    09/15/2020

    On September 8, 2020, the United States International Trade Commission (“ITC”) issued an opinion suspending enforcement of remedial orders pending appeal of the Patent Trial and Appeals Board’s (“PTAB”) final written decision (“FWD”) of unpatentability in a parallel inter partes review (“IPR”) proceeding.  Certain Unmanned Aerial Vehicles and Components Thereof, Inv. No. 337-TA-1133, Comm’n Op. (Sept. 8, 2020); Certain Unmanned Aerial Vehicles and Components Thereof, Inv. No. 337-TA-1133, Final Determination (Aug. 20, 2020).  In its opinion, the ITC relied on its broad discretion in selecting a remedy, its recognition of the PTAB’s leading role in assessing the validity of patent claims, and Congress’s goal for IPRs to be a substitute for litigation on patent validity issues.
     
    CATEGORIES: IP Litigation ProcedureIPRsITCPTAB
  • Federal Circuit Reverses District Court’s Claim Construction Due To Improper Reading Of Intrinsic Evidence
     
    09/09/2020

    On August 27, 2020, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion reversing the decision of the United States District Court for the District of Delaware dismissing plaintiff Baxalta Inc.’s (“Baxalta”) infringement suit against Genetech, Inc. (“Genentech”).  Baxalta Inc. v. Genentech, Inc., __ F.3d __ (Fed. Cir. Aug. 27, 2020).
     
    CATEGORY: Claim Construction
  • Patent Office Issues Binding Memorandum Concerning Use Of Applicant Admitted Prior Art In Inter Partes Review Proceedings
     
    09/01/2020

    On August 18, 2020, Director Iancu of the U.S. Patent and Trademark Office (“USPTO”) issued a Memorandum entitled “Treatment of Statements of the Applicant in the Challenged Patent in Inter Partes Reviews Under § 311.”  The Memo provides binding guidance concerning the USPTO’s view of the use of “applicant admitted prior art” (referred to as “AAPA” or “APA,” for short) by a petitioner to support a patentability challenge in an inter partes review (“IPR”).
     
    CATEGORIES: IPRsPTAB
  • Federal Circuit Affirms District Court’s Dismissal Of Declaratory Judgment Suit Challenging The Constitutionality Of Retroactive Application Of Inter Partes Review
     
    08/25/2020

    On August 20, 2020, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming the decision of the U.S. District Court for the Northern District of California dismissing plaintiff-appellant Security People, Inc.’s suit under the Administrative Procedure Act (“APA”) challenging the constitutionality of the cancellation of its patent in an inter partes review proceeding (“IPR”).  Security People, Inc. v. Iancu, __ F.3d __ (Fed. Cir. Aug. 20, 2020).
     
    CATEGORIES: IPRsPTAB
  • Doctrine Of Equivalents Cannot Be Used To Extend Patent Claims To Cover Software Where Claims Require A Physical Component
     
    08/18/2020

    On August 3, 2020, Judge Alan Albright of the United States District Court for the Western District of Texas granted defendants’ motion for judgment on the pleadings that plaintiff was barred from asserting infringement by defendants’ smartphone applications.  Lighthouse Consulting Group, LLC v. BB&T Corp., No. 6-19-CV-00594-ADA.
     
  • Federal Circuit Directs Transfer Of Patent Suit From Western District Of Texas To Northern District Of California
     
    08/04/2020

    On Friday, July 28, 2020, the United States Court of Appeals for the Federal Circuit (“CAFC”) directed the United States District Court for the Western District of Texas (W.D. Tex.) to grant Adobe Inc.’s (“Adobe”) motion to transfer pursuant to 28 U.S.C. § 1404(a) to the United States District Court for the Northern District of California (N.D. Cal.).  In re: Adobe Inc., F.3d __, (Fed. Cir. Jul. 28, 2020).  The CAFC found that the court (i) did not properly accord weight to convenience of the transferee forum; (ii) overlooked that the willing witness factor favored transfer; and (iii) “ran afoul of governing precedent in giving dispositive weight to its ability to more quickly schedule a trial.”  The CAFC ultimately held that “the district court’s denial of transfer here was a clear abuse of discretion.”
     
  • Federal Circuit Holds That Patent Owner’s Substitute Claims Presented During IPR Are Subject To A Full Examination
     
    07/28/2020

    On July 22, 2020, the Court of Appeals for the Federal Circuit (CAFC) affirmed the Patent Trial and Appeal Board’s (PTAB) denial of a rehearing on a motion to amend the claims of a patent challenged in an inter partes review (IPR).  Uniloc 2017 LLC v. Hulu, LLC & Netflix, Inc., No. 19-1686, __ F.3d __ (Fed. Cir. Jul. 22, 2020).  The CAFC held that the PTAB may consider any ground of unpatentability—not just anticipation or obviousness grounds based on patents or printed publications under Section 311(b)—when considering the patentability of substitute claims during an IPR.
     
  • District Court Rules That Plaintiff Must Plead Facts Beyond Mere Knowledge In Complaint For Willful Infringement
     
    07/21/2020

    On July 13, 2020, the United States District Court for the Eastern District of Michigan issued a ruling on a motion to dismiss claims relating to willfulness, induced, and contributory infringement.  Michigan Motor Techs. LLC v. Volkswagen Aktiengesellschaft, Case No. 19-10485 (E.D. Mich. July 13, 2020).  The Court granted the motion after finding that plaintiff had not met the pleading requirements from Fed. R. Civ. P. 8(a)(2), and specifically ruled that an allegation of willful infringement for enhanced damages requires a pleading of egregious conduct.
     
  • Federal Circuit Expands Arthrex  To Ex Parte  Appeals From Original Prosecution
     
    07/14/2020

    On July 7, 2020, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an Order on Motion vacating and remanding the underlying decisions in ex parte appeals of the Patent Trial and Appeal Board (“PTAB”) of the U.S. Patent and Trademark Office (“USPTO”) affirming the examiner’s rejection of patent application claims.  In re Boloro Global Ltd., No. 2019-2349 (Fed. Cir. July 7, 2020).  In doing so, the CAFC applied the reasoning from its decisions in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019) and VirnetX Inc. v. Cisco Sys., Inc., No. 2019-1671, 2020 WL 2462797 (Fed. Cir. May 13, 2020), which held that administrative patent judges (“APJs”) were “principal officers” and not constitutionally appointed at the time the PTAB issued its final decisions in the underlying inter partes review and re-exam proceedings, respectively.
     
    CATEGORIES: ConstitutionalityPTAB
  • Federal Circuit Vacates District Court’s Denial Of Attorney Fees Following Judgment Of Patent Invalidity Under Section 101
     
    07/07/2020

    On July 1, 2020, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion vacating and remanding the decision of the United States District Court for the Southern District of Florida denying attorney fees following a judgment of patent invalidity under 35 U.S.C. § 101. Electronic Communication Techs., LLC v. ShoppersChoice.com, LLC, F.3d (Fed. Cir. July 1, 2020).
     
  • PTAB Grants Petition For Review Despite Overlap With Earlier Filed Petitions And Advanced Stage Of Parallel Litigation
     
    06/30/2020

    On June 23, 2020, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) instituted a third inter partes review (IPR) of U.S. Patent No. 7,039,435.  LG Electronics Inc. v. Bell Northern Research LLC, case numbers IPR2020-00318.  In its decision, the PTAB declined to exercise its discretion under 35 U.S.C. § 314(a) to deny review on efficiency and fairness grounds.
     
    CATEGORIES: IPRsPTAB
  • Federal Circuit Reverses Fees Award For Failure To Meet The Threshold For Exceptional Case
     
    06/16/2020

    On June 8, 2020, the Court of Appeals for the Federal Circuit (CAFC) reversed an order of the United States District Court for the Central District of California (CDCA) awarding fees under 35 U.S.C. § 285 and 15 U.S.C. § 1117(a).  Munchkin, Inc. v. Luv N’ Care, Ltd., No. 2019-1454, __ F.3d __ (Fed. Cir. Jun. 8, 2020).  The CAFC found that the CDCA abused its discretion because the facts relied upon by the movant did not support a determination that plaintiff acted unreasonably in bringing and maintaining its case.
     
  • Southern District Of New York Grants Motion To Dismiss Patent And Trade Secret Claims, Finding Patents Ineligible Under Section 101 And That Trade Secret Claim Failed To Identify A Protectable Secret
     
    06/09/2020

    On May 29, 2020, the U.S. District Court for the Southern District of New York issued an opinion granting defendant StoneCastle Cash Management LLC’s motion to dismiss related to plaintiff Island Intellectual Property, LLC’s patent infringement, misappropriation of trade secrets, and related state law claims.  Island Intellectual Property, LLC v. StoneCastle Asset Management LLC, No. 19-CV-4792 (JPO) (S.D.N.Y. May 29, 2020).  The Court first ruled that the two groups of asserted patents, directed towards computer-implemented, multibank reciprocal-deposit systems, failed the Supreme Court’s two-step Alice test, and were therefore unpatentable under 35 U.S.C. § 101.  The Court also ruled that Island’s misappropriation of trade secrets claims were too generalized to survive a motion to dismiss. 
     
  • PTAB Institutes IPR, Despite Primary References Having Been Considered During Original Patent Prosecution
     
    06/01/2020

    On May 22, 2020, the Patent Trial and Appeal Board (“PTAB”) of the U.S. Patent and Trademark Office issued a decision instituting inter partes review (“IPR”) over Patent Owner’s argument that the PTAB should exercise its discretion to deny institution because the IPR petition relied on several references that were considered by the patent examiner during prosecution of the application leading to the patent-at-issue.  Medacta USA, Inc. v. RSB Spine, LLC, IPR Case No. 2020-00264, Paper 24 (PTAB May 22, 2020).  The PTAB found that the examiner “erred in a manner material to the patentability of the challenged claims” by overlooking certain aspects of the prior art references.
     
  • Federal Circuit Affirms PTAB’s Obviousness Decision And Finds Challenge To “Real Party In Interest” Requirement Non-Appealable
     
    05/27/2020

    On May 19, 2020, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming the obviousness decision of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB), and finding non-appealable the PTAB’s decision to institute inter partes review (IPR) notwithstanding a challenge that Petitioner-Appellee failed to identify “all real parties in interest.”  ESIP Series 2, LLC v. Puzhen Life USA, LLC, __ F.3d __ (Fed. Cir. May 19, 2020).  The CAFC found that substantial evidence supported the PTAB’s finding that a skilled artisan would have been motivated to combine the teachings of each prior art reference to arrive at the claimed invention, and that Patent Owner-Appellant’s challenge to the PTAB’s “real parties in interest” determination was not appealable.
     
  • Federal Circuit Affirms PTAB’s Refusal To Import Limitation, And Finding Of Obviousness
     
    05/21/2020

    On May 14, 2020, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming a final decision by the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) that appellant’s patent claims are unpatentable.  Lone Star Silicon Innovations LLC v. Iancu, __ F.3d __ (Fed. Cir. May 14, 2020).  In its affirmance, the CAFC found that the PTAB had correctly construed a disputed claim term and that substantial evidence supported the PTAB’s finding of obviousness.
     
    CATEGORIES: IPRsObviousnessPTAB
  • Federal Circuit Holds That The Filing Of An IPR Petition Results In A Waiver Of Appointments Clause Challenges
     
    05/12/2020

    On Friday, May 5, 2020, the United States Court of Appeals for the Federal Circuit (“CAFC”) re-designated as precedential its January 28, 2020 order in Cienna Corp. v. Oyster Optics, LLC and Andrei Iancu, __ F.3d __, (Fed. Cir. May 5, 2020).  The order affirmed the judgement of the Patent Trial and Appeal Board (“Board”) finding the challenged claims patentable.
     
    CATEGORY: IPRs
  • Federal Circuit Dismisses IPR Appeal For Petitioner’s Lack Of Article III Standing
     
    05/05/2020

    On April 23, 2020, the Court of Appeals for the Federal Circuit (CAFC) dismissed an appeal of an inter partes review (IPR) proceeding for lack of Article III standing.  Argentum Pharms. LLC v. Novartis Pharms. Corp., No. 2018-2273, __ F.3d __ (Fed. Cir. Apr. 23, 2020).  The Federal Circuit found that the petitioner failed to prove that it suffered an injury in fact.
     
  • Supreme Court Holds PTAB Time-Bar Decision Is Not Appealable
     
    04/28/2020

    On April 20, 2020, the Supreme Court of the United States issued an opinion holding that an inter partes review (“IPR”) institution decision by the United States Patent and Trademark Office’s Patent Trial & Appeal Board (“PTAB”) on the impact of a dismissal-without-prejudice of a district court complaint on 35 U.S.C. § 315(b)’s one-year time-bar limitation to file an IPR is not appealable.  Thryv, Inc. v. Click-to-Call Techs., LP, No. 18-916, 590 U.S. ____ (2020).  According to the Court, 35 U.S.C. § 314(d)’s prohibition on appeal of IPR institution decisions and the Court’s decision in Cuozzo Speed Techs., LLC v. Lee, 136 S.Ct. 2131, 579 U.S. ___ (2016) were determinative.
     
  • Federal Circuit Reverses Eastern District Of Texas Decision Holding Patent Claims Patentable Under Section 101
     
    04/21/2020

    On April 14, 2020, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion reversing a finding of patentability by the U.S. District Court for the Eastern District of Texas.  Ericsson Inc. v. TCL Commc’n Tech. Holdings Ltd., No. 2018-2003, __ F.3d __ (Fed. Cir. 2020).  The CAFC first found in favor of appellant TCL on the procedural issue of whether it could decide TCL’s ineligibility argument, despite the issue not being raised below in its motion for judgment as a matter of law.  Then, on the merits, the CAFC reversed the district court’s denial of TCL’s summary judgment motion that the asserted patent claims failed the Supreme Court’s two-step Alice test, and were therefore unpatentable under 35 U.S.C. §101.
     
  • ITC ALJ Finds Inequitable Conduct In Patent Office Renders Patent Unenforceable
     
    04/14/2020

    On April 7, 2020, the United States International Trade Commission (ITC) published the public version of an earlier final initial determination by an ITC administrative law judge (ALJ) finding that the applicants of the asserted patent, directed at harness-type child carriers, intentionally made false statements to the United States Patent Office (PTO) during examination.  In re Certain Child Carriers and Components Thereof, Inv. No. 337-TA-1154.  The ALJ ruled that this intentional misconduct was egregious misconduct rendering the patent unenforceable.
     
    CATEGORY: ITC
  • Federal Circuit Holds Patentee To Its Choice During Prosecution, Invalidating Key Patents
     
    04/07/2020

    On March 26, 2020, the Court of Appeals for the Federal Circuit (CAFC) affirmed the judgement of the Patent Trial and Appeal Board (Board) concerning claim construction.  Genentech, Inc. v. Iancu, F.3d __, (Fed. Cir. Mar. 26, 2020).  The CAFC found a single statement in the prosecution history instructive on claim construction where the claims and specification do not clearly define the claimed term.  The claims were clearly under that claim construction.

     
    CATEGORY: IPRs
  • Federal Circuit Finds That 35 U.S.C. § 315(c) Does Not Permit New-Party Or New-Issue Joinder In IPR Proceedings
     
    04/02/2020

    On March 18, 2020, the United States Court of Appeals for the Federal Circuit (“CAFC”) found that the Patent Trial and Appeal Board (“PTAB”) erred in allowing same-party and new-issue joinder in inter partes review (“IPR”) proceedings.  Facebook, Inc. v. Windy City Innovations, Inc., Nos. 2018-1400, 2018-1401, 2018-1402, 2018-1403, 2018-1537, 2018-1540, 2018-1541, __ F.3d __ (Fed. Cir. Mar. 18, 2020).  The CAFC vacated the PTAB’s final written decisions with respect to the claims that were improperly added through joinder.
     
  • Update On Key Patent Court Scheduling Adjustments In View Of COVID-19
     
    03/24/2020

    COVID-19 has taken an unprecedented toll on the United States and the world at large.  It has impacted nearly every facet of both professional and personal life and, with that, the patent landscape, too—especially as it pertains to the interplay between in-person events (trials, hearings, depositions and the like) and the need for “social distancing.”
     
    CATEGORY: No category
  • District Of Delaware Rejects Plaintiff’s Law-Of-The-Case Argument And Grants Motion For Judgment On The Pleadings Based On Patent-Ineligible Subject Matter
     
    03/17/2020

    On March 5, 2020, the United States District Court for the District of Delaware issued an Opinion granting defendant’s motion for judgment on the pleadings based on patent-ineligible subject matter.  CG Tech. Dev., LLC v. Fanduel, Inc., Case No. 1:17-cv-01041-RGA (D. Del. Mar. 5, 2020).  The Court rejected plaintiff’s law-of-the-case argument and held that the claim-at-issue failed the Supreme Court’s two-step Alice test, and was therefore unpatentable under 35 U.S.C. §101.
     
  • Federal Circuit Affirms PTAB Final Written Decision Holding Advertising Patent Claims Unpatentable Under Section 101
     
    03/11/2020
    On March 6, 2020, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an Opinion affirming a final written decision by the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office (“USPTO”).  Customedia Techs., LLC v. Dish Network Corp., Case Nos. 2018-2239, 2019-1000, ____ F.3d ____ (Fed. Cir. Mar. 6, 2020).  The CAFC held that the PTAB correctly found that the challenged patent claims were unpatentable under 35 U.S.C. § 101 because they were directed to patent ineligible subject matter, as interpreted by the Supreme Court’s decision in Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014).
  • Federal Circuit Finds That Cessation Of Sales Of Unmarked Patented Articles Does Not Excuse Noncompliance With The Statutory Notice Requirement
     
    03/03/2020

    On February 19, 2020, the Court of Appeals for the Federal Circuit (CAFC) affirmed the judgment of the United States District Court for the Southern District of Florida concerning the notice requirement for collecting back-damages in cases of patent infringement.  Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., ___ F.3d __ (Fed. Cir. Feb. 19, 2020).  In particular, the CAFC found that the statutory patent marking requirement continues to limit damages after a patentee or licensee ceases sales of unmarked products, and that willful infringement does not establish actual notice under the statute.  35 U.S.C. § 287. 
     
    CATEGORY: Damages
  • Federal Circuit Finds Presence Of Google’s Cache Servers In The Eastern District Of Texas Does Not Justify Venue
     
    02/25/2020

    On February 13, 2020, the Court of Appeals for the Federal Circuit (CAFC) granted a writ of mandamus, ordering the Eastern District of Texas (“EDTX”) to dismiss or transfer the patent infringement suit filed there against Google LLC (“Google”).  In re Google LLC, No. 2019-126, __ F.3d __ (Fed. Cir. Feb, 13, 2020).  Applying In re Cray, CAFC found that the EDTX lacked venue under the 28 U.S.C. § 1400(b).
     
  • District Of Delaware Denies Motion To Dismiss Infectious Unenforceability Counterclaims
     
    02/11/2020

    On January 7, 2020, Magistrate Judge Christopher Burke of the District of Delaware issued a Report and Recommendation recommending denial of plaintiff’s motion to dismiss counterclaims of unenforceability based on the doctrine of infectious unenforceability.  Guardant Health, Inc. v. Foundation Medicine, Inc., Case No. 1:17-cv-1616-LPS-CJB, D.I. 343 (D. Del. Jan. 7, 2020).  The Court found defendants’ allegations supported the existence of an “immediate and necessary” relation between plaintiff’s alleged concealment of the true inventorship of certain earlier-issued patents and enforcement of the patent at issue in the counterclaims.
  • Federal Circuit Affirms PTAB’s Finding That General Knowledge Can Supply Missing Claim Limitations In Obviousness Analysis
     
    02/05/2020

    On January 30, 2020, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming the a final decision by the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) that appellant’s patent claims are unpatentable.  Koninklijke Philips NV v. Google LLC, __ F.3d __ (Fed. Cir. Jan. 30, 2020).  While the CAFC ruled that the PTAB lacked the discretion to institute review inter partes review (IPR) based on grounds not presented in an IPR petition, it affirmed the PTAB’s obviousness decision based on a ground that was contained in appellee’s petition.
     
    CATEGORIES: IPRsObviousnessPTAB
  • District Court Holds That Certain Communications Between Defendant And Non-Party Distributor Were Protected By The Common Interest Doctrine, While Other Communications That Were Primarily Business-In-Nature Were Not
     
    01/22/2020

    On January 14, 2020, the United States District Court for the Northern District of Illinois issued a ruling on a motion to compel documents withheld as being privileged, containing attorney work product, and subject to the common interest doctrine.  Beijing Choice Elec. Tech. Co. v. Contec Med. Sys. USA, Inc., slip op. (N.D. Ill. Jan 14, 2020).  The Court granted-in-part and denied-in-part the motion.
    CATEGORIES: Common InterestPrivilege
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