Posts in Federal Circuit

In The Chemours Company FC, LLC v. Daikin Industries, Ltd., Nos. 2020-1289, 2020-1290 (Fed. Cir. July 22, 2021) (“Chemours v. Daikin”), the Federal Circuit clarified three doctrines involved in the determination of obviousness: teaching away, commercial success, and blocking patents. While all three panel judges agreed that the Patent Trial and Appeal Board (“Board”) misapplied the commercial success and blocking patents doctrines, they disagreed as to the Board’s application of the teaching away doctrine. In contrast to the Board, the majority found evidence of teaching away in the prior art. But Judge Dyk, dissenting, found no such evidence and called the majority’s determination an impermissible expansion of the doctrine that now encompassed a reference’s mere preference for a particular alternative.

On July 20, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a non-precedential decision in Siegler v. Sorrento Therapeutics, Inc. in which the appellate court affirmed a series of rulings on motions in a copyright and trade secret lawsuit filed in the Southern District of California. Although the Federal Circuit panel in the case “[understood] that Siegler feels unfairly treated as a result of the events she outlines, she was treated more than fairly by the district court,” said the CAFC, and the court did not err or abuse its discretion in reaching decisions to deny several motions for default judgment and reconsideration, as well as dismissing a pair of amended complaints filed by Siegler.

According to U.S. Courts and as reported by IPLaw360 earlier today, U.S. Court of Appeals for the Federal Circuit (CAFC) Judge Kathleen O’Malley announced on July 27 that she will retire, leaving a vacancy on the court as of March 11, 2022. O’Malley’s announcement means that Biden will get a second nominee to the United States’ top IP court. Tiffany Cunningham was nominated by President Joe Biden earlier this year to succeed Judge Evan Wallach and recently was confirmed by the Senate.

In a precedential opinion authored by chief Judge Moore, the U.S. Court of Appeals for the Federal Circuit today vacated and remanded six Patent Trial and Appeal Board (PTAB) final written decisions in inter partes review (IPR) proceedings filed by Intel that found Qualcomm’s patent claims 1–15, 17–25, and 27–33 of U.S. Patent No. 9,608,675 would have been obvious. While the CAFC agreed with the PTAB’s construction of one of the claims, which Qualcomm had challenged, it ultimately held that the Board violated Qualcomm’s procedural rights under the Administrative Procedure Act (APA) for failing to provide the company “adequate notice of and opportunity to respond to its sua sponte claim construction.”

Tiffany Cunningham was confirmed to the U.S. Court of Appeals for the Federal Circuit earlier this week, making her—incredibly—the intellectual property court’s first Black judge. Cunningham has been a patent litigation partner at Perkins Coie LLP in Chicago, Illinois since 2014, and prior to that worked in the Chicago office of Kirkland & Ellis LLP. She will replace Judge Evan J. Wallach, who announced in March that he would retire from active service and assume senior status as of May 31, 2021, after 10 years of service with the court. Below are some thoughts from members of the IP community, and senators who voted for her, on what Cunningham’s appointment might mean for the CAFC long term.

The United States Court of Appeals for the Federal Circuit (CAFC) yesterday concluded that the Patent Trial and Appeal Board’s (PTAB’s) decision finding certain claims of Chemours’ patents obvious was not supported by substantial evidence and that the Board erred in its analysis of objective indicia of nonobviousness. As such, the CAFC reversed the decisions.

Laches is an equitable defense that may be raised in a patent-related proceeding. If a defending party can show that a patent holder exhibited unreasonable delay that caused prejudice to the defending party, the patent holder may be barred by laches from asserting the right.While the examples of “reasonable” and “unreasonable” delay provided in Symbol Techs. are informative (as are the fact-specific analyses from the other cases), a bright-line test for “unreasonable delay” had yet to be established in the prosecution laches context. That is, until the June 2021 decision of Gil Hyatt v. Hirshfeld (Fed. Cir. 2021). This case pertained to the laches defense raised by the USPTO when Hyatt filed an action under 35 U.S.C. § 145 to obtain four patents subsequent to receiving an affirmance of rejections of various claims at the Patent Trial and Appeal Board (PTAB).

On July 13, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed in part, reversed in part, and remanded the U.S. District Court for the Northern District of California’s decision that Sony Corporation of America, et al (Sony) did not infringe Bot M8 LLC’s (Bot M8) patents, again clarifying the pleading standard for patent infringement. Bot M8 filed suit against Sony in the United States District Court for the Southern District of New York, alleging infringement of six of their patents, five of which remain relevant on appeal: U.S. Patent Nos. 8,078,540 (the ‘540 patent); 8,095,990 (the ‘990 patent); 7,664,988 (the ‘988 patent); 8,112,670 (“the ‘670 patent”); and 7,338,363 (the ‘363 patent). Bot M8 accused Sony’s PlayStation 4 (PS4) gaming consoles and aspects of Sony’s PlayStation network of infringing their ‘540, ‘990, ‘988, and ‘670 patents. Additionally, Bot M8 accused certain PS4 video games of infringing their ‘363 patent.

On March 30, 2021, President Biden tapped Tiffany Cunningham to be the first African American to sit on the Federal Circuit. After a straightforward and speedy hearing, the Senate Judiciary Committee later advanced Cunningham’s nomination with a 16-6 vote. With her confirmation now imminent, Cunningham is poised to become the first African American, and the first African American woman, to join the Federal Circuit bench. Now that she has reached this historic milestone, this article reflects on the significance and impact of Cunningham’s nomination.

In March of this year, a bipartisan group of senators asked Drew Hirshfeld, who is Performing the functions and duties of the Director of the U.S. Patent and Trademark Office (USPTO), to “publish a request for information on the current state of patent eligibility jurisprudence in the United States, evaluate the responses,” and provide the senators with a detailed summary of the findings in order to assist them as they consider appropriate legislative action. The letter gave a deadline of March 5, 2022 to submit a report on the topic. Now, a Federal Register Notice (FRN) scheduled to be published July 9 is requesting answers and input from stakeholders to 13 questions/topics to assist in that effort, according to a publicly posted draft of the FRN.

The U.S. Court of Appeals for the Federal Circuit (CAFC) in In re Samsung today granted Samsung’s and LG’s writs of mandamus, which sought to order the United States District Court for the Western District of Texas to transfer the underlying actions to the United States District Court for the Northern District of California. The CAFC explained that the district court erred in failing to consider pre-litigation tactics by Ikorongo Technology LLC (Ikorongo Tech) and Ikorongo Texas LLC aimed at purposely manipulating venue in the case.

The U.S. District Court for the Southern District of California recently ended a long, drawn-out patent infringement battle dealing with menu patents, which saw action in front of a jury, at the district court, at the Patent Trial and Appeal Board (PTAB), at the Federal Circuit, and even an unsuccessful petition to the Supreme Court. The resolution: The district court awarded Domino’s $2.7 million in attorneys’ fees and costs after finding the case exceptional within the meaning of 35 U.S.C. 285.

On June 21, the United States Court of Appeals for the Federal Circuit (CAFC) denied a petition for rehearing and rehearing en banc filed by Amgen Inc., Amgen Manufacturing, Limited, and Amgen USA, Inc. (Amgen) in their case against Sanofi, Aventisub LLC, FKA Aventis Pharmaceuticals Inc., Regeneron Pharmaceuticals Inc., and Sanofi-Aventis U.S. LLC (Sanofi). Judge Lourie was joined by Judges Prost and Hughes in a separate opinion on the denial of the petition for panel rehearing. A group of intellectual property professors; GlaxoSmithKline plc; and Biogen Inc., Bristol-Myers Squibb Company, Corning Incorporated, and Merck Sharp & Dohme Corp. filed amicus briefs.

A working definition of inertia is the tendency of a body to maintain its state of rest or uniform motion unless acted upon by an external force. As it did in Oil States (S.C. 2018), inertia appears to have played a role in the Supreme Court’s decision in the United States v. Arthrex, in which the central dispute was the remedy to address the unconstitutional appointment of administrative patent judges (APJs). Possible remedies included vacating hundreds or thousands of prior final decisions by unconstitutionally appointed APJs, requiring all APJs to be confirmed by the Senate and then rehear previously-decided reviews, finding the entire statutory structure unconstitutional and handing invalidity/unpatentability determinations back to Article III Courts, removing employment protections for APJs (as the Federal Circuit did), or adding a layer of review so that inferior officers had appropriate responsibility under the Appointments Clause. Faced with these possibilities, the Supreme Court’s holding maintains the inertia of the Patent Trial and Appeal Board (PTAB) and again solidifies its role in patent litigation today.

Reading the recent opinion of Judges Prost and Taranto in Yu and Zhang v. Apple and Samsung, Appeal Nos. 2020-1760, 1803 (Fed.Cir. June 11, 2021), I’m reminded of something Mark Twain never said: “There’s a lie, there’s a damned lie, and then there’s an Alice-Mayo decision.” Granted, it is hard to tell one Alice-Mayo decision from another. At face value, the Yu decision appears to be merely the latest absurdist fiction in a collection of short stories based on the abandonment of conventional law. Yet, the Yu decision is more than the typical Alice-Mayo scenario where logical construction and argument give way to irrationality in a senseless judiciary.