Posts Tagged: "Judge Todd Hughes"

Federal Circuit Says PTAB Erred by Accepting Stipulation of Parties

According to Judge Taranto, when the issue of indefiniteness of claims is raised in an IPR the challenge is not merely a contest between the petitioner and the patent owner, but rather protects the interests of the judicial system, the agency, and the public. Therefore, the Board should have conducted a prior-art analysis without any consideration of or deference to the stipulation of the parties, and entry of a final written decision on the merits absent such an independent consideration was inappropriate. The Board should have determined if there is indefiniteness and if “such indefiniteness renders it impossible to adjudicate the prior-art challenge on its merits, then the Board should conclude that it is impossible to reach a decision on the merits of the challenge and so state in its decision.”

Mandamus Relief Denied: Federal Circuit Avoids Clarifying TC Heartland in In re Google LLC

The Federal Circuit recently elected not to decide en banc “whether servers are a regular and established place of business, such that venue is proper under 35 U.S.C. § 1400(b). In re: Google LLC, No. 2018-152 (Fed. Cir. Feb. 5, 2019) (Before Prost, Chief Judge, Newman, Lourie, Dyk, Moore, O’Malley, Reyna, Wallach, Taranto, Chen, Hughes, and Stoll, Circuit Judges) (Dissent by Reyna, Circuit Judge, joined by Newman and Lourie, Circuit Judges). SEVEN Networks, LLC’s (SEVEN) patent infringement suit against Google arose in the Eastern District of Texas. SEVEN alleged Google’s servers, stored in a third-party ISP’s facility, where the allegedly infringing activities occurred, were a regular and established place of business, such that venue is proper under 35 U.S.C. § 1400(b). The district court denied Google’s motion to dismiss for improper venue. As a result, Google petitioned the Federal Circuit for a writ of mandamus directing the district court to dismiss or transfer the case for improper venue. On appeal, the panel majority found mandamus relief inappropriate because “it is not known if the district court’s ruling involves the kind of broad and fundamental legal questions relevant to § 1400(b),” and “it would be appropriate to allow the issue to percolate in the district courts so as to more clearly define the importance, scope, and nature of the issue for us to review.”

Federal Circuit Says Erroneous Claim Construction Led PTAB to Uphold Claims as Valid

On Thursday, December 20th, the Court of Appeals for the Federal Circuit issued a nonprecedential decision in Vivint, Inc. v. Alarm.com, Inc. which affirmed aspects of three inter partes review (IPR) proceedings conducted by the Patent Trial and Appeal Board (PTAB) invalidating certain claims from three patents owned by Vivint. However, the Federal Circuit panel of Chief Judge Sharon Prost and Circuit Judges Kathleen O’Malley and Todd Hughes found an erroneous claim construction led the Board to uphold some of the challenged claims.

Federal Circuit Upholds Patent Term Extension for Novartis Drug

The United States Court of Appeals for the Federal Circuit recently affirmed a district court decision finding the ‘229 patent valid, unexpired, enforceable, and infringed, and granting an injunction until February 2019. Specifically, the Federal Circuit held that the ‘229 patent’s five-year term extension pursuant to 35 U.S.C. § 156 was valid, even though it effectively extended the term of a related patent. The Court also held that the ‘229 patent was not invalid based on obviousness-type double patenting because obviousness-type double patenting cannot invalidate a patent which has received a valid term extension. Novartis AG v. Ezra Ventures LLC, No. 2017-2284, (Fed. Cir. Dec. 7, 2018) (Before Moore, Chen, and Hughes, Circuit Judges) (Opinion for the court by Chen, Circuit Judge).

Personal Jurisdiction is Not Established by Prior Lawsuit or Sending Infringement Notice Letters

The Federal Circuit recently affirmed the District Court for the Eastern District of Tennessee’s dismissal of a declaratory judgment action based on a finding of lack of personal jurisdiction over the defendant. The Federal Circuit held that a defendant’s request for an injunction in a different forum, which may extend into the present forum if granted, does not satisfy the “minimum contacts” prong of the test for personal jurisdiction. The Federal Circuit also made a distinction between (1) merely sending infringement notice letters into a forum and (2) sending a letter andtravelingto the forum state to discuss the alleged infringement. The Court held that letters alone do not satisfy the “minimum contacts” prong of the test.