Posts Tagged: "Chief Judge Sharon Prost"

The Federal Circuit denied HTC Corp.’s petition for a writ of mandamus seeking dismissal for improper venue… The patent venue statute does not apply to foreign corporations sued for patent infringement. These foreign defendants may be sued in any judicial district where they are subject to personal jurisdiction.

Turning to the injunction, Infineon was enjoined from undertaking certain activities concerning products in the Exclusive Field that practice the licensed patents. The Court vacated this provision because it lacks the specificity required by FRCP 65(d). The Court found that this sentence of the injunction “is, in essence, an injunction prohibiting infringing acts—but without reference to any particular, adjudicated infringing product,” and “[i]ndeed, no product has yet been adjudicated.”

To fall within the safe-harbor protection against obviousness-type double patenting, a patent application must be properly designated as a divisional application before the patent issues. Attempts to retroactively re-designation a CIP application as a divisional does not bring the patent granted from that application within the protection of the safe-harbor, whether or not any benefit was gained from the initial CIP designation.

This appeal revolves around the jury verdict form. The form included a stop instruction, which told the jury not to consider invalidity defenses unless first finding infringement. Globus failed to object to the instruction prior to the jury’s deliberations. Resubmission to the jury was not an error.

In what appears to be a clear departure from the past, in Amgen, the Federal Circuit has rejected the test, basing its rejection on the ground that it effectively eliminates the written description requirement.  Amgen at 15, 16.  According to the Court, where a functional genus claim to antibodies to a newly characterized antigen is concerned, the underlying science is not so advanced as to establish that “make and use” is equivalent to the required description of the claimed antibodies.  Id. at 16.  Drawing such equivalence, the Court said would amount to declaring a contested scientific proposition to be so settled as to be entitled to judicial notice, which the Court was not prepared to do.  Id.

In Promega Corporation v. Life Technologies Corporation, on remand from the Supreme Court, the Federal Circuit affirmed district court rulings that granted Life Technologies’ motion for judgment as a matter of law (“JMOL”) that Promega Corp. had failed to prove its infringement case under 35 U.S.C. § 271(a) and § 271(f)(1), and subsequently denied Promega’s motion for a new trial.

The Uniloc patent invalidated by the PTAB in this case is U.S. Patent No. 5490216, titled System for Software Registration and issued in February 1996. It claims a registration system for licensing execution of digital data in a use mode, the system including both local and remote licensee unique ID generating means, and a mode switching means operable on a platform which permits the use of digital data only if the locally-generated licensee unique ID matches the remotely-generated licensee unique ID. The innovation solved issues in prior art systems for software registration for software transferable by physical media which used shell programs or did not utilize information unique to the intended licensee which is distinguishable from the identification of the platform. According to data collected from Lex Machina, Uniloc’s ‘216 patent has been asserted in 65 cases filed in U.S. district court going back to September 2003.

In Organik Kimya AS v. Rohm & Haas Co., Organik Kimya AS (“Organik”) appealed the decisions of the Patent Trial and Appeal Board (“Board”) in two related inter partes review (“IPR”) proceedings for which Organik is the Petitioner. The Patent Owner is Rohm & Haas Co. The Board sustained the patentability of the challenged claims, Organik appeals… When confronted with expert experiments and testimony, practitioners must provide sufficient evidence and argument to negate and outweigh the testimony – unsupported critiques of the expert’s methodology and challenges of relevance are insufficient.

The Federal Circuit heard the case of Secured Mail Solutions LLC v. Universal Wilde, Inc., where the Appellant, Secured Mail Solutions LLC (“Secured Mail”) appealed from the grant of a motion to dismiss on grounds that the claims of seven asserted patents are directed to subject matter ineligible for patenting under 35 U.S.C. § 101. The Federal Circuit affirmed the district court’s grant of Universal’s motion to dismiss… Claims determined to be patent-ineligible based on intrinsic evidence from the specification can be dismissed, at the motion to dismiss stage, without need for “extraneous fact finding outside the record.”

Although the patent prosecution process is adversarial in nature, patent practitioners must be keenly aware of their duty to maintain the integrity of any subsequently issued patent by supplying the patent examiner with all prior art that is believed to be relevant and also avoiding any misrepresentations of the prior art.  Patent litigators have long been aware of the potential pitfall of having a patent invalidated based on inequitable conduct due to activities of a patent prosecutor carried out months or years prior to the litigation proceedings.  In light of a recent decision by the Federal Circuit in Regeneron Pharmaceuticals v. Merus, however, it now appears that inequitable conduct by a patent prosecutor may be inferred due to activities of a patent litigator carried out month or years after patent prosecution has concluded.

After a panel of the Federal Circuit affirmed the Board’s decision, in Aqua Products v. Matal, Aqua requested an en banc rehearing. The USPTO Director Joseph Matal joined the appeal on behalf of the USPTO. At issue was whether the Board could place the burden of proof for patentability of amended claims on the patent owner in an IPR, and the Board’s underlying interpretation of the relevant statutes, specifically § 316(d) governing claim amendments and 35 U.S.C. § 316(e) allocating the burden of proof in an IPR… With respect to the burden of proof, the burden of persuasion for patentability of amended claims in an IPR proceeding is placed on the petitioner, not the patent owner. However, considering Judge Reyna’s concurrence, patent owners might still have the burden of production; depending on future cases.

Crafting a proper hypothetical claim is a prerequisite to whether a theory of infringement under the doctrine of equivalents would also ensnare the prior art. The burden to present a proper hypothetical claim cannot be shifted, and a hypothetical claim cannot be broader for the alleged range of equivalents, and not otherwise narrower.

Idemitsu Kosan Co. v. SFC Co., the Federal Circuit affirmed the Board’s decision to invalidate as obvious certain patent claims directed to a device that emits light when electric current is passed through a particular organic medium… During inter partes review, it is possible for claims to be invalidated for reasons first articulated in rebuttal to a Patent Owner’s arguments. Patent owners should anticipate a petitioner’s counterarguments to its positions, including those made in Patent Owner’s Reply. Further, features of the invention that are alleged to distinguish over the prior art may not carry sufficient weight if they are not recited in the claims.

Objective indicia must be evaluated before drawing an ultimate conclusion on obviousness, but are not necessarily part of a prima facie “motivation-to-combine” analysis. To prove inequitable conduct based on failure to correct a misrepresentation, the moving party must show actual knowledge of a material misrepresentation and a deliberate failure to inform the PTO with an intent to deceive.

In a case of first impression, a majority of a Federal Circuit panel held that the U.S. Postal Service and the United States (collectively, “USPS”) were not statutorily barred from filing a petition for review of a covered business method patent (“CBM”). The majority also affirmed the Board’s determination that all challenged claims of the patent are directed to ineligible subject matter… The government qualifies as a “person” who may petition for CBM, and a party suing the government for improper use of a patented business method may be required to litigate issues before the Board in a CBM proceeding, and further the government appears to be exempt from the AIA’s CBM estoppel provision in a parallel litigation.