Posts Tagged: "Judge Alvin Schall"

CAFC Judges Split on Indefiniteness Analysis for Identity Theft Patent

The U.S. Court of Appeals for the Federal Circuit (CAFC) today held that certain claims of a patent for a system to protect against identity theft and fraud were invalid for indefiniteness. Judge Schall dissented-in-part, explaining that he would not have found the claims indefinite based on the intrinsic evidence. U.S. Patent No. 9,361,658 is owned by Mantissa Corporation and is titled “System and Method for Enhanced Protection and Control Over the Use of Identity.” Mantissa sued First Financial Corporation and First Financial Bank, N.A. in the U.S. District Court for the Northern District of Illinois, alleging infringement of certain claims. The parties mainly disputed two terms during claim construction: (1) “transaction partner” and (2) “OFF.” The district court relied on First Financial’s expert testimony to conclude that “transaction partner” was indefinite, after finding that the expert used was a person of ordinary skill in the art (POSA).

Federal Circuit Again Considers USPTO Calculation of PTA in Supernus Pharmaceuticals v. Iancu

Last week, the U.S. Court of Appeals for the Federal Circuit reversed a ruling of the U.S. District Court for the Eastern District of Virginia, which had affirmed a patent term adjustment (PTA) calculation of the United States Patent and Trademark Office (USPTO). See Supernus Pharmaceuticals, Inc. v. Iancu, No. 2017-1357 (January 23, 2019). The Federal Circuit held that the USPTO cannot count as applicant delay any period of time during which there was no possible action that the applicant could take to reasonably conclude prosecution. A sensible ruling, and one the panel explained was entirely consistent with both the PTA statute and Gilead Sciences, Inc. v. Lee, 778 F.3d 1341 (Fed. Cir. 2015). “A period of time including no identifiable efforts that could have been undertaken cannot be ‘equal to’ the period of failure to undertake reasonable efforts under the terms of the statute,” wrote Judge Reyna.

Federal Circuit says Assignor Estoppel Has “No Place” in IPR Proceedings

The Federal Circuit recently found that assignor estoppel has “no place in IPR proceedings,” affirming a holding of the Patent Trials and Appeal Board (“Board”) that assignor estoppel did not bar Arista Networks (“Arista”) from attempting to invalidate a patent belonging to Cisco Systems (“Cisco”).  Arista’s founder, Dr. David Cheriton, was the inventor on the patent Arista wanted to invalidate and had previously assigned the patent to Cisco while employed by Cisco. See Arista Networks, Inc. v. Cisco Sys., Nos. 2017-1525, 2017-1577, 2018  (Fed. Cir. Nov. 9, 2018) (Before Prost, Schall, and Chen, J.) (Opinion for the court, Prost, J.).

Federal Circuit Affirms Board: No Interference-in-Fact for CRISPR-Cas9 Technology

The Federal Circuit recently weighed in on an interference proceeding between the University of California (“UC”) and the Broad Institute over the use of CRISPR-Cas9 technology. The Court affirmed a Patent Trial and Appeal Board (“Board”) decision finding there was no interference-in-fact between UC’s patent application and the claims of twelve patents and one application owned by Institute… Considering the evidence of simultaneous invention, along with evidence regarding the state of the art, inventor statements, and application of similar technologies, the Court concluded the Board’s finding was supported by substantial evidence.

Petitioner Has Standing to Appeal PTAB Decision Where Litigation is Inevitable

Altaire filed two complaints against Paragon: (1) alleging a breach of the non-disclosure clause of the Agreement, and (2) seeking declaratory judgment that the ‘623 patent was invalid. Paragon, in turn, alleged a material breach of the same clause and sought the termination of the Agreement. Altaire also sought post-grant review of the ‘623 patent, arguing that the patent was obvious over two production lots of its products. After the PTAB issued a final written decision determining that Altaire failed to prove that the asserted claims were obvious, Altaire appealed. The Federal Circuit reversed-in-part, vacated-in-part, and remanded for further proceedings. Circuit Judge Schall disagreed.