Posts Tagged: "Judge Richard Taranto"

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.”

The Court believed the time was now appropriate to address this issue through a writ of mandamus noting that several similar cases had now been heard in various district courts with conflicting results. The Court identified two issues that should be addressed: (1) whether a server rack, a shelf, or analogous space can be a “place of business,” and (2) whether a “regular and established place of business” requires the regular presence of an employee or agent of the defendant conducting business. Finding that a defendant must have regular, physical presence of an employee or other agent of the defendant conducting the defendant’s business at the alleged “place of business,” the Court concluded that the Eastern District of Texas was not a proper venue for this case because Google does not have an employee or agent regularly conducting its business within the District.

The United Stated Court of Appeals for the Federal Circuit recently held that a district court erred in its claim construction and vacated the district court’s judgment of noninfringement, which the parties stipulated to based on the erroneous construction. See Continental Circuits LLC v. Intel Corp., No. 2018-1076, 2019 U.S. App. LEXIS 3920, 2019 WL 489069 (Fed. Cir. Feb. 8, 2019) (Before Lourie, Linn, and Taranto, J.) (Opinion for the court, Lourie, J.). The Court highlighted that the first step in claim construction should always be to determine the plain and ordinary meaning of the claims. Further, the specification should serve to limit the plain and ordinary meaning only when it includes a definition for a claim term or a clear disclaimer or disavowal of claim scope.

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.”

The Federal Circuit recently overturned a Patent Trial and Appeal Board (Board) inter partes review decision finding that an IPS Group (IPS) patent was not unpatentable as anticipated, holding that the Board erred when determining the inventive entities of the asserted IPS patent and the asserted prior art, which was a different IPS patent that shared an inventor with the other IPS patent. See Duncan Parking Techs. v. IPS Group, Inc., Nos. 2018-1205, 2018-1360, 2019 U.S. App. LEXIS 3137 (Fed. Cir. Jan. 31, 2019) (Before Lourie, Dyk, and Taranto, J.) (Opinion for the Court, Lourie, J.). The claims at issue related to parking meter technology. IPS has two relevant patents for this technology, the ’310 patent and the ’054 patent. The ’054 patent issued in 2013 from a 2006 Patent Cooperation Treaty (PCT) application. It named the Founder of IPS, Dave King, and the Chief Technical Officer of IPS, Alexander Schwarz, as inventors. The ’310 patent was issued in 2010 and based on an application filed in 2008. The ’310 patent named King, along with three other engineers, as inventors. The ’310 patent, however, did not disclose Schwarz as an inventor.

On January 24, the Federal Circuit affirmed a jury’s finding that the defendant-appellant, Medtronic, induced surgeons to infringe two patents of plaintiff-appellee, Dr. Mark Barry, which were directed to methods of correcting spinal column anomalies, such as those due to scoliosis, by applying force to multiple vertebrae at the same time. Medtronic appealed on several grounds, “principally concerning the public-use and on-sale statutory bars, but also concerning prior invention, inequitable conduct, and induced infringement.” The majority of the panel rejected the appellant’s arguments, while Chief Judge Prost dissented and would have found that one of the patents was invalid due to either the public use or on sale bars of Section 102(b). Barry v. Medtronic, Inc., No. 2017-2463, 2019 U.S. App. LEXIS 2305 (Fed. Cir. Jan. 24, 2019) (Before Prost, Chief Judge, Moore and Taranto, Circuit Judges) (Opinion by Taranto) (Dissent by Prost).

On January 10, the Federal Circuit issued an opinion affirming a decision of the Patent Trial and Appeal Board (PTAB) invalidating several claims of U.S. Patent No. 6,597,812 (the ‘812 patent) as obvious. Realtime Data, LLC v. Iancu, No. 2018-1154 (Fed Cir. Jan. 10, 2019) (Before Dyk, Taranto, and Stoll, Circuit Judges) (Opinion for the court, Stoll, Circuit Judge).

Hewlett Packard Enterprise Co., HP Enterprise Services, LLC, and Teradata Operations, Inc. (collectively, HP) sought inter partes review (IPR) of U.S. Patent No. 6,597,812, alleging that the claims were obvious under 35 U.S.C. §103(a) over U.S. Patent No. 4, 929, 946 (O’Brien) and further, in view of a data compression textbook by Mark Nelson (Nelson). After instituting review, the PTAB found the challenged claims obvious over the prior art. Realtime Data appealed on two grounds: (1) that the PTAB erred in determining that a person of ordinary skill would have been motivated to combine the teachings of O’Brien and Nelson, and (2) that the PTAB erred by failing to properly construe the term “maintaining the dictionary”.

On appeal, the Federal Circuit accepted HP’s primary argument that all of the challenged claims were disclosed in O’Brien, with Nelson used only to demonstrate that the term “dictionary encoder” used in the ‘812 patent was actually what was disclosed in O’Brien. HP thus relied on Nelson merely to explain that O’Brien’s algorithm was a dictionary algorithm, which Realtime conceded. Because the PTAB did not rely on Nelson for the disclosure of any particular element or teaching and instead relied on O’Brien alone to supply the elements and teachings, there was no obligation to make any finding regarding a motivation to combine O’Brien and Nelson. Therefore, the PTAB “did not err when it concluded that claim 1 was invalid under § 103 based on O’Brien alone,” Judge Stoll wrote.

Several weeks ago, the Court of Appeals for the Federal Circuit issued a nonprecedential decision in Glasswall Solutions Limited v. Clearswift Ltd., affirming a district court’s findings that claims from two patents that were asserted in an infringement case filed by Glasswall were directed to unpatentable subject matter under 35 U.S.C. § 101… The Federal Circuit found that testimony offered by an expert witness for Glasswall didn’t preclude a dismissal on the pleadings as the alleged factual assertions in that testimony weren’t actually factual in nature but, rather, were conclusory legal arguments the district court wasn’t bound to accept as true.

The Federal Circuit recently reversed the Western District of Washington’s dismissal under Rule 12(b)(6) of the Federal Rules of Civil Procedure where the district court held that the claimed subject matter was ineligible for patenting under 35 U.S.C. § 101. Specifically, the Federal Circuit, reviewing the decision de novo, concluded that the claimed method of improving security was a non-abstract computer-functionality improvement because it was done by a specific technique that departs from earlier approaches resulting in a beneficial reduction of the risk of hacking.

In Hamilton Beach Brands v. F’Real Foods, the Federal Circuit found that under the Administrative Procedure Act, the Patent Trial and Appeal Board’s adopted claim construction in an IPR need not be identical to a construction proposed by a party so long as the construction is “similar enough” to provide notice for the parties to argue for or against the construction.

The Federal Circuit panel of Circuit Judges Timothy Dyk, Evan Wallach and Richard Taranto determined that the PTAB’s decision to uphold patent claims challenged by WhatsApp as nonobvious wasn’t supported by substantial evidence and that the PTAB didn’t properly consider expert testimony provided by WhatsApp… Here the prior art references that supplied all of the claim limitations and the Federal Circuit found that testimony from expert witnesses on both sides supported the idea that video and multimedia content was better at conveying more powerful messages than text or still photos.

The Federal Circuit recently issued a nonprecedential decision in BASF Corporation v. Enthone, Inc. which vacated an earlier decision stemming from an inter partes review (IPR) proceeding at the Patent Trial and Appeal Board (PTAB) which had upheld a patent owned by Enthone as valid over an obviousness challenge asserted by BASF. The Federal Circuit panel of Circuit Judges Timothy Dyk, Evan Wallach and Richard Taranto remanded the case to the PTAB after holding that certain findings made by the PTAB were inadequately supported or explained.

During the week of October 8, 2018,  there were five cases involving patents that were decided without an opinion as a result of Rule 36 affirmances at the United States Court of Appeals for the Federal Circuit. Three of those cases were issued by panels including Chief Judge Sharon Prost. In two cases, the Federal Circuit upheld district court invalidations of asserted patents whereas another two affirmed rejections of applicants claims by the U.S. Patent and Trademark Office. The last case was a summary affirmance of a victory by German drugmaker Erfindergemeinschaft UroPep over Eli Lilly in the Eastern District of Texas.

To invalidate method claims, a challenger must show more than that the prior art is “capable of” performing the claimed limitations—the challenger should also show that “a person of ordinary skill would have been motivated to operate [the prior art device] in a manner that satisfied the [claimed] limitation.”