Posts Tagged: "Judge Ray Chen"

Deposition of Inventor Insufficient to Corroborate Inventor Testimony of Prior Conception

The representative of the inventor attempted to point to metadata contained within the inventor’s affidavit as being corroborating evidence showing the critical dates. The problem with this evidence was never made a part of the record, and the only place it was mentioned was in the inventor’s deposition, and it was only mentioned by the inventor. Inventor testimony must be corroborated by some competent independent evidence or testimony. Indeed, an inventor cannot corroborate their own testimony relating to prior conception. Therefore, an inventor deposition is insufficient to corroborate an inventor affidavit relying on what the inventor said in the deposition. 

Federal Circuit Relies on Printed Matter Doctrine in Affirming Examiner’s Rejection of Claims Under 35 U.S.C. § 101

The examiner concluded the claims were directed to the abstract idea of rules for playing a game, which fell within the realm of methods of organizing human activities. The examiner further found the claims were unpatentable as obviousness over old and well known to dice games, applying the printed matter doctrine… Marco also contended that its claimed method of playing a dice game could not be an abstract idea because it recites a physical game with physical steps. The Court rejected this argument “because the abstract idea exception does not turn solely on whether the claimed invention comprises physical versus mental steps.” Since the only arguably unconventional aspect of the recited method of playing a dice game was found to be printed matter, thus falling outside the scope of § 101, the rejected claims did not recite an “inventive concept” sufficient to “transform” the claimed subject matter into a patent-eligible application of the abstract idea.

CAFC Refuses to Find Post-URAA Patent to be Invalidating Reference Against Pre-URAA Patent

The Federal Circuit recently reversed a decision by the United States District Court for the District of Delaware holding that a patent filed after the Uruguay Round Agreement Act (“URAA”) is a proper obviousness-type double patenting reference against an earlier-filed, yet later-expiring, pre-URAA patent. Applying the Federal Circuit case Gilead Sciences, Inc. v. Natco Pharma Ltd., the district court invalidated the earlier-filed compound patent by asserting the later-filed method of treatment patent as a double patenting reference. The Federal Circuit reversed the decision by holding the analysis in Gilead “was limited to the context of when both patents in question are post-URAA patents.” While the Court limited the present opinion to the specific facts of this case, the Court applied pre-URAA double-patenting practices to the pre-URAA patent and reasoned that the invalidating reference “did not exist as a double patenting reference” when the pre-URAA patent issued

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).

Federal Circuit Affirms $140M Reasonable Royalty for Sprint in Nonprecedential Decision

The Federal Circuit upheld the district court’s damages award of approximately $140 million for Sprint after Time Warner was found to infringe claims of five patents covering technologies related to methods for linking circuit-switched and packet-switched networks within a telecommunications system. Despite the nonprecedential designation, Circuit Judge Haldane Mayer issued a dissenting opinion reflecting his views that the damages award should be vacated and the asserted patent claims found invalid for failing the written description requirement… The Federal Circuit majority also disagreed with Time Warner that the references to the 25 percent rule of thumb in the 2007 Vonage verdict made it inadmissible as evidence to the jury in district court.