Posts in District Courts

Lex Machina recently released a Hatch-Waxman/ANDA litigation report detailing trends and key findings from pharmaceutical cases filed in U.S. district courts between January 1st, 2009, and March 31st, 2017. More than eight years worth of data shows that patent infringement case filings in response to abbreviated new drug applications (ANDAs) filed with the U.S. Food and Drug Administration (FDA) declined in 2016 for the first time in three years.

“As a society, we depend on innovators… to make our lives better and to solve the challenges we face,” said Sen. Chuck Grassley (R-IA), chairman of the House judiciary committee. Grassley cited statistics published by the U.S. Chamber of Commerce’s Global Intellectual Property Center (GIPC) on the 40 million American employed by IP-intensive industries. These same industries contribute $5.8 trillion to the nation’s gross domestic product (GDP) and account for 74 percent of U.S. exports, according to the Global IP Center. In his opening statements, Sen. Chris Coons (D-DE) cited separate statistics from the U.S. Department of Commerce which reported $6.6 trillion in value added to national GDP from IP-intensive industries.

One of the key findings is that only 938 patent infringement actions were filed in district courts during the recent quarter, a total which is the lowest for a single quarter since the third quarter of 2011 when only 921 such cases were filed… The U.S. District Court for the Eastern District of Texas (E.D. Tex.) remains the most active court for patent infringement suits, receiving one-third of all patent infringement cases filed in 2017’s first quarter.

In last year’s decision in Eon Corp. IP Holdings LLC v. Silver Spring Network, Inc. 815 F.3d 1314, 1320 (Fed. Cir. 2016), the Federal Circuit reversed the District Court’s jury instruction that the terms “portable” and “mobile” should be given their “plain and ordinary meaning.” During claim construction at the District Court, Eon argued that “portable” and “mobile” did not need construction and that the terms could simply be given their plain and ordinary meaning. Id. at 1317. Silver Springs argued that the terms ought to be construed, but the District Court agreed with Eon and found that the meanings of those terms are clear and would be readily understandable to a jury. Id. However, the Federal Circuit held that a determination that a particular term needs no construction may be inadequate when a term has more than one meaning.

The lead APJ serving on the panel of multiple CBM reviews petitioned by Apple, who also wrote the final written decision on at least one CBM review petitioned by Apple and invalidated claims of the ‘772 patent, was Administrative Patent Judge Matt Clements. According to Clements’ LinkedIn profile, he has served as an administrative patent judge at PTAB since March 2013; up until that time he served as a patent attorney at international law firm Ropes & Gray going as far back to September 2006. While at Ropes & Gray, Clements was part of a legal team that represented Apple in patent infringement cases. According to legal party data made available by Law360, Clements served as counsel for Apple up to December 2012 and served on a team with fellow Ropes & Gray lawyer James Batchelder as well as Eric Albritton of the Albritton Law Firm. Both Batchelder and Albritton were counsel of record representing Apple in the Smartflash infringement case where the ‘772 patent was asserted against Apple. Batchelder and Clements both worked at Ropes & Gray’s East Palo Alto offices, where Batchelder served as managing partner, so there’s a distinct likelihood that Clements reported directly to Batchelder in his work with Ropes & Gray. The November 2014 petition by Apple for CBM review of the ‘772 patent was also filed by counsel from Ropes & Gray including Ching-Lee Fukuda, another one of the lawyers representing Apple in the Smartflash action. These types of relationships would have led to the recusal of a federal judge on a manner and yet APJs at the PTAB are not subject to rules that are supposed to prevent this kind of conflict of interest that comes with deciding a matter that includes a former employer.

An Inter Partes Review (IPR) is an important tool for companies that face frequent patent infringement challenges. An IPR is essentially a mini-litigation focusing solely on patent validity conducted before a panel of administrative patent judges sitting in the Patent Trial and Appeal board (PTAB). Once an IPR is initiated, a decision on validity is issued within one year. The narrow focus, fast timing, and lower cost of an IPR, along with certain legal advantages that make proving invalidity easier in an IPR than in a district court, make it an attractive alternative to district court litigation when good invalidity arguments are available.

Rembrandt sued Samsung for patent infringement in the Eastern District of Texas and convinced a jury that Samsung infringed its two asserted patents, awarding $15.7 million in damages. Samsung appealed claim construction, denial of JMOL of obviousness, a Daubert motion on a damages expert, and the refusal to limit damages. The Federal Circuit agreed with the district court’s claim construction and its denial of Samsung’s JMOL motions, affirming those decisions… The Federal Circuit vacated because allowing Rembrandt to “avoid the consequence of its failure to mark undermines the marking statute’s public notice function.” The Federal Circuit remanded to the district court to properly limit damages, and also remanded the question of whether the marking statute applies on a patent-by-patent or claim-by-claim basis because the parties had not squarely addressed the issue during the present appeal.

A Federal Circuit Rule 36 judgment can be a valid and final judgment for purposes of preclusive effects. Additionally, district court findings affirmed by a Rule 36 judgment can have preclusive effect as long as each is “necessary” to the final appellate judgment. The Federal Circuit did not address the Circuit split regarding the preclusive effect of independent, alternative holdings.

Core Wireless sued Apple for infringing its patent directed to a cellular network system including a mobile station providing for improved transmission of data packets. The jury found that Apple did not infringe Core Wireless’ patent. At issue on appeal is whether the district court misapplied the magistrate judge’s pretrial claim construction and whether the claim construction adopted by the district court when ruling on Core Wireless’ JMOL was erroneous… Ultimately, the Court concluded that the district court correctly denied Core Wireless’s motion for judgment as a matter of law and properly upheld the jury’s verdict of noninfringement.

Qualcomm accused Apple of engaging in tortious interference relating to Qualcomm’s licensing activities with Apple’s contract manufacturers. Specifically, Qualcomm asserts that Apple pressured contract manufacturers to withhold licensing payments they would normally have made to Qualcomm. Apple has allegedly also pressured contract manufacturers to refuse to comply with Qualcomm auditing procedures, leading to Qualcomm’s inability to verify the accuracy of royalty reports… Qualcomm also notes that its licensing activities with Apple’s contract manufacturers go back years before Apple sold its first cell phone in 2007, as early as February 2000 in the case of Taiwanese firm Compal Electronics. Qualcomm asserts that its licensing agreements with the contract manufacturers were consistent with policies set out by the European Telecommunications Standards Institute (ETSI).

American drugmakers Bristol Myers Squibb Co. (NYSE:BMY) and Pfizer, Inc. (NYSE:PFE) fired off a series of nine lawsuits to prevent generic versions of Eliquis, a treatment that helps reduce the risk of stroke in patients with atrial fibrillation. The lawsuits stem from abbreviated new drug applications (ANDAs) filed with the U.S. Food and Drug Administration (FDA) to market generic versions of apixaban, the anticoagulant agent used in Eliquis. The suits have all been filed in the U.S. District Court for the District of Delaware (D. Del.).

The U.S. Federal Trade Commission (FTC) will not be radically changing the analysis used to address antitrust issues presented by patent law issues. The news stems from comments made by FTC acting chairman Maureen K. Ohlhausen at the 32nd Annual Intellectual Property Law Conference sponsored by the American Bar Association (ABA). Ohlhausen would go on to explain that the recent updates to the IP Licensing Guidelines, which occurred in January 2017, were “modest”, provided the FTC with flexibility, and continue to recognize that “IP law grants enforceable rights.”

Tensions between Costco Wholesale Corporation (“Costco”) and Acushnet Holdings Corp. (“Acushnet”), maker of the Titleist golf ball, have risen since Costco escalated matters last Friday by filing suit seeking a declaratory judgment in an ongoing dispute between the corporate heavyweights. The most recent in the series of intensifying clashes is over Acushnet’s claims that Costco’s Kirkland Signature (“KS”) golf ball infringes on some eleven (11) Acushnet patents, and that Costco is engaged in false advertising holding the KS golf ball against the Titleist.

The original lawsuit filed in December 2015 targeted The Big Bang Theory’s use of the song Soft Kitty, a song which the character Sheldon Cooper asks people to sing whenever he’s sick or needs mothering. The lyrics to that song were written in the 1930s by Edith Newlin, a published children’s author and mother of the two plaintiffs listed in the case. The lyrics were published by Willis Music Company in 1937 in a compilation where the song was titled Warm Kitty. Willis renewed the copyright registration covering the collection of nursery school songs in 1964. The plaintiffs alleged that this renewal served to register and renew Newlin’s rights to the Soft Kitty lyrics. This, the plaintiffs reasoned, required Willis to request permission from Newlin or her successors to license the song to Warner Bros. Entertainment, producers of The Big Bang Theory.

The makers of TRX fitness and training equipment, was awarded more than $6.8 million in damages after a jury verdict finding willful patent infringement by San Carlos, CA-based Woss Enterprises LLC. The lawsuit surrounded allegations that Woss infringed upon patents covering Fitness Anywhere’s suspension trainer equipment. The jury verdict included a finding of willful infringement of patents asserted in the case. The case was tried and decided in the U.S. District Court for the Northern District of California (N.D. Cal.).