Posts in District Courts

Federal Circuit Upholds PTAB Claim Construction Conflicting with Parallel District Court Proceedings

On December 15, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision in ParkerVision, Inc. v. Vidal affirming the Patent Trial and Appeal Board’s (PTAB) invalidation of ParkerVision’s patent claim to down-converting electromagnetic (EM) signals in wireless communication networks. In so holding, the Federal Circuit upheld the PTAB’s use of claim construction conflicting with parallel proceedings in the Western District of Texas on the grounds that the patentee defined the term “storage element” as a lexicographer.

Key U.S. District Court Cases with Implications for IP in the New Year

Although the proceedings before federal district courts may not garner as much attention as those of the U.S. Court of appeals for the Federal Circuit or the Supreme Court, they can be an important proving ground for the decisions rendered by those courts. And 2023 was no exception to that rule. As discussed below, the Zogenix v. Apotex and Teva v. Eli Lilly decisions provide a glimpse into what litigants can expect in the aftermath of the GSK v. Teva and Amgen v. Sanofi decisions, respectively. These cases will have an especially significant impact on the life sciences industry, and watching how these decisions are applied by the district courts should be a priority for practitioners in this space.

Cisco Wins on Remand from CAFC in High-Profile Case with Centripetal

Centripetal Networks was dealt a blow by the U.S. District Court for the Eastern District of Virginia yesterday when the court ruled that it had failed to prove that Cisco infringed three of its patents. It’s a years-long case that the court referred to as having an “unusual history.” The district court first entered one of the highest damages awards ever issued in a patent case, following a 22-day bench trial. In an opinion authored by the late Judge Henry Coke Morgan, Jr., the court found that Cisco willfully infringed four out of five of Centripetal’s asserted patents and awarded enhanced damages in an amount of $755,808,545 (enhanced by a factor of 2.5X), and prejudgment interest in an amount of $13,717,925, which resulted in a total past damages award amount of $1,903,239,288.

Patent Filings Roundup: Slow Week at PTAB and District Court; VLSI Saga Continues

It was an overall below-average week for patent filings at both the Patent Trial and Appeal Board (PTAB) and district courts. The PTAB had only 15 new PTAB petitions—all inter partes reviews (IPRs), while the district court had only 24 new complaints filed. There were two more Fintiv discretionary denials this week, with the Board denying institution of two IPRs filed by IBM against inventor-controlled DigitalDoor Inc. [funding unknown] patents broadly related to various aspects of data security technologies.

AI is Not Creative Per the USCO and the Courts – And That’s a Good Thing

Recently, Wen Xie argued on IPWatchdog that the U.S. Copyright Office (USCO) and the U.S. Patent and Trademark Office (USPTO) have reached different conclusions regarding “the creative and conceiving capabilities of machines,” which leads to intellectual property (IP) law being self-contradictory. According to Xie, the USCO presumes that artificial intelligence (AI) is creative, while the USPTO does not reach a similar conclusion regarding AI inventorship. I disagree.

In Wild Opinion, Chief Judge Connolly Refers IP-Edge Affiliated Attorneys for Disciplinary Action

Several attorneys associated with patent monetization firm IP Edge are being referred to their state disciplinary bars, the Texas Supreme Court’s Unauthorized Practice of Law Committee, the U.S. Patent and Trademark Office (USPTO) and the Department of Justice for their conduct in directing several individuals, including a fried chicken restaurant owner and a surgical assistant, to undertake liabilities associated with patent litigation in U.S. district court without disclosing the interests of IP Edge, which stood to gain 90% of the gross recovery from the asserted patents.