Posts Tagged: "CAFC"

Microsoft Wins at CAFC, 25% Reasonable Royalty Rule Dies

While the Federal Circuit ruled that Microsoft did infringe and the patent claim in question (claim 19 of U.S. Patent No. 5,490,216) was valid, it was Microsoft who was the big winner here. The damages awarded by the jury to Uniloc were $388 million, which was set aside by the district court, a ruling that the Federal Circuit affirmed. The Federal Circuit also agreed there was no willful infringement. So while Uniloc has won at least something from Microsoft as a result of its infringement of a valid patent claim, it seems like it will be far less than the $388 million, particularly given the Federal Circuit threw out the 25 percent rule and said the entire market value rule was not applicable in this case.

Judge Kathleen O’Malley Finally Confirmed by Senate for CAFC

Judge Kathleen O’Malley was confirmed by the United States Senate earlier today. O’Malley’s confirmation, along with the confirmation of 18 others in recent days, is the result of a deal between Senate Democrats and Republicans that ensured passage of 19 nominations in exchange for an agreement not to move forward with other controversial nominations, including the hotly challenged nomination of Goodwin Lui, who is Associate Dean and Professor of Law at University of California Berkeley School of Law.

Prometheus Diagnostic Methods Are Patentable Subject Matter

United States Court of Appeals for the Federal Circuit issued a decision in one of the patentable subject matter cases that was returned to the Court by the Supreme Court in the wake of the Supreme Court’s decision in Bilski v. Kappos. On remand, once again, the Federal Circuit held (per Judge Lourie with Judge Rader and Judge Bryson) that Prometheus’s asserted method claims are drawn to statutory subject matter, reversing for the second time the district court’s grant of summary judgment of invalidity under § 101.

US Supreme Court Accepts Microsoft Appeal in i4i Case

Earlier today the United States Supreme Court granted certiorari in Microsoft Corporation v. i4i Limited Partnership, with Chief Justice John Roberts taking no part in the decision or petition. This comes only days after the United States Patent and Trademark Office refused to grant reexamination of the patent in question. Given Microsoft doesn’t even have strong enough prior art to provoke a reexamination by the USPTO it seems absurd to think they could have been victorious even if the district court reviewed the patent claims de novo and without any presumption.

Federal Circuit Stays Injunction Pending Appeal for Medical Bandages & Dressings Used by U.S. Military

Last week, on November 18, 2010, the United States Court of Appeals for the Federal Circuit granted a stay to HemCon, Inc., which will prevent implementation of the injunction issued against it and in favor of Marine Polymer Technologies, Inc. The stay will remain in effect during the pendency of HemCon’s appeal to the Federal Circuit. The stay issued by the Federal Circuit will allow the adjudicated infringing bandages sold by HemCon to continue to be supplied to the United States Military.

Federal Circuit Hears TiVo v. Dish Oral Arguments En Banc

On Tuesday, November 9, 2010, the United States Court of Appeals for the Federal Circuit heard oral arguments in TiVo, Inc. v. EchoStar Corp. The case pits TiVo versus Dish, and any ruling from the Federal Circuit will necessarily define the extent to which a district court judge can rely on contempt proceedings to enforce an injunction rather than simply order a full blown new trial. In process the en banc oral argument in this case at the Federal Circuit did not substantially differ from the oral argument held at the Supreme Court the day earlier in the Costco copyright case, where the Supreme Court was struggling with the meaning of the phrase “lawfully made under this Title.” There are two phrases that will be at the center of resolving the TiVo case. The first is “fair ground of doubt,” and the second is “merely colorably different.”

CAFC Rules New Evidence OK in BPAI Appeal to District Court

In a peculiar oddity those who choose to challenge the final determinations on patentability of the Board of Patent Appeals and Interferences (BPAI) can elect to either proceed directly to the United States Court of Appeals for the Federal Circuit, or they can elect to proceed to the United States Federal District Court for the District of Columbia. The question presented and considered by the full Court at the Federal Circuit was whether new evidence (i.e., evidence not previously presented to the USPTO) can be presented to the District Court when challenging a decision of the BPAI. The short answer — YES. However, without new evidence at the District Court the Federal Circuit must continue to give deference to the USPTO on further appeal.

Major Funai TV Patent, Once Held Valid by CAFC, Brought down in Reexamination

Funai appealed the examiner’s rejection to the PTO Board which conducted oral argument on August 18th. The CAFC’s earlier decision in favor of Funai was mentioned in passing, but the Judges seemed largely indifferent to it. Counsel for Funia remarked that “at this point the Examiner has adopted our claim construction, which was also adopted by the [ITC], which I know is not [binding] on this Board, and affirmed by the Federal Circuit.” One of the Judges spoke up “…did you say it was affirmed by the Federal Circuit?” Yes, replied counsel, “[i]t should be in the record….” The Judges and counsel then proceeded to discuss the merits of the appeal without further mention of the earlier appellate decision.

Interview Sequel Finale: Michel on Appellate Advocacy at CAFC

This is the final installment in my follow-up interview with Chief Judge Paul Michel, who retired from the United States Court of Appeals for the Federal Circuit effective June 1, 2010. In some ways this might be the most interesting of all of the interview segments for those practicing in the patent arena, or those who have any reason to appear in front of the Federal Circuit. In this final installment Chief Judge Michel speaks with me about what, in his opinion, makes for effective appellate advocacy, both in terms of written briefs and in terms of oral presentation.

Chief Judge Michel Sequel Part 2: Good Decisions, Bad Decisions, Supreme Court Frustrations and Criticism

Chief Judge Michel graciously agreed to a second interview, which took place on September 24, 2010. In part 1 of this interview sequel, we discussed fee diversion at the USPTO, he gave an insiders view of the Senate confirmation process, discussed the confirmation process of Robert Bork and a federal judiciary that seems almost ignored by Congress. In part 2, which appears below, Chief Judge Michel and I talk about the Federal Circuit, focusing on the good decisions during his tenure on the Court, as well as a few he thought the Court got wrong, including a nearly unanimous en banc decision. We discuss inequitable conduct, his thoughts regarding the Supreme Court should be meddling with patent law so much, and what he tried to do as Chief Judge to bring the Court together and build a collegial working environment.

Interview Sequel: Chief Judge Paul Michel

In July 2010 I had the privilege of interviewing Chief Judge Paul Michel of the Federal Circuit, who had just recently retired from the Court effective May 31, 2010. Chief Judge Michel spoke with me on the record for over 1 hour and 40 minutes, and even then I only was able to get to a fraction of the topics that the Chief Judge agreed to discuss on the record. Chief Judge Michel agreed to go back on the record with me to address those additional topics, such as the confirmation process to become a judge, the state of the federal judiciary, funding for the Patent Office, Federal Circuit decisions over his tenure on the Court and more. We had our second interview on September 24, 2010, again at the University Club in Washington, DC.

TiVo vs. Dish at the Federal Circuit: Examining TiVo’s Brief

Several weeks ago TiVo filed its brief in the matter of Tivo, Inc. v. EchoStar Corp., which will be heard en banc by the United States Court of Appeals for the Federal Circuit on Tuesday, November 9, 2010. The dispute between TiVo and EchoStar dates back to 2004 when TiVo sued EchoStar in the United States District Court for the…

Judge Dyk Suggests En Banc Review of CAFC Preamble Law

I would also like to take issue with Judge Dyk’s statement that it would simply be easier, and better, to say that anything in the preamble is limiting. Yes, that would certainly be easier and probably a better approach than the nebulous standard presently in place, but I doubt that would be to the Supreme Court’s liking given they seem to detest bright line rules, even when they make sense. I also protest such an approach because that has, as far as I can tell, never been the law, or at least not at any time during my practice career. So regardless of whether it is a better test it absolutely should not be applied retroactively to affect those rights obtained under the belief that what is in the preamble is not limiting.

Federal Circuit: Foreign Application Not Priority in Interference When it Only “Envisions” Invention

Last week the United States Court of Appeals for the Federal Circuit issued a ruling in Goeddel v. Sugano, which might be one of a dying breed should patent reform actually pass. The case dealt with an appeal from an interference proceeding where the Board awarded priority based on a Japanese application. The Federal Circuit, per Judge Newman, explained that it was inappropriate to say that the Japanese application demonstrated a constructive reduction to practice because the application merely would allow the skilled reader to “envision” the invention covered in the interference count. If patent reform passes (and yes that could really happen) cases like Goeddel would become a thing of the past, although priority determinations like this one in Goeddel will certainly not go away.

Looking Ahead to TiVo v. Dish at the Federal Circuit

Putting aside my disdain for the Supreme Court stepping into patent matters of any kind, what does seem clear is that the Supreme Court wants to pretend that patents are the same as any other area of law and the same processes and procedures pertaining to other areas of law apply equally to the patent world. See eBay v. MercExchange and Zurko v. Dickinson for but two examples. The Supreme Court also loves case by case approaches without hard and fast rules that can actually be objectively and even-handedly applied. See KSR v. Teleflex and Bilski v. Kappos for but two examples. So strictly adhering to this clear trend it would suggest that the Supreme Court would be quite open to giving district court judges broad latitude to enforce their own Orders when appropriate. This would allow the district courts discretion to handle different cases differently, so that would cover the case by case approach, and it would seem to be in keeping with theories of judicial economy, which are typically left to the district court to handle, particularly when procedure, process and management of the docket are at issue.