Posts Tagged: "CAFC"

CAFC Clarifies Experimental Use Exception, Reduces Damages in Partial Reversal of Sunoco Patent Infringement Win

On April 29, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed in part, reversed in part, vacated in part, and remanded a decision of the United States District Court for the Northern District of Illinois regarding alleged infringement by U.S. Venture Inc., (Venture) of certain patents owned by Sunoco Partners Marketing & Terminals L.P., (Sunoco). Sunoco sued Venture, alleging that its operation of butane-blending systems infringed claims of U.S. Patent Nos. 7,032,629 (the ‘629 patent), 6,679,302 (the ‘302 patent), and 9,606,548 (the ‘548 patent). Venture counterclaimed, asserting that the patents were not infringed, were invalid and unenforceable. The district court ultimately awarded Sunoco $2 million in damages, which were trebled to $6 million. Venture appealed the district court decision challenging “(I) [the] rejection of its on-sale-bar defense, (II) [the] determination that it infringed two patents we have since held invalid, (III) [the] construction of two claim terms, and (IV) [the] decision to enhance damages.” On cross-appeal, Sunoco challenged the lower court’s decision not to grant its reasonable-royalty award or lost-profits damages.

Reyna Splits from CAFC on Weight of General Industry Skepticism in Obviousness Analysis

The U.S. Court of Appeals for the Federal Circuit on Friday, April 29, held that the Patent Trial and Appeal Board (PTAB) erred in finding that Auris Health, Inc. had failed to demonstrate that the claims of Intuitive Surgical Operations, Inc.’s patent for robotic surgery systems were unpatentable as obvious. The CAFC said the PTAB impermissibly rested its motivation-to-combine finding on evidence of “general skepticism” about the field of invention and thus vacated and remanded.

Federal Circuit Signals Appetite for Increased PTAB Discretion in Motions to Amend

Patent owners facing inter partes review (IPR) challenges have the option of filing a motion to amend as a contingency plan. This motion, accompanied by proposed substitute claims, allows the patent owner a fallback position if the Patent Trial and Appeal Board (PTAB) finds the original claims unpatentable. If successful, despite the unpatentability of the original claims, the patent owner maintains the substitute claims. While this sounds great in concept, the historical success rate of such motions is low. From October 2012 through March 2020, only 14% of motions to amend were granted. This improved slightly in 2020, to 25%, but dropped back to 18% in 2021 (calculated using data from Docket Navigator). The recent decision in Hunting Titan, Inc., v. DynaEnergetics Europe GmbH thus presents the somewhat rare case in which an amendment was granted by the PTAB and affirmed on appeal. That said, the Federal Circuit’s narrow holding does not indicate an easier future for patent owners’ motions to amend; indeed, the opposite may be true.

Amici Back Cisco’s Bid for SCOTUS Review of Enhanced Damages Standard

Comcast and the High Tech Inventors Alliance (HTIA) filed amicus briefs last week backing a Supreme Court petition brought by Cisco Systems, Inc. last month. The petition asks the Court to consider whether: 1) enhanced damages may be awarded absent a finding of egregious infringement behavior; and 2) whether the U.S. Court of Appeals for the Federal Circuit (CAFC) may award enhanced damages without first allowing the district court to exercise its discretion to decide that issue. Cisco filed the petition for a writ of certiorari on March 16, following a November 2021 decision of the Federal Circuit that reversed a district court’s denial of SRI International’s motion to reinstate a jury’s willfulness verdict against Cisco. That ruling restored the district court’s award of enhanced damages and affirmed an award of attorney fees for SRI. The CAFC specifically clarified that its reference to language in the Supreme Court’s ruling in Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923, 1934 (2016) on a first appeal in the case was not meant to create a heightened requirement for willful infringement.

Patent Practitioners Tell Justices to Forget American Axle—Fix Eligibility Law with Interactive Wearables’ Petition

A group of patent practitioners told the Supreme Court on Thursday that a case involving a patent for a type of content player would be a better vehicle for unraveling the patent eligibility problem than American Axle & Manufacturing v. Neapco Holdings, which has been awaiting a brief of the U.S. Solicitor General for about one year now. The case is Interactive Wearables, LLC v. Polar Electro Oy and Polar Electro, Inc. Interactive Wearables petitioned the High Court in March 2022.

CAFC Continues Its Censure of Albright on Transfer Analyses

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Friday directed Judge Alan Albright’s Waco Division of the U.S. District Court for the Western District of Texas to transfer a case brought by CPC Patent Technologies PTY Ltd against Apple to the Northern District of California. The CAFC said the district court erred in weighing the convenience of the witnesses factor as only slightly favoring transfer, noting that the court has historically rejected the view that this factor should be based solely on the distance the witness would have to travel.

Jump Rope Systems Asks CAFC for Initial En Banc Rehearing Challenging Collateral Estoppel Ruling in XY v. Trans Ova Genetics

On April 19, exercise equipment developer Jump Rope Systems filed a petition  with the U.S. Court of Appeals for the Federal Circuit (CAFC) seeking an initial hearing en banc to challenge a consent judgment  entered in a patent infringement case filed in the Southern District of Ohio. Jump Rope Systems is asking the full Federal Circuit to overturn its own decision in XY, LLC v. Trans Ova Genetics, L.C. (2018), arguing that preclusive effect cannot be given to invalidity determinations issued by the Patent Trial and Appeal Board (PTAB) because XY conflicts with U.S. Supreme Court rulings on collateral estoppel doctrine.

CAFC Reverses District Court Finding that Apple Lacked Personal Jurisdiction Over Zipit

On April 18, the United States Court of Appeals for the Federal Circuit (CAFC) reversed and remanded the U.S. District Court for the Northern District of California’s decision dismissing Apple Inc.’s complaint for declaratory judgment of noninfringement for lack of personal jurisdiction. Apple brought the complaint against patent owner Zipit Wireless, Inc. The CAFC found the district court erred in interpreting precedential cases as applying a bright-line rule that patent infringement notice letters and related communications can never form the basis for personal jurisdiction.

Understanding the Importance of Words in Design Patents

Is the scope of a design patent determined by the figures alone? Two recent Federal Circuit decisions highlight that the words describing the article of manufacture in the title and claims can indeed limit the scope and enforceability of a design patent. In particular, the title and claims of the design patent contain important information that provide a more accurate and predictable notice of what is and is not protected by the design patent. Thus, the title and the claims of a design patent are particularly relevant to the scope of the patent—both for procurement and enforcement.

Federal Circuit Vacates PTAB Ruling After Failure to Address Cost Reduction as Factor in Obviousness Finding

Earlier this week, the U.S. Court of Appeals for the Federal Circuit (CAFC) vacated and remanded a decision by the Patent Trial and Appeal Board (PTAB) in a post grant review where the PTAB concluded that Everstar did not meet its burden to demonstrate the challenged claims were unpatentable as obvious because it failed to show a motivation to combine the asserted prior art. The CAFC found that the PTAB abused its discretion when it refused to consider whether cost reduction would have driven one skilled in the art to combine the asserted prior art.

CAFC Schools District Court on Claim Construction Again

On Tuesday, the U.S. Court of Appeals for the Federal Circuit (CAFC) vacated and remanded a decision of the U.S. District Court for the District of Nevada denying Power Probe’s request for a preliminary injunction to bar future sales of Innova Electronics Corporation’s Powercheck #5420 device. The CAFC held that the district court erred in its preliminary claim construction, particularly in determining that “detecting continuity and measuring continuity are mutually exclusive.”

CAFC Vacates Section 112 Indefiniteness Ruling, Sending St. Jude Medical Back to Court

On April 11, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision in Niazi Licensing Corp. v. St. Jude Medical S.C., Inc. in which the court affirmed most of a ruling from the District of Minnesota, including sanctions against Niazi for improper use of expert testimony, as well as a finding of no induced infringement by St. Jude on one of Niazi’s asserted patent claims. However, the Federal Circuit’s decision reversed the Minnesota district court’s ruling invalidating most patent claims asserted by Niazi for indefiniteness under Section 112. The CAFC found that Niazi’s asserted claims were not invalid simply for including descriptive words or terms of degree, as long as the intrinsic record and extrinsic evidence enable a skilled artisan to identify the boundaries of a claim’s scope.

CAFC Orders New Damages Trial for Roche, Clarifies Standard for Patent Damages Limitations Period

On April 8, in a mixed and split precedential decision, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed, reversed, vacated, and remanded a decision by the U.S. District Court for the district of Delaware in a patent infringement suit brought by Meso Scale Diagnostics (Meso) against Roche Diagnostic Corporation and BioVeris Corporation (collectively Roche). Judge Pauline Newman dissented. Meso brought suit claiming that Roche violated exclusive license rights belonging to Meso by both direct and induced infringement of their patents. The CAFC affirmed the district court’s findings on the direct infringement claim, reversed the induced infringement finding, vacated the awarded damages, and remanded for a new trial on damages.

Arthrex II: The USPTO Has a Director Again, But Questions About Validity of USPTO Operations Under Hirshfeld Persist

In late March, the U.S. Court of Appeals for the Federal Circuit heard oral arguments in Arthrex, Inc. v. Smith & Nephew, Inc. (Arthrex II) to determine whether the U.S. Patent and Trademark Office (USPTO) had effectively addressed the constitutional violation under the Appointments Clause that was identified in previous rulings from the Federal Circuit and the U.S. Supreme Court (Arthrex I). While the impact of the Federal Circuit’s ruling will likely be cabined by the recent Senate confirmation of Kathi Vidal to serve as USPTO Director, the decision could call into question the validity of at least the USPTO’s Patent Trial and Appeal Board (PTAB) operations during the tenure of Drew Hirshfeld as performing the duties and functions of the USPTO Director up to Vidal’s confirmation.

CAFC Says District Court’s Claim Construction Rendered Dependent Claims ‘Meaningless’

On April 4, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision in Littelfuse, Inc. v. Mersen USA EP Corp. clarifying how U.S. district courts handling claim construction are to construe a patent’s independent claims in light of limitations included in dependent claims. While the Federal Circuit found that the District of Massachusetts was correct to give meaning to the term “fastening stem” by looking to uses of “fastening” and “stem” within the patent, the appellate court vacated and remanded a stipulated judgment of non-infringement, as the district court’s construction of certain independent claim terms would render superfluous other claim terms from dependent claims.