Posts Tagged: "en banc"

Recently the Federal Circuit has been interpreting 25 U.S.C. 271(b) to mean that unless the accused infringer directs or controls the actions of the party or parties that are performing the claimed steps, the patentee has no remedy, even though the patentee’s rights would be plainly being violated if the actions of the various partiers were combined. The Federal Circuit decided to go a different route and broke with that line of cases, specifically saying: “We now conclude that this interpretation of section 271(b) is wrong as a matter of statutory construction, precedent, and sound patent policy.” But there were 5 of the 11 Federal Circuit Judges dissenting, and very adamantly so.

In Akamai Technologies and McKesson Technologies (August 31, 2012), with an opinion over 30 pages long, a bare six judge per curiam majority found it unnecessary to resolve the joint infringement issue. Instead, the per curiam majority ruled that the Akamai Technologies and McKesson Technologies cases should be resolved by applying the doctrine of inducing (indirect) infringement under 35 U.S.C § 271(b). The majority also ruled that such indirect infringement could occur as long as all steps of the a claimed method are performed, but didn’t requiring that all steps be performed by a single actor, expressly overruling the 2007 case of BMC Resources v. Paymentech, and at least implicitly overruling the 2008 case of Muniauction, Inc. v. Thomson Corp. (no joint infringement of patented electronic method for conducting auctions of financial instruments where auctioneer and bidder each perform some but not all of the steps).

Where the en banc decision gets particularly interesting (and adversarial) is with respect to the second question, namely when does “intervening rights” apply to reexamined claims? By a 6 to 4 vote, (and a reversal of the panel decision), a majority of the en banc Federal Circuit also concluded “as an alternative ground for affirmance” of the district court’s judgment that “intervening rights do not apply to claims that have not been amended and are not new.” The majority opinion by Judge Lourie (the dissenter in the panel decision) was joined by Chief Judge Rader, and Judges Newman, Bryson, Prost, and Linn (who was one of the 5 “nay” votes on the meaning “biocompatible). The dissenting opinion on the “intervening rights” question by Judge Dyk (who wrote the majority opinion in the panel decision) was joined by Senior Judge Gajarsa (who also joined the majority opinion in the panel decision), Judge Reyna, and Judge Wallach.

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.”

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.

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…

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.

As I’ve said before, no one could rightly accuse me of being biased against patents. But, as I also pointed out in this article on Judge Rader’s dissent in Media Technologies Licensing, LLC v. The Upper Deck Company, I don’t believe every patent is “bullet proof,” or to use Judge Plager’s phrase, that some patents aren’t built on “quicksand.” In fact, I agree with Judge Plager’s dissent in the denial of rehearing en banc in Enzo Biochem, Inc. v. Applera Corp., issued May 26, 2010, which argues that the “definiteness” requirement in the second paragraph of 35 U.S.C § 112 needs more “teeth” than Federal Circuit precedent appears to give it.

The Federal Circuit yesterday announced that they would take up the matter of Tivo, Inc. v. EchoStar Corp. en banc. The earlier panel decision, which was issued on March 4, 2010, is now vacated and the appeal is reinstated. While en banc rehearings are rare, it seems that the Federal Circuit is showing increased willingness to take high profile cases en banc. Recently the Federal Circuit agreeded to hear Hyatt v. Doll en banc, which relates to whether new evidence can be submitted in an appeal of a decision of the Board of Patent Appeals and Interferences to the United States Federal District Court for the District of Columbia. Just weeks ago the Federal Circuit also agreed to hear important matters of inequitable conduct en banc, taking up Therasence, Inc. v. Becton Dickinson and Co.

On February 17, 2010, the United States Court of Appeals for the Federal Circuit issued an order in Hyatt v. Kappos vacating the previous decision issued by a 3 judge panel on August 11, 2009, when the case was then styled Hyatt v. Doll. Hyatt’s petition for rehearing was denied. After polling the judges of the Federal Circuit, however, rehearing en banc was granted on whether 35 USC 145 requires de novo review and the submission of new evidence.

In the 1972 case of Deepsouth Packing Co. v. Laitram Corp, a bare majority of the Supreme Court ruled that exporting three separate boxes of parts that could be assembled abroad into a patented deveining machine in less than an hour was not actionable under 35 U.S.C. § 271(a). In response, Congress in 1984 enacted 35 U.S.C. § 271(f) to…