Posts Tagged: "Judge Timothy Dyk"

On Monday, June 4th, the Court of Appeals for the Federal Circuit heard oral arguments in St. Regis Mohawk Tribe v. Mylan Pharmaceuticals, a case appealed from the Patent Trial and Appeal Board (PTAB) which asks the appeals court to determine whether tribal sovereign immunity can be asserted to terminate inter partes review (IPR) proceedings at the PTAB. The Federal Circuit panel consisting of Circuit Judges Kimberley Moore, Timothy Dyk and Jimmie Reyna lobbed tough questions at counsel representing appellants St. Regis and Allergan, appellees Mylan and Teva as well as the respondent for the U.S. federal government, without giving much clue as to whether the panel favored the argument offered by any particular side.

AIDS Healthcare Found., Inc. v. Gilead Scis., Inc., the Federal Circuit affirmed the dismissal of patent challenges filed by drug consumers. The Court noted that a declaratory action requires “a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.” The Court also dismissed AHF’s argument that it is inducing infringement and dismissed AHF’s public policy arguments for invalidating invalid patents… A consumer’s interest in purchasing cheaper goods is insufficient to meet the adverse legal interest required for a declaratory action. And a consumer’s request that another party infringes a patent cannot, by itself, induce infringement. To induce infringement, there must be direct infringement by a third party.

In Texas Advanced Optoelectronic Solutions v. Renesas Electrics, a jury found Renesas liable for both patent infringement and trade secret misappropriation. The jury awarded a reasonable royalty for infringement and a disgorgement of profits for misappropriation. The Federal Circuit affirmed a jury finding that Renesas was liable for trade secret misappropriation and patent infringement for a set of apparatus claims, but vacated the damages awards in the case and remanded for further proceedings… There is no right for a jury to award a disgorgement of profits in trade secret misappropriation cases under the Seventh Amendment. Double recovery of damages for essentially same injury is not justified by presenting two legal theories for relief.

On Thursday, April 20th, the Court of Appeals for the Federal Circuit issued a decision in Medinol Ltd. v. Cordis Corporation et. al. which vacated and remanded a lower court’s ruling that claims of patent infringement alleged by Israeli pharmaceutical firm Medinol were barred by the equitable defense of laches. The Federal Circuit’s decision comes after the U.S. Supreme Court overturned the Federal Circuit’s previous precedence on laches as an equitable defense in SCA Hygiene Products v. First Quality Baby Products, decided last year. The case was decided by a panel consisting of Circuit Judges Timothy Dyk, Jimmie Reyna and Kara Stoll.

An IPR petition is not time-barred for reasons of privity with a district court defendant in a prior litigation when no evidence shows that the petitioner controlled the litigation and would be bound by its outcome, or was in privity with a litigant for other reasons. It is not enough for the petitioner to indemnify litigants or have an interest in the outcome. Similarly, for a district court defendant to be a real party in interest in an IPR, the petitioner must have filed the petition at the behest or on behalf of the defendant. Finally, it was not an abuse of discretion to deny Patent Owner’s motion for additional discovery, when the requested discovery would not prove privity on the grounds alleged in the motion.

Collateral estoppel is not limited to identical patent claims or claims within a single patent and may preclude a contradictory construction of a claim term already construed in an inter pates review of a related patent, particularly when both patents provide identical lexicography for the disputed term.

The broadest reasonable construction of “sterilant concentration levels” encompassed both the “gas laden” (or “in air”) sterilant levels and the residual sterilant levels. Nothing in the specification or the claims supported a construction limited to one or excluding the other.

The Federal Circuit panel of Circuit Judges Timothy Dyk, Jimmie Reyna and Richard Taranto noted that “the matter at hand reveals a gap in our jurisprudence on what constitutes ‘use’ under § 271(a).” The Federal Circuit found no controlling precedent on the definition of “use” of a claimed system when the accused infringer must act to put the claimed system into service but does not appear to possess any element of the claimed system. Further, the panel felt that McDonald’s had overstated the Federal Circuit’s holding in Uniloc as the appellate court concluded that a single party can still use a system and directly infringe a patent even when that system requires multiple parties to function. “Therefore, Uniloc only broadened the scope of potential direct infringers under § 271(a),” the Federal Circuit found.

The Federal Circuit reiterated that the on-sale bar does not exempt commercial agreements between a patentee and its supplier or distributor. It is the commercial character of the transaction that is more relevant than the parties involved when assessing whether there was a commercial offer for sale.

The Federal circuit heard the case on AbbVie Inc. v. MedImmune Ltd. AbbVie and MedImmune entered a development and licensing agreement in 1995. The agreement stemmed from a research collaboration between the parties, resulting in the antibody adalimumab, the active ingredient in Humira… In general, parties may not seek a declaratory judgment to litigate one issue in a dispute that must await adjudication of other issues for complete resolution of the dispute. In limited circumstances, courts may permit this type of action where litigation is pending that would resolve the remaining questions.

A disclaimer of challenged patent claims before an IPR is instituted may result in a final adverse judgment against the patent owner, triggering estoppel provisions that preclude the assertion of other claims that are not patentably distinct from those disclaimed… Judge Newman dissented, explaining that because no trial occurred, the Board had no authority to issue an adverse judgment.

In an appeal from an IPR in which the Board upheld the patentability of several patent claims, the Federal Circuit vacated the decision and remanded to the Board with instructions to consider the patentability of certain dependent claims… The patentability of independent Claims 1 and 17 was the sole basis for the Board’s decision in this appeal from the ’592 IPR; the Board did not separately address the dependent challenged claims. The holding of unpatentability of claims 1 and 17 in the ’728 IPR, and the affirmance by the Federal Circuit, abrogated the basis for the Board’s decision that the claims in the ’592 IPR were patentable.

The Supreme Court will hear WesternGeco LLC v. ION Geophysical Corp., which asks whether the Federal Circuit erred in holding that lost profits arising from prohibited combinations occurring outside of the United States are categorically unavailable in cases where patent infringement is proven under 35 U.S.C. § 271(f)… Because lost profits damages were awarded for lost contracts for services to be performed on the high seas, outside of the jurisdiction of U.S. patent law, the Federal Circuit reversed that $93.4 million award… In December 2017, the office of Solicitor General Noel Francisco filed a brief for the United States as amicus curiae. The Solicitor General argued that WesternGeco’s entitlement to damages should be informed by the traditional common-law rule that a victim of a tort should be returned to the position that victim would have occupied if not for the defendant’s legal wrong.

This appeal revolves around the jury verdict form. The form included a stop instruction, which told the jury not to consider invalidity defenses unless first finding infringement. Globus failed to object to the instruction prior to the jury’s deliberations. Resubmission to the jury was not an error.

According to the Federal Circuit, The claims simply do not simply recite an abstract result. Because the claims recite specific steps that accomplish a desired result, the the claims were found to be directed to a non-abstract improvement in computer functionality, not an abstract concept of computer security. Nevertheless, the Federal Circuit said the jury verdict of infringement relative to the ’968 patent should be set aside because there is no evidence that the accused product includes a feature claimed in the patent. Several errors were identified with respect to the royalty calculation of the ‘844 patent, which the Federal Circuit remanded to the trial court for further consideration. For the ’731 and ’633 patents, Finjan’s expert did apportion the revenues comprising the royalty base between infringing and non-infringing functionality of Proxy SG. The jury’s damages awards for infringement of these two patents were affirmed.