Posts Tagged: "Judge Todd Hughes"

Due to the recent decision in Aqua Products v. Matal, 872 F.3d 1290 (Fed. Cir. 2017), the Court disagreed with the Board’s decision to deny Bosch’s motion to amend. The Board noted in its final decision that it was “unpersuaded that Bosch had demonstrated that the proposed substitute claims are patentable.” However, under Aqua Products, the patent owner does not bear the burden of proof for the patentability of its proposed amended claims in an IPR proceeding. Rather, the petitioner must prove by a preponderance of the evidence that the proposed amended claims are unpatentable. The Board therefore impermissibly assigned the burden of proof to Bosch.

The U.S. Court of Appeals for the Federal Circuit recently issued its decision in In re Micron Tech., Inc., Case No. 2017-138 (Fed. Cir. Nov. 15, 2017), and resolved a question that had divided district courts and commentators throughout the United States following the U.S. Supreme Court’s ruling in TC Heartland LLC v. Kraft Foods Group Brands LLC, 137 S. Ct. 1514 (2017):  Did TC Heartland change the law of venue in patent cases such that a party’s failure to raise a venue defense in its initial responsive pleading could be excused?  The Federal Circuit held: “We conclude that TC Heartland changed the controlling law in the relevant sense: at the time of the initial motion to dismiss, before the Court decided TC Heartland, the venue defense now raised by Micron (and others) based on TC Heartland’s interpretation of the venue statute was not “available,” thus making the waiver rule . . . inapplicable.”

In what appears to be a clear departure from the past, in Amgen, the Federal Circuit has rejected the test, basing its rejection on the ground that it effectively eliminates the written description requirement.  Amgen at 15, 16.  According to the Court, where a functional genus claim to antibodies to a newly characterized antigen is concerned, the underlying science is not so advanced as to establish that “make and use” is equivalent to the required description of the claimed antibodies.  Id. at 16.  Drawing such equivalence, the Court said would amount to declaring a contested scientific proposition to be so settled as to be entitled to judicial notice, which the Court was not prepared to do.  Id.

Arguing against Micron’s motion to dismiss, Harvard contended that TC Heartland only affirmed a previous precedent set by SCOTUS and that the improper venue challenge was available to Micron back when it filed its first motion in August 2016… The Federal Circuit concluded that the TC Heartland decision “changed controlling law in the relevant sense” and thus the Supreme Court’s interpretation of the patent venue statute was not available to Micron at the time of its August 2016 motion to dismiss.concluded that the TC Heartland decision “changed controlling law in the relevant sense” and thus the Supreme Court’s interpretation of the patent venue statute was not available to Micron at the time of its August 2016 motion to dismiss.

In Two-Way Media Ltd v. Comcast Cable Communs., LLC, (Opinion for the court, Reyna, J.), the Federal Circuit affirmed a district court decision finding four patents owned by Two-Way Media were directed to ineligible subject matter under 35 U.S.C. § 101. Claim 1 of the ‘187 patent was representative of the ‘187 and ‘005 patents, and described a method for transmitting message packets over a communications network, like the Internet… For claims directed to judicial exceptions under § 101, a patent cannot identify a sufficient inventive concept solely in the specification and survive the Alice inquiry; the inventive concept must be found in the claims themselves in order to transform the nature of the claims into a patent-eligible application.

The Uniloc patent invalidated by the PTAB in this case is U.S. Patent No. 5490216, titled System for Software Registration and issued in February 1996. It claims a registration system for licensing execution of digital data in a use mode, the system including both local and remote licensee unique ID generating means, and a mode switching means operable on a platform which permits the use of digital data only if the locally-generated licensee unique ID matches the remotely-generated licensee unique ID. The innovation solved issues in prior art systems for software registration for software transferable by physical media which used shell programs or did not utilize information unique to the intended licensee which is distinguishable from the identification of the platform. According to data collected from Lex Machina, Uniloc’s ‘216 patent has been asserted in 65 cases filed in U.S. district court going back to September 2003.

The District of Delaware found that one of two patents asserted by Merck was not invalid and infringed, and the other patent, while infringed, was invalid as obvious. Merck appealed the conclusion of invalidity. The Federal Circuit affirmed… If the strongest evidence of nonobviousness are objective indicia, it is critical for the patentee to persuade the finder of fact that all four Graham factors need to be evaluated contemporaneously in making an obviousness determination.

After a panel of the Federal Circuit affirmed the Board’s decision, in Aqua Products v. Matal, Aqua requested an en banc rehearing. The USPTO Director Joseph Matal joined the appeal on behalf of the USPTO. At issue was whether the Board could place the burden of proof for patentability of amended claims on the patent owner in an IPR, and the Board’s underlying interpretation of the relevant statutes, specifically § 316(d) governing claim amendments and 35 U.S.C. § 316(e) allocating the burden of proof in an IPR… With respect to the burden of proof, the burden of persuasion for patentability of amended claims in an IPR proceeding is placed on the petitioner, not the patent owner. However, considering Judge Reyna’s concurrence, patent owners might still have the burden of production; depending on future cases.

In Re: Smith International, the Federal Circuit reversed, finding that the Board’s construction of “body” was unreasonably broad. While the claims do recite “body” without further elaboration, the specification does not use the term generically… The broadest reasonable interpretation of a term in a patent claim must be consistent with the specification. An analysis looking for whether the broadest possible meaning is proscribed by the specification is a backwards approach to claim interpretations and is improper.

The Court found the Board’s reliance on Woodland Trust to be “misplaced” because in that case there had been continued public use for a period of a decade without any documentary evidence to support conception. To the contrary, on the facts presented here there was some documentation over the period of several months. Furthermore, that documentation took place nearly twenty years ago, which according to the Court wrote made this situation far closer to Loral Fairchild Corp. v. Matsushita Electric, 266 F.3d 1358 (Fed. Cir. 2001). In Loral Fairchild the Court previously “forgave the inventor’s inability ‘to submit documents showing production test results, considering that the events at issue occurred almost 30 years ago’” — when the inventor’s account was otherwise adequately corroborated. Additionally, there was no one else suggested by either party as the actual inventor.

The Federal Circuit concluded that the Board’s construction of the term ‘body’ was unreasonably broad even given proper usage of the broadest reasonable interpretation claim standard… This ruling obviously makes perfect sense. Absent a comprehensive glossary that defines each and every term appearing in a patent application it would be impossible for any applicant to ever proscribe and/or preclude any and all possible broad readings for various terms that a patent examiner may come up with after the fact. Defining every term has never been required and anticipating frivolous examiner arguments has never been required, and is in fact considered inappropriate.

The Court found that the Board did not provide an adequate explanation for finding that the “30%” limitation was inherent in the reference, as a predicate for its holding of obviousness. Nevertheless, the Board “made the necessary underlying factual findings to support an obviousness determination.”  Specifically, the reference disclosed the same process for manufacturing electric cables, the steps did not differ in any material way, and there were no unexpected results. The Court also pointed to precedent that shifts the burden to the patentee. “[W]here all process limitations are expressly disclosed by the prior art reference, except for the functionally expressed limitation at issue, the PTO can require an applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on.”

In Visual Memory LLC v. NVIDIA Corp., a district court dismissed a patent infringement complaint under FRCP 12(b)(6) for failure to state a claim, because the patent was drawn to patent ineligible subject matter. On appeal, the Federal Circuit found that the patent “claims an improvement to computer memory systems and is not directed to an abstract idea.” Accordingly, the Court reversed and remanded for further proceedings.

In re N.C. Lottery, Appellant North Carolina Lottery (“N.C. Lottery”) sought to register the mark “FIRST TUESDAY” in connection with lottery services and games to market the introduction of new scratch-off lottery games on the first Tuesday of every month. The Trademark Trial and Appeal Board denied the registration and N.C. Lottery appealed… The Court affirmed the Board’s decision refusing to register FIRST TUESDAY.

Avid sought fees as a prevailing party under § 285, and therefore the attorney’s fees in this action were properly characterized as an equitable remedy, properly decided by a judge. AIA argued that when an award of attorney’s fees is based in part or in whole on a party’s state of mind, intent, or culpability, only a jury may decide those issues. The Court rejected this argument because AIA provided no cases holding that once an issue is deemed equitable, a Seventh Amendment right to a jury trial may still attach to certain underlying determinations.