Posts Tagged: "Judge Todd Hughes"

Octane Standard for Attorney’s Fees Applies to Lanham Act and Patent Act Cases

In mag Fasteners, Inc. v. Fossil, Inc., Romag sued Fossil for patent and trademark infringement and a violation of the Connecticut Unfair Trade Practices Act (“CUTPA”) after one batch of Fossil’s handbags appeared to have counterfeit magnetic snaps. The jury found Fossil liable for patent and trademark infringement and for violating the CUTPA. The Federal Circuit affirmed the patent and trademark infringement verdicts. After that appeal, Romag sought attorney’s fees under the Patent Act, Lanham Act, and the CUTPA. The district court awarded attorney’s fees under all but the Lanham Act… The Supreme Court’s “objectively unreasonable” standard for attorney’s fees set forth in Octane applies to infringement cases under the Lanham Act and the Patent Act. In attorney’s fee disputes, courts must consider the totality of the circumstances, including the conduct of both parties.

Federal Circuit says computer memory system claims patent eligible, not abstract

The majority determined that the patent claims drawn to a computer memory system did not cover an abstract idea and, therefore, the second step of the Alice test was an unnecessary inquiry… “Our review of the ’740 patent claims demonstrates that they are directed to an improved computer memory system, not to the abstract idea of categorical data storage,” Judge Stoll wrote. “The specification explains that multiple benefits flow from the ’740 patent’s improved memory system.”

Further Study Does Not Undermine Reasonable Expectation of Success; ‘Absolute Predictability’ is Not Required

A reasonable expectation of success in combining references to obtain the claimed invention does not require absolute certainty or predictability. As a result, an invention is not non-obvious simply because persons of ordinary skill in the art continues to study aspects of the claimed invention after an initial disclosure. Rather, conducting additional or follow-up studies can be strong evidence that success is expected or likely.

CAFC Reverses and Remands Attorney’s Fees Issue in Newegg’s Favor

The district court made clearly erroneous factual findings that independently supported reversal. Particularly, the record supported a finding that this case was exceptional given the weakness of AdjustaCam’s litigating position. The evidence offered by AdjustaCam showed that its lawsuit was baseless. However, the district court instead found that AdjustaCam’s litigation position was not exceptional because Newegg’s ball-and-socket products were constrained in such a way that AdjustaCam could reasonably argue that it rotated on a single axis, consistent with the original district judge’s Markman order. But the Court pointed out that AdjustaCam never advanced this argument.

Specific Personal Jurisdiction Requires ‘Substantial’ not ‘Attenuated’ Forum Contacts

NexLearn sued Allen in district court, alleging patent infringement and breach of contract, based on a nondisclosure agreement (NDA) that allowed Allen to use a trial version of NexLearn’s software product… An interactive website that invites a sale into a forum, when no such sale has occurred, is not evidence of minimum contacts to demonstrate the defendant purposefully availed itself of the forum state. A substantial connection with a forum, not an attenuated affiliation, is required for specific personal jurisdiction.

Halo v. Pulse: CAFC Dismisses Premature Appeal of Pending Judgment Interest Award

The Court first addressed whether the district court’s decision awarding Halo pre- and post-judgment interest and ordering the parties to either file a stipulation on the amount of interest or file briefs explaining their positions constituted a “final decision” appealable under § 1295(a)(1). The Court noted that the district court had not resolved the parties’ dispute on the calculation of pre- and post-judgment interest before Pulse appealed. As a result and based on Supreme Court precedent, the Court found that the district court’s pre- and post-judgment interest decision was not “final” because the court had not “determine[d], or specif[ied] the means for determining the amount” of interest.

Federal Circuit Ends Ping-Pong with District Court, Affirming Summary Judgment

This marks the third return to the Federal Circuit of a dispute (the 050 case) between the ArcelorMittal Appellants and the AK Steel Appellees… Overall, the Federal Circuit affirmed the judgment invalidating ArcelorMittal’s reissue patent, finding that the district court: (1) possessed subject matter jurisdiction when it granted summary judgment, (2) properly followed the Court’s most recent mandate on remand, and (3) properly exercised its discretion to deny a Rule 56(d) request for new discovery on commercial success… When appropriate given all of the circumstances, a district court may have jurisdiction to consider claims of a reissue patent on remand, although the claims were not asserted at trial, e.g. if the reissue claims are sufficiently connected to the original case and the remand for such consideration is requested. A case or controversy is not moot, and jurisdiction is not avoided, by tendering an unexecuted and conditional covenant not to sue.

Federal Circuit Refuses to Overturn District Court’s Award of Attorney Fees to Dow

The Court disagreed that the district court’s sole basis for finding exceptional circumstances was that NOVA filed an action in equity. The Court noted that the district court also relied on the substantive weakness of NOVA’s position, which can independently support an exceptional-case determination. It is the substantive strength of a party’s litigating position that can lead to an exceptional case determination not correctness or success of that position. For instance, NOVA’s allegations of fraud were supported exclusively by conflicting testimony, a fact going to the strength of the action.

Federal Circuit demonstrates that even when you win at IPR you can still lose

In a rare IPR affirming patentability, the Patent Trial and Appeal Board (the “Board”) found claims of US Patent No. 6,945,013 to be patentable that were directed to a “method for automatically aseptically bottling aseptically sterilized foodstuffs” in which bottles are “aseptically disinfected at a rate greater than 100 bottles per minute”. However, this unusual pro-patentee outcome was too much for the Federal Circuit. It ultimately vacated and remanded on claim construction grounds, thus highlighting the success of IPRs in achieving their goal of judicial economy.

En Banc Federal Circuit Dodges PTAB Constitutionality

Patlex, which dealt with reexamination of applications by an examiner — not by an Article I tribunal — could be considered a next step beyond McCormick. MCM, however, simply cannot be viewed as consistent with either Patlex or McCormick on any level. Indeed, the Supreme Court was abundantly clear in McCormick, which remains good law. The courts of the United States (i.e., Article III courts), not the department that issued the patent, is the only entity vested with the authority to set aside or annul a patent right. Since the PTAB is not a court of the United States, it has no authority to invalidate patent rights. It is just that simple.

No evidence of lost sales or price erosion means no irreparable harm and no permanent injunction

Nichia Corporation (“Nichia”) sued Everlight Americas, Inc., Everlight Electronics Co., Ltd. and Zenaro Lighting (collectively, “Everlight”) for infringement of three of Nichia’s patents disclosing packaging designs and methods of manufacturing LED devices. Following a bench trial, the district court found that Everlight infringed all three patents and failed to prove the patents invalid. The district court denied Nichia’s request for a permanent injunction. Nichia appealed the district court’s refusal to enter a permanent injunction, and Everlight cross-appealed the district court’s infringement and validity findings. The Court affirmed on all grounds.

Mylan’s proposed ANDA drug does not infringe MedCo patents

A claim term can be limited to an embodiment described in the specification, if the claim would otherwise be found invalid and the embodiment was not disclaimed. Thus, a claim term with no ordinary meaning can be defined according to a single example in the specification, if the example provides “a clear objective standard” for that term.

Federal Circuit limits breadth of claims based on definition in specification, prosecution history

On April 6, 2017, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in The Medicines Company v. Mylan, Inc. (2015-1113, 2015-1151, and 2015-1181) that imports certain subject matter from the specification into the claims… This case provides some key takeaways for patent practitioners, some more obvious than others. First, as has been known for some time, referring to the “invention” in a patent’s specification can hurt, as can indicating that a particular process “includes all” of the embodiments the specification describes. This is why patents for inventions in the U.S. now curiously, if understandably, usually avoid using the word “invention”. Also, setting forth definitions in a specification can have unintended consequences not just for the term being defined but also for terms that are not explicitly defined even if unequivocally characterized in some other way. Prosecution history also matters too, particularly where an applicant distinguishes its invention during prosecution by explicitly characterizing “the invention” in terms divorced from the language of the claims themselves.

Federal Circuit Affirms Grant of Preliminary Injunction to Patent Owner

A preliminary injunction was appropriate when non-infringement depended on an erroneous claim construction; the evidence did not show the proposed combination of references for non-obviousness was enabled; irreparable harm was likely despite other competition, and the injunction tipped in favor of the public interest… The Court held that the fact that other infringers may be in the marketplace does not negate irreparable harm. It also held that the loss by Scag of customers may have far-reaching, long-term impact on its future revenues, and the sales lost by Scag are difficult to quantify due to “ecosystem effects,” where one company’s customers will continue to buy that company’s products and recommend them to others.

Federal Circuit Clarifies Injury in Fact Standing to Challenge Final Agency Decision in IPR

In appealing from a final IPR decision, the appellant must have standing, based on evidence of record or supplemental evidence showing an “injury in fact.” Alleged economic injury must be specific and proven, and does not arise just from statutory appeal provisions or from IPR litigation estoppel when appellant’s infringement of the challenged patent is not a potential issue.