Posts Tagged: "Judge Todd Hughes"

It is inappropriate for a trial court to discount material expert testimony so as to weigh the evidence in favor of a party seeking summary judgment. The presence of a genuine dispute precludes summary judgment in such cases. … Failure to disclose arguments concerning claims of a different scope in a different patent application was not inequitable conduct when differences were apparent to the Examiner.

In an indefiniteness analysis, particularly for a “means plus function” claim, the patent must particularly disclose the corresponding structure for performing the claimed function. It is not enough that a person of ordinary skill in the art would likely know what structure to implement. The Court also clarifies that in a willful infringement analysis, the preponderance of the evidence standard implemented in Halo should be used, rather than the clear and convincing evidence standard used in Seagate.

As a threshold matter, the Court considered whether it had jurisdiction over the writ of mandamus. The Court noted the America Invents Act broadened its jurisdiction to cases including compulsory counterclaims “arising under” patent. Here, the Court found that the patent infringement counterclaims were compulsory because Rearden’s infringement counterclaim shared a critical factual dispute with its claims regarding ownership and rightful use of the technology claimed in the MOVA patents. Therefore, the Court found it did have jurisdiction over the writ of mandamus.

In 2013, Google, Inc. (“Google”) filed inter partes review and covered business method petitions challenging the validity of Unwired Planet, LLC’s (“Unwired”) patent, at issue on appeal. The patent describes a prioritization of search results based upon the location of a mobile device and including prioritization of “preferred providers” within those search results, in turn providing a “farther-over-nearer” ordering of the results. The Board invalidated all of the challenged claims as obvious. The Federal Circuit concluded, “[b]ecause the use of alphabetical order as prioritization information would sometimes meet the farther-over-nearer claim elements, the Board was correct to conclude that the proposed combination” rendered claim 1 obvious.

Claimed methods incidental or complimentary to financial services are not necessarily reviewable as CBM patents. The claims as they were written must be directed to methods and apparatuses that have particular uses in connection with a financial product or service. For a patent to be a CBM patent, “[i]t is not enough that a sale has occurred or may occur, or even that the specification speculates such a potential sale might occur.”

The PTAB used the wrong standard to institute the CBM proceeding in the first place, which lead the Federal Circuit to vacate the PTAB decision and remand the case for further consideration by the PTAB – namely the application of the proper standard… As the Federal Circuit would point out later: “All patents, at some level, relate to potential sale of a good or service.” To allow this PTAB created standard that has no textual support in the statute to be applied would be to allow virtually any patent to be the subject of a CBM. That was clearly was not the intent of Congress and it would fly directly and unambiguously in the face of the explicit language of the statute. The PTAB is significantly limited in their power to institute a CBM.

The Federal Circuit reversed the cancellation of two trademarks by the Trademark Trial and Appeal Board (“Board”) and remanded for further consideration… “Use in commerce” under the Lanham Act encompasses any activity that falls under Congress’s Commerce Clause power, including in-state sales to an out-of-state resident. Activities that are within such regulatory authority are unlikely to be disqualified as merely “de minimis,” e.g. in economic impact.

The Federal Circuit denied appellant SAS’s petition for rehearing en banc from a decision by the Patent Trial and Appeal Board, without an explanatory opinion. Judge Newman dissented. Without discussing the facts of the case, she undertook to review the statutory provisions for inter partes review (“IPR”) proceedings under the America Invents Act (“AIA”). According to Newman, the Court should have granted the petition, in order to correct the Patent Office position that “the final order of the [Patent Trial and Appeal] Board need not address every claim raised in the petition for review.” According to Judge Newman, a review of the statutory provisions of the AIA makes it clear that, if the PTAB decides to institute review, it should do so for all of the challenged claims, not just some of the challenged claims.

In 2013, Cardiocom, LLC (“Cardiocom”), a subsidiary of Medtronic, Inc. (“Medtronic”), sought inter partes review of two patents owned by Robert Bosch Healthcare Systems, Inc. (“Bosch”). The Cardiocom petitions were denied in January 2014. Medtronic later sought another inter partes review of the same two patents, without naming Cardicom as an interested party… Section 314(d) bars review of questions regarding the application and interpretation of statutes “closely related” to the decision whether to institute an IPR, including reconsideration of the Board’s decision to institute.

Claim differentiation does not broaden claims beyond their meaning in light of the patent as a whole, and cannot override clear statements of claim scope found the specification and prosecution history… Disavowal can occur when the specification plainly describes “the present invention” as having that feature. Here, the specification states that an important characteristic of the present invention is a “reduction in upper width … resulting from the extended short seals.” Disavowal can also occur when the specification distinguishes or disparages prior art based on a specified feature. The specification did that here, by stating that prior art bags are difficult to secure over trash receptacle lips and explaining how the described short seals solve this problem.

The Court found substantial evidence to support the jury’s finding of infringement. While Samsung’s expert offered conflicting testimony, a reasonable jury could have credited Apple’s expert. Thus, there was no error in the district court’s conclusion that substantial evidence supported the jury verdict of infringement… Note that the underlying dispute in this case does not concern design patents that were also asserted against Samsung, and which are currently being reviewed by the Supreme Court.

The Federal Circuit affirmed a district court’s dismissal under Rule 12(b)(6) for failure to meet the pleading standards for joint patent infringement, holding that Form 18, from the Appendix to the Federal Rules of Civil Procedure, does not apply to a claim of joint infringement… Form 18 is not sufficient per se, and pleadings must adhere to the Twombly/Iqbal pleading standard, and must do so for each element of the allegedly infringed patent claim. This is particularly true for pleading joint infringement.

Under the doctrine of inherent disclosure, it is not necessary for an earlier application to explicitly describe the later patent. There is adequate written description to support a later patent where it is undisputed that the invention inherently described in an earlier application was the same subject matter included in the claims of the later patent.

Stryker Corporation was awarded $70 million in lost profits after a jury found that Stryker’s patents were valid and willfully infringed by Zimmer. The district court affirmed the jury’s verdict, awarded Stryker treble damages for willful infringement, and awarded Stryker attorney’s fees. Stryker’s patents concerned portable, battery-powered, and handheld pulsed lavage devices used in orthopedic procedures to deliver pressurized irrigation for medical therapies, including cleaning wounds.

The Federal Circuit again addressed whether Pulse’s domestic sales activities were either a sale or an offer for sale in the U.S. While the patent statute does not define “sale,” the Court has previously held that it carries its ordinary meaning, including the transfer of title or property. Further, a “sale” must be understood in view of the strong policy against extraterritorial liability for patent infringement. Here, no sale occurred in the U.S., because the final formation of a contract and all elements of performing the contract occurred outside the U.S.