Posts Tagged: "Judge Kimberly Moore"

Trustees of Boston University (“BU”) sued Everlight Electronics Co., Ltd., and others (collectively, “Everlight”) for infringement of U.S. Patent No. 5,686,738 (the “738 Patent”). The Federal Circuit reversed the district court ruling that Everlight infringed the ‘738 Patent and failed to prove the patent was invalid, finding that the ‘738 Patent was invalid for lack of enablement… BU argued that the ‘738 Patent did not have to enable growing a monocrystalline layer directly on an amorphous layer so long as the patent enabled the five other permutations in the specification. The Court disagreed, noting that “the specification must enable the full scope of the claimed invention.” While the specification does not have to “expressly spell out every possible iteration of every claim,” it must provide at least a “basic enabling disclosure” for the claimed invention.

NantKwest filed suit in district court under 35 U.S.C. § 145 to contest the PTO’s rejection of its patent application. The USPTO prevailed and filed a motion for reimbursement of all of its litigation expenses, including attorney’s fees. 35 U.S.C. § 145 requires that “all expenses of the proceeding be paid by the applicant,” which the USPTO claimed included their fees and costs… While Congress can create fee-shifting statutes, 35 U.S.C. § 145 did not reflect explicit congressional authorization for fee-shifting that would displace the American Rule.

“In sum, Defendants showed that epitaxially growing a monocrystalline layer directly on an amorphous layer would have required undue experimentation—indeed, that it is impossible,” the Federal Circuit found. The appellate court also found that Boston University created its own enablement problem by seeking a construction for “a non-single crystalline buffer layer” which included a purely amorphous layer. Along with reversing the district court’s denial of JMOL, the Federal Circuit dismissed-as-moot Boston University’s cross-appeal of the district court’s denial of attorney’s fees and enhanced damages.

Federal Circuit, in an opinion authored by Judge Moore, affirmed the determination of the PTAB, holding that tribal sovereign immunity cannot be asserted in IPRs. the decision of the Federal Circuit is rather seriously flawed. The PTAB is simply not capable of exercising jurisdiction over a patent through in rem jurisdiction. The ruling of the PTAB only implicates the rights of certain persons, and because the patent and all patent claims remains open to challenge by others in the future. That truth means the PTAB acts, at best, quasi in rem, which thanks to Supreme Court jurisprudence should be extremely relevant when determining the applicability of tribal sovereign immunity.

On Monday, July 16th, the Court of Appeals for the Federal Circuit issued a precedential decision in Blackbird Tech v. ELB Electronics, which vacated an earlier judgment of non-infringement of a patent asserted by Blackbird in the District of Delaware. The Federal Circuit majority panel of Chief Judge Sharon Prost and Circuit Judge Kimberly Moore determined that the district court had erred at construing the claim term “attachment surface” in finding non-infringement of the asserted claims. Circuit Judge Jimmie Reyna dissented in this case.

The Federal Circuit found that substantial evidence supports the Board’s conclusion that a person of ordinary skill in the art would have been motivated to combine the references… Regarding Sirona’s contingent motion to amend, the Board’s final written opinion, which issued prior to the Court’s en banc Aqua Products decision, improperly placed the burden on Sirona to demonstrate that the proposed substitute claims were patentable. Accordingly, the Federal Circuti vacated the Board’s denial of the motion and remanded for reconsideration in light of Aqua Products.

On Friday, June 15th, the Court of Appeals for the Federal Circuit denied a petition for panel rehearing and rehearing en banc in Xitronix Corporation v. KLA-Tencor Corporation. The petition for rehearing was filed by KLA-Tencor after the Federal Circuit first decided Xitronix back in February of this year, where the appellate court held that it didn’t have jurisdiction to hear an appeal in a patent case which only involved claims of monopolization under U.S. Supreme Court standards set in 1965’s Walker Process Equipment v. Food Machinery & Chemical Corp.

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.

Appellant General Hospital Corp. (“GHC”) appealed the Board’s dismissal of an interference because the claims of its involved patent application lacked sufficient written description. The disclosure of a wide range with exemplary values does not provide written description support for a narrower claimed range, absent something to indicate the claimed range was considered critical or that inventor was in possession of the specific claimed embodiments. The Board cannot reject a motion to add a new claim to a patent application involved in an interference without explaining its findings.

In Energy Heating v. Heat On-The-Fly, the court did not abuse its discretion in finding clear and convincing evidence that the inventor knew that the prior uses were material and specifically intended to deceive the PTO by not disclosing them. The court had sufficient evidence – including evidence of 61 commercial sales dating back to 2006 and no contemporaneous evidence of experimentation – to disbelieve Mr. Hefley’s testimony to the contrary.

The Court took issue with the PTO’s construction of “coupled.” While the “broadest reasonable interpretation” applies at the PTO, that interpretation must be consistent with the specification, and does not allow “unfettered license to interpret the words in a claim.” The Court pointed to several portions of the specification that support a narrower construction of “coupled”, noting that the patent “strives to eliminate unnecessary components and create a more compact circuit.”

The Board is not compelled by Federal Circuit precedent or PTO guidelines to consider arguments and evidence presented for the first time during oral argument. However, if the Board does consider new arguments or evidence, the responding party must be given an opportunity to submit rebuttal arguments and evidence.

Nalco asserted that the only difference between its patented method and the Chem-Mod Process was the location of the injection. The district court dismissed Nalco’s complaints for failure to state a claim, including its Fourth Amended Complaint (“4AC”) at issue in the present appeal… The Federal Circuit, in an opinion authored by Judge O’Malley, rejected Defendants’ argument that Nalco’s direct infringement claims were implausible and instead agreed with Nalco that the resolution of its claims depended on the construction of the terms “flue gas” and “injecting.” Resolution of this claim construction dispute was inappropriate at the Rule 12(b)(6) stage of the proceedings.

The PTAB found the claims in question obvious for two reasons. First, in its primary ruling the PTAB held that there was no prosecution disclaimer, finding the “single entry” limitation of the claims to include text selection by a user, which was clearly within the prior art. The PTAB reasoned that claims these claims were not limited by the prosecution record, but to do this the PTAB had to ignore both the patent examiner’s Reasons for Allowance and the argument made by the applicant in the Remarks. Rather inexplicably, citing Sorensen v. Int’l Trade Comm’n, 427 F.3d 1375, 1379 (Fed. Cir. 2005), the PTAB ruled that it is up to the applicant to disclaim scope, not the examiner. But such a rationale simply ignored the facts on the record, namely that the reason the examiner explained the claims were allowed was precisely because of the argument made in the Remarks. Therefore, it was the applicant that specifically gave up that claim scope, as required to establish a prosecution disclaimer.

In Atrix Software v. Green Shades Software, Aatrix sued Green Shades for infringement, and Green Shades moved to dismiss. The district court granted the motion, holding: (1) claim 1 of the ‘615 patent was not directed to any tangible embodiment and was not patent-eligible subject matter under § 101; and (2) under the Alice/Mayo two-step analysis, the remaining claims were for abstract ideas without inventive concepts and were also ineligible. Aatrix appealed. The Federal Circuit vacated the district court’s decision, reversed its denial of Aatrix’s motion for leave to file a second amended complaint, and remanded for further proceedings… Allegations in a patent infringement complaint that create a factual dispute about whether the claimed invention contains an inventive concept will defeat a motion to dismiss under § 101. For software inventions, such allegations include improvements in how a computer functions. An amended complaint to make such allegations should generally be allowed.