Posts Tagged: "Judge Kimberly Moore"

The scope of surrender is not limited to what is necessary to overcome the prior art reference. Instead, patentees may surrender more than is required to overcome the prior art… Thus, the question is what a person of ordinary skill in the art would understand to have been disclaimed based on the argument actually made, not what one of ordinary skill in the art would have thought was necessary to disclaim the prior art identified. Ultimately, because of the breadth of the disclaimer, the Federal Circuit affirmed the district court’s construction relative to the first disclaimer.

LAB sued Eli Lilly & Company, alleging marketing of the drug Cialis induced infringement of LAB’s patent. Eli Lilly subsequently requested that the Board conduct inter partes review of the patent. The Board agreed to do so and ultimately found the patent to be obvious in light of three prior art references… The Court then found the Board’s construction of certain claim terms to be overly broad, stating the Board’s construction “would make the patent claims applicable to individuals with erectile dysfunction not caused by penile fibrosis.”

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.

Mylan had to show by clear and convincing evidence that the idea for the ’445 patent claim was conceived by someone at the FDA and communicated to Mr. Pavliv, the named inventor. The Court agreed with the district court that Mylan did not carry the burden of showing that someone other than Mr. Pavliv had conceived a “definite and permanent idea” of an EDTA-free Acetadote formulation. Mylan argued that Mr. Pavliv’s prior communications with the FDA, including the FDA’s request for justification of the inclusion of EDTA, required Cumberland to undertake research that would have inevitably led to the invention. However, this was not the same as a suggestion to remove EDTA. Derivation is not proved by showing conception and communication of an idea different from the claimed invention, even if that idea would make the claimed idea obvious.

Practitioners dealing with a magistrate judge’s report and recommendation should be sure to preserve objections for appeal, since failing to object may lead to a more deferential, plain error standard of review, depending on the applicable circuit law. Further, in seeking a preliminary injunction, evidence of harm from pre-issuance of the asserted patent is relevant to show likelihood of irreparable harm from similar injuries in the future.

The Board’s determination was “potentially lawful but insufficiently or inappropriately explained.” The finding of obviousness was vacated and the case was remanded for further proceedings… Obviousness findings grounded in common sense must contain explicit and clear reasoning that provides some rational underpinning as to why common sense compels such a result.

Tile Tech argued that a default judgment was not appropriate because the district court did not find that Tile Tech acted in bad faith. However, the Court identified the full test for default, in the Ninth Circuit, as “willfulness, bad faith, or fault.” Tile Tech failed to present evidence that its dilatory actions were not its fault, i.e. outside of its attorney’s control. Therefore, the Court upheld the judgment… The Court also found the requirement to surrender “any mold, or other device, by which any [component] utilized with the [patent] was made” an acceptable means of preventing future infringement.

NuVasive owns a patent relating to spinal fusion implants. Medtronic petitioned the Patent Trial and Appeal Board (the “Board”) to institute an inter partes review challenging the validity of NuVasive’s patent over several references. The Board instituted the IPR and found the challenged claims obvious over a combination of references.

Earlier today the United States Supreme Court granted certiorari in TC Heartland LLC v. Kraft Food Brands Group LLC. In deciding to hear this patent venue case the Supreme Court has agreed to decide whether 28 U.S.C. § 1400(b) is the sole and exclusive provision governing venue in patent infringement actions… Ultimately, the question that the petitioner really wants the Supreme Court to address is whether the Eastern District of Texas, which is home to 20-25% of all patent litigations because it is perceived to be patent owner friendly, is a proper venue for patent owners to be choosing. If the Supreme Court issues a ruling that strikes down current patent venue rules there would be no need for patent venue reform efforts to continue in Congress. On the other hand, if the Supreme Court were to affirm the Federal Circuit in this case calls for legislative venue reform would likely become deafening.

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 an IPR decision, the Patent Trial and Appeal Board invalidated several claims from U.S. Patent No. 6,030,384 as anticipated or obvious over Japanese Publication No. H1033551A. The Federal Circuit vacated and remanded. The antedating inquiry under Pre-AIA section102(g) is directed to evidence of diligent activity during the critical period as a whole and does not require justifying every period of unexplained inactivity.

In the second IPR, NuVasive never received an opportunity to respond to contentions citing the Michelson Patent. First, arguments in the first IPR did not carry over to the second IPR. Second, it was not until Medtronic’s reply that NuVasive received notice of Michelson, and then was denied an opportunity respond. NuVasive’s ability to enter observations regarding cross-examination of an expert who opined on Michelson was not an adequate opportunity to respond. The “observations are not a vehicle for submitting new evidence, including new expert declarations, by the patent owner,” and “indeed, the permitted content and format of observations are tightly circumscribed.”

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.

The Court reasoned that the claims were limited to straightforward steps that a skilled artisan could perform mentally and that the inventors admitted to doing so. The claims, on their face, do not call for computer implementation, and Synopsys did not advance a claim construction requiring a computer. Additionally, complex details in the specification are insufficient to transform broad claims from an abstract idea into patentable subject matter. Given the breadth of the claims, the Court declined to decide if a computer-implemented version of the invention would be patentable under § 101.

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.