Posts Tagged: "Judge Pauline Newman"

In 2011, Advanced Video filed suit against HTC for patent infringement in the Southern District of New York. The district court dismissed the suit for lack of standing, finding that Advanced Video did not have an ownership interest in the patent. The Federal Circuit affirmed. Judge Newman dissented, arguing that Advanced Video had full ownership of the ?788 Patent and standing to sue for infringement. She found that the Employment Agreement, including the “will assign,” trust and quitclaim provisions, demonstrated a mutual intent and understanding that any inventions created during Ms. Hsiun’s employment at Infochips would be owned by Infochips.

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 Federal Circuit heard the case of Microsoft Corp. v. Biscotti, Inc. After Biscotti, Inc. (“Biscotti”) sued Microsoft Corp. (“Microsoft”) for patent infringement, Microsoft filed three unsuccessful inter partes reviews (“IPR”) challenging certain claims of U.S. Patent No. 8,144,182 (“the ‘182 patent”) as anticipated or obvious. The ‘182 patent relates to tools and techniques for providing video calling solutions. The IPRs focused on independent claims 6 and 69, and their dependent claims. On appeal Microsoft challenged the Board’s standard of review… The Federal Circuit reiterated that anticipation is a question of fact subject to substantial evidence review, that ultimate claim construction and claim construction relying solely on intrinsic evidence is subject to de novo review, and subsidiary factual findings based on extrinsic evidence are reviewed for substantial evidence.

The Federal Circuit decision in the case of CRFD Research v. Matal resolves three appeals involving a single patent: CRFD’s ‘233 patent describing methods and systems that allow a user to begin a session on one communication-enabled device and transfer it to another… Lack of anticipation based on a single reference does not preclude a finding of obviousness based on the same reference. Even if a reference’s is insufficient for anticipation, which is a question of fact, that same reference teachings may be used to find obviousness, a question of law based on underlying factual findings.

Scott Kieff: “My biggest take from today’s sessions, was to hear from Don Dunner and Judge Newman and others about that great ideas that we could all share in to bring increased economic growth, increased innovation, increased opportunity for the market, for consumers and for manufacturing by returning to an approach to the IP Antitrust interface that is politically diverse, that both President’s Carter and Reagan embraced. That kind of pivoting could really help the system and it could be done by getting professionals within the community to just talk together in a different way. I know that sounds small because it’s just talking, and talking in a different way. But sometimes those little things can have big payoffs.”

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.

Because it is clear when infringement occurs, and the scope of the claims is reasonably certain, the Court reversed the judgment of invalidity due to indefiniteness… Claims having functional elements are not indefinite, as encompassing both an apparatus and a method, if they make clear whether infringement occurs upon creating the apparatus or upon its use. A claim with functional language clearly tied to a structure that defines its capabilities is an apparatus claim; such functional language does not make the claim indefinite by also claiming a method of use.

In Owens Corning v. Fast Felt Corp, Fast Felt sued Owens Corning for infringement, and Owens Corning filed a petition with the PTO seeking inter partes review of claims 1, 2, 4, 6, and 7. All of the challenged claims contain the term “roofing or building cover material.” Owens Corning argued that the claims are obvious over Lassiter, Hefele, and Eaton. The Board concluded that Owens Corning failed to show obviousness of any of the challenged claims… While the preferred embodiment of a claim might focus on a particular element of the claim, this is not enough to narrow the claim scope of the IPR. The Board must still give the claim its broadest reasonable interpretation in light of the specification. Where the record and a correct claim construction support only one result, reversal is warranted, without need for remand.

In Organik Kimya AS v. Rohm & Haas Co., Organik Kimya AS (“Organik”) appealed the decisions of the Patent Trial and Appeal Board (“Board”) in two related inter partes review (“IPR”) proceedings for which Organik is the Petitioner. The Patent Owner is Rohm & Haas Co. The Board sustained the patentability of the challenged claims, Organik appeals… When confronted with expert experiments and testimony, practitioners must provide sufficient evidence and argument to negate and outweigh the testimony – unsupported critiques of the expert’s methodology and challenges of relevance are insufficient.

Although the patent prosecution process is adversarial in nature, patent practitioners must be keenly aware of their duty to maintain the integrity of any subsequently issued patent by supplying the patent examiner with all prior art that is believed to be relevant and also avoiding any misrepresentations of the prior art.  Patent litigators have long been aware of the potential pitfall of having a patent invalidated based on inequitable conduct due to activities of a patent prosecutor carried out months or years prior to the litigation proceedings.  In light of a recent decision by the Federal Circuit in Regeneron Pharmaceuticals v. Merus, however, it now appears that inequitable conduct by a patent prosecutor may be inferred due to activities of a patent litigator carried out month or years after patent prosecution has concluded.

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.

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.

Uber Technologies, Inc. and Ottomotto LLC (“Uber”), appealed the district court’s order, denying Uber’s motion to compel arbitration of pending litigation with Waymo, LLC (“Waymo”). Levandowski, a former employee of Waymo, was an Intervenor in this case. Uber sought to compel arbitration on the basis of Waymo’s arbitration agreement with Levandowski, not because of any arbitration agreement with Waymo.

Waymo, a Google spin-off, sued Uber and Ottomotto for patent infringement and violations of federal and state trade secret laws. Waymo alleged that its former employee, Mr. Levandowski, improperly downloaded documents on Waymo’s driverless vehicle technology prior to leaving the company and founding Ottomotto, which was subsequently acquired by Uber… During discovery, the Magistrate Judge granted Waymo’s Motion to Compel production of the Stroz Report. Waymo subpoenaed Stroz to produce the report and accompanying communications, documents, and devices. After a Motion to Quash was denied, Levandowski, Ottomotto, and Uber filed Motions for Relief from the Magistrate’s orders. The District Court denied the Motions. Acting alone, Mr. Levandowski appealed the district court’s denial of relief. Because the orders were not appealable final judgments, Mr. Levandowski presented his appeal as a writ of mandamus. The Court denied the writ, dismissed the appeal on jurisdictional grounds, and ordered production of the Report.

The Federal Circuit affirmed a district court decision upholding the validity of two patents belonging to Intellectual Ventures (“IV”), but reversed all findings of infringement regarding one patent and remanded for further proceedings regarding the other. IV sued Motorola for infringement of two patents. The ‘144 patent relates to a file transfer system between computer devices. The ‘462 patent relates to a portable computer formed by docking a smartphone into a “shell” with a larger display and keyboard. Motorola defended the suit by arguing non-infringement and the invalidity of the patents. At separate trials, a jury found Motorola infringed both patents and failed to prove them invalid. Motorola moved for judgment as a matter of law and the district court denied both motions.