Posts Tagged: "Judge Kathleen O’Malley"

These issues of fairness and fair use are played out in the recent Oracle v. Google decision. In a convoluted case that has gone up to the Supreme Court once and will again, the Federal Circuit finally was able to make a ruling that the blatant, verbatim copying of computer code is not a fair use. At issue were the copying of 37 Oracle programs or apps, constituting over 11,500 lines of code, by Google for their use in the Android operating system for smart phones and other uses… In the Federal Circuit’s final analysis of the four factors, they again noted that Google could have written their own code or properly licensed with Oracle, but instead chose to copy. “There is nothing fair about taking a copyrighted work verbatim and using it for the same purpose and function as the original in a competing platform.” Accordingly, the Federal Circuit held that Google’s use of the Oracle code was not a fair use.

The Federal Circuit found that the Board failed to provide sufficient explanation for its obviousness finding, instead using a conclusory approach that asked whether the missing limitation resulted from “ordinary creativity” of a skilled artisan. According to the panel majority, the question of whether the claims resulted from ordinary creativity was akin to asking whether the claims were obvious as a result of common sense. Therefore, the Federal Circuit began by returning to it’s 2016 ruling in Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355 (Fed. Cir. 2016), which dealt with the proper use of common sense as part of an obviousness rejection.

The Federal Circuit found Google’s use of Java API packages in it’s Android operating system was not a fair use as a matter of law, resurrecting a multi-billion dollar copyright case brought by Oracle Corp against Google. With copyrightability and fair use now decided, unless the Supreme Court intervenes (which seems unlikely) this case will head back to the district court for a damages trial with the sole question being how much money Google owes Oracle America. “This is a hugely important development in the law of copyright and fair use. If it stands, there are numerous implications,” said J. Michael Keyes is a partner at the international law firm Dorsey & Whitney.

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.

Unlike the Board’s anticipation determinations, which contravened the only permissible findings that could be drawn from the prior art under the proper constructions of the relevant claim terms, the obviousness determinations involved “potentially lawful but insufficiently or inappropriately explained” factual findings. In re Van Os, 844 F.3d 1359, 1362 (Fed. Cir. 2017). The Board failed to explain its reasoning to allow the Court to determine whether its findings would be lawful. When faced with similarly deficient factual findings, the Court has “consistently vacated and remanded for further proceedings.” Id. Consequently, the Court vacated the Board’s obviousness rejections with respect to claims 1-3, 5-8, and 21, and remanded for further factual findings and explanation on this issue.

The Federal Circuit also remanded to the Board further consideration of the undisputed evidence presented by Polaris that its ATVs were a commercial success. Polaris presented undisputed evidence that its vehicles had generated over $1.5 billion in sales since 2007 and that the commercial product was tied to the patent and claims entitling Polaris to a presumption of a nexus. Despite this undisputed evidence the Board still concluded that Polaris failed to prove a nexus, finding Polaris’ evidence conclusory.

The Federal Circuit found that Actelion was required to make an express request to commence early national stage examination. Actelion’s statement “earnestly soliciting early examination,” which made no reference to § 371(f), the PCT, or the national stage, combined with failure to check the box expressly requesting early examination, was an “inconsistent or ambivalent request.” While Actelion was not required to check any boxes, it was still required to make its intentions clear. Thus, the district court did not err in affirming the PTO’s finding that Actelion failed to make an express request for early examination. The Federal Circuit also found no error in the PTO’s determination that the national stage commenced on January 17, 2012, the next workday after a 30-month date that fell on a federal holiday.

While the Court affirmed several of the Board’s validity findings, it reversed the determination that the ’455 PCT qualifies as prior art. At issue was the extent to which the ‘817 application included the disclosures of Severinsky, so that challenged claims would antedate the ‘455 PCT. Paice argued that Severinsky was incorporated into the ‘817 application and was not prior art. Therefore, certain challenged claims could rely on Severinsky for the ‘817 priority date, which was earlier than the ’455 PCT.

A disclaimer of challenged patent claims before an IPR is instituted may result in a final adverse judgment against the patent owner, triggering estoppel provisions that preclude the assertion of other claims that are not patentably distinct from those disclaimed… Judge Newman dissented, explaining that because no trial occurred, the Board had no authority to issue an adverse judgment.

The Federal Circuit affirmed the district court’s denial of LG‘s motion for summary judgment that various claims of Core’s patents were directed to patent ineligible subject matter under Section 101. The Court also affirmed the district court’s denial of LG’s motions for judgment as a matter of law that the claims were anticipated and not infringed… The concept of summarizing information can be patent eligible (not abstract) when specifically applied to improving the efficiency of the electronic device, as in a “particular manner of summarizing and presenting information in electronic devices.”

In its decision, the Federal Circuit upheld a lower court’s ruling that Advanced Video did not have standing to sue for patent infringement after it was determined that the co-owner of the patent did not assign ownership to the patent under the terms of an employment agreement… Although Hsiun never signed an assignment declaration, she also never objected to the USPTO procedures leading up to the grant of the ‘788 patent. Newman’s dissent focused mainly on the terms of Hsiun’s employment agreement, which demonstrated that Ms. Hsiun’s inventions were the property of the employer.

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.

Inter Partes Review proceedings (IPRs) are subject to statutory timing provisions. The Court, sitting en banc, reviewed whether PTAB decisions determining whether an IPR was timely filed are appealable. More specifically, the Court considered whether the bar on judicial review of institution decisions, under Section 314(d), applies to the Board’s time-bar determinations, under Section 315(b)… Time-bar determinations by the patent office are reviewable by the Federal Circuit.

The key issue in the present appeal, in light of Akamai V, is whether TSA’s performance of the final two steps of the patented method claims can be attributed to Travel Sentry, such that Travel Sentry is responsible for infringing the relevant claims… Under Akamai V, direct infringement under § 271(a) occurs where all steps of a claimed method are performed by a single entity. When more than one actor is involved in practicing the steps, the court considers whether the acts of one entity are attributable to the other such that a single entity is effectively responsible for the infringement. An entity will be held responsible for another’s performance of method steps where it directs or controls that performance. This is a question of fact.

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.