Posts Tagged: "Judge Jimmie Reyna"

The Federal Circuit, in an opinion by Judge Dyk who was joined by Judge Taranto, first held that 35 U.S.C. § 314(d) did not preclude the Court from hearing Ethicon’s challenge to the authority of the Board to render a final decision. On the merits the panel held that neither the statute nor the Constitution precludes the same panel of the PTAB that made the decision to institute inter partes review from making the final determination. The Federal Circuit also found no error in the Board’s determination that the ’070 patent claims would have been obvious over the prior art. Judge Newman dissented, concluding that in order to restore confidence in the reliability of patents as “investment incentives” the USPTO must conform the inter partes review process to the statute.

Wi-LAN argued that even if they could not prove direct infringement, a structure that performs the steps in the reverse order should properly be found to infringe under the doctrine of equivalents. Curiously, the Federal Circuit disagreed despite finding the Wi-LAN argument to have merit. Exactly how the Federal Circuit came to the determination that there was substantial evidence to support the jury verdict on the doctrine of equivalents is unclear.

The Federal Circuit held that the written description requirement is met for negative claim limitations where the specification simply describes alternatives. In other words, the “reason to exclude” required by Santarus can be met without discussion of advantages of exclusion or disadvantages of inclusion. Further, alternative elements need not be explicitly described as alternatives, so long as the specification conveys to a person of skill in the art that those elements are, in fact, alternative or optional. Negative limitations are only unsupported where the specification provides no examples or suggestions that such limitations are alternative or optional.

The law of patent eligibility is created by the nine least qualified people to make such a determination; the Justices of Supreme Court of the United States. The Supreme Court arbitrarily chooses which of its own prior decisions to follow and ignore, refuses to read and enforce the laws passed by Congress even when the statue is but a single sentence (as is 101), and they openly legislates from the bench by creating judicial exceptions to patent eligibility where no such statutory prerogative exists. If the Federal Circuit will not step up and do the right thing and limit the lawless Mayo decision, which instructs lower courts to ignore the patent statute and drive 100% of the analysis into 101, the U.S. will forfeit our lead in the biotechnology and medical device industries. That will be bad for the economy, but far worse for public health.

The district court erred by relying entirely on the plain meaning of the claim where context-based interpretations were necessary. The Court held that the plural terms “intervals” and “remotes” in isolation could mean what must occur during each interval and what was applicable to all the remotes, but there was no requirement indicated in the remaining claim language or specification that at least one remote transmit and receive frames during at least one interval. The Court held that this evidence, together with other language in claim 21, and teachings in the specification, showed that each cycle in the claims must have intervals in which remotes were allowed to transmit.

The Federal Circuit reversed the district court’s claim construction, and held that the claim language does not require that the start and duration of remote-transmission intervals be communicated prior to the beginning of the cycle. St. Jude had not explained why, in accordance with the specification, it was not sufficient that a remote know roughly when to expect an upcoming cycle to begin, rather than its exact starting time, and why such interval information could not be communicated during a cycle. The Court postulated that a remote unit could power up its communications equipment for the entirety of a first cycle, receive interval information whenever it was transmitted, then only power up that equipment during its assigned interval for subsequent cycles.

Damages for infringement of a design patent can be recovered for the greater of: (1) total profits from the infringer’s sales under 35 U.S.C. § 289, (2) damages in the form of the patentee’s lost profits or a reasonable royalty under § 284, or (3) $250 in statutory damages under § 289. Here, the Court held that the district court incorrectly instructed the jury to choose between awarding damages under § 284 or § 289. According to the Court, “[o]nly where § 289 damages are not sought, or are less than would be recoverable under § 284, is an award of § 284 damages appropriate.”

Despite the Supreme Court ruling that laches is no defense to a copyright infringement action brought during the statute of limitations, the Federal Circuit ruled laches can bar recovery of legal remedies in patent infringement. The Federal Circuit explained that the 1952 Patent Act codified the common law rule, meaning that laches was codified as a defense under 35 U.S.C. 282.
The Federal Circuit, sitting en banc, followed the common law principle that, ”[w]hen a statute covers an issue previously governed by the common law, [the Court] must presume that Congress intended to retain the substance of the common law.” The Federal Circuit also ruled that laches does not preclude an ongoing royalty.

Summit 6 LLC (“Summit”) sued Samsung Electronics Co. Ltd. and Samsung Telecommunications America, LLC (collectively “Samsung”) and others alleging infringement of U.S. Patent No. 7,765,482 (“the ’482 patent”), which relates to the processing of digital photos and other digital content before being transmitted over a network by client devices (e.g., cell phones). Summit’s expert testimony and the license resulting in settlement for another defendant, RIM, supported the damages verdict. The RIM license was comparable because both RIM and Samsung sell camera phones having the accused MMS functionality.

The Federal Circuit disagreed, holding that “record evidence establishe[d] a genuine dispute over whether a person of ordinary skill would have been motivated to add a vent to Hoang’s disinfecting cap.” The Court also held that “the tradeoff between the desire to retain cleaning agent and the patents’ disclosure regarding drying is a factual matter left to the factfinder.”

While Dome’s argument against obviousness based on Tanaka teaching away was plausible, it was not sufficient to overcome the district court’s factual findings that a person of ordinary skill would have been motivated to combine the identified prior art to arrive at the claimed invention. Accordingly, the Federal Circuit affirmed.

The Federal Circuit affirmed the TTAB, noting that substantial evidence supported the TTAB’s findings. Where, as here, the disputed term is highly descriptive, the TTAB acted within its discretion in refusing to accept evidence of five years’ use as prima facie evidence of distinctiveness.

JVC is a member of two licensing pools for optical disc technology, one for DVD and one for Blu-ray. The asserted patents are included in both pools. The district court adopted JVC’s position that the asserted patents are essential to the licensed DVD and Blu-ray optical discs. Given the patent pool and licensing program, which covers any and all optical disc structures and uses that are essential under the patents, only the use of unlicensed optical discs would be an infringement – regardless of any third-party software used to manipulate the discs. JVC did not argue, and no evidence of record established, that unlicensed discs should be attributed to Nero, or the patent pool license should not encompass discs and end-users that implemented the Nero software.

The en banc Court reversed the previous panel, and expanded the circumstances under which an alleged infringer may be liable under §271(a). In addition to circumstances identified by the panel, liability may arise if “an alleged infringer conditions participation in an activity or the receipt of a benefit upon performance of a step or steps of the patented method, and establishes the manner or timing of that performance.” When that standard is satisfied, the actions of a third party may be attributed to the alleged infringer, who thereby directly infringes under §271(a), even though there was no “mastermind” acting though a formal agent.

In Williamson v. Citrix, the Federal Circuit overruled its own precedent that there is a “strong” presumption that claim limitations that do not use the term “means” are not means-plus-function limitations. This change has been decried by practitioners who purposefully avoid the word “means” in order to avoid means-plus-function treatment of their functionally claimed elements. Means-plus-function claiming is an opportunity to be embraced, not a trap to be avoided. Invoking §112(f) and the associated scope of a means-plus-function limitation is largely in the control of the patent drafter.