Posts Tagged: "Judge Jimmie Reyna"

Murata argued that the district court should have relied on the traditional three-factor test, which does not consider the burden of litigation on the court and the parties. By considering the burden of litigation, it alleged that the court committed a reversible error. The Court disagreed, ruling that courts have broad discretion to manage their own dockets, including the power to grant a stay of a case. This discretion does not come from statute, but is an inherent power of the courts. Thus, a district court may consider other factors beyond the three-factor stay test at its discretion. Further, the legislative history of the AIA reveals that Congress intended IPR’s to reduce the burden of litigation.

In light of Commil, the Supreme Court granted certiorari, vacated the judgment, and remanded the case to the Federal Circuit… First, the Court concluded that Warsaw’s non-infringement theory was objectively unreasonable. Second, the Court concluded that NuVasive had presented sufficient evidence such that a jury could conclude that Warsaw knew it was inducing doctors to infringe NuVasive’s patent. In a concurrence, Judge Reyna expressed several concerns about the court’s reasoning in reaching this conclusion.

The Court agreed with Facebook in that these claim terms had no accepted meaning in the art, which meant that they cannot be construed broader than the specification disclosuses. The Court noted that the prosecution history also provided support for the district court’s construction. Further, because the other evidence was persuasive, there was no need to determine whether certain statements made by the patentees during prosecution rose to clear and unmistakable disclaimer, which is what Facebook argued in the alternative.

Pride Mobility appealed, and noted that the Board construed claim 7 as requiring a “substantially planar” mounting plate “oriented perpendicular” to the axis of the wheelchair’s drive wheel, which the Board found in Goertzen. The Court found that the Board had misconstrued Claim 7, because the claim language made clear that the surface which rendered the mounting plate “substantially planar” must be perpendicular to the drive axis, not some other geometric feature of the mounting plate.

Cardpool, Inc., v. Plastic Jungle, Inc., NKA Cardflo Inc. (Fed. Cir. Apr. 5, 2016) (Before Newman, Reyna, and Wallach, J.) (Opinion for the court, Newman, J.)(Federal Circuit held dismissal with prejudice operates as res judicata for the same cause of action even if a subsequent reexamination amends claims.).

ACS challenged the Board’s decision that Shaw was not barred from bringing the second IPR because the petition was filed more than one year after a complaint for infringement was served on Shaw. It argued that the decision of the Board not to apply the one-year bar was a matter of statutory interpretation reviewable by the Federal Circuit, and not a decision whether to institute an IPR. The court disagreed, and held that it had no authority to review the Board’s application of the one-year bar. In dicta, the Court suggested that while voluntary dismissal without prejudice may undo the effect of the lawsuit, it may not undo the effect of service of a complaint, which triggers the one-year time bar. But the issue was not properly before the court.

The Court affirmed that B/E could not challenge the validity of MAG’s patents, because of assignor estoppel. In this case, MAG acquired the patents by assignment from a third party, who in turn acquired the patents from the inventors. After this assignment, one of the inventors went to work for B/E. The district court held that this inventor was as assignor of MAC’s patents and was barred from challenging the validity of the patents under the doctrine of assignor estoppel. Further, B/E was held to be in privity with its current employee (and past inventor/assignor of the patents). The assignor estoppel therefore attached to B/E, which was barred from attacking the validity of the patents.

This is as straightforward a certiorari candidate as any patent case can be. It is manifestly important: A host of judges and amici have stressed that the result below is untenable— invalidating previously irreproachable inventions and precipitating what Judge Lourie called “a crisis of patent law and medial innovation.” And this is the vehicle this Court needs to provide that clarification: Every opinion below agrees that this case tests Mayo’s uncertain limits by invalidating an otherwise plainly meritorious invention. Here, unlike Mayo, every intuition points towards patent-eligibility. And yet the Federal Circuit felt compelled by Mayo to condemn this meritorious patent—and, a fortiori, the patents underlying an entire, vital field of American healthcare innovation.

Akzo appealed from the decision of the district court (Chief Judge Leonard Stark) to grant summary judgment to Dow, which found that Dow did not infringe the claims of U.S. Patent 6,767,956, either literally or under the doctrine of equivalents. Dow also cross-appealed from the district court’s conclusion that the claims of the ’956 patent were not indefinite. Ultimately, the Federal Circuit affirmed the district court on both appeals.

While it is certainly possible that the President has narrowed his consideration to these three candidates, history teaches us that strange twists and turns can and do occur in the Supreme Court nominating process. With four years of experience on the Federal Circuit, confirmed to that court unanimously with a 86-0 vote and vocal bipartisan support, Judge Reyna would be the first Mexican-American to become a Supreme Court Justice, he would be the first international trade lawyer to become a Supreme Court Justice, and he would bring 30 years of broad legal experience and IP training to the High Court. The American Bar Association has ranked him as unanimously well-qualified, its highest ranking.

The Court affirmed the Board’s finding that one Figure and certain passages in the description of the reference disclosed a limited number of elements and suggested combining them in a manner that anticipated the system claimed by Blue Calypso. Thus, “a reference may still anticipate if that reference teaches that the disclosed components or functionalities may be combined and one of skill in the art would be able to implement the combination.” This was an anticipation, without resort to obviousness, because the reference sufficiently disclosed making the combination, though not expressed a single embodiment or example.

The Federal Circuit took the case en banc to review the applicability of the patent exhaustion doctrine under Mallinckrodt and Jazz Photo, in view of the Supreme Court’s decisions in Quanta and Kirtsaeng. The Federal Circuit affirmed the holdings in Mallinckrodt and Jazz Photo, and distinguished them from the Supreme Court’s decisions. In Quanta, the Supreme Court was reviewing whether a patentee’s rights in a product were exhausted by a licensee’s sale of a product.

Each week, we succinctly summarize the preceding week of Federal Circuit precedential patent opinions. We provide the pertinent facts, issues, and holdings. Our Review allows you to keep abreast of the Federal Circuit’s activities – important for everyone concerned with intellectual property. We welcome any feedback you may provide. – Joe Robinson, Bob Schaffer, Parker Hancock, and Puja Dave 83-2.…

In a painfully long decision that at one point analyzed a 1628 statement of Lord Coke as relating to British common-law principles and what light that might shed on modern day patent exhaustion, the Federal Circuit held that when a patentee sells a patented article under otherwise-proper restrictions on resale and reuse communicated to the buyer at the time of sale, the patentee does not confer authority on the buyer to engage in the prohibited resale or reuse. The patentee does not exhaust its rights to charge the buyer who engages in those acts—or downstream buyers having knowledge of the restrictions—with patent infringement. The Federal Circuit also held that a foreign sale of a U.S. patented article, when made by or with the approval of the U.S. patentee, does not exhaust the patentee’s U.S. patent rights in the article sold, even when no reservation of rights accompanies the sale. Loss of U.S. patent rights based on a foreign sale remains a matter of express or implied license.

In a January 29, 2016 decision, the Federal Circuit vacated a jury judgment of non-infringement and ordered the District of Delaware to conduct a new trial where construction of a claim term based on prosecution history disclaimer was found to be too narrow. In rejecting the district court’s construction as too limiting, the Court emphasized the high standard for finding prosecution history disclaimer of claim scope. Examining the two prosecution history passages said to be a disclaimer, the Court found that each was readily susceptible to a narrower reading than the one needed to support the district court’s conclusion.