Posts Tagged: "Judge Alvin Schall"

Last week, the U.S. Court of Appeals for the Federal Circuit reversed a ruling of the U.S. District Court for the Eastern District of Virginia, which had affirmed a patent term adjustment (PTA) calculation of the United States Patent and Trademark Office (USPTO). See Supernus Pharmaceuticals, Inc. v. Iancu, No. 2017-1357 (January 23, 2019). The Federal Circuit held that the USPTO cannot count as applicant delay any period of time during which there was no possible action that the applicant could take to reasonably conclude prosecution. A sensible ruling, and one the panel explained was entirely consistent with both the PTA statute and Gilead Sciences, Inc. v. Lee, 778 F.3d 1341 (Fed. Cir. 2015). “A period of time including no identifiable efforts that could have been undertaken cannot be ‘equal to’ the period of failure to undertake reasonable efforts under the terms of the statute,” wrote Judge Reyna.

The Federal Circuit recently found that assignor estoppel has “no place in IPR proceedings,” affirming a holding of the Patent Trials and Appeal Board (“Board”) that assignor estoppel did not bar Arista Networks (“Arista”) from attempting to invalidate a patent belonging to Cisco Systems (“Cisco”).  Arista’s founder, Dr. David Cheriton, was the inventor on the patent Arista wanted to invalidate and had previously assigned the patent to Cisco while employed by Cisco. See Arista Networks, Inc. v. Cisco Sys., Nos. 2017-1525, 2017-1577, 2018  (Fed. Cir. Nov. 9, 2018) (Before Prost, Schall, and Chen, J.) (Opinion for the court, Prost, J.).

The Federal Circuit recently weighed in on an interference proceeding between the University of California (“UC”) and the Broad Institute over the use of CRISPR-Cas9 technology. The Court affirmed a Patent Trial and Appeal Board (“Board”) decision finding there was no interference-in-fact between UC’s patent application and the claims of twelve patents and one application owned by Institute… Considering the evidence of simultaneous invention, along with evidence regarding the state of the art, inventor statements, and application of similar technologies, the Court concluded the Board’s finding was supported by substantial evidence.

Altaire filed two complaints against Paragon: (1) alleging a breach of the non-disclosure clause of the Agreement, and (2) seeking declaratory judgment that the ‘623 patent was invalid. Paragon, in turn, alleged a material breach of the same clause and sought the termination of the Agreement. Altaire also sought post-grant review of the ‘623 patent, arguing that the patent was obvious over two production lots of its products. After the PTAB issued a final written decision determining that Altaire failed to prove that the asserted claims were obvious, Altaire appealed. The Federal Circuit reversed-in-part, vacated-in-part, and remanded for further proceedings. Circuit Judge Schall disagreed.

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.

In an appeal from an IPR in which the Board upheld the patentability of several patent claims, the Federal Circuit vacated the decision and remanded to the Board with instructions to consider the patentability of certain dependent claims… The patentability of independent Claims 1 and 17 was the sole basis for the Board’s decision in this appeal from the ’592 IPR; the Board did not separately address the dependent challenged claims. The holding of unpatentability of claims 1 and 17 in the ’728 IPR, and the affirmance by the Federal Circuit, abrogated the basis for the Board’s decision that the claims in the ’592 IPR were patentable.

The standards for overturning a jury verdict and Court’s award of enhanced damages are high. The legal standard regarding lost profits is not limited to one third party sale and courts have discretion to determine if substantial evidence supports a finding of lost profits.

In re i.am.symbolic, llc, William Adams, better known by his stage name “will.i.am”, was refused registration of a Trademark for “I AM” on the ground of a likelihood of confusion with registered marks. The Federal Circuit affirmed the Trademark Trial and Appeal Board… Identical registrations for the same or similar goods may present overwhelming evidence of likelihood of confusion, regardless of other factors supporting registration.

William Adams is the well-known front man for the music group The Black Eyed Peas and is known as will.i.am. Adams’ company – i.am.symbolic, llc – already owns trademarks on WILL.I.AM for certain goods and services, and also the mark I AM (typed drawing) for clothing in class 25. The trademark examining attorney refused registration of the standard character trademark I AM on the ground of likelihood of confusion with existing registered trademarks. The Trademark Trial and Appeal Board affirmed. Because the TTAB did not err in its likelihood of confusion conclusion the Federal Circuit, in an opinion by Judge Lourie (joined by Chief Judge Prost and Judge Schall) affirmed.

NexLearn sued Allen in district court, alleging patent infringement and breach of contract, based on a nondisclosure agreement (NDA) that allowed Allen to use a trial version of NexLearn’s software product… An interactive website that invites a sale into a forum, when no such sale has occurred, is not evidence of minimum contacts to demonstrate the defendant purposefully availed itself of the forum state. A substantial connection with a forum, not an attenuated affiliation, is required for specific personal jurisdiction.

This case concerns ongoing disputes between Power Integrations and Fairchild Semiconductors. The companies sued each other in Delaware, each asserting infringement of multiple patents by the other. At issue were power supply controller chips used ubiquitously in modern electronics, the patents related to those chips, and how power is supplied and regulated from the upstream source to the downstream electronic device… Induced infringement requires successful communication between the alleged inducer and the third-party infringer; it is not sufficient in itself that others directly infringed the asserted claims.

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.

Drone sued Parrot for indirect infringement of two patents relating to remote-controlled drones… The Federal Circuit sided with Drone and refused to substantively examine inventorship, where Drone’s claim to title was not otherwise in dispute. Inventorship of an issued patent is presumed correct, and Parrot provided no persuasive reason why the Court must litigate inventorship as part of the standing analysis. Alternatively, Parrot may challenge inventorship as an invalidity defense, but doing so under the guise of standing is improper.

Unlike Judge Chen’s breadth-based approach, Judge Hughes appears to adopt the proposal of using the European technical effect ( or “technological arts”) analysis to determine whether a U.S. claim is patent-eligible… The CAFC decides that the above claim indeed is related to an improvement to computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity. This once again approaches the “technical problem” analysis of European law, which at least has the advantage of possessing something of a legal principle about it, as opposed to being a tautology.