Posts Tagged: "Judge Kara Stoll"

Contrary to Judge Taranto’s position, not only does the McRO claim not produce a physical improvement to a display (contrast In re Allapat), but as can be seen above a display is not even recited in the McRO claim.  Judge Taranto’s position is as best an assertion that a physical display somehow works better because of the content displayed is subjectively more appealing.  However, a colorized version of The Maltese Falcon does not improve the intrinsic qualities of a generic display.  Similarly, the intrinsic qualities of a Kindle reader are not improved based on the quality of an author’s style of writing.

NantKwest filed suit in district court under 35 U.S.C. § 145 to contest the PTO’s rejection of its patent application. The USPTO prevailed and filed a motion for reimbursement of all of its litigation expenses, including attorney’s fees. 35 U.S.C. § 145 requires that “all expenses of the proceeding be paid by the applicant,” which the USPTO claimed included their fees and costs… While Congress can create fee-shifting statutes, 35 U.S.C. § 145 did not reflect explicit congressional authorization for fee-shifting that would displace the American Rule.

The Federal Circuit found that substantial evidence supports the Board’s conclusion that a person of ordinary skill in the art would have been motivated to combine the references… Regarding Sirona’s contingent motion to amend, the Board’s final written opinion, which issued prior to the Court’s en banc Aqua Products decision, improperly placed the burden on Sirona to demonstrate that the proposed substitute claims were patentable. Accordingly, the Federal Circuti vacated the Board’s denial of the motion and remanded for reconsideration in light of Aqua Products.

There is no blanket prohibition against the introduction of new evidence during an inter partes review proceeding, indeed new evidence should be expected. A petitioner can introduce new evidence following the petition, if it is a legitimate reply to evidence introduced by the patent owner, or if the new evidence is used to show the level of knowledge skilled artisans possess when reading the prior art references identified as grounds for obviousness.

The Federal Circuit held that it would be reasonable and fair to exercise specific personal jurisdiction over DAL because the United States has an important interest in adjudicating patent infringement disputes and M-I has a keen interest in obtaining convenient and effective relief, especially considering that modern advances in communication and transportation would reduce DAL’s burden of litigating in a distant United States court.

AIDS Healthcare Found., Inc. v. Gilead Scis., Inc., the Federal Circuit affirmed the dismissal of patent challenges filed by drug consumers. The Court noted that a declaratory action requires “a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.” The Court also dismissed AHF’s argument that it is inducing infringement and dismissed AHF’s public policy arguments for invalidating invalid patents… A consumer’s interest in purchasing cheaper goods is insufficient to meet the adverse legal interest required for a declaratory action. And a consumer’s request that another party infringes a patent cannot, by itself, induce infringement. To induce infringement, there must be direct infringement by a third party.

In Energy Heating v. Heat On-The-Fly, the court did not abuse its discretion in finding clear and convincing evidence that the inventor knew that the prior uses were material and specifically intended to deceive the PTO by not disclosing them. The court had sufficient evidence – including evidence of 61 commercial sales dating back to 2006 and no contemporaneous evidence of experimentation – to disbelieve Mr. Hefley’s testimony to the contrary.

In 01 Communique Lab v. Citrix Systems, the Federal Circuit rejected Communique’s appeal. The court properly relied on a comparison of the allegedly infringing GoToMyPC product to the asserted patent claims, as shown by careful jury instructions. Citrix’s comparison to the BuddyHelp prior art, in aid of a legitimate defense, did not cause prejudice to Communique. In reaching its decision, the Court noted that claim terms must be construed the same way for both invalidity and infringement. Thus, if a narrow construction was appropriate for validity in the reexamination to avoid the prior art, a broader construction should not be applied against alleged infringers.

On Thursday, April 20th, the Court of Appeals for the Federal Circuit issued a decision in Medinol Ltd. v. Cordis Corporation et. al. which vacated and remanded a lower court’s ruling that claims of patent infringement alleged by Israeli pharmaceutical firm Medinol were barred by the equitable defense of laches. The Federal Circuit’s decision comes after the U.S. Supreme Court overturned the Federal Circuit’s previous precedence on laches as an equitable defense in SCA Hygiene Products v. First Quality Baby Products, decided last year. The case was decided by a panel consisting of Circuit Judges Timothy Dyk, Jimmie Reyna and Kara Stoll.

The Court took issue with the PTO’s construction of “coupled.” While the “broadest reasonable interpretation” applies at the PTO, that interpretation must be consistent with the specification, and does not allow “unfettered license to interpret the words in a claim.” The Court pointed to several portions of the specification that support a narrower construction of “coupled”, noting that the patent “strives to eliminate unnecessary components and create a more compact circuit.”

The issue was whether the PCT, which disclosed a “connection to fibre optics bundle which provides for lighting” was a sufficient written description to support the “light guide” “permanently affixed” in the “first channel” of the patented claims. The Board reversed the Examiner and concluded that the earlier application had sufficient written description to qualify as a priority document… The Federal Circuit affirmed. The disclosure of a species, here a “fibre optics bundle,” was sufficient support for a priority claim by a later-filed patent application utilizing genus claims, here a “light guide,” because the patent-in-suit was in a predictable art field and the genus claims covered well-known limitations.

in Ottah v. Fiat Chrysler, Chikezie Ottah appealed the lower court’s grant of summary judgment of non-infringement and dismissal of the complaint with prejudice. Ottah’s patent concerns a removable book holder assembly for use by a person in a protective or mobile structure. Disputed claim 1 includes the phrase, “a book holder for removable attachment.” Ottah alleged that several auto manufacturers infringed the patent by using and making a camera holder for use in their vehicles.

Elbit’s expert argued that the asserted claims were obvious because the two-step and three-step methods are “mathematically equivalent” in that the three-step method simply reorders steps employed in the prior art without producing a new or unexpected result. The Federal Circuit disagreed, finding that Thales’s expert sufficiently explained the differences between the two-step and three-step methods. The panel also agreed with the Board that Elbit’s expert’s testimony was “unsupported” and not entitled to weight because he failed to account for or address the relative angular rate signal limitation in claim 3 anywhere in his opinion.

Despite its ultimate conclusion, the Court observed that Nordt failed to “persuasively or precisely” articulate to the Board “what structural limitation is imparted” by the “injection molded” language. The Federal Circuit explained that had Nordt better articulated its arguments to the Board it may well have succeeded at the Board. Nevertheless, Nordt’s failure to identify that structure did not affect the panel’s conclusion, as the structural nature of “injection molded” can be gleaned from the plain claim language in conjunction with the specification.

Turning to the injunction, Infineon was enjoined from undertaking certain activities concerning products in the Exclusive Field that practice the licensed patents. The Court vacated this provision because it lacks the specificity required by FRCP 65(d). The Court found that this sentence of the injunction “is, in essence, an injunction prohibiting infringing acts—but without reference to any particular, adjudicated infringing product,” and “[i]ndeed, no product has yet been adjudicated.”