Posts Tagged: "Judge Richard Taranto"

The United States Court of Appeals for the Federal Circuit recently issued a ruling affirming a district court’s finding that certain pharmaceutical patent claims owned by Acorda were invalid due to obviousness over the prior art.  The patents’ claims covered a species of a genus taught by the prior art.  The invalidity determination hinged on (1) whether claiming the same concentrations as the prior art, but for a different indication would be obvious to a person having skill in the art; and (2) whether secondary considerations such as solving a long-felt need demonstrated nonobviousness… Strong objective indicia such as solving a long-felt need may be insufficient to prove nonobviousness when a blocking patent deters others from an improvement.

In its decision, the Federal Circuit noted that the PTAB is entitled to strike arguments improperly raised in a reply brief under 37 CFR § 42.23(b). However, the appellate court disagreed that Ericsson raised a new theory in its reply brief and thus the Board erred in not considering those portions of the reply brief. “The Board’s error was parsing Ericsson’s arguments on reply with too fine of a filter,” the Federal Circuit found. Ericsson’s petition for IPR described how a person with ordinary skill in the art would be familiar with the concept of interleaving. The CAFC further found that the PTAB’s error was exacerbated by the fact that the new claim constructions proposed by Intellectual Ventures after institution gave rise to the significance of interleaving in the proceeding. In light of this, the Federal Circuit found that Ericsson deserved an opportunity to respond to the new construction.

The Federal Circuit recently issued a decision that once again addressed the issue of whether an IPR was time-barred. The Court vacated the final written decision of the Patent Trial and Appeal Board (“the Board”) with respect to one of challenged patents because it was time-barred and affirmed the Board’s decision that two other claims from two different patents were invalid as being obvious.See Luminara Worldwide, LLC v. Iancu, Nos. 2017-1629, 2017-1631, 2017-1633, 2018 U.S. App. LEXIS 22836 (Fed. Cir. Aug. 16, 2018) (Before Lourie, Dyk, and Taranto, J.) (Opinion for the court, Dyk, J.)

In Click-To-Call Technologies v. Ingenio, Inc., Yellowpages.com, LLC, the Federal Circuit, sitting en banc, held §315(b) precludes IPR institution when the IPR petitioner was served with a complaint for patent infringement more than one year before filing its petition, even if the district court action in which the petitioner was so served was voluntarily dismissed without prejudice.  

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.

In Interval Licensing LLC v. AOL, Inc., the Federal Circuit affirmed a judgment finding patent claims asserted by Interval Licensing LLC failed to recite patent-eligible subject matter under 35 U.S.C. § 101. In dissent, Judge Plager criticized the “abstract idea” framework under Alice. He argued first that the concept of an “abstract idea” is extremely difficult to apply in patent cases because the term is by definition “abstract,” meaning “difficult to understand,” and an “idea,” which is “something that lives in the interstices of someone’s brain, a psychophysiological area not fully understood to this day.”

It’s been over eight years since the Supreme Court issued its Bilski v Kappos decision, over six years since the Supreme Court issued its Mayo v. Prometheus decision and over four years since the Supreme Court issued its Alice Corp. v. CLS Bank decision.  In case anyone missed it, each of these three landmark cases was decided based on evidence on the record.  Thus, the Supreme Court not only contemplated the need for evidence when determining patent eligibility for abstract ideas of man-made origin, but wholly embraced the practice. Yet despite the Supreme Court’s trio of evidence-based holdings, it was February of this year before a single three-judge Federal Circuit panel definitively ruled on the evidence issue in Berkheimer v. HP, and it was the end of May before a majority of the Federal Circuit signed on to the idea that determining whether a man-made something is well-understood (or well-known), routine and conventional is an issue of fact that should be based on objective evidence. That’s the better part of a decade of the Federal Circuit wandering the desert.

The sole question on appeal was whether it would have been obvious to make zolmitriptan into a nasal spray. The Federal Circuit agreed with the district court that the prior art taught away from formulating zolmitriptan for intranasal administration.

On Wednesday, June 30th, the Court of Appeals for the Federal Circuit issued a decision in Royal Crown Company, Inc., et. al. v. The Coca-Cola Company which vacated and remanded an earlier decision by the Trademark Trial and Appeal Board (TTAB) regarding the use of “ZERO” trademarks on soft drink beverages marketed by Coca-Cola. The Federal Circuit panel, consisting of Circuit Judges Pauline Newman, Kathleen O’Malley and Richard Taranto, found that the TTAB had erred in its legal framing of the question regarding the claimed genericness of Coca-Cola’s mark and failed to determine whether the mark was at least highly descriptive if not generic.

In Royal Crown Co. v. Coca-Cola Co, the USPTO approved The Coca-Cola Company’s combination marks including the term ZERO, to be used on a variety of beverages, without requiring a disclaimer of the term ZERO. The Royal Crown Company, Inc. and Dr. Pepper/Seven Up, Inc. filed oppositions to the “ZERO” marks. The Trademark Trial and Appeal Board dismissed the oppositions, holding that ZERO was not generic for the relevant goods and had acquired distinctiveness. Royal Crown appealed. The Federal Circuit vacated and remanded for further proceedings.

The court will consider the totality of the circumstances, including the prevailing party’s conduct in the litigation, such as the nature and timing of its relevant allegations, when awarding attorney’s fees under Section 285.

In Zeroclick, LLC v. Apple Inc., before Judge Jimmie Reyna, Judge Richard Taranto, and Judge Todd Hughes, Zeroclick appealed a district court’s interpretation of the claims as containing “means plus function” limitations under 35 U.S.C. § 112 ¶ 6, arguing that the district court erred by imposing a means plus function analysis. The Court agreed with Zeroclick finding that the district court failed to give appropriate weight to the rebuttable presumption created by the absence of the word “means” within the claims, vacating and remanding the case to the district court.

On appeal to the Federal Circuit, Zeroclick argued that the district court erred in construing those two terms as means-plus-function limitations, an argument with which the Federal Circuit panel agreed. “Neither of the limitations at issue uses the word ‘means,’” Circuit Judge Hughes writes in his majority opinion. “Presumptively, therefore, [Section 112(f)] does not apply to the limitations.” Although Apple argued in the district court that the claims must be construed under Section 112(f), it provided no evidentiary support for its position. Although the court compared Apple’s arguments to Zeroclick’s objections, Judge Tigar did not point to any record evidence supporting the ultimate conclusion on Section 112(f) grounds.

The Federal Circuit denied HTC Corp.’s petition for a writ of mandamus seeking dismissal for improper venue… The patent venue statute does not apply to foreign corporations sued for patent infringement. These foreign defendants may be sued in any judicial district where they are subject to personal jurisdiction.