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Posts Tagged: "Judge Evan Wallach"

Who Will it Be? IP Practitioners Name Their Picks for Biden CAFC Appointee Following Judge Wallach’s Retirement

U.S. Court of Appeals for the Federal Circuit (CAFC) Judge Evan J. Wallach announced earlier this week that he will retire from active service and assume senior status as of May 31, 2021, after 10 years of service with the court. This leaves an opening on the CAFC for President Biden to fill. Given the many important IP issues that have been playing out at the CAFC in recent years—patent eligibility law, Patent Trial and Appeal Board (PTAB) discretionary denials, and the constitutionality of PTAB administrative patent judges, to name a few—the IP community clearly has a big stake in choosing the right candidate.

Equitable Considerations Warranted Departure from First-To-File Rule

The United States Court of Appeals for the Federal Circuit recently ruled on an appeal regarding a Pennsylvania district court’s decision to decline jurisdiction over a first filed declaratory judgment filed by Communications Test Design, Inc. (“CTDI”) in favor of a patent infringement suit filed six days later in a New York district court by Contec LLC (“Contec”). The Federal Circuit concluded that the Pennsylvania district court did not abuse its broad discretion under the Declaratory Judgment Act to departure from the typical first-to-file rule given the presence of equitable considerations.

Google Wins Mandamus at Federal Circuit in EDTX Venue Dispute

The Court believed the time was now appropriate to address this issue through a writ of mandamus noting that several similar cases had now been heard in various district courts with conflicting results. The Court identified two issues that should be addressed: (1) whether a server rack, a shelf, or analogous space can be a “place of business,” and (2) whether a “regular and established place of business” requires the regular presence of an employee or agent of the defendant conducting business. Finding that a defendant must have regular, physical presence of an employee or other agent of the defendant conducting the defendant’s business at the alleged “place of business,” the Court concluded that the Eastern District of Texas was not a proper venue for this case because Google does not have an employee or agent regularly conducting its business within the District.

Federal Circuit Vacates and Remands District Court’s Infringement and Willfulness Findings in Omega Patents v. CalAmp

On April 8, the Court of Appeals for the Federal Circuit issued a precedential decision in Omega Patents, LLC v. CalAmp Corp. that reversed and vacated a district court’s ruling that CalAmp had directly infringed certain patent claims asserted by Omega. While the Federal Circuit did affirm that CalAmp directly infringed one of the asserted claims, it vacated and remanded on a number of the district court’s other findings. The decision was issued by a panel including Chief Judge Sharon Prost and Circuit Judges Timothy Dyk and Evan Wallach. Omega’s allegations of patent infringement centered on CalAmp’s sale of Location Messaging Unit (LMU) products that assist businesses and government entities by tracking fleets of vehicles and retrieving vehicle information such as battery health and speed for remote monitoring. A jury verdict in the Middle District of Florida held that all asserted claims were not invalid, were infringed, and that CalAmp had committed willful patent infringement. The jury awarded compensatory damages of $2.98 million and the judge trebled that damages award and added attorney’s fees, damages for sales subsequent to the jury verdict and pre-judgment interest, increasing the monetary award to about $15 million with an ongoing royalty rate of $12.76 per sale of infringing unit by CalAmp.

Mandamus Relief Denied: Federal Circuit Avoids Clarifying TC Heartland in In re Google LLC

The Federal Circuit recently elected not to decide en banc “whether servers are a regular and established place of business, such that venue is proper under 35 U.S.C. § 1400(b). In re: Google LLC, No. 2018-152 (Fed. Cir. Feb. 5, 2019) (Before Prost, Chief Judge, Newman, Lourie, Dyk, Moore, O’Malley, Reyna, Wallach, Taranto, Chen, Hughes, and Stoll, Circuit Judges) (Dissent by Reyna, Circuit Judge, joined by Newman and Lourie, Circuit Judges). SEVEN Networks, LLC’s (SEVEN) patent infringement suit against Google arose in the Eastern District of Texas. SEVEN alleged Google’s servers, stored in a third-party ISP’s facility, where the allegedly infringing activities occurred, were a regular and established place of business, such that venue is proper under 35 U.S.C. § 1400(b). The district court denied Google’s motion to dismiss for improper venue. As a result, Google petitioned the Federal Circuit for a writ of mandamus directing the district court to dismiss or transfer the case for improper venue. On appeal, the panel majority found mandamus relief inappropriate because “it is not known if the district court’s ruling involves the kind of broad and fundamental legal questions relevant to § 1400(b),” and “it would be appropriate to allow the issue to percolate in the district courts so as to more clearly define the importance, scope, and nature of the issue for us to review.”

Sending Infringement Notice Letters May Create Personal Jurisdiction

The United States Court of Appeals for the Federal Circuit recently reversed a district court’s grant of motion to dismiss a declaratory judge action against Plano Encryption Technologies LLC (PET). The district court, which is situated in the Northern District of Texas, held that PET’s contacts with the Northern district did not subject it to personal jurisdiction and venue was thus improper. On appeal, the Federal Circuit reversed and remanded for further proceedings… While personal jurisdiction and venue are fact-dependent inquiries, sending patent enforcement letters to a recipient located and doing business in a forum can be enough to establish personal jurisdiction over the sending party in the forum such that venue is proper in the forum. Such a finding may be particularly true when the sending party’s “sole business is to enforce its intellectual property.”

CAFC Refuses to Find Post-URAA Patent to be Invalidating Reference Against Pre-URAA Patent

The Federal Circuit recently reversed a decision by the United States District Court for the District of Delaware holding that a patent filed after the Uruguay Round Agreement Act (“URAA”) is a proper obviousness-type double patenting reference against an earlier-filed, yet later-expiring, pre-URAA patent. Applying the Federal Circuit case Gilead Sciences, Inc. v. Natco Pharma Ltd., the district court invalidated the earlier-filed compound patent by asserting the later-filed method of treatment patent as a double patenting reference. The Federal Circuit reversed the decision by holding the analysis in Gilead “was limited to the context of when both patents in question are post-URAA patents.” While the Court limited the present opinion to the specific facts of this case, the Court applied pre-URAA double-patenting practices to the pre-URAA patent and reasoned that the invalidating reference “did not exist as a double patenting reference” when the pre-URAA patent issued

Defensive Collateral Estoppel Applies Only if Essentially Identical Accused Product Found Non-infringing

In its opinion, the Federal Circuit explained that defensive collateral estoppel of non-infringement applies in very limited circumstances where “a close identity exists between the relevant features of the accused device and the device previously determined to be non-infringing such that they are ‘essentially the same.’” Accused products are essentially the same where “the difference between them are merely ‘colorable’ or ‘unrelated to the limitation in the claim of the patent.’” Thus, “[i]f accused devices in a second suit remain ‘unchanged with respect to the corresponding claim limitations at issue in the first suit,’ the patentee is precluded from pursuing its infringement claims a second time.” The burden is on the proponent of claim or issue preclusion to show that the accused products are essentially the same.

CAFC: Patent Claim Directed to Concrete Assignment of Specified Functions is Patent Eligible

The Federal Circuit recently reversed the Western District of Washington’s dismissal under Rule 12(b)(6) of the Federal Rules of Civil Procedure where the district court held that the claimed subject matter was ineligible for patenting under 35 U.S.C. § 101. Specifically, the Federal Circuit, reviewing the decision de novo, concluded that the claimed method of improving security was a non-abstract computer-functionality improvement because it was done by a specific technique that departs from earlier approaches resulting in a beneficial reduction of the risk of hacking.

Federal Circuit Holds a ‘Similar Enough’ Claim Construction Doesn’t Violate the APA

In Hamilton Beach Brands v. F’Real Foods, the Federal Circuit found that under the Administrative Procedure Act, the Patent Trial and Appeal Board’s adopted claim construction in an IPR need not be identical to a construction proposed by a party so long as the construction is “similar enough” to provide notice for the parties to argue for or against the construction.

Federal Circuit Vacates PTAB Decision That Video Messaging Patent Claims Were Nonobvious

The Federal Circuit panel of Circuit Judges Timothy Dyk, Evan Wallach and Richard Taranto determined that the PTAB’s decision to uphold patent claims challenged by WhatsApp as nonobvious wasn’t supported by substantial evidence and that the PTAB didn’t properly consider expert testimony provided by WhatsApp… Here the prior art references that supplied all of the claim limitations and the Federal Circuit found that testimony from expert witnesses on both sides supported the idea that video and multimedia content was better at conveying more powerful messages than text or still photos.

Supreme Court Refuses Another 101 Patent Eligibility Appeal

REAL argued in its petition that step two of the Alice test used to determine invalidity under Section 101 requires questions of fact that were never asked by the lower court. To invalidate without asking those questions contradicts the Federal Circuit’s recent holdings in Berkheimer v. HP and Aatrix Software v. Green Shades Software. REAL’s appeal to the Federal Circuit was decided by a panel including Circuit Judges Alan Lourie, Evan Wallach and Kara Stoll, a trio where the majority has held that step two of Alice is a pure question of law, which is a misapplication of the Alice standard. REAL further contended that both the district court and the Federal Circuit disregarded the factual record in their Alice analysis; that the patents-in-suit claim patentable improvements to computer user interface technology; and that the district court found that there were material facts in dispute while also finding that the claims were well-understood, routine and conventional.

Federal Circuit Vacates PTAB’s Decision to Uphold Enthone Patent

The Federal Circuit recently issued a nonprecedential decision in BASF Corporation v. Enthone, Inc. which vacated an earlier decision stemming from an inter partes review (IPR) proceeding at the Patent Trial and Appeal Board (PTAB) which had upheld a patent owned by Enthone as valid over an obviousness challenge asserted by BASF. The Federal Circuit panel of Circuit Judges Timothy Dyk, Evan Wallach and Richard Taranto remanded the case to the PTAB after holding that certain findings made by the PTAB were inadequately supported or explained.

Rule 36 Affirmances at the Federal Circuit – Week of October 8, 2018

During the week of October 8, 2018,  there were five cases involving patents that were decided without an opinion as a result of Rule 36 affirmances at the United States Court of Appeals for the Federal Circuit. Three of those cases were issued by panels including Chief Judge Sharon Prost. In two cases, the Federal Circuit upheld district court invalidations of asserted patents whereas another two affirmed rejections of applicants claims by the U.S. Patent and Trademark Office. The last case was a summary affirmance of a victory by German drugmaker Erfindergemeinschaft UroPep over Eli Lilly in the Eastern District of Texas.

Federal Circuit: Attorneys Not Liable for Attorney’s Fees Where Law is Unsettled

A claim is entirely without color when it lacks any legal or factual basis.  Because of the relative paucity of § 101 cases between Alice and AlphaCap’s complaint, the law was unsettled.  The Federal Circuit noted that when the applicable law is unsettled, attorneys may not be sanctioned merely for making reasonable arguments for interpreting the law.  Further, the court found that Gutride presented a colorable argument that the claims were analogous to those in DDR Holdings, LLC v. Hotels.com L.P., and therefore patent eligible under § 101.