Posts Tagged: "Judge Evan Wallach"

Rothschild sued ADS for patent infringement of Rothschild’s patent related to a home security system. The district court granted Rothschild’s motion to dismiss and denied ADS’s cross-motion for attorney fees, finding that Rothschild did not engage in conduct sufficient to make the action exceptional under 35 U.S.C. § 285. ADS appealed, and the Court reversed and remanded. The Court found that the district court abused its discretion citing three reasons.

The Federal Circuit vacated and remanded the Trademark Trial and Appeal Board’s decision to deny the trademark cancellation petition, finding that the Board used an incorrect standard for “fame” in its likelihood of confusion analysis… The Court rejected the Board’s all-or-nothing analysis, holding that it must consider all of the relevant confusion factors, on a scale appropriate to their merits, under the totality of the circumstances. It explained that the proper legal standard for evaluating the fame of a mark is the class of customers and potential customers of a product or service, not the general public…

This marks the third return to the Federal Circuit of a dispute (the 050 case) between the ArcelorMittal Appellants and the AK Steel Appellees… Overall, the Federal Circuit affirmed the judgment invalidating ArcelorMittal’s reissue patent, finding that the district court: (1) possessed subject matter jurisdiction when it granted summary judgment, (2) properly followed the Court’s most recent mandate on remand, and (3) properly exercised its discretion to deny a Rule 56(d) request for new discovery on commercial success… When appropriate given all of the circumstances, a district court may have jurisdiction to consider claims of a reissue patent on remand, although the claims were not asserted at trial, e.g. if the reissue claims are sufficiently connected to the original case and the remand for such consideration is requested. A case or controversy is not moot, and jurisdiction is not avoided, by tendering an unexecuted and conditional covenant not to sue.

Cisco challenged Cirrex’s patent via inter partes reexamination, asserting a lack of written description. The Board affirmed the Examiner’s findings, that the patent, as amended, contained both patentable and unpatentable claims. On appeal, the Federal Circuit affirmed in part and reversed in part, holding that all of the claims are unpatentable for lack of written description.

The U.S. Court of Appeals for the Federal Circuit issued a non-precedential decision in Intellectual Ventures II, LLC v. Ericsson, Inc. (2016-1739, 2016-1740, 2016-1741) directed to three related IPRs, denying that the patentee was denied due process when the Patent Trial and Appeal Board (the “Board”) employed a “surprise” claim construction in its opinion that had not been explicitly argued by either side to find the claims obvious. Because the Federal Circuit decided that the patentee had both notice and an opportunity to respond, it held that no due process violation occurred.

A Federal Circuit Rule 36 judgment can be a valid and final judgment for purposes of preclusive effects. Additionally, district court findings affirmed by a Rule 36 judgment can have preclusive effect as long as each is “necessary” to the final appellate judgment. The Federal Circuit did not address the Circuit split regarding the preclusive effect of independent, alternative holdings.

Core Wireless sued Apple for infringing its patent directed to a cellular network system including a mobile station providing for improved transmission of data packets. The jury found that Apple did not infringe Core Wireless’ patent. At issue on appeal is whether the district court misapplied the magistrate judge’s pretrial claim construction and whether the claim construction adopted by the district court when ruling on Core Wireless’ JMOL was erroneous… Ultimately, the Court concluded that the district court correctly denied Core Wireless’s motion for judgment as a matter of law and properly upheld the jury’s verdict of noninfringement.

A claim term can be limited to an embodiment described in the specification, if the claim would otherwise be found invalid and the embodiment was not disclaimed. Thus, a claim term with no ordinary meaning can be defined according to a single example in the specification, if the example provides “a clear objective standard” for that term.

On appeal, Novartis argued that the PTAB unlawfully reached different conclusions than the Federal Circuit and U.S. District Court for the District of Delaware in addressing the “same” arguments and the “same” evidence… The Court stated that “Novartis’s argument fails on factual and legal grounds.” First, the record in front of the PTAB differed from that of the prior litigation, meaning that Novartis’ argument rests on a “faulty factual predicate.”… “Nevertheless, even if the record were the same, Novartis’s argument would fail as a matter of law.” The PTAB reviews patentability under the “preponderance of the evidence” standard. See 35 U.S.C. § 316(e). District court litigation requires “clear and convincing” evidence. Therefore, “the PTAB may properly reach a different conclusion based on the same evidence.”

On April 6, 2017, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in The Medicines Company v. Mylan, Inc. (2015-1113, 2015-1151, and 2015-1181) that imports certain subject matter from the specification into the claims… This case provides some key takeaways for patent practitioners, some more obvious than others. First, as has been known for some time, referring to the “invention” in a patent’s specification can hurt, as can indicating that a particular process “includes all” of the embodiments the specification describes. This is why patents for inventions in the U.S. now curiously, if understandably, usually avoid using the word “invention”. Also, setting forth definitions in a specification can have unintended consequences not just for the term being defined but also for terms that are not explicitly defined even if unequivocally characterized in some other way. Prosecution history also matters too, particularly where an applicant distinguishes its invention during prosecution by explicitly characterizing “the invention” in terms divorced from the language of the claims themselves.

On January 3, 2017 the Court of Appeals for the Federal Circuit (the court) handed down two decisions relating to obviousness under § 103 – In re: Marcel Van Os, Freddy Allen Anzures, Scott Forstall, Greg Christie, Imran Chaudhri, No. 2015-1975 (Fed. Cir. 2017) (Van Os) and In re: Ethicon, Inc., No. 2015-1696 (Fed. Cir. 2017) (Ethicon). In Van Os, the Appellants appealed a decision from the Patent Trial and Appeal Board (PTAB) affirming the Examiner’s rejection of the claims of U.S. Patent Application No. 12/364,470 under § 103. The court addressed the question of whether the PTAB properly held that the claims were obvious in light of prior art. The court vacated and remanded. In Ethicon, the Appellant appealed a decision from the PTAB affirming, in a merged inter partes reexamination, the Examiner’s rejection of the claims of U.S. patent 7,591,844 (the ’844 patent) under § 103. The court addressed the question of whether the PTAB properly affirmed the rejection of the claims of the ’844 patent under § 103. The court affirmed. These two cases raise several interesting questions, especially given that they were decided on the same day.

Patent claims being adjudicated valid in federal district court and then being killed in an administrative proceeding at the PTAB is exactly the problem so many of us saw coming. Time and time again throughout the debates in Congress, and all through the legislative history, post grant proceedings were explained as being a faster, low-cost alternative to litigating validity disputes in Federal District Court. That was just a lie. Post grant proceedings at the PTAB are not cheap, and they are not an alternative to district court proceedings. The PTAB is duplicative and anti-patent. In fact, because of the different standards used between district courts and the PTAB, and because district courts presume patents are valid pursuant to 35 U.S.C. 282, different outcomes are practically inevitable.

The Federal Circuit heard the case on Univ. of Utah v. Max-Planck-Gesellschaft Zur Foerderung der Wissenschaften e.V. At issue is whether the district court abused its discretion in declining to award attorney fees to Max Planck. The case involved an inventorship dispute over the “Tuschl II patents,” for certain RNAi discoveries, and owned by Max Planck. March 2000, the Max Planck inventors published an article describing certain RNAi discoveries. A month later, Dr. Bass of the University of Utah published a review article discussing the Max Planck article and offering some hypotheses regarding RNAi. The Tuschl II patents were filed on subject matter that was influenced by testing Dr. Bass’ hypotheses. The University of Utah sued Max Planck, alleging that Dr. Bass is either a sole or joint inventor of the Tuschl II patents… The Court will not second-guess a district court’s finding that a case was not “exceptional” so long as the Court reasonably explained why the case does not stand out from other patent cases. A district court is not constrained to a specific or formulaic approach proposed in cases like Octane Fitness.

The scope of surrender is not limited to what is necessary to overcome the prior art reference. Instead, patentees may surrender more than is required to overcome the prior art… Thus, the question is what a person of ordinary skill in the art would understand to have been disclaimed based on the argument actually made, not what one of ordinary skill in the art would have thought was necessary to disclaim the prior art identified. Ultimately, because of the breadth of the disclaimer, the Federal Circuit affirmed the district court’s construction relative to the first disclaimer.

Reliance on expert declarations is not per se deficient because the declaration utilizes a legal turn-of-phrase, i.e. “It would have been obvious.” The declaration is sufficient, and reliance is not an error if the declaration incorporates factual determinations that support its legal conclusions….Strava sought Inter Partes Reexamination of several claims of a patent owned by Icon. During reexamination, the Examiner rejected all pending claims as obvious. Icon appealed the Examiner’s findings and the Board affirmed. Icon appealed to the Court and challenged the Board’s reliance on Strava’s expert declarations as improper and its decision as lacking substantial evidence.