Posts Tagged: "Patent Litigation"

Stinging CAFC Dissent from Denial of Biogen Rehearing Petition Accuses Majority of Muddying Written Description

The U.S. Court of Appeals for the Federal Circuit today denied rehearing and rehearing en banc to Biogen International, which had petitioned the court following a November decision  affirming a district court ruling that Biogen’s patent for a method of treating multiple sclerosis (MS) was invalid for lack of written description. Three judges split from the majority, with Judges Lourie, Moore and Newman dissenting on the denial of en banc rehearing. Judge O’Malley had dissented from the November panel decision, but she retired on March 11, 2022, and only participated in the decision on panel rehearing.

Arbutus and Genevant Sue Moderna in First Significant Patent Infringement Lawsuit in the mRNA Space

In the first major patent infringement lawsuit in the mRNA space, on February 28, 2022, Arbutus Biopharma Corporation (“Arbutus”) and Genevant Sciences GmbH (“Genevant”) sued Moderna, Inc. and ModernaTX, Inc. (collectively “Moderna”) in the United States District Court for the District of Delaware. The plaintiffs have alleged that Moderna infringed U.S. Patent Nos. 8,058,069, 8,492,359, 8,822,668, 9,364,435, 9,504,651, and 11,141,378 directed to lipid nanoparticle (“LNP”) delivery technology through, inter alia, sales of its COVID-19 vaccine and booster products.

Federal Circuit Further Defines the Scope of Patent Venue

Recently, in In Re: Volkswagen Group of America, Inc., the United States Court of Appeals for the Federal Circuit (CAFC) further defined the level of control a defendant must exercise over an in-district agent to establish patent venue – i.e., where a case can be filed. The Federal Circuit held that the requisite control a principal must establish over its alleged agent in order to establish venue is “interim control”: day-to-day control over the manner of carrying out the specific actions for which the alleged agency relationship exists. Accordingly, in reversing the lower court, the Federal Circuit held that the dealerships in question were not agents of Hyundai or Volkswagen for the purposes of selling cars to consumers and providing warranty services. 

Senators Take Aim at Chinese Anti-Suit Injunctions with ‘Defending American Courts Act’

A bipartisan group of five U.S. senators have introduced a bill to amend Chapter 28 of Title 35 of the U.S. Code to include language that would “combat corrupt Chinese Courts from issuing ‘anti-suit injunctions,’” according to a joint press release issued by the senators today. Senators Thom Tillis (R-NC), Chris Coons (D-DE), Tom Cotton (R-AR), Mazie Hirono (D-HI), and Rick Scott (R-FL) introduced the bill on March 8. An anti-suit injunction is an injunction issued by a foreign court to limit the rights of parties to pursue litigation in U.S. courts.

CAFC Corrects Albright on Transfer Again, Granting Mandamus to Volkswagen and Hyundai

Just as some sources had begun to speculate that Judge Alan Albright had received the United States Court of Appeals for the Federal Circuit’s (CAFC’s) message on transfer—in light of a slew of decisions reversing his refusals to move cases out of his court—the CAFC yesterday granted two more petitions for mandamus relief, holding the United States District Court for the Western District of Texas clearly abused its discretion in not granting a change of venue.

In December 2020, StratosAudio, Inc. (Stratos) filed patent infringement complaints in the Western District of Texas against Volkswagen and Hyundai (the Petitioners) which are incorporated in New Jersey and California, respectively. The two cases were consolidated on appeal. Since both Volkswagen and Hyundai reside outside of the Western District of Texas, the two companies moved to dismiss or transfer the cases under 28 U.S.C. §1406(a) and Federal Rule of Civil Procedure 12(b)(3).

Eighth Circuit Overturns Injunction for Harassment Allegedly Inspired by Patent Troll Rhetoric

On March 4, the U.S. Court of Appeals for the Eighth Circuit issued a ruling in Tumey v. Mycroft AI, Inc. in which the appellate court overturned the Western District of Missouri’s grant of injunctive relief to Tumey, a patent attorney representing a plaintiff asserting patent claims against Mycroft. The Eighth Circuit found that Tumey had not met the requisite standard of proof to show that Mycroft had engaged in cyber attacks and harassing phone calls targeting Tumey and his family to support injunctive relief. The appellate court also remanded the case with instructions to reassign the case to a different district court judge.

CAFC Affirms ITC Denial of Broadcom’s Request for Ban on Renesas Products Under Section 337

On March 8, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed decisions by the International Trade Commission (the Commission) and the Patent Trial and Appeal Board (the Board or PTAB) both 1) declining to ban Renesas Electronics Corporation and other companies from importing into the United States products alleged to infringe upon Broadcom Corporation’s two patents and 2) finding certain claims of Broadcom’s patents obvious. Broadcom filed a complaint at the Commission alleging a violation of 19 U.S.C. § 1337 (Section 337) based on the importation of products by Renesas and other companies that are asserted to infringe U.S. Patents 7,437,583 and 7,512,752. Broadcom’s ’583 patent is “directed to reducing power consumption in computer systems by ‘gating’ clock signals with circuit elements to turn the signals ON and OFF for downstream parts of the circuit.” The ’752 patent is “directed to a memory access unit that improves upon conventional methods of requesting data located at different addresses within a shared memory.”

Patent Filings Roundup: Realtor Files IP Edge Declaratory Judgment in Hawaii After Demand Letter; Dog Collar IPR Instituted Over Lengthy Fintiv Arguments; IP Edge Files Another 25+

It was a banner district court week, with 104 patent filings and 64 cases terminated, mostly file-and-settle non-practicing entity (NPE) litigation, and 26 Patent Trial and Appeal Board (PTAB) cases, including Nokia challenging NPE TQ Delta, LLC; Dexcom, Inc. filing against Abbot Diabetes Care Inc.; and Samsung filing against the Fortress IP-funded Netlist, Inc. In a week where IP Edge filed almost 30 new district court cases, one letter recipient filed a declaratory judgment (DJ) action…. This isn’t the first time this year a party has DJ’d IP Edge (a relative rarity given how small the sums involved are), suggesting either that smaller companies are getting fed up or that their campaigns have been broadly applied.

Forum Selection Clauses May Bar an IPR

Almost anyone can, by statute, request an inter partes review (IPR) of an issued patent, but may limit their right to do so contractually, such as through licensing agreements or non-disclosure agreements (NDAs). These agreements may contain clauses that limit the forum in which any dispute between the parties can be litigated. The Patent Trial and Appeal Board (PTAB) itself has consistently declined to enforce such forum selection clauses, finding that it lacks authority to enforce contracts between the parties, and, in any case, its jurisdiction is statutory and not limited by private agreements between the parties. However, in Nippon Shinyaku Co. v. Sarepta Therapeutics, Inc., the U.S. Court of Appeals for the Federal Circuit recently held that a petitioner was barred from bringing an IPR as a result of a contractual agreement with the patent owner.

Energy Demand Response Programs and Patent Exposure

The core business model of energy producers and providers does not traditionally create significant patent litigation risk. Despite the complexity of the modern energy grid, the basic business and technology of energy generation has not changed significantly in the past 100 years. However, new programs, including residential demand response, executed via smart home appliances and controls, may expose utility companies to increased liability. Demand response programs allow utility providers to reduce grid load and energy pricing by offering customers pricing incentives to reduce energy usage during times of peak demand…. While such programs have been generally available for commercial customers, recently, demand response opportunities for residential customers have been expanding. Where these residential demand response programs allow energy providers to directly control, through the internet, consumers’ smart thermostats and appliances, energy providers may be exposed to patent liability.

Judge Michel Asks Supreme Court to Grant Petition in USR v. Apple to Save U.S. Innovation

On March 2, amicus briefs were presented to the U.S. Supreme Court in support of petitioner Universal Secure Registry’s (USR’s) appeal from the U.S. Court of Appeal for the Federal Circuit (CAFC), which challenges that court’s application of the Alice/Mayo framework on Section 101 subject matter patent eligibility in invalidating patent claims owned by USR. Both amicus filings urge the Supreme Court to rein in the Federal Circuit’s expansive application of Alice/Mayo, which has gone far beyond the original bounds intended by the Court. One of those briefs is made even more persuasive by the fact that it was authored by Judge Paul R. Michel, the former Chief Judge of the Federal Circuit.

A Modest Proposal for a U.S. Patent Validity Court

Administrative patent judges of the U.S. Patent and Trademark Office’s (USPTO’s) Patent Trial and Appeal Board (PTAB), who are inferior officers under the appointments clause, can overrule validity decisions of U.S. district court judges, who are Officers of the United States. District court judges with no training or experience in technology construe patent claims and decide validity. A political appointee can overrule PTAB judges’ validity decisions…. This article proposes a new system of patent justice. Major issues during patent litigation would be decided at the trial level ONLY ONCE, and by the government entity best positioned to decide the issue.

Federal Circuit Upholds $6 Million ITC Civil Penalty After Subsequent Invalidation of Claims

On March 1, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed the U.S. International Trade Commission (ITC)’s determination that the civil penalty imposed on DBN Holding, Inc. and BDN LLC did not require modification or rescission following the subsequent invalidation of the asserted claims. The ITC imposed this civil penalty against DBN for violating a consent order that prohibited unfair trade acts of infringement involving the now invalidated claims.

Patent Filings Roundup: Joao Sub Hauls Shipping Industry into Albright’s Court; IP Investments Sub Targets Realty Companies with IV Patents

With 69 new district court patent filings and 24 Patent Trial and Appeal Board (PTAB) challenges (all inter partes reviews), it was a now-routine end-of-the-month filing spree for IP Edge subsidiaries, with 23 new complaints by such entities. The PTAB dockets continue to be dominated by cases against litigation-funded entities like Magentar Capital’s Scramoge, Fortress IP’s VLSI and Jawbone, and WSOU, plus the seemingly now-regular trickle of cases between Apple and Ericsson. Big-ticket assertor Agis Software disclaimed challenged claims in an IPR brought by Google and Samsung, thus cancelling the claims; and some ANDA-related litigation kicked off before various district courts.

Patent Filings Roundup: All Nokia Phones Banned in Germany over Fortress Claims; IPR Proceeds over Arigna’s ITC Fintiv Arguments; Hashicorp Unloads on IP Edge Sub Invincible; PacSec Throws Up a Hail Mary

It was a typical week in terms of overall patent filing numbers, with 31 Patent Trial and Appeal Board (PTAB) filings, 56 district court complaints, and some 50-odd terminations; continued filings of inter partes reviews (IPRs) against Ericsson by Apple in their sprawling 5G fight; a Raymond Anthony Joao sub brought a 33-patent complaint (mostly expired) on shipping tracking; Fortress entities were on the receiving end of a few IPRs; and in Europe, a Fortress entity secured an injunction against Nokia over all Nokia-branded smartphones in the country, a huge blow for Nokia there. Unrelatedly, there was a hastily-filed errata filed in the Cal Tech opinion at the Federal Circuit with major estoppel implications (that Dennis Crouch has already well-covered).  Let’s get to it.