Posts in Federal Circuit

Federal Circuit Upholds ITC Limited Exclusion Order Against Comcast

The U.S. Court of Appeals for the Federal Circuit has upheld an International Trade Commission (ITC) ruling granting a limited exclusion order that bars importation of X1 set-top boxes by Comcast, including importation by ARRIS and Technicolor on behalf of Comcast. Although the patents at issue have both expired, the Court refused Comcast’s motion to dismiss, finding that there were “sufficient collateral consequences to negate mootness.”

It Is Not Fair to Leap Frog Expert Disclosure Requirements: An Analysis of HVLPO2 v. Oxygen Frog

Federal Rule of Evidence 702 makes clear that a qualified expert may testify if he or she could help a trier of fact understand evidence and facts at issue. Fairness and reliability are the lineaments of Rule 702 and other rules governing expert discovery. Simply put, each party is given the opportunity to present expert testimony, and to challenge that of the opposing party. As gatekeepers of expert testimony, judges are careful not to give one party an unfair advantage over another regardless of the type of expert presented. The U.S. Court of Appeals for the Federal Circuit recently found that the District Court for the Northern District of Florida abused its discretion by allowing unqualified expert testimony concerning the invalidity of a patent. HVLPO2, LLC v. Oxygen Frog, LLC, Case No. 19-1649 (Fed. Cir. Feb. 5, 2020) (Moore, J) involved the infringement of patents related to an oxygen supply management apparatus for glass blowing.

Federal Circuit says THE JOINT is merely descriptive without acquired distinctiveness

On February 28th, the Court of Appeals for the Federal Circuit (CAFC) affirmed the Trademark Trial and Appeal Board’s (TTAB) decision to refuse registration of two trademark applications belonging to JC Hospitality LLC (JC). Both applications sought to register the mark THE JOINT under different classes of services (Class 41 and Class 43). See In re JC Hospitality. The CAFC agreed with the TTAB that the marks were merely descriptive of JC’s services, and lacked any showing that the marks acquired distinctiveness as source identifiers.

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.

Other Barks & Bites, Friday, February 28: CAFC Declines En Banc Rehearing in HZNP Finance, SCOTUS Shoots Down Apple Appeal and Delaware is Top Patent Forum in 2019

This week in Other Barks & Bites: the U.S. Department of Justice announces a two year prison sentence for trade secret theft; a new Lex Machina report shows that the District of Delaware receives the most patent suits among any U.S. district court during 2019; the U.S. Supreme Court declines to hear Apple’s appeal of $440 million patent ruling for VirnetX; a divided Federal Circuit declines a petition for en banc rehearing in a patent case involving the definiteness requirement under Section 112; Microsoft revises its quarterly guidance due to supply chain issues related to the coronavirus; the European Union’s highest court finds that the trademark “Fack Ju Göhte” is not morally unacceptable to German speakers; and an inventors’ class action lawsuit against the U.S. Patent and Trademark Office’s Sensitive Application Warning System (SAWS) proceeds past a motion to dismiss. 

Inherency in Obviousness: Lessons From Persion v. Alvogen

When can an inherent property add patentable weight in the context of obviousness? Over the years, the Federal Circuit has shed light on this question in a number of cases. Persion Pharmaceuticals v. Alvogen Malta Operations Ltd., Docket No. 2018-2361 (Fed. Cir. Dec. 27, 2019) (Persion v. Alvogen) is the most recent decision to address this question. In Persion, the Federal Circuit affirmed the conclusion of the U.S. District Court for the District of Delaware that asserted claims of U.S. Patent Nos. 9,265,760 (“the ’760 patent”) and 9,339,499 (“the ’499 patent”) are invalid as obvious because the feature at issue was inherent in the prior art.