Posts in Federal Circuit

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Monday continued its trend of granting mandamus directing Judge Alan Albright of the U.S. District Court for the Western District of Texas to transfer a case to the Northern District of California. In the latest order, Google LLC petitioned the CAFC to direct Albright to transfer the case after he denied it based on the expected time to trial “despite the court itself finding that the transferee venue was otherwise more convenient,” wrote the CAFC, adding that this was a clear abuse of discretion.

On November 12, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed the decision of the U.S. District Court for the Northern District of California that compelled arbitration and dismissed Rohm Semiconductor USA’s declaratory judgment action without prejudice, holding that an arbitrator must determine arbitrability. In 2007, Rohm Japan and MaxPower Semiconductor entered into a technology licensing agreement (TLA). According to the TLA, Rohm Japan and its subsidiaries were permitted to use certain power-related technologies of MaxPower developed under a Development and Stock Purchase Agreement in exchange for royalties paid to MaxPower. In 2011, the TLA was amended to include an agreement to arbitrate “any dispute, controversy, or claims arising out of or in relation to this Agreement or at law, or the breach, termination, or validity thereof.” Further, the amendments provide that arbitration must be conducted “in accordance with the provisions of the California Code of Civil Procedure (CCCP).”

B.E. Technology, a company owned by Martin David Hoyle, developer of internet advertising technology who has been embroiled in litigation with big tech companies like Facebook, Twitter and Google for close to a decade now, today filed a petition for writ of mandamus with the U.S. Court of Appeals for the Federal Circuit (CAFC). The petition asks the court to intervene to “prevent an unconstitutional deprivation of B.E.’s property rights in the onslaught of IPR proceedings that have been brought to challenge the validity of its most critical patents.” B.E. specifically asks the CAFC to direct the Patent Trial and Appeal Board  (PTAB) to vacate its decisions to grant institution in four separate inter partes review (IPR) proceedings: Twitter, Inc. and Google LLC v. B.E. Technology, L.L.C., Nos. IPR2021-00482, IPR2021-00483, IPR2021-00484, and IPR2021-00485. The question presented is: “Whether a writ of mandamus should issue to prevent an unconstitutional deprivation of the Petitioner patent owner’s property rights without due process of law?”

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Friday, November 12, vacated and remanded a decision of the Trademark Trial and Appeal Board (TTAB) that had found Galperti S.r.l (Galperti-Italy) had not committed fraud on the U.S. Patent and Trademark Office (USPTO) in asserting that it had substantially exclusive use of the mark GALPERTI in the five years preceding its registration. The appeal to the CAFC stems from Galperti, Inc.’s (Galperti-USA’s) petition for cancellation based on its own prior use of the same mark, in which the TTAB found that Galperti-USA had demonstrated only insignificant use of the mark and therefore had not proven fraud or falsity on the part of Galperti-Italy. The CAFC cited two legal errors in the TTAB’s analysis that warranted vacatur and remand.

The U.S. Court of Appeals for the Federal Circuit (CAFC) today dismissed Apple, Inc.’s appeal of four decisions of the Patent Trial and Appeal Board (PTAB) in favor of Qualcomm. The CAFC found that an April 2021 CAFC decision (Apple I) on related PTAB rulings, in which the court found Apple lacked Article III standing, controlled. The opinion for the court was authored by Judge Prost. Judge Pauline Newman dissented. In part, the court in Apple I held that a global settlement between Apple and Qualcomm on the terms of a license agreement meant that “the validity of any single patent would have no effect on Apple’s ongoing payment obligations,” and that Apple had therefore failed to establish standing under the reasoning of MedImmune, Inc. v. Genentech, as it asserted. The court in Apple I explained: “Ultimately, Apple’s assertions amount to little more than an expression of its displeasure with a license provision into which it voluntarily entered. Such allegations do not establish Article III standing.”

On November 5, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision in Celgene Corp. v. Mylan Pharmaceuticals Inc. affirming a ruling of the District of Delaware, which dismissed a Hatch-Waxman lawsuit against related Mylan entities for either improper venue or failure to state a claim upon which relief could be granted. In issuing the decision, the Federal Circuit found that Mylan’s submission of a notice letter to Celgene regarding Mylan’s paragraph IV certification to the U.S. Food and Drug Administration (FDA) stating that Mylan’s generic version of the multiple myeloma treatment Pomalyst would not infringe Celgene’s patents was not itself an act of infringement for purposes of the patent venue statute.

The Dunning-Kruger effect is often defined as a type of cognitive bias whereby people are prone to vastly misjudge their competence. For example, smart and capable people tend to evaluate their skills and competence downward. That is, they tend to not just understand, but deeply internalize the idea that there’s a lot in life that they don’t understand. Circa 500BC, Confucius coined this wisdom stating, “Real knowledge is to know the extent of one’s ignorance.” Then there’s the flip side, where low ability and/or low knowledge people overestimate their own capabilities while simultaneously being unable to recognize their own incompetence. One-hundred and thirty years (give or take) before David Dunning and Justin Kruger conducted their studies on the issue, Charles Darwin described this effect, stating, “ignorance more frequently begets confidence than does knowledge.”

On November 4, the U.S. Court of Appeals for the Federal Circuit (CAFC) reversed a decision by the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) that University of Strathclyde’s patent claims for a method for photoinactivating antibiotic-resistant bacteria without using a photosensitizing agent were unpatentable. The PTAB held claims one, two, three, and four of U.S. Patent No. 9,839,706 (‘706 patent) were obvious based on the prior art. The court held the PTAB’s findings were not based on substantial evidence.

Is patent litigation out of control? Has patent litigation ever been out of control? The answers to these questions largely depend upon your point of view, and as with most complex topics, the truth is nuanced. What is not nuanced are the numbers reported in the annual reports from the  Administrative Office of the United States Courts, which shows that the number of patent cases that reach trial are extremely few. In fact, the number of cases that make it to the final pre-trial conference represents a small subset of the number of cases that are filed. I initially started this research in 1997, while working on my Master’s thesis, which dealt with patent litigation and the use of alternative dispute resolution. The real growth in patent litigation over the last 40 years has taken place before trial. Between 1980 and 2020, the number of patent cases reaching trial ranged between a low of 63 (in the COVID-19 affect FY 2020) but was otherwise at a low o 64 (in FY 2019) and a high of 164 (in FY 2016). All are a remarkably low number of cases that proceed to trial given the number of patent lawsuits commenced.

President Joe Biden today announced that Judge Leonard Stark of the United States District Court for the District of Delaware is his latest nominee for the U.S. Court of Appeals for the Federal Circuit (CAFC). Stark will replace CAFC Judge Kathleen O’Malley, who announced on July 27 this year that she will retire, leaving a vacancy on the court as of March 11, 2022.

Following a motion filed in mid-October with the U.S. Court of Appeals for the Federal Circuit (CAFC) accusing the United States Patent and Trademark Office (USPTO) and its management of facilitating the appearance of bias at the Trademark Trial and Appeal Board (TTAB) in favor of Apple, Inc., Apple has now filed its opposition to that motion. Apple contends there is no precedent for allowing the motion, as it requests to supplement the record with documents that were not part of the trial record; that the TTAB is “an executive adjudicatory body” within the USPTO, which is “an executive agency within the Department of Commerce, and the TTAB’s administrative law judges are not subject to the recusal requirements set out in 28 U.S.C. § 455”; and that the documents Charles Bertini is asking to submit “reflect merely routine and fleeting professional contacts” that “fall far below the threshold of the personal contacts necessary to support disqualification on the basis of bias or prejudice.”

On October 27, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed the Trademark Trial and Appeal Board’s (TTAB) cancellation of Brooklyn Brew Shop, LLC’s (BBS) standard character mark and dismissed in part, affirmed in part and remanded the TTAB’s decision regarding the opposition of BBS’s mark. For over 30 years, The Brooklyn Brewery Corporation (Brewery) has used the marks BROOKLYN and BROOKLYN BREWERY in connection with the advertising, promotion, and sale of Brewery’s beer and beer-related merchandise. In 2006, Brewery registered BROOKLYN BREWERY as a federal trademark for beer in class 32.

The Fifth Amendment of the U.S. Constitution guarantees, inter alia, that no person shall be deprived of property (including intellectual property), without due process of law. For instance, it is settled law that a federal statute may be so arbitrary and capricious as to violate due process. Similarly, it is settled that an administrative agency, e.g., the U.S. Patent and Trademark Office (USPTO), cannot escape the due process of law requirement when processing patent applications. In theory (less in reality), due process of the law extends to judicial as well as political branches of government, and judgments that violate constitutional limitations and guarantees are void or voidable.

In its latest rebuke of Judge Alan Albright’s approach to motions to transfer cases out of his court, the United States Court of Appeals for the Federal Circuit (CAFC) on October 21 granted DISH Network’s petition for a writ of mandamus challenging the denial of its motion to transfer a case filed by Broadband iTV (BBiTV) from the United States District Court for the Western District of Texas to the United States District Court for the District of Colorado.

Typically, patent examiners are the prominent decision-makers controlling whether patent applications are allowed. However, Applicants have the power to change who controls these decisions. For example, each Examiner’s Answer must be approved by a supervisory examiner, so filing an Appeal Brief results in the supervisory examiner reviewing the rejections at hand, the appellant’s arguments, and the examiner’s responses to the appellant’s arguments. (If the supervisory examiner agrees with the appellant, then the application is either allowed or prosecution is reopened with one or more new rejections). So long as prosecution is not reopened, paying the Forwarding Fee subsequent to receiving the Examiner’s Answer results in jurisdiction shifting to the Patent Trial and Appeal Board (PTAB).