Posts in Federal Circuit

Centripetal Networks was dealt a blow by the U.S. District Court for the Eastern District of Virginia yesterday when the court ruled that it had failed to prove that Cisco infringed three of its patents. It’s a years-long case that the court referred to as having an “unusual history.” The district court first entered one of the highest damages awards ever issued in a patent case, following a 22-day bench trial. In an opinion authored by the late Judge Henry Coke Morgan, Jr., the court found that Cisco willfully infringed four out of five of Centripetal’s asserted patents and awarded enhanced damages in an amount of $755,808,545 (enhanced by a factor of 2.5X), and prejudgment interest in an amount of $13,717,925, which resulted in a total past damages award amount of $1,903,239,288.

Office (USPTO) and Apple, Inc. file responses to his petition for writ of mandamus, the owner of the trademark APPLE JAZZ has filed a reply of his own charging that “the USPTO is not sincere and has never been sincere about deciding this case.” The latest briefs relate to a petition for writ of mandamus filed by Charles Bertini, owner of APPLE JAZZ, who has been embroiled in a fight with Apple over rights to the mark since 2016.

In March 2023, the Patent Trial and Appeal Board (Board) addressed in Penumbra, Inc. v. Rapidpulse, Inc.,  IPR2021-01466, Paper 34 (Mar. 10, 2023), a key issue in inter partes reviews: how to establish a reference patent as prior art based on the filing date of an earlier-filed application, such as a provisional. The Board held that the requirements of the Federal Circuit’s decision in Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015), do not apply for post-America Invents Act (AIA) patents. Penumbra, IPR2021-01466, Paper 34 at 29-35. On November 15, 2023, U.S Patent and Trademark Office (USPTO) Director Kathi Vidal designated the Penumbra decision precedential. This article explores the evolution of the law on this issue.

On December 4, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential ruling in the ongoing patent battle between computer chip patent owner VLSI and major chipmaker Intel Corp. While the court affirmed the infringement findings underpinning the bulk of VLSI’s $2.175 billion jury verdict awarded back in March 2021, the panel ordered a retrial of damages award for one of two asserted patents and dismissed the doctrine of equivalents infringement finding for the other patent. The Federal Circuit also found that the district court abused its discretion by denying Intel’s motion for leave to add a license defense to its case.

Just before the Thanksgiving break, a number of amici submitted briefs to the U.S. Court of Appeals for the Federal Circuit (CAFC) asking the en banc court to rehear a case that many feel has a good chance of helping to clarify the law around the judicially-created doctrine of non-statutory obviousness-type double patenting (ODP). Cellect, LLC filed its petition for rehearing en banc on November 13, asking the full court to consider whether the August panel decision should be overturned. In that decision, authored by Judge Lourie, the court held that patent term extension (PTE) and patent term adjustment (PTA) are not the same for purposes of an obviousness-type double patenting (ODP) analysis.

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Wednesday vacated and remanded a Trademark Trial and Appeal Board (TTAB) decision that had sustained an opposition to the mark GET ORDAINED, holding that the TTAB had failed to “furnish a reasoned explanation for departing from its established practice of deeming unargued claims waived.”

The U.S. Court of Appeals for the Federal Circuit (CAFC) ruled in a precedential decision today that the Patent Trial and Appeal Board (PTAB) does not lose its statutory authority to issue a Final Written Decision when it misses the 1.5-year deadline to do so, as established by the patent statute. According to the opinion, which was authored by Judge Dyk, “[t]his appears to be the only proceeding in which the Board has failed to meet the statutory deadline, and this is accordingly a matter of first impression.”

The U.S. Supreme Court today denied a petition that asked it to consider whether the U.S. Court of Appeals for the Federal Circuit’s (CAFC’s) “construction of petitioner’s patent claim was unforeseeable and unjustifiable under the circuit’s prior decisions,” thereby constituting a judicial taking of property in violation of the Fifth Amendment’s Takings Clause. The petition was an appeal from the CAFC’s April decision affirming a district court’s judgment that AT&T Mobility LLC did not infringe an inventor’s wireless communications technology patent but also holding that AT&T had forfeited its chance to prove the patent invalid on appeal.

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision today affirming the Patent Trial and Appeal Board’s (PTAB’s) finding that Medtronic failed to prove the challenged claims of Teleflex’s catheter patent unpatentable. In several previous precedential decisions issued this year, the CAFC similarly upheld the PTAB’s determinations. In May, the court said that Medtronic failed to show the challenged claims of five catheter patents unpatentable because the primary prior art reference cited by Medtronic did not qualify as prior art under pre-America Invents Act (AIA) first-to-invent provisions. Judge Dyk dissented. And in June, the court found in two separate rulings issued the same day that Teleflex’s objective evidence supported a presumption of nexus, that Medtronic copied Teleflex’s product and that Teleflex’s substitute claims did not lack adequate written description.

U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal today designated as precedential a Patent Trial and Appeal Board (PTAB) decision from March of this year that held a precedential U.S. Court of Appeals for the Federal Circuit (CAFC) ruling on prior art determinations for provisional applications applies only to pre-America Invents Act (AIA) patents.

Most patent prosecutors err on the side of caution when deciding whether to cite prior art references to the United States Patent and Trademark Office (USPTO). Indeed, the consequence of not citing known prior art can be a finding during patent litigation that there was a violation of the USPTO’s duty of disclosure amounting to inequitable conduct, with the patent thereby being deemed unenforceable. But the United States Court of Appeals the Federal Circuit’s recent decision in Elekta Limited v. Zap Surgical Systems (Case 2021-1985, September 21, 2023) suggests that patent prosecutors should think about ways that the fact that references are being cited could be used against the patent owner, and prosecutors might consider clarifying the record to negate potential inferences being drawn based on the citation of references.

The United States Patent and Trademark Office (USPTO) issued its one millionth design patent on September 26, 2023. U.S. Patent No. D1,000,000 claims the ornamental design for a dispensing comb. This milestone comes during a particularly prolific period for design patents. In 2022 alone, the USPTO received more than 50,000 design patent applications. The Office has seen a 20% growth in design patent applications over the last five years. It is not hard to understand why inventors are seeking design patent protection at previously unseen levels. In an age of complicated technologies, design patents can protect marketable appearances of products in the same manner generally as trademarks identify source. Understanding design patent benefits underlying the recent growth in application numbers is a good lesson for businesses seeking to distinguish a brand—but keep an eye out for further developments and be prepared to adjust business and IP strategies.

The U.S. Patent and Trademark Office (USPTO) responded last week to a petition for certiorari that is asking the Supreme Court to overturn a U.S. Court of Appeals for the Federal Circuit (CAFC) decision that said appellate review of whether the Patent Trial and Appeal Board’s (PTAB’s) discretionary denial rules for inter partes review (IPR) are “arbitrary and capricious” is precluded by Section 314(d) of the patent statute.

Just a few weeks after Google waived its right to respond, the Supreme Court denied a petition challenging a U.S. Court of Appeals for the Federal Circuit (CAFC) decision that held a Texas district court erred in ruling against the search engine and tech behemoth. The U.S. District Court for the Eastern District of Texas found the inventors of a method for protecting computers from malware—Alfonso Cioffi and Allen Rozman (the patent is now assigned to Melanie, Megan and Morgan Rozman)—had proven that Google’s Chrome web browser infringed their reissue patents RE43,500, RE43,528, and RE43,529 and that the claims were not invalid. After a first time at the Federal Circuit in which the case was remanded to the district court, a jury awarded Cioffi, et. al. $20 million in past damages and the district court in post-trial review rejected Google’s “original patent defense.”

The U.S. Court of Appeals for the Federal Circuit (CAFC) this week ordered Apple, Inc. and the U.S. Patent and Trademark Office (USPTO) to respond to a petition for writ of mandamus filed by the owner of the APPLE JAZZ trademark, who has been embroiled in a fight with Apple, Inc. over rights to the mark since 2016. Charles Bertini, who owns APPLE JAZZ, petitioned the CAFC last week, asking the court to direct the USPTO to issue a final decision on its petition to cancel Apple’s mark, APPLE (Registration No. 4088195) for nonuse/ abandonment on the ground that Apple never used the mark in commerce for entertainment services listed in the Registration Certificate.