Posts in Courts

The Devil Made Me Do It: When are USPTO Filings ‘Involuntary’?

In Dragon Intellectual Property LLC v. Dish Network LLC, – (Fed. Cir., May 20, 2024), a divided panel of the U. S. Court of Appeals for the Federal Circuit held that a prevailing defendant in an otherwise “exceptional” patent infringement case could not recover attorney fees expended in a parallel inter partes review (IPR) proceeding because the defendant’s initiation of the IPR was “voluntary.” The court ostensibly drew a bright line between Dish’s “voluntary” U.S. Patent and Trademark Office (USPTO) filing and the purportedly “involuntary” filing at issue in a 1988 Federal Circuit case. I respectfully suggest that the earlier case was wrongly decided and that there is no meaningful difference between the fact patterns in the two cases.

NYIPLA Questions Need for Double Patenting Doctrine Under Current U.S. Patent Law

On May 28, the New York Intellectual Property Law Association (NYIPLA) filed an amicus brief with the U.S. Supreme Court in Cellect v. Vidal, urging Court to take up Cellect’s appeal from the invalidation of its patent claims to image sensors for obviousness-type double patenting (ODP). The NYIPLA’s brief contends that the Federal Circuit’s decision increases the risk of invalidity for a significant portion of U.S. patents despite the fact that the traditional basis for ODP doctrine no longer exists under U.S. patent law.

How the UPC Courts Have Ruled on Security/ Bonds for Initiating Actions

An interesting decision of the Unified Patent Court’s (UPC’s) Munich Local Division, issued on April 23, 2024 (UPC CFI No. 514/2023), confirmed that “the prerequisite for a successful application (for security/bond) would be a demonstration that the financial circumstances of the other party give rise to fears that any claim for reimbursement of costs cannot be satisfied or that, despite sufficient financial resources, enforcement of a decision on costs appears to be impossible or fraught with particular difficulties.”

Winning Strategies at the Federal Circuit

Knowing your way around the U.S. Court of Appeals for the Federal Circuit (CAFC)—the specialized appellate court that has exclusive jurisdiction over patent cases—is essential to success in patent appeals. Founded in 1982, the Federal Circuit is the thirteenth federal court of appeals, and has nationwide jurisdiction over many types of cases, including international trade, government contracts, patents, trademarks, certain monetary claims against the United States government, federal personnel, and veterans’ benefits, among others.

Latest Bid to Review Rule 36 Practice Shot Down by SCOTUS

Following the denial of another petition for certiorari in March, Jodi A. Schwendimann today lost her bid for review at the U.S. Supreme Court on the question of whether it is permissible for the U.S. Court of Appeals for the Federal Circuit (CAFC) to issue a Rule 36 affirmance of claims as being anticipated when, according to the petition, two different venues issued inconsistent claim constructions and it isn’t clear which the CAFC has deemed correct.

Federal Circuit Says Minority Ownership Interest Isn’t Enough for Standing to Seek Trademark Cancellation

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Thursday, May 23, affirmed a Trademark Trial and Appeal Board (TTAB) decision that found a party with only a minority ownership interest in the owner of allegedly infringed marks did not have standing to seek cancellation of the marks. The decision was precedential and authored by Judge Lourie.

Rader’s Ruminations: Let’s Settle It – Are Patents Monopolies or Not? Part I

The simple answer is “no”; a patent protecting a new and nonobvious invention is not an antitrust monopoly. The reason is also quite simple; an antitrust monopoly requires the unlawful capture or maintenance of market power by withdrawing products or services from the public domain, thus injuring competition in market transactions. See, e.g., Standard Oil v. U.S., 221 U.S. 1 (1910). In general terms, an antitrust monopoly requires: (1) market power (sufficient control of a market to set prices or restrain competition, but not market dominance achieved with a superior product or business acumen); (2) restricting the public domain to injure competition; and (3) illegal anticompetitive conduct to achieve these market distortions. A patent, standing alone, does not meet any of these requirements.

Impact of Full Federal Circuit’s Design Patent Decision is Far from Obvious

Applications for design patents have surged in recent years, with the U.S. Patent and Trademark Office (USPTO) reporting a 20% increase in applications over the last five years. Design patents have become an important tool in brands’ intellectual property portfolios – and for good reason: where trade dress protection can take years (and significant resources) to acquire, with the right planning and timing, design patents are easy to obtain and offer strong protections for brands.

CAFC Vacates Win for Nokia on Standing Issue

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Tuesday, May 21, issued a precedential decision vacating and remanding a district court’s finding that Core Optical Technologies didn’t have standing to sue Nokia due to the language of a contract between the inventor and his employer. Judge Mayer dissented. Core Optical alleged infringement of U.S. Patent No. 6,782,211 by Nokia Corp., ADVA Optical Networking SE, and Cisco Systems, Inc. (Nokia). Nokia moved for summary judgment arguing that Core Optical lacked standing to sue because the inventor named on the patent, Dr. Mark Core, had already assigned the invention to his employer, TRW, Inc., where he worked at the time of the invention.

En Banc CAFC Overrules Design Patent Obviousness Test in Light of KSR

The full U.S. Court of Appeals for the Federal Circuit (CAFC)—minus Judges Newman and Cunningham—today overruled the so-called Rosen-Durling test for determining design patent obviousness, explaining that it has adopted “an approach consistent with Congress’s statutory scheme for design patents, which provides that the same conditions for patentability that apply to utility patents apply to design patents.” The decision also said the Supreme Court’s precedent in KSR v. Teleflex favors a more flexible approach than Rosen-Durling.

CAFC Says IPRs are Voluntary, Fees Not Recoverable Under ‘Exceptionality’ Rule

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Monday, May 20, said in a precedential decision that fees incurred during inter partes review (IPR) proceedings are not recoverable under the “exceptionality” rule of 35 U.S.C. § 285. The court also rejected Dragon Intellectual Property, LLC’s argument that the case should not qualify as exceptional and rejected DISH Network, LLC’s argument that Dragon’s counsel should be held jointly and severally liable for the award of attorneys’ fees.

CAFC Dismisses Bid for PREP Act Protection Due to Lack of Jurisdiction Under Collateral Order Doctrine

The U.S. Court of Appeals for the Federal Circuit on Tuesday, May 14, in a precedential opinion, dismissed an appeal by Puritan Medical Products of a district court denial of its partial motion to dismiss a patent infringement case brought by Copan Italia S.p.A and Copan Diagnostics Inc. The case involved “flocked” swabs “for collecting biological specimens.” The claims cover “a rod [with] a tip covered with fiber with hydrophilic properties” that can absorb biological specimens.  Copan holds several patents on flocked swabs and methods of using them.

Patent Filings Roundup: Samsung Challenges Key Patent Innovations Patent, Theseus LF Asset Holdings Entity Launches New Campaign

It was a slow week for new patent filings at the Patent Trial and Appeal Board (PTAB) and above average week for district courts. This week saw only 15 new filings at the PTAB (one PGR and 14 inter partes reviews (IPRs)). Abbott Diabetes Care, Inc. filed one third of the IPRs at the PTAB, challenging three Dexcom Inc. Patents in five IPRs. Amazon filed two IPRs against one Nokia Technologies OY [associated with Nokia Corporation] patent while Voltage LLC filed two IPRs challenging two Shoals Technologies Group, LLC patents. Pictiva Displays International Ltd. [associated with Key Patent Innovations Limited] had one patent challenged in an IPR by Samsung (discussed below).

Panelists Push for Predictability at IPWatchdog’s 2024 Patent Litigation Masters Program

“Make it happen.” That was the request U.S. Court of Appeals for the Federal Circuit (CAFC) Judge Pauline Newman made of attendees of IPWatchdog’s Patent Litigation Masters 2024 program on Monday, imploring them to “think creatively” to solve the intellectual property problems of today. Pointing to developments such as the Unified Patent Court (UPC), Newman said “it’s a time of change and flux, and we can learn a good deal, not only from the UPC, but the way the law is developing in jurisdictions like Japan and China.”

Chestek Takes Challenge of USPTO Domicile Address Rule for Trademark Applicants to High Court

On May 13, trademark law firm Chestek PLLC filed a petition for writ of certiorari asking the U.S. Supreme Court to take up a challenge to the U.S. Patent and Trademark Office’s (USPTO) promulgation of rules requiring trademark applicants to disclose their domicile address to the agency. According to Chestek’s petition, the Federal Circuit’s lower ruling improperly reads the agency’s notice-and-comment requirement for all general rulemaking out of the relevant statute, here resulting in the unwanted disclosure of sensitive personal information that could put certain trademark applicants at risk of stalking or abuse.