Posts in Courts

The district court erred by relying entirely on the plain meaning of the claim where context-based interpretations were necessary. The Court held that the plural terms “intervals” and “remotes” in isolation could mean what must occur during each interval and what was applicable to all the remotes, but there was no requirement indicated in the remaining claim language or specification that at least one remote transmit and receive frames during at least one interval. The Court held that this evidence, together with other language in claim 21, and teachings in the specification, showed that each cycle in the claims must have intervals in which remotes were allowed to transmit.

The Federal Circuit reversed the district court’s claim construction, and held that the claim language does not require that the start and duration of remote-transmission intervals be communicated prior to the beginning of the cycle. St. Jude had not explained why, in accordance with the specification, it was not sufficient that a remote know roughly when to expect an upcoming cycle to begin, rather than its exact starting time, and why such interval information could not be communicated during a cycle. The Court postulated that a remote unit could power up its communications equipment for the entirety of a first cycle, receive interval information whenever it was transmitted, then only power up that equipment during its assigned interval for subsequent cycles.

As applied to Morsa’s application, the Court found that the specification made numerous admissions regarding the knowledge of a person of skill at the time of the invention. However, Judge Newman wrote in dissent that enablement of prior art must also come from the prior art, and that the majority improperly used information from the specification of the patent at issue to find that a prior art reference was enabling.

The Supreme Court recently decided to review a pair of cases that challenge the Federal Circuit’s willful infringement test. The two cases, Halo Electronics, Inc. v. Pulse Electronics, Inc, (14-1513) and Stryker Corporation v. Zimmer, Inc. (14-1520), are drawing comparisons from commentators to the Court’s Octane Fitness, LLC v. ICON Health and Fitness, Inc. ruling last term based on the similar structure of the tests and statutory language reviewed in both cases. However, another recent SCOTUS case dealing with induced infringement, Commil USA, LLC v. Cisco Systems, Inc., may also shed some light on how the Court will think about willful infringement, since both doctrines center around the defendant’s intent.

Patent damages generally, and enhanced damages specifically, are a patent political powder keg because there are so many corporations that are users of technology. These technology using, or technology usurping, corporations would rather not have to worry about the consequences of infringing patents. This has caused the so-called infringer lobby to put a premium on the issue of damages, specifically advocating positions that would minimize patent damages. Indeed, the infringer lobby has done an excellent job weakening patent rights and impairing the enforceability of patents over the last decade, both in the federal courts and on Capitol Hill. The Supreme Court has even several times mentioned the patent troll problem without the issue being before the Court and neither party being accused of being a troll.

The United States Supreme Court accepted certiorari in two patent cases, which will require the court to determine whether district court judges should have discretion to award victorious patentees with enhanced damages under 35 U.S.C. § 284. While predicting the outcome of a Supreme Court decision is always speculative, this case should be one of the easiest outcomes to predict ever. Unless the Supreme Court fundamentally alters its statutory interpretation from the Octane Fitness case, arbitrarily creating a distinction without a difference, the Supreme Court will grant district courts the same broad discretion on enhanced damages that they have been given with respect to awarding attorneys fees.

Employers often assume that they have the same weapons in their arsenal to prevent theft of virtual trade secrets as they have against other types of loss. As the prosecution of Sergey Aleynikov in Federal and New York courts showed, however, that simply isn’t true. Even though juries in both courts found him guilty of downloading confidential computer code from his employer, judges ultimately found that the laws under which he was prosecuted did not cover the acts he committed. A careful employer should therefore make sure it puts precautions in place that prevent theft of computer code, rather than relying on the threat of criminal prosecution.

Aleynikov was a computer programmer employed by Goldman Sachs to write high-frequency trading code. In 2009, he accepted a job offer to join a potential competitor, where he would create a new high-frequency trading platform from the ground up. Before he left Goldman, however, he sent portions of Goldman’s high frequency trading code to a German server for his own future use. After Goldman found out, it went to the FBI; Aleynikov was then arrested on a flight home from a visit to Chicago. With that arrest began his circuitous journey through the U.S. legal system, governed by two different sovereigns and under two different legal regimes.

The Court expressly held that concrete and particularized reputational injury alone can give rise to Article III standing to correct inventorship under § 256. Recognition as an inventor of an important patent is as significant to an inventor’s career as is authoring a scientific paper. Further, pecuniary consequences may flow from being designated an inventor, particularly for professionals employed as inventors. Here, Dr. Shukh presented numerous questions of material fact concerning whether his omission from the contested patents caused him a reputational injury.

The issue on appeal was whether a mixture comprising at least 92% of the (6S) isomer of leucovorin would have been obvious when both the 50/50 mixture of isomers and the pure (6S) isomer were known in the art. Affirming the district court, the Federal Circuit agreed that “one of skill would have been motivated to modify the prior art 50/50 mixture to make the claimed mixture,” especially when it was known that the desired activity lies with the (6S) isomer. The Court found no evidence indicating that the claimed mixture “possess[ed] unexpected advantages over the prior art pure material” so as to overcome obviousness.

The issue on appeal was whether Applicants antedated the ‘560 reference in accordance with Rule 131. A patent applicant bears the burden of establishing “reduction to practice prior to the effective date of the reference, or conception of the invention prior to the effective date of the reference coupled with due diligence from prior to said date to a subsequent reduction to practice or to the filing of the application.” 37 C.F.R. 1.131(b). The Court concluded that substantial evidence supported a finding that Applicants failed to establish conception and continuing diligence, or actual reduction to practice, before the effective date of the ‘560 reference.

Damages for infringement of a design patent can be recovered for the greater of: (1) total profits from the infringer’s sales under 35 U.S.C. § 289, (2) damages in the form of the patentee’s lost profits or a reasonable royalty under § 284, or (3) $250 in statutory damages under § 289. Here, the Court held that the district court incorrectly instructed the jury to choose between awarding damages under § 284 or § 289. According to the Court, “[o]nly where § 289 damages are not sought, or are less than would be recoverable under § 284, is an award of § 284 damages appropriate.”

Despite the Supreme Court ruling that laches is no defense to a copyright infringement action brought during the statute of limitations, the Federal Circuit ruled laches can bar recovery of legal remedies in patent infringement. The Federal Circuit explained that the 1952 Patent Act codified the common law rule, meaning that laches was codified as a defense under 35 U.S.C. 282.
The Federal Circuit, sitting en banc, followed the common law principle that, ”[w]hen a statute covers an issue previously governed by the common law, [the Court] must presume that Congress intended to retain the substance of the common law.” The Federal Circuit also ruled that laches does not preclude an ongoing royalty.

Summit 6 LLC (“Summit”) sued Samsung Electronics Co. Ltd. and Samsung Telecommunications America, LLC (collectively “Samsung”) and others alleging infringement of U.S. Patent No. 7,765,482 (“the ’482 patent”), which relates to the processing of digital photos and other digital content before being transmitted over a network by client devices (e.g., cell phones). Summit’s expert testimony and the license resulting in settlement for another defendant, RIM, supported the damages verdict. The RIM license was comparable because both RIM and Samsung sell camera phones having the accused MMS functionality.

Astornet sued NCR Government Systems, MorphoTrust, and BAE Systems Inc., alleging that they supplied the Transportation Security Administration (“TSA”) with certain boarding pass scanning systems, and that TSA’s use of the equipment infringed or would infringe its patent. The complaints alleged that the defendants “induced (and contributed to) direct infringement by TSA by virtue of TSA’s use of equipment supplied by the defendants.” The Federal Circuit affirmed the dismissal based on 28 U.S.C. § 1498 barring the suits by limiting Astornet’s remedy to an action against the United States in the Court of Federal Claims.