Posts in Litigation

Internet Companies File Latest Brief in Support of Google in Fight with Oracle at Supreme Court

Mozilla, Mapbox, Medium, Patreon, Etsy, and Wikimedia have filed an amicus brief in support of Google in its case against Oracle at the U.S Supreme Court. The platforms disagree with the Federal Circuit’s March 27, 2018, ruling that Google’s use of Oracle’s Java application programming interface (API packages) was not fair as a matter of law, reversing the district court’s decision on the matter. The brief is the latest of 14 that have been filed in the last week in support of granting the petition.

Federal Circuit Deems Written Description Requirement Satisfied if Specification Identifies the Claimed Invention in a Definite Way

The United States Court of Appeals for the Federal Circuit recently issued a ruling reversing a district court’s grant of summary judgment of non-infringement and invalidity for failure to satisfy the written description requirement. See CenTrak, Inc. v. Sonitor Techs., Inc., 2019 U.S. App. LEXIS 4442 (Fed. Cir. Feb. 14, 2019) (Before Reyna, Taranto, and Chen, Circuit Judges) (Opinion for the Court, Chen, Circuit Judge). The Court said the written description requirement does not require that the specification provide either examples or an actual reduction to practice. Instead, a constructive reduction to practice may be sufficient if the specification identifies the claimed invention in a definite way.

Amazon’s Counterfeit Problem is a Big One—for Shareholders, Brand Owners and Consumers Alike

On February 1, Amazon.com, Inc. filed a Form 10-K annual report with the U.S. Securities and Exchange Commission. Along with reporting its year-end earnings for the 2018 fiscal year, this particular SEC filing was notable because Amazon officially acknowledged to shareholders that the company’s online sales platforms face the risk of being found liable for fraudulent or unlawful activities of sellers on those platforms. This includes the company’s first-ever concession that Amazon may be unable to prevent sellers trafficking counterfeit and pirated goods. “The law relating to the liability of online service providers is currently unsettled,” Amazon’s Form 10-K filing reads. Along with the specter of counterfeit sales, Amazon noted that its seller programs may render the company unable to stop sellers from collecting payments when buyers never receive products they ordered or when products received by buyers are materially different than the sellers’ description of those products at the point of purchase. While information regarding a corporation’s potential risk of liability is a regular feature of SEC filings, news reports indicate that this is the first time that Amazon used the word “counterfeit” in an annual report.

Federal Circuit Corrects District Court’s Claim Construction

The United Stated Court of Appeals for the Federal Circuit recently held that a district court erred in its claim construction and vacated the district court’s judgment of noninfringement, which the parties stipulated to based on the erroneous construction. See Continental Circuits LLC v. Intel Corp., No. 2018-1076, 2019 U.S. App. LEXIS 3920, 2019 WL 489069 (Fed. Cir. Feb. 8, 2019) (Before Lourie, Linn, and Taranto, J.) (Opinion for the court, Lourie, J.). The Court highlighted that the first step in claim construction should always be to determine the plain and ordinary meaning of the claims. Further, the specification should serve to limit the plain and ordinary meaning only when it includes a definition for a claim term or a clear disclaimer or disavowal of claim scope.

Mission Product Oral Argument Promises Certainty on Long Unresolved Question

Mission Product Holdings v. Tempnology was argued last week at the Supreme Court and seeks to solve a circuit split regarding the effects of bankruptcy proceedings on trademark licenses. The case asks the nation’s highest court to determine if the rejection of a license in bankruptcy terminates the licensee’s right to to the trademarks or whether that license rejection only constitutes a breach by the licensor, in which case the licensee can still use the marks. The International Trademark Association (INTA) has dubbed the issue presented as “the most significant unresolved legal issue in trademark licensing.” Following our in-depth guest report on the oral argument, IPWatchdog asked those following the case to provide their take on the import of the case, the oral argument, and potential implications of the justices’ questioning.

Return Mail Reaction: Patent Bar Sampling Narrowly Favors Finding for Petitioner

On February 19, the U.S. Supreme Court heard oral arguments in Return Mail Inc. v. United States Postal Service—one of two IP cases the Court heard that week. The courtroom for the Return Mail hearing was particularly full of press because it was Justice Ruth Bader Ginsburg’s first hearing following a recent hiatus to have nodules on her lungs removed. The case asks whether the federal government constitutes a “person” for the purposes of instituting post grant review proceedings at the Patent Trial and Appeal Board (PTAB) under the Leahy-Smith America Invents Act (AIA). As reported earlier this week, the justices appeared to be dissatisfied with arguments from counsel on both sides—and skeptical that Congress had any view on the issue to begin with—but they arguably pushed back more against the government’s position. As always, IPWatchdog reached out to the patent bar for their take on the arguments. Like the questioning, the predictions were mixed and reveal no clear path, but a narrow holding in favor of Return Mail could be likely.

Other Barks & Bites for Friday, February 22

This week in Other Barks & Bites: the Chinese and U.S. governments hash out intellectual property issues; a prominent New York City politician joins the effort to break the patent on Gilead’s Truvada; Qualcomm tells the ITC that Apple’s design around undermines the agency’s finding that an exclusion order shouldn’t be entered against infringing iPhones; the Fortnite copyright cases take a new turn; Babybel loses the trademark on its red wax cheese coating in the UK; Fisker & Paykel and ResMed settle their worldwide patent dispute; Facebook could face major FTC fines for payments from children playing video games on the platform; and reports indicate that Pinterest is pursuing an initial public offering.

Mission Product: SCOTUS Appears Skeptical That Bankrupt Licensor’s Rejection of Trademark License Means Licensee Can’t Use the Mark

On Wednesday, February 20, the U.S. Supreme Court heard oral arguments in Mission Product Holdings, Inc. v. Tempnology, LLC, where the Court was asked to address one of the most important issues at the intersection of trademark law and bankruptcy law: whether a debtor-licensor’s rejection of a trademark license terminates the rights of the licensee to use that trademark. Taking seriously the language of the question presented, and generally acknowledging that 11 U.S.C. § 365(g) provides that rejection constitutes a “breach” of the contract, the justices focused on the remedies for breach outside of bankruptcy law and whether, because trademarks (and quality control issues) are involved, deviation from ordinary, contract law principles is warranted. Both the advocates and the justices returned to whether analogies, including with respect to breaches of apartment and photocopier leases, are apposite. The question of whether the case was moot also received some attention, though it seems unlikely that the case will be dismissed on that ground.

Of Secret Sales and Public Uses: The Practical Consequences of the Supreme Court’s Helsinn Decision

It seemed like a trade secret trifecta when Congress in 2011 passed the America Invents Act (AIA). Although the statute was aimed at patent reform, it made three helpful changes in how trade secrets are treated. First, companies could hold onto secret information about an invention without risking invalidation of their patents for failing to disclose the “best mode” of implementing it. Second, the “prior user right” that guarantees continuing use of a secret invention, even if someone else later patents it, was extended to cover all technologies. And third, the law would no longer deny a patent simply because the inventor had already commercialized the invention in a way that didn’t reveal it to the public. Or so we thought. That last change depended on how you read the legislation. The long-standing requirement that an invention could not be “on sale” or “in public use” more than a year before filing a patent application was still there. But Congress added a qualifier to 35 U.S.C. §102: there would be no patent if the invention had been “in public use, on sale, or otherwise available to the public . . . .”

Mandamus Relief Denied: Federal Circuit Avoids Clarifying TC Heartland in In re Google LLC

The Federal Circuit recently elected not to decide en banc “whether servers are a regular and established place of business, such that venue is proper under 35 U.S.C. § 1400(b). In re: Google LLC, No. 2018-152 (Fed. Cir. Feb. 5, 2019) (Before Prost, Chief Judge, Newman, Lourie, Dyk, Moore, O’Malley, Reyna, Wallach, Taranto, Chen, Hughes, and Stoll, Circuit Judges) (Dissent by Reyna, Circuit Judge, joined by Newman and Lourie, Circuit Judges). SEVEN Networks, LLC’s (SEVEN) patent infringement suit against Google arose in the Eastern District of Texas. SEVEN alleged Google’s servers, stored in a third-party ISP’s facility, where the allegedly infringing activities occurred, were a regular and established place of business, such that venue is proper under 35 U.S.C. § 1400(b). The district court denied Google’s motion to dismiss for improper venue. As a result, Google petitioned the Federal Circuit for a writ of mandamus directing the district court to dismiss or transfer the case for improper venue. On appeal, the panel majority found mandamus relief inappropriate because “it is not known if the district court’s ruling involves the kind of broad and fundamental legal questions relevant to § 1400(b),” and “it would be appropriate to allow the issue to percolate in the district courts so as to more clearly define the importance, scope, and nature of the issue for us to review.”

Return Mail v. USPS Oral Arguments: Both Sides Struggle in Robust Questioning at Supreme Court

On Tuesday, February 19, the U.S. Supreme Court heard oral arguments in Return Mail Inc. v. United States Postal Service, a case that asks the nation’s highest court to determine whether the federal government constitutes a “person” for the purposes of instituting review proceedings at the Patent Trial and Appeal Board (PTAB) under the Leahy-Smith America Invents Act (AIA). Although the Supreme Court Justices appeared to be dissatisfied with arguments from counsel for either side, they arguably pushed back more against the USPS’ position. All Justices apart from Justice Clarence Thomas played an active role in questioning.

The Newest Patent ‘Rocket-Docket’: Waco, Texas

Marshall, Texas has been, and will likely continue to be, one of the major patent litigation cities in the United States. But, Waco, Texas is quickly becoming the new mecca for patent infringement lawsuits due to recent case law and the arrival of a patent-savvy district judge. In the world of patent litigation, we all know Marshall, Texas. The Eastern District of Texas—which includes the Marshall Division—is known to be one of the largest as far as numbers of patent litigation lawsuit filings in the U.S. The economic impact on the region has been significant, as service industries such as hotels, temporary offices, restaurants and catering companies grew to serve the regular flow of litigators and their clients coming to Marshall for hearings and trials from around the country. Several national and regional law firms specializing in patent litigation opened satellite offices in and around Marshall to serve their frequent needs for access to the busy courthouse.

Federal Circuit Affirms Athena’s Diagnostic Method Claims Are Patent Ineligible as Directed to a Law of Nature

The Federal Circuit recently issued an opinion affirming the decision of the United States District Court for the District of Massachusetts, which held that Athena’s medical diagnostic methods were directed toward laws of nature and patent ineligible under 35 U.S.C. § 101. Athena Diagnostics, Inc. v. Mayo Collaborative Servs., LLC, No. 17-2508, 2019 U.S. App. LEXIS 3645 (Fed Cir. Feb. 6, 2019) (Before Newman, Lourie, and Stoll, Circuit Judges) (Opinion for the Court, Lourie, Circuit Judge) (Dissenting Opinion, Newman, Circuit Judge).
The inventors of U.S. Patent 7,267,820 (the 820 Patent) discovered that about 20% of patients with the neurological disorder myasthenia gravis (MG) generate autoantibodies to a membrane protein called MuSK. Until their discovery, no disease had ever been associated with the protein. The ‘820 patent disclosed and claimed methods for diagnosing neurological disorders by detecting antibodies that bind to MuSK. Athena Diagnostics (Athena), the ‘820 Patent’s exclusive licensee, sued Mayo Collaborative Services (Mayo) for infringement. Mayo moved to dismiss, and the district court granted Mayo’s motion, concluding that the patent claimed ineligible subject matter and was invalid under 35 U.S.C. § 101. Athena appealed, and the Federal Circuit affirmed.

Other Barks & Bites for Friday, February 15

This week in Other Barks & Bites: the USPTO appoints a new Chief Information Officer; Apple uses Qualcomm chips in Germany while American professors urge the ITC to deny exclusion of iPhones found to infringe Qualcomm patent claims; two important IP cases will be heard by the U.S. Supreme Court next week; the EU approves copyright reforms, including the hotly-debated Article 13; Fresh Prince of Bel-Air star Alfonso Ribeiro runs into issues at U.S. Copyright Office; Facebook could owe billions in fines for consumer data practices; a jury verdict dings Walmart for nearly $100 million in trademark infringement case; and Google announces multi-billion dollar plan to expand offices and data centers across the United States.

Simultaneous Invention as Secondary Evidence of Obviousness

Is an invention arrived at by multiple inventors within a short space of time necessarily obvious? If not, how far may the evidence of simultaneous or contemporaneous invention go toward proving obviousness? Simultaneous invention is not common, but evidence of such invention, when present, can be important for reaching a conclusion of obviousness. Simultaneous invention can sometimes occur in the aftermath of the introduction of an enabling or foundational technology, when multiple groups working independently solve a problem, which, but for the foundational technology, would not have been possible. A recent example of this scenario can be found in the litigation related to the CRISPR-Cas9 technology, which culminated in a decision by the Federal Circuit in September 2018. University of California v. Broad Institute, Inc. (Fed. Cir. 2018) (UC v. Broad).

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