Posts in Litigation

After Weber v. Provisur, Confidentiality Provisions May Not Be Sufficient to Protect Your Documents from Being Prior Art

On February 8, 2024, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Weber, Inc. v. Provisur Technologies, Inc., reversing the finding of the Patent Trial and Appeal Board (PTAB) that certain operating manuals with limited dissemination and confidentiality restrictions did not qualify as prior art. The Federal Circuit’s decision concluded that the Board misapplied the analysis for meeting the public accessibility standard for a printed publication to qualify as prior art.

Federal Circuit Says Narrowing Limitation Does Not Create a Contradiction Leading to Indefiniteness

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision today reversing the Western District of Texas district court’s indefiniteness analysis and explaining that it improperly found a contradiction between two claim limitations to arrive at its indefiniteness holding. Amperex Technology Limited filed an action seeking declaratory judgment of noninfringement and challenged the validity of certain claims of Maxell, Ltd.’s U.S. Patent No. 9,077,035 for a rechargeable lithium battery and Maxell asserted infringement of the patent in a separate action. The two actions were consolidated in the Western District of Texas and the court ultimately held that two of the “wherein” clauses of the sole independent claim 1 of the ‘035 patent contradicted one another.

CAFC: PHOSITA Can Bridge Gaps with Reasonable Success Under Result-Effective Variable Doctrine

On March 5, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision in Pfizer Inc. v. Sanofi Pasteur Inc. affirming lower rulings by the Patent Trial and Appeal Board (PTAB) that invalidated Pfizer’s patent claims and denied motions to amend (MTA). Although the Federal Circuit vacated the PTAB’s MTA denials with respect to two patent claims, the ruling adds new contours to the appellate court’s case law on obviousness in ways that could affect companies that are patenting chemical inventions with claimed numerical ranges.

CAFC Partially Reverses Noninfringement Judgment But Scraps IBM Web Advertising Claims as Ineligible

The U.S. Court of Appeals for the Federal Circuit (CAFC) in a precedential decision today mostly upheld a district court ruling that found Chewy, Inc. did not infringe several claims of one IBM web advertising patent and that granted summary judgment of patent ineligibility on certain claims of another. However, the decision, authored by Chief Judge Kimberly Moore, reversed the district court’s finding of noninfringement on one of the five asserted claims of one patent, remanding the case for further proceedings on that issue.

Sanctions Imperative When False Statements are the Basis for a Lawsuit

For better or worse, anyone can be sued for any reason—even reasons that are completely fictitious and based on allegations that are entirely false. Several cases have recently caused me to ask a simple question: Can something actually be evidence if it is false? I’ve had a few people respond, some thoughtful and others intentionally dense. “Of course, something that is false is evidence,” one person recently told me. “It is up to the trier of fact to determine what is false, and that which is false is clearly evidence to be considered.”

A Perspective on USPTO Rulemaking Following In re Chestek

There are many views on the significance of In re Chestek, No. 2022-1843 (February 14, 2024) to the U.S. Patent and Trademark Office (USPTO) rulemaking process. One question I have asked myself is what I would do differently after Chestek if I were still involved in rulemaking at the USPTO. The simple answer is almost nothing: I would cite Chestek instead of the other decisions in the Administrative Procedure Act (APA) section of a proposed or final rule.

CAFC Affirms Albright Rulings in Alexa Shopping List Patent Suit

On February 26, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Freshub, Ltd. v. Amazon.com, Inc., affirming a ruling by U.S. District Judge Alan Albright of the Western District of Texas in the face of appeals from both parties to the case. The Federal Circuit left the lower ruling intact after finding that the record developed at trial did not establish clear error with regards either to Freshub’s patent infringement allegations or Amazon’s inequitable conduct defense.

Examining the Possibility of Compulsory Copyright Licensing for LLM Training

ChatGPT and similar generative artificial intelligence (AI) tools rely on large language models (LLMs). LLMs are fed massive amounts of content, such as text, music, photographs and film, which they analyze to discover statistical relationships among these inputs. This process, describe as “training” the LLMs, gives them the ability to generate similar content and to answer questions with seeming authority. The business community, and society at large, seems convinced that AI powered by LLMs holds great promise for increases in efficiency. But multiple lawsuits alleging copyright infringement could create a drag on development of LLMs, or worse, tip the competitive balance towards offshore enterprises that enjoy the benefits of legislation authorizing text and data mining. A lot seems to hang on the question of whether LLM training involves copyright infringement or instead is a fair use of copyrighted content.

Patent Filings Roundup: Entropic Patents Challenged at PTAB; Push Data Campaign Grows; MyPort Case Closes

It was an average week all around with 31 new patent filings at the Patent Trial and Appeal Board (PTAB) – all inter partes reviews (IPRs) – and 67 new filings in district court. The bulk of this week’s new PTAB filings (a total of 19) were petitions challenging patents owned and asserted by Entropic Communications LLC [associated with SoftBank Group Corp.] (discussed further below). Other notable filings include petitions challenging patents held by Softex [associated with SoftBank Group Corp.], Dental Imaging Technologies [associated with Envista Holdings Corporation], Resonant Systems [d/b/a RevelHMI], Immersion Corp, and Dsm IP Assets BV [associated with DSM-Firmenich AG].

DIG, Dogs and Bad Wine: Justices Float Scrapping Warner Chappell to Consider Alternate Petition on ‘Discovery Accrual Rule’ for Copyright

Oral arguments took place today in Warner Chappell Music v. Nealy, a case that asks whether a copyright plaintiff can recover damages for acts that allegedly occurred more than three years before the filing of a lawsuit. The Justices repeatedly asked the parties involved whether they should dismiss the case as having been improvidently granted (DIG) in order to first grant and decide another pending case that directly addresses a technically peripheral, but seemingly crucial, question at issue in Warner Chappell, namely, whether the so-called discovery accrual rule applies to the Copyright Act’s statute of limitations for civil claims.  

‘Where Are the Designers on This?’: Some Post-Argument Thoughts on LKQ v. GM

On February 5, 2024, the U.S. Court of Appeals for the Federal Circuit (CAFC) held its en banc oral argument to reconsider the obviousness test for design patents. Overall, the many judges’ questions indicated a hesitancy to change the current law, as they expressed concern with positions advanced by the patent challenger. Listening to the argument, it became instantly clear that the designer’s voice was missing from the arguments of both parties. The judges had deeply probing and important questions that need the input of a design professional. As an experienced design professional, I penned this article to highlight the designer’s voice by providing answers to several critical questions posed by the court during oral argument.

CAFC Puts Patent Community on Notice of Sanctions for Incorporation by Reference Violations

On February 16, the U.S. Court of Appeals for the Federal Circuit issued a pair of precedential rulings in Promptu Systems Corp. v. Comcast Cable Communications, LLC, vacating a final judgment of infringement after reversing part of the district court’s claim construction rulings. The entire U.S. patent community, however, should take notice of the Federal Circuit’s sua sponte order informing future litigants that evading briefing limits by incorporating much larger documents by reference will likely result in sanctions.

CAFC Schools TTAB on Likelihood of Confusion Analysis

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision on Thursday vacating the Trademark Trial and Appeal Board’s (TTAB’s) denial of a petition to cancel a trademark for a medicated tea product to treat colic in babies. Naterra International, Inc. petitioned the TTAB to cancel the mark BABIES’ MAGIC TEA based on likely confusion in the market with its own registrations for the mark BABY MAGIC, which cover “numerous toiletry goods.” The Board found that Naterra failed to prove confusion under the 13 DuPont Factors.

Patent Filings Roundup: ‘DASH’ Streaming Patents Struck Down Under 101; Samsung IPRs Fall to Fintiv; IP Edge Affiliate Kicks Off New Campaign

It was an average week for patent filings at the Patent Trial and Appeal Board (PTAB) and an above-average week in district courts, with 72 district court complaints filed and 18 new PTAB petitions—one petition for Post Grant Review (PGR), and 17 for Inter Partes Review (IPR). At the PTAB, a number of challenges were filed, including two IPRs by Tesla challenging patents owned by Iqar Inc, four IPRs by Dish challenging patents owned by Entropic Communications LLC (associated with Fortress), two IPRs by Microsoft challenging patents owned by Interdigital Patent Holdings Inc (associated with InterDigital Inc.), and two IPRs by Juniper Networks challenging patents owned by Monarch Networking Solutions LLC (associated with Acacia Research Corporation).

Law School Amici Urge SCOTUS to Grant Kroger Petition on Trademark Confusion and Resolve Circuit Conflict

Three law school faculty and students filed an amicus brief earlier this week urging the U.S. Supreme Court to reverse a trademark decision of the U.S. Court of Appeals for the Seventh Circuit regarding the legal standard for trademark confusion. The brief asks the Court to “end the contradiction and confusion” around the different approaches taken to the likelihood of confusion analysis by federal courts.