Posts in Litigation

It was a light week for patent filings, with 18 Patent Trial and Appeal Board (PTAB) and 38 district court complaints; last week saw the first Fintiv denials in months in a tranche of cases very close to trial; this week there were five more discretionary denials under Section 325(d), where the parties failed to point out any material error in earlier proceedings analyzing similar art under Advanced Bionics. And obviously, the third Fortress/VLSi trial resulting in another near-billion-dollar award splashed the headlines. The District of Delaware was busy uncovering the story behind IP Edge/Mavexar LLC and how they run and control their subsidiaries, and it’s even more interesting than I thought it was; though of course, it hasn’t stopped entities like those run by Jeffrey Gross from continuing to roll out filings. More below.

Earlier today, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision in CUPP Computing AS v. Trend Micro Inc. affirming final written decisions from a trio of inter partes review (IPR) proceedings invalidating CUPP Computing’s patent claims covering methods for performing security operations on a mobile device. The CAFC’s decision makes clear to patent owners defending their rights at the Patent Trial and Appeal Board (PTAB) that the Board is not required to consider a disclaimer entered during IPR as binding on the proceedings before it.

The U.S. District Court for the Southern District of New York last week dismissed a trade secrets lawsuit against International Business Machines Corp (IBM) and IBM China by Beijing Neu Cloud Oriental System Technology Co. The Chinese firm alleged that IBM stole trade secrets from its joint venture in order to sell IBM products to the Chinese market. IBM China and Beijing Teamsun Technology Co. originally formed Beijing Neu Cloud in 2014 as a joint venture to distribute IBM technology in China. But in a 2021 complaint, Beijing Neu Cloud alleged that IBM induced “Neu Cloud and its majority owner through later-breached contracts to expend resources and provide IBM with access to sensitive, confidential customer information, which IBM then secretly used to create competing ventures in China.”

In a precedential opinion issued yesterday, the U.S. Court of Appeals for the Federal Circuit (CAFC) ruled partially in favor of VLSI Technology, Inc. in its case with Intel, reversing the Patent Trial and Appeal Board’s (PTAB’s) holding that one claim of U.S. Patent No. 7,247,552 was unpatentable. The court upheld the PTAB’s unpatentability findings on the three other challenged claims. Intel filed three separate inter partes review (IPR) petitions against VLSI challenging the validity of claims 1, 2, 11, and 20 of the ‘552 patent, which is directed to “’[a] technique for alleviating the problems of defects caused by stress applied to bond pads’ of an integrated circuit.”

I founded Netlist in Irvine, California, over 20 years ago to develop the most sophisticated memory module technology in the world. We succeeded, shipping over a billion dollars of product and partnering with top companies, such as IBM, HP and Dell, to power their high performance computers. Netlist continues to invest heavily in R&D in the U.S. We hold more than 130 patents, many of which have been designated as standards-essential. Our memory technology has benefited consumers, businesses and the U.S. military as it is now an integral part of advanced computers deployed in a variety of industries. When we began the company, we were under the impression that securing a U.S. patent was the high-water mark of innovation and that this would protect our inventions against infringement. A patent, we believed, would allow small innovators like Netlist to compete with large incumbents that wield enormous market power.

On November 10, the U.S. Court of Appeals for the Ninth Circuit ruled in Unicolors, Inc. v. H&M Hennes & Mauritz, L.P. following remand from the U.S. Supreme Court, which clarified the knowledge standard required for invalidating copyright registrations based on inaccuracies in the registration application. In light of that ruling, the Ninth Circuit upheld Unicolors’ ability to maintain its copyright infringement action against H&M because the plaintiff did not have the requisite knowledge of the legal inaccuracy on its registration application to invalidate the registration. While the Ninth Circuit dismissed most of H&M’s arguments on remand, the appellate court did agree with H&M that the district court’s post-remittitur damages were improperly calculated, leading to a significant reduction in the amount awarded to Unicolors in the case.

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential decision affirming the Patent Trial and Appeal Board (PTAB) on two mixed inter partes review (IPR) decisions involving American National Manufacturing and Sleep Number Corp. that found some, but not all, of the challenged claims not unpatentable. The IPRs on appeal involve U.S. Patent Nos. 8,769,747 and 9,737,154. They “describe systems and methods that purport to adjust the pressure in an air mattress ‘in less time and with greater accuracy’ than previously known.” American National filed IPR petitions challenging many claims of both patents and asserting that most of the challenged claims would have been obvious over various prior art references.

On November 4, the U.S. Supreme Court granted Amgen’s petition for certiorari against the advice of the U.S. government – taking up Amgen’s challenge to the Federal Circuit’s enablement review of its PCSK9 antibody patents covering evolocumab (Repatha®). In its petition, Amgen asserts that the Federal Circuit has gone too far in invalidating its PCSK9 antibody patents by imposing a disclosure burden beyond the requirements of 35 U.S.C. § 112. Notably, the Supreme Court, albeit with a different composition, recently declined to hear several other similar cases raising issues with the Federal Circuit’s enablement precedent.

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential decision affirming the grant of a narrowly-tailored preliminary injunction to SoClean, Inc., a medical device company that makes CPAP machines, based on trademark infringement claims against Sunset Healthcare Solutions, Inc. SoClean alleged in 2021 that Sunset infringed its U.S. Trademark Registration No. 6,080,195. The registration covers the configuration of replacement filters for its sanitizing devices.

On November 7, the U.S. Supreme Court issued an order list showing that it had denied the petition for writ of certiorari filed in Juno Therapeutics, Inc. v. Kite Pharma, Inc. In denying the petition, the Court refused yet again to clarify the Federal Circuit’s questionable interpretation of U.S. patent code, this time within the context of the written description requirement of 35 U.S.C. § 112, and leaves in place an appellate court ruling that many believe will be very damaging to the United States’ life sciences innovation sector.

The U.S. Court of Appeals for the Federal Circuit (CAFC) today said in a precedential order that Judge Alan Albright’s Scheduling Order in a case between Aire Technology Limited and Apple, Inc. went too far in mandating additional substantive discovery and re-briefing that would result in nearly a year passing before the court rules on Apple’s venue transfer motion. Apple asked the U.S. District Court for the Western District of Texas in April 2022 to transfer Aire’s patent infringement case against it to the Northern District of California. Apple filed declarations during venue discovery to support the need for transfer, including a request to supplement its motion with additional declarants just prior to the close of venue discovery, and offered to make the declarants available for deposition and to extend the transfer proceedings for a “reasonable” amount of time.

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Monday said the U.S. Patent and Trademark Office (USPTO) properly deducted days from a patentee’s Patent Term Adjustment (PTA) under Supernus Pharms., Inc. v. Iancu because there were clear steps the applicant could have taken to conclude prosecution. Eurica Califorrniaa owns U.S. Patent 10,245,075 for a “Nondestructive means of ectopic pregnancy management.” Following a lengthy prosecution, the examiner made an amendment indicating minor additional changes to the claim language and issued a notice of allowance on December 11, 2018. Califorrniaa requested an additional interview on January 7, 2019, and included a new proposed amendment.

The U.S. Supreme Court granted petitions for certiorari in two intellectual property cases Friday, one dealing with the limits of extraterritorial application of the Lanham Act and another asking the High Court to weigh in on whether “enablement” means a specification must enable those skilled in the art “to reach the full scope of claimed embodiments” without undue experimentation.

It was a return to form this week in the district courts, with 115 new patent filings (led by more than 40 new IP Edge complaints) to just 23 new Patent Trial and Appeal Board (PTAB) filings—the latter number being bolstered by a number of challenges to patents held by Raymond Anthony Joao subsidiary Beteiro, LLC by a conglomerate of gambling companies, including PointsBet USA, DraftKings, Inc., BetMGM, LLC, Hillside New Jersey LLC, and Entain Corporate Services Ltd. Micron filed another set of challenges against Katana Silicon Technologies patents, Ecobee challenged another Magnetar entity, Ollnova, which has brought suit on Internet of Things (IoT) related devices; and it was another week without any discretionary denials.

Three amici filed briefs last week in Jump Rope System’s petition asking the U.S. Supreme Court to review a U.S. Court of Appeals for the Federal Circuit (CAFC) decision upholding a Patent Trial and Appeal Board (PTAB) finding of unpatentability. Eagle Forum Education and Legal Defense Fund and the Fair Inventing Fund filed briefs in support of the jump rope company while DivX filed in support of neither party .

Jump Rope Systems, the inventor of a novel jump rope system, is petitioning the Supreme Court to clarify “whether, as a matter of federal patent law, a determination of unpatentability by the Patent Trial and Appeal Board in an inter partes review proceeding, affirmed by the Federal Circuit, has a collateral estoppel effect on patent validity in a patent infringement lawsuit in federal district court.”