Posts in Litigation

Last month, we released our first ITC Intelligence Report. For the first time, we ranked ITC law firms and attorneys based on their performance and activity. Our research team analyzed the outcome of 308 ITC Section 337 Investigations, filed from January 1, 2014, through December 1, 2019. For all the terminated cases, we identified the outcome (e.g., violation, no violation, settlement, etc.). Then, depending on the outcome and win/loss of parties (i.e., complainants and respondents), we allocated points to each side, including the law firms and attorneys representing them.

When can an inherent property add patentable weight in the context of obviousness? Over the years, the Federal Circuit has shed light on this question in a number of cases. Persion Pharmaceuticals v. Alvogen Malta Operations Ltd., Docket No. 2018-2361 (Fed. Cir. Dec. 27, 2019) (Persion v. Alvogen) is the most recent decision to address this question. In Persion, the Federal Circuit affirmed the conclusion of the U.S. District Court for the District of Delaware that asserted claims of U.S. Patent Nos. 9,265,760 (“the ’760 patent”) and 9,339,499 (“the ’499 patent”) are invalid as obvious because the feature at issue was inherent in the prior art.

Inequitable conduct is practically the stuff of ghost stories among patent practitioners. You must satisfy your duty of candor to the U.S. Patent and Trademark Office (USPTO) or the patent – all the claims – will be worthless. Since Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) (en banc) ushered in the “but-for” materiality standard, some patent practitioners may have become too complacent and willing to take a chance. Who will find out? A recent decision in Deep Fix, LLC v. Marine Well Containment Co. LLC (S.D.Tx. Feb. 18, 2020) may have patent prosecutors reviewing their files and even filing a request for supplemental examination or two.

On February 12, the U.S. Patent and Trademark Office entered a notice of intent to issue an ex parte reexamination certificate on a patent owned by Opticurrent, LLC, which will confirm all challenged patent claims without any amendments or changes to the specification and drawings. The USPTO’s notice brings an end to a patent battle in which Opticurrent argued that Power Integrations engaged in some unusual gamesmanship to challenge the validity of patent claims asserted against it in district court.

The U.S. Court of Appeals for the Federal Circuit (CAFC) today denied HZNP Medicines LLC’s (Horizon’s) request for rehearing in HZNP Medicines LLC v. Actavis Laboratories UT, Inc., with Judges Newman, O’Malley, Stoll and Lourie dissenting. Judge Lourie, writing for the dissent, said that the Court “has erroneously misconstrued the ‘consisting essentially of’ language in evaluating the definiteness requirement of 35 U.S.C. § 112” and that rehearing en banc should have been granted. In October, the CAFC affirmed the U.S. District Court for the District of New Jersey’s findings of invalidity and noninfringement of certain claims of some of the asserted Horizon patents, as well as the district court’s finding of nonobviousness of one claim of another Horizon patent. Judge Newman dissented in that decision, saying that “The majority’s new ruling sows conflict and confusion” and that it could “cast countless patents into uncertainty.”

As argument nears in the Supreme Court battle between Booking.com and the United States Patent and Trademark Office (USPTO), 12 parties have now filed amicus briefs in support of Booking.com. Among the amici are the Intellectual Property Owners Association (IPO), the International Trademark Association (INTA), and the Survey Scholars and Consultants (SSC).

The Supreme Court today denied certiorari in Apple, Inc. v. VirnetX, Inc. et. al., a development that VirnetX said in a press release spells “triumph” for the Internet security software company, following a decade long battle. The underlying judgment was delivered in October 2017, when the U.S. District Court for the Eastern District of Texas increased the amount of damages to be paid by Apple from $302.4 million in a prior jury verdict up to nearly $440 million for Apple’s infringement of patents covering secure communications in applications like FaceTime.

In November, the U.S. Supreme Court granted a petition for certiorari filed by the U.S. Patent and Trademark Office (USPTO) asking the Court to consider “Whether the addition by an online business of a generic top-level domain (“.com”) to an otherwise generic term can create a protectable trademark.” Booking.com filed its brief for the respondent in the case last week, arguing that “under the Lanham Act, the consumer is king,” and the fact that survey evidence has proven 74.8% of relevant consumers to consider BOOKING.COM a brand, rather than a generic name, “should end this case.”

On January 6, 2020, Google submitted its brief in Google v. Oracle, kicking off the Supreme Court case that many are calling the “copyright case of the decade.” The suit pits the search engine platform controlling 93% of the worldwide search market against Oracle, the owner of the ubiquitous Java program, which submitted its response brief last week. After attempting and failing to secure the rights to Java, Google decided to cease negotiating and instead replicated 37 API packages from the copyrighted program, a decision that precipitated the years-long lawsuit. 

In the latest stage of the Supreme Court battle between Oracle America, Inc. (Oracle) and Google, Oracle filed its opening brief with the Court on February 12. Google’s petition for a writ of certiorari was granted in November 2019 and asks the Court to consider: “1. Whether copyright protection extends to a software interface” and “2. Whether, as the jury found, petitioner’s use of a software interface in the context of creating a new computer program constitutes fair use.” The Court of Appeals for the Federal Circuit (CAFC) previously unanimously reversed a district court decision that held Oracle’s code as uncopyrightable, finding it well established that copyright protection for software programs can extend to both code and their structure or organization. Oracle is suing Google for $8.8 billion in lost revenue.

The U.S. Court of Appeals for the Ninth Circuit is set to hear oral arguments tomorrow in the closely-watched case of FTC v. Qualcomm, which will review the issue of whether Qualcomm is required to license its standard essential patents (SEPs) to modem-chip suppliers, after the district court determined that the company’s “no license, no chips” policy violated U.S. antitrust law. In May 2019, Judge Lucy Koh of the U.S. District Court for the Northern District of California issued a 233-page order finding that Qualcomm had engaged in unlawful licensing practices and ordered in part that Qualcomm “must make exhaustive SEP licenses available to modem-chip suppliers on fair, reasonable, and non-discriminatory (“FRAND”) terms and to submit, as necessary, to arbitral or judicial dispute resolution to determine such terms…[and] submit to compliance and monitoring procedures for a period of seven (7) years.”

On February 5, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in HVLPO2, LLC v. Oxygen Frog, LLC in which the appellate court reversed a decision from the Northern District of Florida to deny a motion for a new trial after a jury verdict found patent claims asserted by HVLPO2 to be invalid for obviousness. HVLPO2 challenged those obviousness findings on motions for judgment as a matter of law (JMOL) and a new trial, both of which the district court denied. The Federal Circuit’s recent decision found that the district court abused its discretion in denying those motions because the court had admitted lay testimony regarding obviousness.

The Federal Circuit in a precedential decision issued earlier today affirmed the Patent Trial and Appeal Board’s finding that Claim 11 of Prisua Engineering Corp.’s U.S. Patent No. 8,650,591 was unpatentable as obvious, and reversed and remanded for further consideration the Board’s finding that the other asserted claims were indefinite and could not be assessed for patentability under Sections 102 or 103. IPR2017-01188 was Samsung’s response to Prisua’s 2016 patent infringement lawsuit against the company, which alleged that Samsung’s “Best Face” feature infringed claims 1, 3, 4, and 8 of the ’591 patent. In that case, a jury in the Southern District of Florida ultimately found that Samsung had willfully infringed the asserted claims and awarded Prisua $4.3 million in damages, but that action was stayed pending the CAFC appeal.

On January 30, the Court of Appeals for the Federal Circuit (CAFC) affirmed the Patent Trial and Appeals Board’s (PTAB) decision rendering claims 1-11 of U.S. Patent No. 7,529,806 (the ‘806 patent) obvious. The ‘806 patent, owned by Koninklijke Philips (Philips) is directed toward improved playback of digital content on a client device through reducing delay. The patent covers a method for forming media presentations using a control information file that does two things: (a) provides the media presentation in various alternative formats, allowing a client device’s media player to “choose the format compatible with the client’s play-out capabilities” opposed to using two way intelligence between the client and server software; and (b) provides the presentation in multiple files so that subsequent files download at the same time as files are played back.

The Federal Circuit recently denied a petition by BioDelivery Sciences International, Inc. (BioDelivery) for a rehearing en banc following a refusal by the Patent Trial and Appeal Board (PTAB) to apply the Supreme Court’s decision in SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018). See BioDelivery Scis. Int’l, Inc. v. Aquestive Therapeutics, Inc., Nos. 2019-1643, 2019-1644, 2019-1645, 2020 U.S. App. LEXIS 1030 (Fed. Cir. Jan. 13, 2020) (Before Prost, Chief Judge, Newman, Lourie, Dyk, Moore, O’Malley, Reyna, Wallach, Taranto, Chen, and Hughes, Circuit Judges) (Opinion for the Court, Lourie, Circuit Judge) (Dissenting opinion, Newman, Circuit Judge). The petition for rehearing arrived at the Federal Circuit following a decision by the PTAB to disregard a remand order by the Federal Circuit ordering the PTAB to apply the Supreme Court’s holding in SAS Institute and decide all of the claims and grounds challenged in an inter partes review. Rather, the PTAB, on remand, withdrew all of its past actions as to the proceedings at issue and denied the petition in its entirety. BioDelivery then petitioned the Federal Circuit for a rehearing en banc, but the Federal Circuit voted to deny the rehearing, with Circuit Judge Newman offering the only dissenting opinion.