Posts in Litigation

The Federal Circuit on Friday reversed the Patent Trial and Appeal Board’s decision holding certain claims of Personalized Media Communications, LLC’s (PMC’s) U.S. Patent No. 8,191,091 (the ’091 Patent) unpatentable on anticipation and obviousness grounds but affirmed the decision as to the remaining claims. The Court found that the Board erred in its claim construction of one of the claim terms at issue due to its dismissal of the prosecution history. The Board rejected PMC’s reliance on the prosecution history, stating “the prosecution history presents a murky picture as opposed to a clear waiver.” The Federal Circuit disagreed with this approach and found that the prosecution history statements supported PMC’s interpretation and construction of the phrase “encrypted digital information transmission.”

The United States Court of Appeals for the Federal Circuit recently ruled on a Patent Trial and Appeal Board (Board) Covered Business Method (CBM) Decision, affirming the Board’s holding that certain challenged claims of Customedia Technology’s patents are unpatentable as directed to the abstract idea of delivering targeted advertising using a computer. See Customedia Techs., LLC v. Dish Network Corp., 2018-2239, 2020 U.S. App. LEXIS 7005 (Fed. Cir. Mar. 6, 2020) (Before Prost, Chief Judge, Dyk and Moore, Circuit Judges) (Opinion for the Court, Prost, Chief Judge). Customedia argued that providing a reserved and dedicated section of storage, as in the claims, improves the data delivery system’s ability to store advertising data, transfers data at improved speeds, and prevents system inoperability due to insufficient storage. However, the Federal Circuit did not find this sufficient for finding an improvement to the functionality of the computer itself. 

Earlier this week, Chrimar Systems, Inc. filed a petition for certiorari asking the U.S. Supreme Court to take up a case on appeal from the U.S. Court of Appeals for the Federal Circuit. Chrimar is asking the nation’s highest court to answer the question of whether the Federal Circuit may: 1. apply a finality standard for patent cases that conflicts with the standard applied by the Supreme Court and all other circuit courts in non-patent cases, and 2. whether a final judgment of liability and damages that has been affirmed on appeal may be reversed based on the decision of an administrative agency.

Patent litigation and enforcing patents can be cost prohibitive for many individual inventors and smaller businesses. Hourly rates at large firms may be out of reach for those with “not so deep pockets,” and most litigation funding companies either avoid patent litigation altogether or require a case valuation in the tens of millions of dollars. Enforcing your patent rights can be an expensive endeavor, but affordable options do exist.

The en banc U.S. Court of Appeals for the Ninth Circuit has ultimately sided with Led Zeppelin in a long-running case examining whether the opening notes of the band’s legendary song “Stairway to Heaven” infringed the song “Taurus,” written by Robert Wolfe of the band Spirit, a contemporary of Led Zeppelin. Michael Skidmore, Trustee for Wolfe’s estate, brought the original suit in 2014. The Court notably struck down its own “inverse ratio rule,” which dictates that there is “a lower standard of proof of substantial similarity when a high degree of access is shown,” as set out in the 2000 case of Three Boys Music Corp. v. Bolton. In September 2018, a three-judge panel of the Ninth Circuit vacated-in-part the judgment of the U.S. District Court for the Central District of California that “Stairway to Heaven” was not substantially similar to “Taurus”. The case was remanded back to the district court after the appellate court found that certain instructions given by the district court to the jury were erroneous and prejudicial. However, the Court agreed to rehear the case en banc in June 2019.

The U.S. Court of Appeals for the Federal Circuit has affirmed a ruling by the United States District Court for the Southern District of Indiana finding CleanTech’s patents-in-suit unenforceable for inequitable conduct for making a pre-critical-date offer for sale.  The patents-in-suit, U.S. Patent Nos. 7,601,858 (“the ’858 patent”), 8,008,516 (“the ’516 patent”), 8,008,517 (“the ’517 patent”), and 8,283,484 (“the ’484 patent”), are directed to methods of recovering oil from a dry mill ethanol plant’s byproduct, i.e. “thin stillage.” 

The U.S. Court of Appeals for the Federal Circuit has upheld an International Trade Commission (ITC) ruling granting a limited exclusion order that bars importation of X1 set-top boxes by Comcast, including importation by ARRIS and Technicolor on behalf of Comcast. Although the patents at issue have both expired, the Court refused Comcast’s motion to dismiss, finding that there were “sufficient collateral consequences to negate mootness.”

Federal Rule of Evidence 702 makes clear that a qualified expert may testify if he or she could help a trier of fact understand evidence and facts at issue. Fairness and reliability are the lineaments of Rule 702 and other rules governing expert discovery. Simply put, each party is given the opportunity to present expert testimony, and to challenge that of the opposing party. As gatekeepers of expert testimony, judges are careful not to give one party an unfair advantage over another regardless of the type of expert presented. The U.S. Court of Appeals for the Federal Circuit recently found that the District Court for the Northern District of Florida abused its discretion by allowing unqualified expert testimony concerning the invalidity of a patent. HVLPO2, LLC v. Oxygen Frog, LLC, Case No. 19-1649 (Fed. Cir. Feb. 5, 2020) (Moore, J) involved the infringement of patents related to an oxygen supply management apparatus for glass blowing.

Trade secrets have become an increasingly valuable asset to many companies, but compared to other types of intellectual property, including patents, copyrights and trademarks, they are extremely “fragile,” and require that an owner undertake as many steps as possible to protect their information and be vigilant about the need to protect such information to the fullest extent possible. The failure to do so may lead to a court’s finding in a misappropriation case that the information in question is not protectable as a trade secret. As described below, it is very easy for trade secrets to lose protection under a variety of circumstances, even where the owner has taken what it believes are “reasonable measures” as required for trade secret protection under 18 U.S.C. § 1839(3)(A. In short, authorities in this area teach that the more steps a party undertakes to protect its trade secrets, the more likely that a court will find those steps to constitute “reasonable measures.”

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).