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Joseph Robinson

Partner, Troutman Pepper

Joseph Robinson is a Partner with Troutman Pepper. where he helps clients resolve a range of intellectual property challenges with his deep legal experience and business acumen. He advises both at a strategic level and on day-to-day issues to ensure clients derive maximum value from their IP assets.

Recent Articles by Joseph Robinson

Equitable Considerations Warranted Departure from First-To-File Rule

The United States Court of Appeals for the Federal Circuit recently ruled on an appeal regarding a Pennsylvania district court’s decision to decline jurisdiction over a first filed declaratory judgment filed by Communications Test Design, Inc. (“CTDI”) in favor of a patent infringement suit filed six days later in a New York district court by Contec LLC (“Contec”). The Federal Circuit concluded that the Pennsylvania district court did not abuse its broad discretion under the Declaratory Judgment Act to departure from the typical first-to-file rule given the presence of equitable considerations.

Google Wins Mandamus at Federal Circuit in EDTX Venue Dispute

The Court believed the time was now appropriate to address this issue through a writ of mandamus noting that several similar cases had now been heard in various district courts with conflicting results. The Court identified two issues that should be addressed: (1) whether a server rack, a shelf, or analogous space can be a “place of business,” and (2) whether a “regular and established place of business” requires the regular presence of an employee or agent of the defendant conducting business. Finding that a defendant must have regular, physical presence of an employee or other agent of the defendant conducting the defendant’s business at the alleged “place of business,” the Court concluded that the Eastern District of Texas was not a proper venue for this case because Google does not have an employee or agent regularly conducting its business within the District.

CAFC Orders Settlement Agreement Enforced, Tosses Summary Judgment of Non-Infringement

The Federal Circuit recently issued an opinion vacating the district court’s grant of summary judgment motions of non-infringement and remanding with instructions to enforce a settlement agreement between Serta Simmons Bedding, LLC and Dreamwell, Ltd. (collectively, “Serta Simmons”) and Casper Sleep Inc. (“Casper”). See Serta Simmons Bedding, LLC v. Casper Sleep Inc., No. 19-1098, 2020 U.S. App. LEXIS 4467 (Fed Cir.…

Federal Circuit Agrees That Argument-Based Prosecution Estoppel Barred Amgen from Succeeding on Infringement Claim

The Federal Circuit issued an opinion on July 29 affirming the District Court for the District of Delaware’s dismissal of Amgen Inc. and Amgen Manufacturing Ltd.’s (collectively, “Amgen”) complaint alleging infringement of U.S. Patent 8,273,707 (the “’707 Patent”) for failure to state a claim.  The district court held that prosecution history estoppel barred Amgen from succeeding on its infringement claim under the doctrine of equivalents.  Amgen Inc. v. Coherus BioSciences, Inc., No. 18-1993 (Fed Cir. July 29, 2019) (Before Reyna, Hughes, and Stoll, Circuit Judges) (Opinion for the Court, Stoll, Circuit Judge). 

Federal Circuit: ‘Physicality’ of Processing Paper Checks Does Not Save Solutran’s Claims from 101 Challenge

The Federal Circuit recently reversed the District of Minnesota’s denial of summary judgment and held claims related to paper check processing invalid under 35 U.S.C. § 101. Despite the claims being directed to processing “physical” checks, the Court held that “the abstract idea exception does not turn solely on whether the claimed invention comprises physical versus mental steps.”  The Court also reasserted that novelty and/or non-obviousness does not obviate ineligibility under Section 101. See Solutran, Inc. v. Elavon, Inc., Nos. 2019-1345, 2019-1460, 2019 U.S. App. LEXIS 22516 (Fed. Cir. July 30, 2019) (Before Chen, Hughes, and Stoll, Circuit Judges) (Opinion for the Court, Chen, Circuit Judge).

Claimed Method As a Whole Must Be Described to Satisfy Written Description Requirement

The Federal Circuit recently affirmed a Patent Trial and Appeal Board (Board) decision finding that Dr. Stephen Quake and Dr. Christina Fan’s (collectively, “Quake”) asserted claims were unpatentable for lack of written description under 35 U.S.C. § 112. See Quake v. Lo, Nos. 2018-1779, 2018-1780, 2018-1782, 2019 U.S. App. LEXIS 20407 (Fed. Cir. July 10, 2019) (Before Reyna, Chen, and Hughes, Circuit Judges) (Opinion for the Court, Chen, Circuit Judge). The claims were directed to a method for determining the presence of a chromosomal abnormality, called aneuploidy, in fetuses. Aneuploidy occurs when a fetus is born with either an abnormally high or low number of chromosomes. The claimed detection was accomplished using a method called massively parallel sequencing (MPS). Specifically, the claims recited a “random” MPS method, which amplified and sequenced all DNA in a sample rather than specific, targeted sequences of DNA. Quake, based out of Stanford University, and Dr. Dennis Lo (“Lo”) based out of Chinese University of Hong Kong began developing the claimed methods around the same time and requested interferences with respect to a number of applications to determine who invented the method first.

PTAB Overturned on Criticality of Broadened Claim Term in Reissue

Global IP Holdings, LLC, the owner of U.S. Patent No. 8,690,233, achieved a victory with the Federal Circuit vacating a decision of the Board and remanding for the Board to address predictability and criticality of the claim term to determine whether the written description requirement has been satisfied. Although victorious, Global did not achieve everything it wanted. Global had requested the Federal Circuit to simply overrule the Board. Judge Stoll, however, explained that there was not support in the record sufficient to determine whether the “plastic” claim limitation was critical or important. Therefore, the Federal Circuit vacated the Board’s decision and ordered the Board, on remand, to address predictability and criticality of the claim term in question in order to determine whether the written description requirement has been satisfied.

Deposition of Inventor Insufficient to Corroborate Inventor Testimony of Prior Conception

The representative of the inventor attempted to point to metadata contained within the inventor’s affidavit as being corroborating evidence showing the critical dates. The problem with this evidence was never made a part of the record, and the only place it was mentioned was in the inventor’s deposition, and it was only mentioned by the inventor. Inventor testimony must be corroborated by some competent independent evidence or testimony. Indeed, an inventor cannot corroborate their own testimony relating to prior conception. Therefore, an inventor deposition is insufficient to corroborate an inventor affidavit relying on what the inventor said in the deposition.