Posts Tagged: "CAFC"

Halo sued Comptoir for infringing a large number of U.S. design patents, copyrights, and one common-law trademark relating to a number of Halo’s furniture designs. Both companies manufacture and sell furniture. Comptoir is a Canadian company that manufactures furniture in China, Vietnam, and India, and then imports that furniture into the United States for sale. Comptoir moved to dismiss the suit on forum non conveniens grounds, alleging that the Federal Court of Canada would be the appropriate forum for the dispute.

On March 10, 2016 the Federal Circuit sent two Patent Trial and Appeal Board (“PTAB” or “Board”) reexaminations back to the Patent Office. In proceedings initiated by IBM and SAS Institute Inc., the PTAB rejected claims for analyzing investment data in two patents owned by InvestPic LLC. The Board’s ruling turned upon two claim terms: (1) a “bias parameter” that determines a degree of randomness in sample selection in a resampling process”; and (2) “a statistical analysis request corresponding to two or more selected investments.”

Akzo appealed from the decision of the district court (Chief Judge Leonard Stark) to grant summary judgment to Dow, which found that Dow did not infringe the claims of U.S. Patent 6,767,956, either literally or under the doctrine of equivalents. Dow also cross-appealed from the district court’s conclusion that the claims of the ’956 patent were not indefinite. Ultimately, the Federal Circuit affirmed the district court on both appeals.

Seeking to push this issue to a head sooner rather than later, Technology Trading International, the owner of the ‘304 patent, has recently filed a Petition for Writ of Mandamus with the United States Court of Appeals for the Federal Circuit. As the mandamus petition explains, the ‘304 patent has been the subject of serial CBM petitions. They are challenging the institution of this CBM because the ‘304 patent is clearly not a business method patent.

While it is certainly possible that the President has narrowed his consideration to these three candidates, history teaches us that strange twists and turns can and do occur in the Supreme Court nominating process. With four years of experience on the Federal Circuit, confirmed to that court unanimously with a 86-0 vote and vocal bipartisan support, Judge Reyna would be the first Mexican-American to become a Supreme Court Justice, he would be the first international trade lawyer to become a Supreme Court Justice, and he would bring 30 years of broad legal experience and IP training to the High Court. The American Bar Association has ranked him as unanimously well-qualified, its highest ranking.

The Federal Circuit held, pursuant to 35 U.S.C. § 314(d), that it does not have jurisdiction to review an institution decision, because a “determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.” The PTAB’s decision on the redundancy of Harmonic’s asserted grounds for review constituted a portion of the Institution Decision and was therefore unappealable, absent some other appealable question.

Following a five-day trial, the jury found the asserted claims valid and infringed, and awarded Eon $18,800,000. In determining only that the terms should be given their plain and ordinary meaning, the district court left the ultimate question of claim scope unanswered, and improperly left it for the jury to decide. Instead of remanding, the Court independently found that, when read in their appropriate context, the terms “portable” and “mobile” could not be construed as covering the accused products at issue. The jury’s infringement finding was reversed.

UltimatePointer argued that the district court improperly construed “handheld device” to require direct pointing, because there was no disavowal or lexicography in the specification to exclude indirect pointing. Nintendo argued that the specification extols direct pointing and repeatedly criticizes indirect pointing. The Court agreed, holding that repeated characterization of the invention as a “direct pointing system,” repeated descriptions of the advantages of direct pointing, and repeated disparagement of indirect pointing all indicate that the term “handheld device” should be limited to direct pointing devices.

Over the course of several amendments, Disney granted increasing rights to Candella, by which Disney specifically intended to give Candella standing to sue for patent infringement. The court held that the rights retained by Disney were not “substantial rights” sufficient to deprive Candella of standing, because Disney did not retain a right to exclude. Disney merely had a financial interest in any enforcement efforts by Candella. Thus, Candella did not have to join Disney to maintain the lawsuit.

We along with several other attorneys represent ParkerVision, the plaintiff, which secured a $173 million infringement verdict that the courts subsequently threw out based on their own assessment of the evidence. In this case, the roles of courts and juries are front and center. The Federal Circuit has been dismissive of jury findings. As Judge Newman has observed, the Federal Circuit frequently “reweigh[s] the evidence to reach [the court’s] preferred result, rather than considering whether substantial evidence as presented at the trial supports the verdict that was reached by the jury.” Other judges and scholars have concurred in this view.

In the second reexamination, OWW’s representations about a lack of corroborating evidence constituted inequitable conduct, because OWW was aware that such corroborating evidence existed. Specifically, James Colvin, OWW’s director of R&D, was in possession of two letters from Michael Scalise (Scalise Letters), an attorney for Silipos, which clearly stated that the Silosheath product line included gel only on one side. Further, Mr. Colvin was also aware of three declarations filed with Alps’s summary judgment motion which likewise corroborated Comtesse’s testimony. Nevertheless, Mr. Colvin took no action to correct the representations of OWW’s counsel to PTAB. The district court thus found that OWW had committed inequitable conduct because of the inaction of Mr. Colvin, and it declared the patents to be unenforceable.

The Court noted that the Board failed to account for how the claims and specification inform the ordinary skilled artisan as to what ordinary definition the patentee was using. The Court noted that just because “around” has several dictionary definitions does not mean all these meanings were reasonable in light of the specification. The Court argued that all of the components of the cable connectors encircled an inner electrical conductor, and thus it would seem odd to construe “reside around” without recognizing the context of its use in terms of the cable.

On February 10, 2016, a divided Federal Circuit panel reaffirmed the Patent Trial and Appeal Board’s (PTAB) authority to institute trial and provide a final written decision on only a subset of the challenged claims in an AIA post-grant proceeding. At issue on appeal was the PTAB’s final decision not to address all claims that were challenged in the underlying inter partes review (IPR) Petition.

Nuance originally asserted over 140 claims from eight different patents against defendant ABBYY. The case was quickly referred to a special master for scheduling following Markman. The master followed Nuance’s proposal to limit the patents asserted at trial to four, and the total claims to fifteen. The district court agreed, and Nuance thereafter narrowed its case further: to seven claims from three patents. The jury found non-infringement on all claims. Eight months later, in a motion by ABBYY to compel costs, Nuance responded that the costs award should be stayed until its remaining patents had been tried. Nuance argued that the completed trial was only the “initial” trial and it had reserved its right to try the other patents in a subsequent trial.

The Federal Circuit took the case en banc to review the applicability of the patent exhaustion doctrine under Mallinckrodt and Jazz Photo, in view of the Supreme Court’s decisions in Quanta and Kirtsaeng. The Federal Circuit affirmed the holdings in Mallinckrodt and Jazz Photo, and distinguished them from the Supreme Court’s decisions. In Quanta, the Supreme Court was reviewing whether a patentee’s rights in a product were exhausted by a licensee’s sale of a product.