Posts Tagged: "Federal Circuit Review"

Federal Circuit: Disparagement of Prior Art in the Specification Can Limit Claim Language

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.

Federal Circuit: Exclusive licensee with all substantial rights can sue without patent owner

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.

CAFC find Inequitable Conduct on argument plus withholding contradictory evidence

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.

BRI in IPR may be narrower than broadest ordinary meaning, broader than Phillips standard

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.

CAFC reaffirms PTAB discretion not to address all claims in IPR final written decision

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.

Restricted Sales Do Not Exhaust Patent Rights Under Supreme Court Rulings

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.

CAFC: Defendant had no notice of intent to pursue patent rights in US after foreign proceedings

Each week, we succinctly summarize the preceding week of Federal Circuit precedential patent opinions. We provide the pertinent facts, issues, and holdings. Our Review allows you to keep abreast of the Federal Circuit’s activities – important for everyone concerned with intellectual property. We welcome any feedback you may provide. – Joe Robinson, Bob Schaffer, Parker Hancock, and Puja Dave 83-2.…

Federal Circuit Vacates Board’s IPR Decision on Patentability of Substitute Claims

Finally, the Court held that the Board’s denial of Nike’s motion to amend for failure to show patentable distinction over “prior art not of record but known to the patent owner” was improper. The Court held that the Board’s finding that Nike’s “conclusory statement” was “factually inadequate” under its interpretation of the Idle Free decision was too rigid and was an improper ground to deny Nike’s motion. Accordingly the Court affirmed in part, vacated in part, and remanded the decision to the district court.

Federal Circuit Reiterates High Standard for Prosecution History Disclaimer

In a January 29, 2016 decision, the Federal Circuit vacated a jury judgment of non-infringement and ordered the District of Delaware to conduct a new trial where construction of a claim term based on prosecution history disclaimer was found to be too narrow. In rejecting the district court’s construction as too limiting, the Court emphasized the high standard for finding prosecution history disclaimer of claim scope. Examining the two prosecution history passages said to be a disclaimer, the Court found that each was readily susceptible to a narrower reading than the one needed to support the district court’s conclusion.

CAFC Dismisses Inter Partes Reexamination Appeal By a Party Who was Not Initial Requester

Waters argued that Agilent could not appeal, because Aurora was the third-party requester of the reexamination, not Agilent. The Court held that the relevant question was whether Agilent was a member of a class of litigants that may enforce a legislatively created right under 35 U.S. C. § 141 (reexamination appeals). If so, that party has a ‘cause of action’ under the statute, and this cause of action was a necessary element of his ‘claim.’ See Davis v. Passman, 442 U.S. 228, 239 (1979). The Court held that both 35 U.S. C. § 141 and 35 U.S. C. § 315(b) confirm that the right to appeal an adverse reexamination decision is reserved only to patent owners and third-party requesters.

CAFC: District Court did not abuse discretion to allow new 101 defense after Alice

The plaintiff moved to strike the re-asserted invalidity defense under §101 as not made with good cause and as unfairly prejudicial. The defendant argued that the change was made in view of the Supreme Court’s §101 decision in Alice v. CLS Bank, which was decided two months before the final invalidity contentions were served. The district court agreed that the Alice decision was sufficient cause to re-assert the §101 defense in the final invalidity contentions.

Federal Circuit Denies Patent Term Adjustment for Erroneous Restriction Requirement

Pfizer argued that the original restriction requirement, because it was incomplete, created a delay by failing to provide Pfizer with adequate notice of the basis for rejecting its claims. The District Court ruled that the initial restriction requirement, while arguably incomplete, did in fact place Pfizer on notice of grounds for rejecting its claims, therefore satisfying § 132 and justifying denial of additional term adjustments. The Federal Circuit affirmed.

A District Court May Enhance Lodestar Attorneys Fee Award Only For Relevant Reasons

The Federal Circuit held that the district court failed to provide a proper justification for enhancing the amount by a multiplier of two. The basis for this multiplier was the court’s expeditious resolution on the merits which resulted in an “extremely low” lodestar, and had the court adopted Lumen View’s proposed schedule, FTB would have incurred more attorney fees. The Court disagreed with this as a rationale for enhancing the lodestar amount. The Court held an award can be enhanced only when it fails to account for a relevant consideration. Here, factors such as the expedited schedule were unrelated to the compensation of FTB’s attorneys and therefore, irrelevant to the enhancement of the lodestar.

CAFC: Obvious even if it meant foregoing benefits of prior art

The Court affirmed the obviousness rejection. “As the Board properly found, one of ordinary skill would have been motivated to pursue the desirable properties taught by Wong [a shorter reaction time like Urbanski’s], even if that meant foregoing the benefit [of more stable fibers from a longer reaction time] taught by Gross.” One of ordinary skill could have been motivated to modify Gross in view of Wong to achieve the desired effects.

Federal Circuit Reverses District Court on Direct and Induced Infringement

The Court agreed, noting testimony from Cisco’s engineer who stated that the system needed only one copy of the protocol to support all devices. Commil’s expert opined that the protocol was a state machine, and since Cisco’s devices tracked separate information regarding their communication states, each communication state represented a copy of the protocol that was unique. The Court disagreed, finding that tracking separate states for each device was not substantial evidence that each device ran a separate copy of the protocol.