Posts Tagged: "Federal Circuit Review"

Federal Circuit: Attorneys Not Liable for Attorney’s Fees Where Law is Unsettled

A claim is entirely without color when it lacks any legal or factual basis.  Because of the relative paucity of § 101 cases between Alice and AlphaCap’s complaint, the law was unsettled.  The Federal Circuit noted that when the applicable law is unsettled, attorneys may not be sanctioned merely for making reasonable arguments for interpreting the law.  Further, the court found that Gutride presented a colorable argument that the claims were analogous to those in DDR Holdings, LLC v. Hotels.com L.P., and therefore patent eligible under § 101.

CAFC: Hyatt APA Challenges Time-Barred and Based on Incorrect Statutory Interpretation

The Federal Circuit recently issued an opinion in a decades-longbattle over the microcomputer patent applications of Mr. Hyatt, the named inventor on more than 70 issued patents and approximately 400 pending patent applications. The Court ultimately rejected Mr. Hyatt’s challenges to Manual Patent Examining Procedure (“MPEP”) § 1207.04, allowing an examiner to reopen prosecution with a new ground of rejection instead of continuing an already filed appeal.

Entire market rule only when infringed feature constitutes sole basis for consumer demand

To base its damages theory on the entire market value rule, Power Integrations bore the burden of proving “the patented feature is the sole driver of customer demand or substantially creates the value of the component parts.” Both parties, however, agreed that the accused products contained other valuable non-infringing features. Nevertheless, Power Integrations presented no evidence about the effect of these other non-infringing features on consumer demand or product value. Accordingly, the Court held that the evidence submitted by Power Integrations was insufficient to invoke the entire market value rule, and vacated the award of damages, and remanded for a new trial.

CAFC Reverses Nonobviousness Ruling in IPR as Board Failed to Apply Burden-Shifting Standard

The Federal Circuit recently reversed a Patent Trial and Appeal Board (“Board”) inter partes review decision on nonobviousness, holding that the Board erred when it did not require Synvina, the patent owner, to come forward with evidence of nonobviousness (e.g., teaching away) once DuPont, the petitioner, established the prior art disclosed an overlapping range for a claimed result-effective variable. See…

Federal Circuit Affirms PTAB Invalidation of Claims Federal Circuit Previously Upheld as Valid

Previously, the ITC instituted an investigation of Instradentdental implants based on a complaint filed by Nobel alleging violations of 19 U.S.C. § 1337 by reason of importation of an implant product infringing the ’977 patent and another patent. The ITC’s Administrative Law Judge issued an Initial Determination finding claims 1–5 and 19 anticipated by the ABT catalog but the ITC later issued a Commission Opinion finding that Instradent failed to show by clear and convincing evidence, the standard applied by the ITC, that the ABT catalog is prior art under § 102(b). A Federal Circuit panel affirmed the ITC’s decision without opinion. Subsequently, Instradent petitioned for IPR of claims 1–7, 9, and 13–20 of the ’977 patent, and Nobel filed a statutory disclaimer of claims 9 and 13–18.

To invalidate method claims a challenger must show more than the prior art is ‘capable of’ performing the claimed limitations

To invalidate method claims, a challenger must show more than that the prior art is “capable of” performing the claimed limitations—the challenger should also show that “a person of ordinary skill would have been motivated to operate [the prior art device] in a manner that satisfied the [claimed] limitation.”

Federal Circuit Reverses, Finds Opioid Addiction Treatment Patent Nonobvious

The Federal Circuit reversed the District of Delaware’s decision to invalidate Orexo’s opioid treatment patent as obvious because obviousness was not proved by clear and convincing evidence. Specifically, the Court pointed to the absence of a teaching in the prior art that citric acid could serve as a carrier particle for the drug agonist.  The Court also noted that the lower court improperly discounted evidence of objective indicia of nonobviousness.

Federal Circuit Affirms Board: No Interference-in-Fact for CRISPR-Cas9 Technology

The Federal Circuit recently weighed in on an interference proceeding between the University of California (“UC”) and the Broad Institute over the use of CRISPR-Cas9 technology. The Court affirmed a Patent Trial and Appeal Board (“Board”) decision finding there was no interference-in-fact between UC’s patent application and the claims of twelve patents and one application owned by Institute… Considering the evidence of simultaneous invention, along with evidence regarding the state of the art, inventor statements, and application of similar technologies, the Court concluded the Board’s finding was supported by substantial evidence.

Federal Circuit: Presence of a Blocking Patent Can Negate Strong Objective Indicia of Nonobviousness

The United States Court of Appeals for the Federal Circuit recently issued a ruling affirming a district court’s finding that certain pharmaceutical patent claims owned by Acorda were invalid due to obviousness over the prior art.  The patents’ claims covered a species of a genus taught by the prior art.  The invalidity determination hinged on (1) whether claiming the same concentrations as the prior art, but for a different indication would be obvious to a person having skill in the art; and (2) whether secondary considerations such as solving a long-felt need demonstrated nonobviousness… Strong objective indicia such as solving a long-felt need may be insufficient to prove nonobviousness when a blocking patent deters others from an improvement.

Federal Circuit Affirms PTAB’s Finding of Implicit Disclosure

The Federal Circuit recently issued an opinion affirming the Patent Trial and Appeal Board’s (“PTAB”) finding of obviousness of a hot-spot technology patent based on implicit disclosures in a prior art reference. Even though the reference did not expressly disclose the limitation at issue, the Board’s holding that a POSITA would, nonetheless, read the reference as implicitly describing the claimed configuration was supported by substantial evidence.

Intellectual Ventures v. T-Mobile: Summary Judgment of Non-Infringement Vacated Due to Incorrect Claim Construction

In claim construction analyses, the plain and ordinary meaning of a claim term will not be narrowed by statements in the prosecution history, unless those statements clearly and explicitly evidence the patentee’s intent to depart from the full scope of the claim. If a dependent claim includes the purportedly disclaimed subject matter and was added at the time of the purportedly disavowing statements, a finding of disavowal is unlikely. Furthermore, a means-plus-function term should clearly and objectively define the function of the limitation; if the function is a subjective term of degree, a finding that the term is indefinite is likely.

IPR Petitioner Bears Burden of Demonstrating Real Parties in Interest are Listed and Petitions are Not Time-Barred

Though the Board did not specify which party bore the burden of demonstrating that all real parties in interest were identified in the petition, it appeared to place that burden on the patent owner. In vacating that decision, the Federal Circuit indicated that the petitioner bears the ultimate burden of persuasion of demonstrating that all real parties in interest are listed in the petition and, thus, the petition is not time-barred under 35 U.S.C. § 315(b); that burden never shifts to the patent owner.

Board Decision Vacated Due to §315 Time-Bar Despite USPTO Intervention

The Federal Circuit recently issued a decision that once again addressed the issue of whether an IPR was time-barred. The Court vacated the final written decision of the Patent Trial and Appeal Board (“the Board”) with respect to one of challenged patents because it was time-barred and affirmed the Board’s decision that two other claims from two different patents were invalid as being obvious.See Luminara Worldwide, LLC v. Iancu, Nos. 2017-1629, 2017-1631, 2017-1633, 2018 U.S. App. LEXIS 22836 (Fed. Cir. Aug. 16, 2018) (Before Lourie, Dyk, and Taranto, J.) (Opinion for the court, Dyk, J.)

Implied Waiver May Result from Failure to Disclose Pending Application to Standard Setting Organization

The United States Court of Appeals for the Federal Circuit recently issued a ruling on discussing the equitable doctrine of implied waiver; a decision that will be particularly important for those participating in the standard setting process and engaging with standard setting organizations, or SSOs as they are sometimes called. According to the Federal Circuit, failure to disclose patents and applications relevant to a standard may render a patent unenforceable based on an implied waiver.  See Core Wireless Licensing S.A.R.L. v. Apple Inc., No. 17-2102, 2018 (Fed Cir. Aug. 16, 2018) (Before Reyna, Bryson, and Hughes, Circuit Judges) (Opinion for the court, Bryson, Circuit Judge).

CAFC vacates $51 million fee award, exceptional case requires ‘causal connection’ to award fees

The Federal Circuit recently affirmed a district court’s “exceptional” case finding under 35 U.S.C. § 285, which resulted in Appellant Rembrandt Technologies paying attorney’s fees to Appellees, a number of communications companies.  The Court, however, vacated the fee award of $51 million and remanded for a new determination of fees. While the Federal Circuit was comfortable affirming this was an exceptional case, the panel explained that the district court award needs to establish some causal connection between the misconduct and the fee award.  See In re Rembrandt Techs. LP Patent Litig., No. 2017-1784, 2018 (Fed. Cir. Aug. 15, 2018) (Before O’Malley, Mayer, and Reyna, J.) (Opinion for the court, O’Malley, J.). 


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