Posts Tagged: "Federal Circuit Review"

Courts Can Consider Prevailing Party’s Litigation Conduct When Deciding to Award Attorney’s Fees

The court will consider the totality of the circumstances, including the prevailing party’s conduct in the litigation, such as the nature and timing of its relevant allegations, when awarding attorney’s fees under Section 285.

‘Graphical User Interface’ does not necessarily invoke means-plus function analysis

In Zeroclick, LLC v. Apple Inc., before Judge Jimmie Reyna, Judge Richard Taranto, and Judge Todd Hughes, Zeroclick appealed a district court’s interpretation of the claims as containing “means plus function” limitations under 35 U.S.C. § 112 ¶ 6, arguing that the district court erred by imposing a means plus function analysis. The Court agreed with Zeroclick finding that the district court failed to give appropriate weight to the rebuttable presumption created by the absence of the word “means” within the claims, vacating and remanding the case to the district court.

CAFC Vacates Board for Moving Target Rejections, Failure to Consider Reply Brief

The moving target rejections were largely due to the fact that the examiner’s first clear explanation that she was relying on structural identity, and not inherency, appeared in the examiner’s answer. Judge Reyna explained: “[T]he equivocal nature of the examiner’s and Board’s remarks throughout the examination of the ‘989 application, including whether inherency was the basis for the rejection, clouded the issues before Durance.”

Federal Circuit: PTAB Improperly Relied on Unsupported Expert Opinion

Ericsson petitioned for inter partes review of the ’408 patent, and the PTAB upheld its validity. Without separately analyzing the challenged dependent claims, the PTAB held that claim 1 was not anticipated or obvious. On appeal, the Federal Circuit reversed with respect to claim 1 and vacated and remanded as to the remaining claims. Judge Wallach dissented, saying he thought the majority improperly substituted its own factual findings for those of the PTAB.

Federal Circuit confirms validity of patent for UCB’s Vimpat®

Appellants were generic drug manufacturers who filed Abbreviated New Drug Applications (“ANDAs”), seeking approval for generic versions of Vimpat®. As a result, the Federal Circuit affirmed the district court’s ultimate conclusion that the asserted claims were not invalid.

Mayo/Alice ‘Directed to’ Inquiry and a Split Federal Circuit: Vanda Pharma v. West-Ward Pharma

In Vanda, Chief Judge Prost, one of the judges on the CellzDirect panel, dissented from the majority’s decision that found claims patent eligible for not being directed to a judicial exception in step one of the Mayo/Alice test. What differences between the claims in Vanda and those in CellzDirect led Judge Prost to dissent? Can these differences shed further light on the characteristics necessary for a claim to be found not directed to a patent-ineligible concept in step one?

Patents Invalidated for Lack of Written Description

Disclosure of one way to attach or position a roof assembly (a species) did not provide an adequate written description of other ways to attach or position the assembly (a genus or different species). Boilerplate language that a patent covers all modifications, permutations, additions, and sub-combinations of the disclosed invention that a POSA would recognize as within the language of the claims is not sufficient to show possession of a specifically claimed combination.

No blanket prohibition against the introduction of new evidence during an inter partes review

There is no blanket prohibition against the introduction of new evidence during an inter partes review proceeding, indeed new evidence should be expected. A petitioner can introduce new evidence following the petition, if it is a legitimate reply to evidence introduced by the patent owner, or if the new evidence is used to show the level of knowledge skilled artisans possess when reading the prior art references identified as grounds for obviousness.

Foreign Defendant Subject to Personal Jurisdiction for Purposely Directing Activities to the U.S.

The Federal Circuit held that it would be reasonable and fair to exercise specific personal jurisdiction over DAL because the United States has an important interest in adjudicating patent infringement disputes and M-I has a keen interest in obtaining convenient and effective relief, especially considering that modern advances in communication and transportation would reduce DAL’s burden of litigating in a distant United States court.

Federal Circuit expands printed matter doctrine to include information and mental steps

In Praxair Distribution v. Mallinckrodt Hospital Products, Praxair petitioned for inter partes review of claims 1-19 of the ’112 patent, which the Board instituted. The Board held that claims 1-8 and 10-19 would have been obvious over four prior art references. However, claim 9 survived. Praxair appealed from the Board’s decision regarding claim 9, and Mallinckrodt cross-appealed regarding claims 1-8 and 10-11. The Federal Circuit affirmed the Board’s decision holding claims 1-8 and 10 unpatentable as obvious. Judge Newman concurred in judgment of unpatentability of claims 1-11, but disagreed with the Court’s view of the “printed matter doctrine” and its application to “information” and “mental steps.”

In a Multi-District State, venue proper where defendant maintains a principal place of business

In patent infringement suits brought against a corporate defendant in a state with multiple judicial districts, venue is only proper in the single district where the defendant maintains a principal place of business. If the principal place of business is not in the state of incorporation, venue is proper in the single judicial district where the office registered in its corporate filings is located.

CAFC says plaintiff bears the burden of proving venue is proper in a patent infringement suit

After the case was filed in the Eastern District of Texas, ZTE filed a motion to transfer the case to the Northern District of Texas under 28 U.S.C. § 1404(a) and filed a motion to dismiss for improper venue under 28 U.S.C. § 1406 and § 1400(b). The district court ruled that the Eastern District of Texas was a proper venue. Relying on Fifth Circuit law, the district court denied ZTE’s motion to dismiss, finding that ZTE “failed to meet its burden to show that it does not have a regular and established place of business in the District.” ZTE filed a petition for a writ of mandamus alleging that the district court improperly placed the burden of proof on the defendant.

Federal Circuit Affirms Dismissal of Patent Challenges Filed by Drug Consumer

AIDS Healthcare Found., Inc. v. Gilead Scis., Inc., the Federal Circuit affirmed the dismissal of patent challenges filed by drug consumers. The Court noted that a declaratory action requires “a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.” The Court also dismissed AHF’s argument that it is inducing infringement and dismissed AHF’s public policy arguments for invalidating invalid patents… A consumer’s interest in purchasing cheaper goods is insufficient to meet the adverse legal interest required for a declaratory action. And a consumer’s request that another party infringes a patent cannot, by itself, induce infringement. To induce infringement, there must be direct infringement by a third party.

Petitioner Has Standing to Appeal PTAB Decision Where Litigation is Inevitable

Altaire filed two complaints against Paragon: (1) alleging a breach of the non-disclosure clause of the Agreement, and (2) seeking declaratory judgment that the ‘623 patent was invalid. Paragon, in turn, alleged a material breach of the same clause and sought the termination of the Agreement. Altaire also sought post-grant review of the ‘623 patent, arguing that the patent was obvious over two production lots of its products. After the PTAB issued a final written decision determining that Altaire failed to prove that the asserted claims were obvious, Altaire appealed. The Federal Circuit reversed-in-part, vacated-in-part, and remanded for further proceedings. Circuit Judge Schall disagreed.

Patent Venue Statute Does Not Apply to Foreign Corporations Sued for Infringement

The Federal Circuit denied HTC Corp.’s petition for a writ of mandamus seeking dismissal for improper venue… The patent venue statute does not apply to foreign corporations sued for patent infringement. These foreign defendants may be sued in any judicial district where they are subject to personal jurisdiction.


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