Posts Tagged: "Federal Circuit"

Imagine, as a patentee, that you assert your broadly claimed patent(s) against an alleged infringer, and your opponent takes you to the Patent Trial and Appeal Board (PTAB) via an inter partes review (IPR) petition, where they present sufficient evidence of obviousness such that you have to resort to (gulp) secondary considerations. While no dream situation for patentees, it is important to understand the patent owner’s evidentiary burden when confronting obviousness challenges using secondary considerations, such as commercial success, long-felt but unsolved needs, failure of others and unexpected results. Here are three recent Federal Circuit decisions that are informative with respect to successfully (or unsuccessfully) utilizing evidence of commercial success in countering an obviousness attack.

In its second appeal to the U.S. Court of Appeals for the Federal Circuit (CAFC) regarding the sealing of documents in several related cases against Apple, Uniloc scored a win when the CAFC said today that the United States District Court for the Northern District of California failed to comply with its original remand instructions, constituting an abuse of discretion. The appellate court for a second time ordered the district court “to make particularized determinations as to whether the third-party licensing information sought to be sealed should be made public.”

On February 4, 2022, The U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed two decisions of the Patent Trial and Appeal Board (PTAB) on related inter partes reviews (IPRs) brought by Quanergy against Velodyne, explaining that the Board’s decision to uphold the validity of the disputed claims was correct considering the objective evidence provided by Velodyne. Quanergy challenged multiple claims of U.S. Patent No. 7,969,558, covering a lidar-based 3-D point cloud measuring system best known for helping autonomous cars sense their surroundings. In its decisions, the PTAB held that several claims of the ’558 patent are not unpatentable as obvious.

The U.S. Court of Appeals for the Federal Circuit (CAFC) earlier today issued a precedential decision holding that the U.S. District Court for the District of Delaware improperly denied Nippon Shinyaku Co., Ltd.’s motion for a preliminary injunction in the court’s misreading of the plain language of a contract’s forum selection clause. The CAFC consequently reversed the decision and remanded for entry of a preliminary injunction (PI) enjoining Sarepta Therapeutics, Inc. from proceeding with its seven inter partes review petitions (IPRs) against Nippon Shinyaku and requiring that Sarepta withdraw the petitions.

On February 4, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed in part, reversed in part, vacated in part, and remanded a patent infringement decision of the U.S. District Court for the Southern District of California that had awarded WiLAN, Inc. $85.23 million in damages from Apple Inc. Wi-LAN is the owner of two patents related to allocating bandwidth in a wireless communication system, U.S. Patent Nos. 8,457,145 (the ‘145 patent) and 8,537,757 (the ‘757 patent). In May 2014, Apple sued Wi-LAN in the Southern District of California seeking a declaratory judgment of non-infringement and invalidity for all claims of the ‘757 and ‘145 patents. Wi-LAN counterclaimed, asserting that certain Apple devices, including certain iPhone 5 and 6 models infringed claim 1 of the ‘757 patent and claims 9, 26, and 27 of the ‘145 patent based on their use of its Long-Term Evolution (LTE) wireless communication standard. Wi-LAN argued that the technology in the two patents at issue enabled Voice over Loong-Term Evolution (VoLTE), which enables voice call service over a 4G LTE network.

The United States Court of Appeals for the Federal Circuit (CAFC) has become enamored with the power of the writ of mandamus to correct what they do not like, and they do not like patent owners filing patent infringement actions in Texas. Or, perhaps it is more accurate to say that while they might not mind patent owners filing patent infringement actions in Texas, they expect federal district court judges in Texas to order those patent owners off to other courthouses outside of Texas upon the request of defendants.

On February 4, in a mixed precedential decision, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed, vacated, and remanded in part a decision by the U.S. District Court for the Central District of California in a patent infringement suit filed by the California Institute of Technology (Caltech) against Broadcom Limited, Broadcom Corporation, and Avago Technologies (collectively “Broadcom) and Apple Inc. The suit was related to Caltech’s U.S. Patent 7,116,710 (‘710 patent), U.S. Patent 7,421,032 (‘032 patent), and U.S. Patent 7,916,781 (‘781 patent). The CAFC affirmed the district court’s denial of judgment as a matter of law (JMOL) on infringement because the jury’s verdict of infringement of the declared claims of the ‘710 and ‘032 patents was supported by substantial evidence and the district court’s construction of the claim limitation “repeat” was not erroneous.

On February 3, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed a preliminary injunction granted by the U.S. District Court for the Eastern District of Michigan, holding that the lower court did not abuse its discretion or clearly err in its factual findings. Myco Industries, Inc. started marketing, the AB Max, a device for treating blepharitis in February 2019. The following month, BlephEx, LLC filed a patent application, which issued as U.S. Patent No. 10,449,087 (the ‘087 patent) on October 22, 2019. The ‘087 patent discloses “an instrument for removing debris from an eye during the treatment of an ocular disorder.” The day the ‘087 patent issued, BlephEx sued Myco in the Eastern District of Michigan, alleging that Myco’s AB Max infringed claim 16 of the ‘087 patent. Shortly thereafter, the district court enjoined “Myco and those acting on its behalf from, inter alia, selling, distributing, or offering to sell or distribute the AB Max Product.” Myco appealed.

On February 3, the U.S. Court of Appeals for the Federal Circuit (CAFC) reversed and remanded a decision by the U.S. District Court for the Eastern District of Texas granting a motion to enforce PlasmaCAM’s (Plasmacam) version of an agreement with Fourhills Designs, LLC, and Thomas and Martha Caudle (collectively “CNC”). On appeal, the CAFC held that CNC’s version of the agreement more accurately reflected the understanding between the two parties regarding a settlement over Plasmacam’s claim that CNC infringed U.S. Patent No. 7,071,441 (‘441 patent), for which Plasmacam has an exclusive license.

The U.S. Court of Appeals for the Federal Circuit ruled earlier today that a stylized form of the trademark for the .SUCKS domain name failed to create a “separate commercial impression” warranting registration by the U.S. Patent and Trademark Office (USPTO). Vox Populi Registry Ltd. is the domain registry operator for the controversial .SUCKS generic top-level domain (gTLD). The USPTO’s Trademark Trial and Appeal Board (TTAB) in October 2020 affirmed an examiner’s decision to refuse the stylized mark, as well as the standard character word mark for .SUCKS.

As we enter the second month of 2022, the old saying, “If at first you don’t succeed, try, try again” and the famous line, “I’m not dead,” from Monty Python and the Holy Grail, come to mind to describe two issues we’ll be watching closely this year relating to litigation involving small and large molecule therapies. In the first instance, Amgen recently petitioned the Supreme Court to review the Federal Circuit’s affirmance invalidating several patent claims based on the lack of enablement for genus claims. This case comes on the heels of the Supreme Court’s denial of cert. in Idenix Pharms. LLC v. Gilead Sci. Inc., 941 F.3d 1149 (Fed. Cir. 2019) on similar issues. Amgen now hopes for a better result.

The U.S. Court of Appeals for the Federal Circuit (CAFC) today vacated and remanded two decisions of the Patent Trial and Appeal Board (PTAB) on related inter partes reviews (IPRs) brought by Apple against Qualcomm, explaining that the Board’s determination that “prior art consisting of patents or printed publications” includes applicant admitted prior art (AAPA) was incorrect. The CAFC nonetheless remanded the case for the PTAB to decide “whether Apple’s petition nonetheless raises its § 103 challenge on the basis of prior art consisting of patents or printed publications.” Apple petitioned the PTAB to review the claims of U.S. Patent No. 8,063,674. In two separate decisions, the PTAB found several claims unpatentable under Section 103, basing its finding on a ground raised by Apple that relied in part on AAPA and a prior art patent. Apple also challenged the claims as unpatentable under Section 103 based on two prior patents and one publication, but the Board said that Apple had not proven unpatentability on this ground.

On January 27, the United States Court of Appeals for the Federal Circuit (CAFC) reversed the decision of the United States District Court for the Northern District of California to invalidate claims in two related patents, holding that the district court used the incorrect legal standard for indefiniteness. Nature Simulation Systems, Inc. (NSS) is the owner of United States Patents No. 10,120,961 (the ‘961 patent) and No. 10,109,105 (the ‘105 patent). Both patents relate to computer-implemented methods for building three-dimensional objects employing a computation method called “Boolean operation.” NSS brought an infringement action against Autodesk, Inc. in district court alleging infringement of claims 1 and 8 of the ‘961 patent and claim 1 of the ‘105 patent.

The third day of IPWatchdog’s PTAB Masters™ 2022 featured more from former U.S. Patent and Trademark Office (USPTO) Director Andrei Iancu, as well as panels covering topics such as avoiding obviousness mistakes, appellate strategies from the Patent Trial and Appeal Board (PTAB) and other intricacies of PTAB practice from the experts. Panelists this afternoon also weighed in on today’s announcement that Justice Stephen Breyer will retire from the Supreme Court, opening the door for Biden to appoint a replacement.

On January 21, 2022, the U.S. Court of Appeals for the Federal Circuit held that the term “lifter member” invokes means plus function (MPF) claiming. The case is Kyocera Senco Indus. Tools Inc. v. ITC, Appeal Nos. 2020-1046 and 2020-2050 (Fed. Cir. 2022). The Federal Circuit panel for the case consisted of Chief Judge Moore along with Judges Dyk and Cunningham. Chief Judge Moore wrote the opinion for the panel. To summarize, in 2017, Kyocera filed a complaint with the International Trade Commission (ITC). Kyocera alleged that a company named Koki violated 19 U.S.C. § 1337 (Section 337) by importing gas spring nailer products that infringe, or were made using methods that infringe, certain claims in five Kyocera patents. Those patents generally relate to linear fastener driving tools, like portable tools that drive staples, nails, or other linearly-driven fasteners.