Posts Tagged: "Federal Circuit"

The Federal Circuit reversed a district court finding that an inventor of water park surfing attractions breached his employment agreement and that his co-inventor was improperly listed as an inventor. The CAFC based the decision on its best prediction of how the California Supreme Court would interpret state law as applied to the case, applying the “employment contracts in a manner highly protective of former employees”.

On November 17 the Federal Circuit affirmed a determination of the PTAB that claims were obvious in view of the prior art in an appeal that was returned to the CAFC on remand from the U.S. Supreme Court. In particular, the CAFC concluded that, according to the recent Supreme Court decision in Thryv, Inc. v. Click-to-Call Technologies, LP, “§ 324(e) prohibits judicial review of SIPCO’s challenge because it is nothing more than a contention that the agency should have refused to institute [covered business method] CBM review.”

On November 16, the U.S. Supreme Court denied petitions for certiorari in two cases from the Federal Circuit: IYM Technologies LLC v. RPX Corporation and Advanced Micro Devices, Inc. and WhitServe LLC v. Donuts Inc. IYM asked the Supreme Court to grant review “to determine whether the Arthrex decision applies to all appeals that were pending when [the Arthrex decision] issued.” In the WhitServe petition, WhitServe asserted that a determination of patent ineligibility “necessitates impermissible fact-weighing at the pleading stage and eviscerates the statutory presumption of validity.”

On November 13, the Federal Circuit affirmed a decision of the Board in In re: Google Technology Holdings LLC. In particular, the CAFC upheld a decision of the Board affirming a patent examiner’s final rejection and holding that Google forfeited the arguments put forth on appeal. Google’s U.S. Patent Application No. 15/179,765 was directed to “distributed caching for video-on-demand systems, and in particular to a method and apparatus for transferring content within such video- on-demand systems.” During prosecution, the examiner finally rejected the claims of the ‘795 application as being obvious under Section 103.

On November 10, the Federal Circuit reversed-in-part and vacated-in-part a decision of the District of Delaware in C R Bard Inc. v. Angiodynamics, Inc. In particular, the CAFC held that there was substantial evidence in the record to support a jury finding of infringement and willfulness and that the asserted claims were not directed solely to printed matter and were patent eligible under 35 U.S.C. 101.

To many patent practitioners, the Federal Circuit’s decision in Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc. was a watershed moment. In particular, this decision provided that claims directed to “display interfaces” that “improved” on existing interfaces were patent eligible under 35 U.S.C. § 101. In other words, Core Wireless decreased the chances of a court finding a graphical user interface (GUI) patent to be directed to ineligible subject matter and therefore invalid. We don’t have to look far to see the impact that the nearly-three-year-old Core Wireless decision has had. Almost 100 district court decisions have cited the case since it came down in January of 2019, and nearly 30 inter partes review (IPR) proceedings filed after January of 2019 include citations of Core Wireless by practitioners, the Board, or both.

The Federal Circuit recently vacated and remanded a decision of the PTAB in Donner Technology, LLC, v. Pro Stage Gear, LLC. In particular, the CAFC held that the PTAB applied an incorrect standard for determining if a reference is analogous art, but did not go as far as to say that “no reasonable fact finder could conclude, under the proper standard,” that the reference in question was not analogous art.

On November 9, the Federal Circuit granted Apple’s petition for a writ of mandamus directing the Western District of Texas to transfer Uniloc’s patent infringement suit against Apple to the Northern District of California. Judge Moore dissented, asserting that the majority applied an incorrect standard of review.

One of the first rules of patent litigation is that the patentee has the burden of proving infringement. Except that’s not always the case. For over three decades, 35 U.S.C. § 295 has allowed a process patentee to flip that burden and require the alleged infringer to disprove infringement—an exception the Federal Circuit once described as a “potent weapon to use against a non-cooperative defendant.” Nutrinova Nutrition Specialties & Food Ingredients GmbH v. Int’l Trade Comm’n, 224 F.3d 1356, 1360 (Fed. Cir. 2000). But this potent weapon is rarely invoked, and even more rarely applied. The Citing References for Section 295 on Westlaw include just 47 decisions. One reason for the dearth of authorities is that the requirements for Section 295 burden shifting can’t be casually established. But they aren’t impossible to meet, either. And it’s worth taking another look at how this powerful tool works, when it can be used, and how to meet the statute’s requirements.

Last week, the U.S. Court of Appeals for the Federal Circuit addressed a question of first impression regarding whether an act of patent infringement occurs in a Hatch-Waxman case “only when and where an ANDA-filer submits its ANDA to the FDA [Food and Drug Administration] or occurs wherever future distribution of the generic is contemplated.” Valeant Pharmaceuticals v. Mylan Pharmaceuticals. The court ultimately determined the answer to be the former; however, in the case of a foreign defendant, venue is proper in any judicial district. The court ultimately determined the answer to be the former; however, in the case of a foreign defendant, venue is proper in any judicial district. It was the first time the court has had a chance to address the question of where infringement occurs in an ANDA case since TC Heartland v. Kraft Food Group Brands.

On November 4, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed a decision of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB), concluding that the PTAB did not err in its construction of a disputed claim limitation and affirming the PTAB’s judgment in favor of the University of Wyoming Research Corporation (Wyoming). Chevron U.S.A, Inc. v. University of Wyoming Research. Circuit Judge Newman wrote a separate dissenting opinion, arguing that the PTAB “erred at the threshold,” and there was no interference in fact.

On November 3, the United States Court of Appeals for the Federal Circuit (CAFC) issued an order in In re: Ivantis, Inc. denying a petition for a writ of mandamus filed by Ivantis. The petition asked the CAFC to vacate an order of United States District Court for the Central District of California “granting an adverse-inference instruction and to bar the district court from issuing any adverse-inference instruction or alternatively to require the district court to defer consideration of any adverse-inference instruction until the end of trial.”

On October 28, the United States Court of Appeals for the Federal Circuit (CAFC) granted a petition for a writ of mandamus directing the United States District Court for the Western District of Texas in In re: Nitro Fluids, L.L.C. In particular, Nitro Fluids petitioned the CAFC for a writ of mandamus directing the district court to dismiss an action or transfer it to the United States District Court for the Southern District of Texas, where an overlapping case was pending. The CAFC granted the petition to the extent that it vacated the district court’s order and directed the district court to conduct further proceedings consistent with the CAFC’s order.

On October 27, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed a decision of the United States Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB) in Corcamore, LLC v. SFM, LLC. In an opinion authored by Circuit Judge Reyna, the CAFC affirmed the TTAB’s decision that SFM was entitled to bring and maintain a petition under 15 U.S.C. § 1064 because it met the requirements to bring a cancellation action against Corcamore’s registered mark, and that the TTAB did not abuse its discretion in imposing default judgment as a sanction.

Thankfully, there has been a recent and noticeable drop in precedential abstract idea cases from the U.S. Court of Appeals for the Federal Circuit. But on October 23, 2020, the Federal Circuit provided further “guidance” with respect to Alice Step 1 and upheld a district court finding that a TecSec patent was eligible under Section 101. The case is TecSec v. Adobe, Appeal Nos. 2019-2192 and 2019-2258 (Fed. Cir. 2020). The Federal Circuit panel for the case consisted of Chief Judge Prost along with Judges Reyna and Taranto. Judge Taranto wrote the opinion for the court. While there were some other interesting issues that the opinion raises, here we will focus on the Federal Circuit’s abstract idea analysis.