Posts Tagged: "Federal Circuit"

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.

On Friday, the United States Court of Appeals for the Federal Circuit (CAFC) issued a precedential order in American Axle & Manufacturing, Inc. v. Neapco Holdings denying American Axle & Manufacturing, Inc.’s (AAM’s) motion to stay issuance of the mandate pending the filing of a petition for writ of certiorari in the Supreme Court. AAM’s motion to stay was the result of the CAFC’s precedential modified opinion that issued on July 31, 2020 modifying a prior October 3, 2019 opinion.  In the July 31 opinion, the CAFC vacated the prior judgment with respect to claim 1 of U.S. Patent No. 7,774,911
and remanded to the district court to address eligibility with respect to claim 22 and related claims.

The Supreme Court and Federal Circuit permit prevailing patentees to obtain a higher royalty rate for an infringer’s post-judgment infringing sales. But whatever the reason, district courts have oft-resisted, even establishing presumption-like rules that a court’s post-judgment rate will merely match the pre-judgment rate determined by the jury. While the Federal Circuit recognized the availability of post-judgment running royalties more than a decade ago, litigators addressing the issue at the trial level still have leeway to urge many of the principles that govern and can shape this process. We outline the developments in this area of law since its 2007 inception, including various open issues left for the Federal Circuit’s precedential consideration. 

On October 15, the United States Court of Appeals for the Federal Circuit (CAFC), in St. Jude Medical, LLC v. Snyders Heart Valve LLC, affirmed an inter partes review (IPR) decision of the United States Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (the Board) rejecting St. Jude Medical, LLC’s (St. Jude) contention that Snyders Heart Valve LLC’s (Snyders) artificial heart valve patent was invalid. The CAFC also reviewed a second IPR decision, wherein it reversed the Board’s decision that certain claims of the patent were invalid and affirmed the Board’s decision that the remaining claims were valid.

On October 14, the United States Court of Appeals for the Federal Circuit (CAFC), in Warsaw Orthopedic, Inc. v. Sasso, affirmed a decision of a district court dismissing Medtronic’s declaratory judgment complaint without prejudice and applying the doctrine of federal court “abstention” in view of a concurrent state court action. The CAFC concluded that the district court acted within its discretion in abstaining without prejudice because the question of contract interpretation was on appeal in state court and the federal action based on the federal issues was not precluded.

The United States Court of Appeals for the Federal Circuit (CAFC) on Tuesday affirmed an invalidity decision of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) in Immunex Corporation v. Sanofi-Aventis U.S. LLC. Considering the intrinsic and extrinsic evidence, the CAFC agreed with the PTAB’s construction of the disputed claim term, “human antibodies,” and affirmed the holding that the patent in suit was invalid as obvious.

The United States Supreme Court has granted certiorari in three cases involving Arthrex, Inc. focusing on the question of whether the administrative patent judges (APJs) of the Patent Trial and Appeal Board (PTAB) were constitutionally appointed. The Court has consolidated the cases and limited the questions to question one and two in the United States government’s memorandum of July 22 in both Smith & Nephew, Inc., et. al. v. Arthrex, Inc. et. al. and Arthrex, Inc. v. Smith & Nephew, Inc., et. al.