Posts Tagged: "Judge Pauline Newman"

The Court found substantial evidence to support the jury’s finding of infringement. While Samsung’s expert offered conflicting testimony, a reasonable jury could have credited Apple’s expert. Thus, there was no error in the district court’s conclusion that substantial evidence supported the jury verdict of infringement… Note that the underlying dispute in this case does not concern design patents that were also asserted against Samsung, and which are currently being reviewed by the Supreme Court.

This decision reestablishes what should always have been the case; namely that the Federal Circuit is an appellate court that does not consider evidence outside the record or engage in fact finding on their own. The Federal Circuit has been increasingly out of control for years, acting as a trial court and jury rather than an appellate court. Hopefully that will end today.

Drone sued Parrot for indirect infringement of two patents relating to remote-controlled drones… The Federal Circuit sided with Drone and refused to substantively examine inventorship, where Drone’s claim to title was not otherwise in dispute. Inventorship of an issued patent is presumed correct, and Parrot provided no persuasive reason why the Court must litigate inventorship as part of the standing analysis. Alternatively, Parrot may challenge inventorship as an invalidity defense, but doing so under the guise of standing is improper.

In re: Natural Alternatives, LLC, 2015-1911 (opinion and errata) is a non-precedential but still notable case from the U.S. Court of Appeals for the Federal Circuit that finds the claims of a patent that was in reexamination to be patentable, despite the examiner and the Patent Trial and Appeal Board finding that the claims were obvious. While the examiner had cobbled together various references to make an obviousness rejection, the examiner failed to set forth “sufficient facts” supporting his position that the prior art disclosed the limitations of Natural’s claims in a manner that renders the claimed invention obvious.

The Federal Circuit Court found that the source of the purported indefiniteness (“processing system”) played no role in defining the claims. Since the asserted claims are method claims, patentability resides with the method steps and not with the machines performing those steps.

Stryker Corporation was awarded $70 million in lost profits after a jury found that Stryker’s patents were valid and willfully infringed by Zimmer. The district court affirmed the jury’s verdict, awarded Stryker treble damages for willful infringement, and awarded Stryker attorney’s fees. Stryker’s patents concerned portable, battery-powered, and handheld pulsed lavage devices used in orthopedic procedures to deliver pressurized irrigation for medical therapies, including cleaning wounds.

The Court held that the Board improperly continued to apply the BRI standard following the expiration. While the examiner properly applied the BRI prior to expiration, the BRI standard no longer applies the moment the patent expires – even if it means the Board applies a different standard than the examiner.

The Federal Circuit reversed the Board’s obviousness ruling, finding that the Board had improperly shifted burdens onto Magnum, the Patent Owner, in several instances. For example, Petitioner McClinton asserted that a motivation to combine argument made with respect to a first set of prior art references was also applicable to a second set of prior art references, but did not explain why the rationale applied to both sets of references. The Federal Circuit found that the Board improperly “expected [the Patent Owner] to explain, and faulted [the Patent Owner] for allegedly failing to explain” why the motivation to combine argument made by Petitioner based on the first set of prior art references would not be applicable to the second set of prior art references. The Board’s obviousness finding thus constituted an improper shifting of the burden to Magnum, the patentee, to prove that the claimed invention would not have been obvious.

Polar argued on appeal that the district court erred in finding that Suunto did not have sufficient contacts in Delaware. The Court agreed with Polar. The Court held that there were sufficient contacts, because there was evidence Suunto purposefully shipped at least ninety-four accused products to Delaware retailers and fully expected that its products would then be sold in Delaware. The record also showed that Suunto entered into a distribution agreement with ASWO to market and distribute its products in the United States. It was Suunto who physically fulfilled orders, packaged products, and prepared shipments intended for Delaware. Suunto did not simply leave the products on a dock in Finland. Because Suunto purposefully availed itself of the Delaware market, the Court concluded that Suunto had sufficient minimum contacts with Delaware.

Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC (Fed. Cir. June 15, 2016) (Before Dyk, Wallach, and Newman, J.) (Opinion for the court, Wallach, J.). The test for obviousness is not whether the devices disclosed in various references are physically combinable, but whether a person of ordinary skill, in possession of teachings of the references, could arrive at the claimed invention. Further, the modification of Caterpillar would be minimal, as it would simply require replicating the mechanism for moving the first jaw to move the second jaw.

This case arrived at the Federal Circuit on an appeal brought by BASCOM from the district court’s decision to grant a motion to dismiss under Rule 12(b)(6). In the majority opinion Chen made much of the civil procedure aspects of a 12(b)(6) motion, as well he should. Frankly, it is about time that the Federal Circuit notice that these patent eligibility cases are reaching them on motions to dismiss. This should be overwhelmingly significant in virtually all cases given that a motion to dismiss is an extraordinary remedy in practically every situation throughout the law. Simply put, judges are loath to dismiss cases on a motion to dismiss before there has been any discovery or any issues are considered on their merits. That is, of course, except when a patent owner sues an alleged infringer.

The Federal Circuit held that the Board’s changed claim construction of “data flow,” violated the Administrative Procedure Act (APA), even if it was correct. In particular, it deprived the petitioner of the procedural protections of the APA, which prohibits an agency from changing legal theories during a proceeding without giving respondents notice of the change and the opportunity respond to the new theory. Because the Board changed its construction of the term “data flow” absent any suggestion from the parties, and without any notice, there was no meaningful opportunity to respond to the unanticipated change. Therefore, the Court vacated the decision of the Board to afford the parties an opportunity to present arguments on the Board’s newly-adopted construction of “data flow.”

The Court agreed with Facebook in that these claim terms had no accepted meaning in the art, which meant that they cannot be construed broader than the specification disclosuses. The Court noted that the prosecution history also provided support for the district court’s construction. Further, because the other evidence was persuasive, there was no need to determine whether certain statements made by the patentees during prosecution rose to clear and unmistakable disclaimer, which is what Facebook argued in the alternative.

The Federal Circuit held that Mylan Pharmaceuticals, Inc. (“Mylan”), a generic drug manufacturer, was subject to specific personal jurisdiction in Delaware because Mylan had filed an abbreviated new drug application (“ANDA”) and “contemplate[d] plans to engage in marketing of the proposed generic drugs” in the state.[1] The ruling affirmed two different decisions by judges in the United States District Court for the District of Delaware that Mylan was subject to specific jurisdiction in Delaware.[2] However, as noted below, it looks like Mylan intends to seek panel or en banc rehearing and possibly pursue a petition for certiorari if the Federal Circuit does not grant the rehearing or re-hears the case and continues to find personal jurisdiction.

Cardpool, Inc., v. Plastic Jungle, Inc., NKA Cardflo Inc. (Fed. Cir. Apr. 5, 2016) (Before Newman, Reyna, and Wallach, J.) (Opinion for the court, Newman, J.)(Federal Circuit held dismissal with prejudice operates as res judicata for the same cause of action even if a subsequent reexamination amends claims.).