Posts Tagged: "Judge Kathleen O’Malley"

Earlier this week, IPWatchdog hosted a webinar sponsored by the Innovation Alliance, now available to view for free here, in which panelists drew a roadmap for fixing the U.S. Patent and Trademark Office’s (USPTO’s) Patent Trial and Appeal Board (PTAB). Ultimately, they said: 1) thoughtfully exercise discretion to deny the inter partes review (IPR) petitions to ensure quiet title, 2) apply the clear and convincing standard of proof for invalidity to match the district court standard, 3) change the joinder rule so that time-barred parties aren’t allowed to join IPRs, 4) create a standing requirement to bring IPRs to end gaming by uninterested third-parties and 5) increase transparency at the PTAB— for example, with respect to panel changes and transfers. The participants who delivered these solutions were Dr. Marian Underweiser, an Intellectual Property Professional and former IBM Executive, Hon. Kathleen O’Malley (CAFC, ret.), currently Of Counsel with Irell & Manella, Jayson Sohi, the Director of IP Strategy at Netlist, and Gene Quinn, President & CEO of IPWatchdog, Inc.

A new intellectual property (IP) organization launched today will be headed by former vice president of U.S. policy at the U.S. Chamber of Commerce’s Global Innovation Policy Center (GIPC), Frank Cullen, and features a Board of Directors comprised of bipartisan frontrunners in the IP realm. The Council for Innovation Promotion (C4IP) will aim to educate on the importance of innovation to the U.S. economy at a high level, and to fill the void its creators say exists with respect to clarifying the often-negative public narrative about the role of IP in access to innovation. The Board includes former U.S. Patent and Trademark Office (USPTO) Directors Andrei Iancu and David Kappos, Retired U.S. Court of Appeals for the Federal Circuit (CAFC) Judge Kathleen O’Malley and Retired CAFC Chief Judge Paul Michel.

The LeadershIP 2022 Conference, for which IPWatchdog was a partner, took place earlier this week in Washington, DC, and featured leaders in U.S. government and intellectual property (IP) discussing the way that IP policies interact with and impact national security issues. The overarching sentiment from panelists was that all three branches of U.S. government are failing to prioritize a strong IP system, which could result in the United States falling behind as an innovation leader, to the benefit of potential bad-faith competitors like China and Russia.

Without innovation, nothing of consequence happens, or matters, in any technology sector. And without strong patents, much of that innovation will never happen. The innovation we most want for the benefit of society is paradigm-shifting, disruptive innovation that leaps forward. These forward leaps lead to the formation of new start-up companies and frequently to the birth of entirely new industries,…

According to U.S. Courts and as reported by IPLaw360 earlier today, U.S. Court of Appeals for the Federal Circuit (CAFC) Judge Kathleen O’Malley announced on July 27 that she will retire, leaving a vacancy on the court as of March 11, 2022. O’Malley’s announcement means that Biden will get a second nominee to the United States’ top IP court. Tiffany Cunningham was nominated by President Joe Biden earlier this year to succeed Judge Evan Wallach and recently was confirmed by the Senate.

On October 7, the United States Court of Appeals for the Federal Circuit (CAFC), in AntennaSys, Inc. v. AQYR Technologies, Inc., vacated and remanded a decision of the United States District Court for the District of New Hampshire. In particular, the CAFC vacated the district court’s grant of summary judgment of non-infringement and remanded for the district court to address “all factual issues pertaining to AntennaSys’s ability to bring its patent infringement claim against AQYR.” The opinion was written by Judge O’Malley, who found the appeal to be “extremely frustrating” and “refuse[d] to take the parties’ invitation to rule on [the factual] issues in the first instance” due to an incomplete record.

The United States Court of Appeals for the Federal Circuit recently ruled on an appeal regarding a Pennsylvania district court’s decision to decline jurisdiction over a first filed declaratory judgment filed by Communications Test Design, Inc. (“CTDI”) in favor of a patent infringement suit filed six days later in a New York district court by Contec LLC (“Contec”). The Federal Circuit concluded that the Pennsylvania district court did not abuse its broad discretion under the Declaratory Judgment Act to departure from the typical first-to-file rule given the presence of equitable considerations.

The Federal Circuit recently elected not to decide en banc “whether servers are a regular and established place of business, such that venue is proper under 35 U.S.C. § 1400(b). In re: Google LLC, No. 2018-152 (Fed. Cir. Feb. 5, 2019) (Before Prost, Chief Judge, Newman, Lourie, Dyk, Moore, O’Malley, Reyna, Wallach, Taranto, Chen, Hughes, and Stoll, Circuit Judges) (Dissent by Reyna, Circuit Judge, joined by Newman and Lourie, Circuit Judges). SEVEN Networks, LLC’s (SEVEN) patent infringement suit against Google arose in the Eastern District of Texas. SEVEN alleged Google’s servers, stored in a third-party ISP’s facility, where the allegedly infringing activities occurred, were a regular and established place of business, such that venue is proper under 35 U.S.C. § 1400(b). The district court denied Google’s motion to dismiss for improper venue. As a result, Google petitioned the Federal Circuit for a writ of mandamus directing the district court to dismiss or transfer the case for improper venue. On appeal, the panel majority found mandamus relief inappropriate because “it is not known if the district court’s ruling involves the kind of broad and fundamental legal questions relevant to § 1400(b),” and “it would be appropriate to allow the issue to percolate in the district courts so as to more clearly define the importance, scope, and nature of the issue for us to review.”

On Thursday, December 20th, the Court of Appeals for the Federal Circuit issued a nonprecedential decision in Vivint, Inc. v. Alarm.com, Inc. which affirmed aspects of three inter partes review (IPR) proceedings conducted by the Patent Trial and Appeal Board (PTAB) invalidating certain claims from three patents owned by Vivint. However, the Federal Circuit panel of Chief Judge Sharon Prost and Circuit Judges Kathleen O’Malley and Todd Hughes found an erroneous claim construction led the Board to uphold some of the challenged claims.

How the likelihood of success on the merits should (or should not) be determined and the four factors balanced in a patent infringement case, are areas in which there has been significant disagreement among the judges of the Federal Circuit… Whether or not to grant the extraordinary relief of preliminary injunction to a patentee is a matter largely within the discretion of the trial court. This discretion is to be exercised in consistence with traditional principles of equity, grounded on well-articulated principles, and based on long-held precedents.  Grant or denial of a preliminary injunction by a trial court may be overturned only upon a showing of abuse of discretion by the trial court.  Failing to consider the totality of the preliminary injunction factors during review can lead to an outcome inconsistent with the requirements of equity.

On Monday, December 3rd, the U.S. Supreme Court denied a petition for writ of certiorari in Carl M. Burnett v. Panasonic Corporation, declining to take up the case on appeal from the Court of Appeals for the Federal Circuit. This is now the latest case involving questions of patent-eligibility for an invention under 35 U.S.C. § 101 declined by the nation’s highest court. In this case, however, the Supreme Court hasn’t addressed the patentability of the relevant subject matter, namely electronic data and electromagnetic analog and digital signals, since 1853.

On Tuesday, November 20th, the Court of Appeals for the Federal Circuit issued a nonprecedential decision in Google LLC v. Conversant Wireless Licensing, which vacated a decision by the Patent Trial and Appeal Board (PTAB) to uphold the validity of patent claims owned by Conversant after conducting an inter partes review (IPR) proceeding petitioned by Google and LG Electronics… It is hard to reconcile decisions where the Federal Circuit bends over backwards to give more process and procedural rights to petitioners when for so long patent owners have been railroaded at the PTAB and then had those summary execution proceedings rubber stamped by the Federal Circuit. If increased scrutiny on the PTAB is a two-way street I welcome it.

The Federal Circuit recently issued a nonprecedential opinion in Amazon.com, Inc. v. ZitoVault, LLC, affirming a decision by the Patent Trial and Appeal Board (PTAB) that e-commerce giant Amazon failed to prove a patent owned by security solutions provider ZitoVault was unpatentable. The Federal Circuit majority of Circuit Judges Kara Stoll and Kathleen O’Malley disagreed with Amazon’s that the PTAB erred in its claim construction. Dissenting, Chief Judge Sharon Prost wrote that she believed the PTAB’s analysis of a specific claim term was flawed, and she would have vacated the PTAB decision and remanded the case for further consideration. The patent-at-issue was ZitoVault’s U.S. Patent No. 6484257, titled System and Method for Maintaining N Number of Simultaneous Cryptographic Sessions Using a Distributed Computing Environment. Issued in November 2002, it claims a software architecture for conducting a plurality of cryptographic sessions over a distributed computing environment.

The Federal Circuit recently issued a ruling reversing the district court’s denial of Apple Inc.’s (“Apple”) motion for judgment as a matter of law (“JMOL”) after finding no reasonable juror could have found infringement based on the evidence presented during the liability phase of trial. The decision erased an awarded over $234 million in damages to Wisconsin Alumni Research Foundation (WARF). The Court, however, affirmed the district court’s grant of summary judgment with respect to invalidity in favor of the patent owner.