Posts Tagged: "Judge Jimmie Reyna"

On July 14, the United States Court of Appeals for the Federal Circuit, with Judge Lourie writing for the majority, affirmed-in-part and vacated-in-part a decision of the United States District Court for the Eastern District of Texas in Packet Intelligence, LLC v. NetScout Systems, Inc. The CAFC affirmed the district court’s judgments on the issues of infringement, invalidity, and willfulness, but reversed with respect to pre-suit damages. Judge Reyna wrote separately, dissenting on the issue of patent eligibility under Section 101.

The representative of the inventor attempted to point to metadata contained within the inventor’s affidavit as being corroborating evidence showing the critical dates. The problem with this evidence was never made a part of the record, and the only place it was mentioned was in the inventor’s deposition, and it was only mentioned by the inventor. Inventor testimony must be corroborated by some competent independent evidence or testimony. Indeed, an inventor cannot corroborate their own testimony relating to prior conception. Therefore, an inventor deposition is insufficient to corroborate an inventor affidavit relying on what the inventor said in the deposition. 

The first decision issued by the new USPTO Precedential Opinion Panel (POP) tackled the difficult issues of statutory interpretation of sections 35 U.S.C. § 315(b) and 35 U.S.C. § 315(c). In sum, the Board determined that both same party and issue joinder is proper in inter partes reviews (IPRs). The Board also determined that otherwise time-barred petitions are proper when accompanied by a joinder request to a pending IPR. The Board interpreted the statute in a manner to maintain broad discretion for the Agency. The POP could have properly interpreted Section 315(c) by first focusing on the statutory language “join as a party” as being limited to any person not already a party. Instead, the decision dismissed this viewpoint and stated that “the statutory phrase ‘any person’ broadly applies to the phrase ‘join as a party’.” Although I disagree with the emphasis on “any person,” I anticipate that the Board’s reasoning on both same party and issue joinder would be upheld as proper statutory interpretations by the Federal Circuit, if appealed.

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.”

Last week, the U.S. Court of Appeals for the Federal Circuit reversed a ruling of the U.S. District Court for the Eastern District of Virginia, which had affirmed a patent term adjustment (PTA) calculation of the United States Patent and Trademark Office (USPTO). See Supernus Pharmaceuticals, Inc. v. Iancu, No. 2017-1357 (January 23, 2019). The Federal Circuit held that the USPTO cannot count as applicant delay any period of time during which there was no possible action that the applicant could take to reasonably conclude prosecution. A sensible ruling, and one the panel explained was entirely consistent with both the PTA statute and Gilead Sciences, Inc. v. Lee, 778 F.3d 1341 (Fed. Cir. 2015). “A period of time including no identifiable efforts that could have been undertaken cannot be ‘equal to’ the period of failure to undertake reasonable efforts under the terms of the statute,” wrote Judge Reyna.

The Federal Circuit recently affirmed the District Court for the Eastern District of Tennessee’s dismissal of a declaratory judgment action based on a finding of lack of personal jurisdiction over the defendant. The Federal Circuit held that a defendant’s request for an injunction in a different forum, which may extend into the present forum if granted, does not satisfy the “minimum contacts” prong of the test for personal jurisdiction. The Federal Circuit also made a distinction between (1) merely sending infringement notice letters into a forum and (2) sending a letter andtravelingto the forum state to discuss the alleged infringement. The Court held that letters alone do not satisfy the “minimum contacts” prong of the test.

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.

In its opinion, the Federal Circuit explained that defensive collateral estoppel of non-infringement applies in very limited circumstances where “a close identity exists between the relevant features of the accused device and the device previously determined to be non-infringing such that they are ‘essentially the same.’” Accused products are essentially the same where “the difference between them are merely ‘colorable’ or ‘unrelated to the limitation in the claim of the patent.’” Thus, “[i]f accused devices in a second suit remain ‘unchanged with respect to the corresponding claim limitations at issue in the first suit,’ the patentee is precluded from pursuing its infringement claims a second time.” The burden is on the proponent of claim or issue preclusion to show that the accused products are essentially the same.

In Hamilton Beach Brands v. F’Real Foods, the Federal Circuit found that under the Administrative Procedure Act, the Patent Trial and Appeal Board’s adopted claim construction in an IPR need not be identical to a construction proposed by a party so long as the construction is “similar enough” to provide notice for the parties to argue for or against the construction.

Acceleration Bay appealed the final written decisions of the Board holding claims 1-9 of U.S. Patent No. 6,829,634, claims 1-11 and 16-19 of U.S. Patent No. 6,701,344, and claims 1-11 and 16-17 of U.S. Patent No. 6,714,966 all unpatentable. Petitioners Activision Blizzard, Inc., Electronic Arts Inc., Take-Two Interactive Software, Inc., 2k Sports, Inc., and Rockstar Games, Inc. (collectively, “Blizzard”) also cross-appealed portions of the Board’s decisions holding patentable claims 10-18 of the `634 patent, as well as substitute claims 19 of the `966 patent, 21 of the `344 patent, and 25 of the `634 patent. Blizzard also cross appealed the Board’s decisions holding that one particular reference — the Lin article — was not a printed publication under 35 U.S.C. § 102(a). In an opinion authored by Judge Moore and joined by Chief Judge Prost and Judge Reyna, the Federal Circuit affirmed the PTAB decision, finding that both Acceleration Bay’s and Blizzard’s arguments were without merit.

Without any explanation, analysis or justification, Chief Judge Prost, and Judges Reyna and Hughes affirmed the decision of colleague Judge Bryson. A patent to a blockbuster drug like Restasis, which has over $1.4 billion in annual sales in the United States, deserves greater consideration than a once sentence disposition that simply says: “Affirmed.”… It is one thing to use Rule 36 to dispose of an appeal that should never have been brought relating to an invention of modest or no commercial success. But there is something fundamentally arrogant about using Rule 36 to finally strike a fatal blow to a patent covering a blockbuster drug responsible for more than $1.4 billion in annual sales in the United States. And given that the district court judge was Judge Bryson, the lack of an opinion only raises further questions.

During the week of October 8, 2018,  there were five cases involving patents that were decided without an opinion as a result of Rule 36 affirmances at the United States Court of Appeals for the Federal Circuit. Three of those cases were issued by panels including Chief Judge Sharon Prost. In two cases, the Federal Circuit upheld district court invalidations of asserted patents whereas another two affirmed rejections of applicants claims by the U.S. Patent and Trademark Office. The last case was a summary affirmance of a victory by German drugmaker Erfindergemeinschaft UroPep over Eli Lilly in the Eastern District of Texas.

The Federal Circuit recently issued an opinion in a decades-longbattle over the microcomputer patent applications of Mr. Hyatt, the named inventor on more than 70 issued patents and approximately 400 pending patent applications. The Court ultimately rejected Mr. Hyatt’s challenges to Manual Patent Examining Procedure (“MPEP”) § 1207.04, allowing an examiner to reopen prosecution with a new ground of rejection instead of continuing an already filed appeal.

To invalidate method claims, a challenger must show more than that the prior art is “capable of” performing the claimed limitations—the challenger should also show that “a person of ordinary skill would have been motivated to operate [the prior art device] in a manner that satisfied the [claimed] limitation.”