Posts Tagged: "Judge Richard Taranto"

A district court does not have authority to issue an injunction against a party not adjudicated to be liable for infringement in the underlying case unless that party aided or abetted the liable party in the infringement, or the non-liable party is legally identified with the liable party through privity or some other means. This determination requires specific findings of fact about the parties.

”It appears to me that en banc consideration [of Achates] is warranted,” Judge Taranto wrote. ”It is notable, to begin with, that the [Supreme] Court pointedly avoided embracing the simplest and most review-barring reading of § 314(d) – namely, that it prohibits judicial review of any determination to institute an IPR.”

In the second IPR, NuVasive never received an opportunity to respond to contentions citing the Michelson Patent. First, arguments in the first IPR did not carry over to the second IPR. Second, it was not until Medtronic’s reply that NuVasive received notice of Michelson, and then was denied an opportunity respond. NuVasive’s ability to enter observations regarding cross-examination of an expert who opined on Michelson was not an adequate opportunity to respond. The “observations are not a vehicle for submitting new evidence, including new expert declarations, by the patent owner,” and “indeed, the permitted content and format of observations are tightly circumscribed.”

Neste filed a petition for inter partes review of REG’s U.S. Patent No. 8,231,804 (‘804 patent) and the Patent Trial and Appeal Board ultimately found all of the challenged claims anticipated by either of two references. REG appealed, citing exhibits allegedly demonstrating a date of invention earlier than the prior art. Anticipation can be found where prior art discloses the claimed range in a different unit of measure that can be converted using reasonable and reliable methods. Prior invention is fact-intensive and must take into account all of the relevant evidence. Exhibits offered to show the fact of a communication, and not the truth of the communication’s contents, are not excludable as hearsay.

The Federal Circuit denied appellant SAS’s petition for rehearing en banc from a decision by the Patent Trial and Appeal Board, without an explanatory opinion. Judge Newman dissented. Without discussing the facts of the case, she undertook to review the statutory provisions for inter partes review (“IPR”) proceedings under the America Invents Act (“AIA”). According to Newman, the Court should have granted the petition, in order to correct the Patent Office position that “the final order of the [Patent Trial and Appeal] Board need not address every claim raised in the petition for review.” According to Judge Newman, a review of the statutory provisions of the AIA makes it clear that, if the PTAB decides to institute review, it should do so for all of the challenged claims, not just some of the challenged claims.

While TecSec had urged the panel to reassign the case to a different judge on remand in part because the district court judge repeatedly held against TecSec, raised dispositive issues sua sponte, had been reversed on appeal for many of those issues, and had pre-judged a § 101 issue that has not yet been raised, reassignment is only appropriate in exceptional circumstances. “Here, reassignment is governed by Fourth Circuit law, which applies a three factor test for reassignment: 1) whether the judge would be reasonable expected to have substantial difficulty putting her views that were held to be incorrect out of her mind; 2) whether reassignment is necessary to preserve the appearance of justice; and 3) the degree of waste of judicial resources and duplication if the case were reassigned. See United States v. Guglielmi, 929 F.2d 1001, 1007 (4th Cir. 1991). Nothing in this case merits reassignment on remand.”

The Court affirmed the Board’s finding that two previous patents render the ‘695 Patent obvious. The Court rejected ClassCo’s argument that “[a] basic characteristic of a KSR combination is that it only unites old elements with no change in their respective function.” Slip op. at 7 (internal quotation marks omitted). The Court instead emphasized KSR’s flexible approach to a § 103 analysis.

In a September 13, 2016 decision relating to subject matter eligibility of software patents under 35 U.S.C. § 101, the Federal Circuit vacated the district court’s order granting Defendants’ motion for judgment on the pleadings under Fed. R. Civ. P. 12(c), and held that McRO’s patents were eligible for protection under 35 U.S.C. § 101. The disputed patent claims recited a method for “automatically . . . producing accurate and realistic lip synchronization and facial expressions in animated characters.” The McRO patents identified that a problem in the prior art was that animators, even using the assistance of computers, had to manually manipulate the character model for lip movement. The McRO patents solved this problem by using rules to automatically depict more realistic synchronization of lip movements and speech.

It is hard to ignore the fact that the Federal Circuit again continued to point out that the innovation at issued was an improvement. This should give patent practitioners important clues into how to characterize software related innovations so as to maximize the likelihood of prevailing in Alice inspired challenges and rejections. Hopefully the United States Patent and Trademark Office will not ignore McRo and will issue guidance to patent examiners. Taking a “nothing to see here” approach to this case would be inexcusable.

In the final decision by the Board in the IPR, the Board denied the patent owner’s motion solely because the patent owner did not discuss whether each newly added feature was separately known in the prior art. The Board concluded that the motion and the declaration of Veritas’s expert, Dr. Levy, was insufficient because it did not discuss the features separately but discuss only the newly added feature in combination with other known features. The Federal Circuit found that denying the motion to amend for this reason alone was unreasonable and, therefore, the decision of the Board had to be set aside as being arbitrary and capricious.

GPNE sued Apple for direct infringement of claims in two of GPNE’s patents. The patents at issue relate to a two-way paging system, where the paging devices are capable of not only receiving messages but also sending messages back in response. The claims asserted by GPNE all recited “nodes” rather than “pagers,” even though the word “node” was not used anywhere other than in the Abstract of the two patents containing the asserted claims. Seizing on this, Apple argued at the Markman hearing that a “node” as claimed should be construed as being a “pager.” The district court ultimately agreed with Apple, and ultimately so too did the Federal Circuit.

However, in spite of the Court’s determination that the Markush group was closed, the Court agreed with Multilayer that the use of the transitional phrase “consisting of” does not necessarily suggest that a Markush group is closed to mixtures, combinations, or blends. Although recognizing that, typically, there exists a presumption that Markush groups are closed to “blends,” the Court acknowledged that the presumption can be overcome by a combination of other claim language and the specification itself. Here, the Court found explicit evidence of an intent to include blends insofar as the Markush group itself included blends and categories of resins that overlap, and certain dependent claims required layers of film to comprise blends of at least two resins.

The CAFC then approvingly noted that the district court invoked “an important common-sense distinction between ends sought and particular means of achieving them, between desired results (functions) and particular ways of achieving (performing) them.” As the district court reasoned, “‘there is a critical difference between patenting a particular concrete solution to a problem and attempting to patent the abstract idea of a solution to the problem in general.’” According to the CAFC, the claims at issue in this case do the latter, namely, “rather than claiming ‘some specific way of enabling a computer to monitor data from multiple sources across an electric power grid,’ some ‘particular implementation,’ they ‘purport to monopolize every potential solution to the problem’…Whereas patenting a particular solution ‘would incentivize further innovation in the form of alternative methods for achieving the same result’… allowing claims like [the ones at issue here] would ‘inhibit[] innovation by prohibiting other inventors from developing their own solutions to the problem without first licensing the abstract idea.’”

Unlike Judge Chen’s breadth-based approach, Judge Hughes appears to adopt the proposal of using the European technical effect ( or “technological arts”) analysis to determine whether a U.S. claim is patent-eligible… The CAFC decides that the above claim indeed is related to an improvement to computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity. This once again approaches the “technical problem” analysis of European law, which at least has the advantage of possessing something of a legal principle about it, as opposed to being a tautology.

In large part, the CAFC was concerned with the possible disruption of overturning long-standing PTO practice and the reliance placed on it by practitioners, and this respect and concern for practice is to the court’s credit. And to its credit, the CAFC said as much: the “Supreme Court has long recognized that a ‘longstanding administrative construction,’ at least one on which reliance has been placed, ‘provides a powerful reason for interpreting a statute to support the construc­tion…[h]ere, HTC’s position would disturb over 50 years of public and agency reliance on the permissibility of same-day continuations. We see no basis for denying the existence of a facially large disruptive effect were we now to repudiate the same-day-continuation policy.”