Posts Tagged: "patent infringement"

How French and California Contract Law Would Interpret SEP Patent Owner Obligations Under the ETSI Licensing Declaration

In the United States, the issue of whether or not one has complied with a licensing-related commitment made to a standards setting organization is often treated as a matter of contract. As we have written about before (here and here), some implementers wish to interpret such commitments so as not to lose entitlement to fair, reasonable and non-discriminatory (FRAND) licenses despite not negotiating in good faith or, as we like to say, to have their FRAND cake and eat it too. In a recently prepared article, we explore how such an interpretation lines up with basic contract law principles, particularly having reference to the language of the European Telecommunications Standards Institute’s (ETSI) Intellectual Property Rights Information Statement and Licensing Declaration [“the ETSI Licensing Declaration”].

Federal Circuit Reins in Albright Again, Orders Quick Ruling on Apple’s Venue Transfer Motion

The U.S. Court of Appeals for the Federal Circuit (CAFC) today said in a precedential order that Judge Alan Albright’s Scheduling Order in a case between Aire Technology Limited and Apple, Inc. went too far in mandating additional substantive discovery and re-briefing that would result in nearly a year passing before the court rules on Apple’s venue transfer motion. Apple asked the U.S. District Court for the Western District of Texas in April 2022 to transfer Aire’s patent infringement case against it to the Northern District of California. Apple filed declarations during venue discovery to support the need for transfer, including a request to supplement its motion with additional declarants just prior to the close of venue discovery, and offered to make the declarants available for deposition and to extend the transfer proceedings for a “reasonable” amount of time.

CAFC Delivers Win and Loss for Uniloc in Separate Precedential Rulings on Standing

In a precedential decision issued Friday, the U.S. Court of Appeal for the Federal Circuit (CAFC) affirmed a district court decision that Uniloc USA, Inc., Uniloc Luxembourg, S.A. and Uniloc 2017 all lacked standing to sue Motorola and Blackboard for patent infringement because it was collaterally estopped by a previous decision in its case with Apple. But in a separate precedential ruling, the CAFC said Uniloc’s non-exclusive license with Fortress Credit Co, LLC was terminated by agreement prior to Uniloc’s patent suits against Google, eliminating Fortress’ ability to sublicense the patents-in-suit and maintaining standing for Uniloc.

Amici Back Jump Rope Company in Supreme Court Case

Three amici filed briefs last week in Jump Rope System’s petition asking the U.S. Supreme Court to review a U.S. Court of Appeals for the Federal Circuit (CAFC) decision upholding a Patent Trial and Appeal Board (PTAB) finding of unpatentability. Eagle Forum Education and Legal Defense Fund and the Fair Inventing Fund filed briefs in support of the jump rope company while DivX filed in support of neither party .

Jump Rope Systems, the inventor of a novel jump rope system, is petitioning the Supreme Court to clarify “whether, as a matter of federal patent law, a determination of unpatentability by the Patent Trial and Appeal Board in an inter partes review proceeding, affirmed by the Federal Circuit, has a collateral estoppel effect on patent validity in a patent infringement lawsuit in federal district court.”

Federal Circuit Says Patent Incorporated by Reference Does Not Invalidate Finjan’s Asserted Patents

The U.S. Court of Appeals for the Federal Circuit (CAFC) today ruled in a precedential decision that the definition of a claim term in a patent incorporated by reference into the patents at issue does not dictate the definition of claims in the asserted patents. The CAFC thus reversed the district court’s claim construction and vacated and remanded its grant of summary judgment of invalidity based on indefiniteness.

CAFC Vacates Preliminary Injunctions Against Online Hoverboard Sellers

In two separate precedential opinions issued Friday, October 28, the U.S. Court of Appeals for the Federal Circuit (CAFC) vacated two separate preliminary injunction orders granted by the U.S. District Court for the Northern District of Illinois against hoverboard products alleged to infringe four design patents due to “substantive defects” in the court’s reasoning for granting the injunctions. Judges Dyk, Taranto and Stoll heard both appeals.

P.S., I Don’t Love You: UK Court Delivers Blow to Apple in FRAND Fight with Optis But Laments ‘Dysfunctional’ SEP Dispute System

The England and Wales Court of Appeal this morning said that Optis Cellular Technology is entitled to an injunction before a lower court has set fair, reasonable and non-discriminatory (FRAND) terms for a license to Optis’ standard essential patents (SEPs) if Apple refuses to take a court-determined FRAND license. But in a post script to the ruling, Lord Justice Arnold said both Apple’s appeal and Optis’s cross-appeal “illustrate yet again the dysfunctional state of the current system for determining SEP/FRAND disputes” and that the European Telecommunications Standards Institute (ETSI) and other standards development organizaitons (SDOs) should “make legally-enforceable arbitration of such disputes part of their IPR policies” to curb the problem.

Federal Circuit Hands Zillow a Win, Ruling IBM Map Display Patents Cover Abstract Ideas

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential decision finding that two IBM patents directed to technology that allows users to select and view results on a map were directed to ineligible subject matter under 35 U.S.C. § 101. IBM had sued Zillow, alleging that several of the services offered on Zillow’s website and mobile applications infringed the claims. But the district court granted Zillow’s motion for judgment on the pleadings, finding the claims were directed to abstract ideas and lacked any inventive concept. The opinion was authored by Judge Hughes. Judge Stoll dissented in part, explaining that claims 9 and 13 of IBM’s U.S. Patent No. 7,187,389 were plausibly patent eligible and should not have been found ineligible at the pleadings stage.

Hughes Dissents in Partial Win for Inventor Against Google at CAFC

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential decision in part reversing and in part affirming a district court’s dismissal of an inventor’s patent infringement suit against Google under Federal Rule of Civil Procedure12(b)(6). Judge Hughes dissented in part from the majority’s opinion, which was authored by Judge Stoll, explaining that he would have found all of the challenged claims patent ineligible.

The Pride in Patent Ownership Act is Big Tech Boondoggling

The Pride in Patent Ownership Act, S.2774, is currently being attached to the National Defense Authorization Act (NDAA). The NDAA is “must pass” legislation funding the military at a time when wars are brewing around the world, some with credible threats of nuclear war. Attaching the Pride in Patent Ownership Act to the NDAA means it will certainly become law.
The Pride in Patent Ownership Act requires those who acquire patents to publicly register their ownership assignments with the U.S. Patent and Trademark Office (USPTO) within 120 days. Thus, it serves to identify potential patent infringement plaintiffs. If the patent holder misses the 120-day deadline, an extremely harsh penalty of losing treble damages for willful infringement, the sole remaining deterrent to willful infringement, is applied.

Robot War at ITC Leads to Preliminary Win for iRobot

Roomba maker IRobot Corp. came closer to its goal of knocking down cheaper rival SharkNinja after winning a  decision in its patent-infringement case at the International Trade Commission (ITC/Commission), though it wasn’t a clear victory. ITC Judge MaryJoan McNamara said SharkNinja infringed two of four asserted iRobot patents, according to a notice posted last week on the agency’s electronic docket. The judge’s full findings won’t be public for a couple of weeks, to enable both sides to redact confidential business information.

Vidal Bans OpenSky from Active Role in VLSI IPR in Precedential Director Review Decision

In a much-anticipated decision, U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal today issued a precedential Director review ruling holding that inter partes review (IPR) petitioner OpenSky Industries, LLC abused the IPR process in its conduct with patent owner, Technology LLC, and sanctioning OpenSky by excluding it from the IPR proceedings and “temporarily elevating Intel to the lead petitioner.” Vidal’s 52-page decision further remands the case to the Patent Trial and Appeal Board (PTAB) to decide whether it merits institution “based only on the record before the Board prior to institution.” The decision explains that “OpenSky, through its counsel, abused the IPR process by filing this IPR in an attempt to extract payment from VLSI and joined Petitioner Intel, and expressed a willingness to abuse the process in order to extract the payment.”

IEEE Approves Pro-Patent Holder Policy Updates

On Friday afternoon, the IEEE Standards Association Board of Governors (IEEE SA BOG) announced they had taken action to update the Patent Policy for IEEE standards development. The updates, which will not go into effect until January 1, 2023, appear at first glance to be minimal, but will likely have an extraordinarily positive impact for patent owners.

Jump Rope Company Asks High Court to Weigh in on CAFC Approach to Collateral Estoppel for PTAB Invalidations

The inventor of a novel jump rope system (the Revolution Rope), Molly Metz, is petitioning the U.S. Supreme Court through her company, Jump Rope Systems, LLC, to seek clarification of the collateral estoppel doctrine as applied by the U.S. Court of Appeals for the Federal Circuit (CAFC) to bar a patent infringement suit in district court where the CAFC has affirmed a Patent Trial and Appeal Board (PTAB) finding of unpatentability. Jump Rope Systems is arguing that the CAFC’s decision in  XY, LLC v. Trans Ova Genetics, L.C. (2018) conflicts with the Supreme Court decisions in B&B Hardware, Inc. v. Hargis Indus., 575 U.S. 138 (2015); Medtronic, Inc. v. Mirowski Family Ventures, LLC, 571 U.S. 191 (2014); and Grogan v. Garner, 498 U.S. 279 (1991).

Novartis to Appeal CAFC’s ‘Unprecedented’ U-Turn in Ruling on Multiple Sclerosis Drug Claims to SCOTUS

Novartis Pharmaceuticals announced today that it will appeal the U.S. Court of Appeals for the Federal Circuit’s (CAFC’s) June decision invalidating its patent for a dosing regimen for its multiple sclerosis drug Gilenya to the U.S. Supreme Court, after the CAFC denied its request to rehear the case. The CAFC in June vacated a different three-judge panel’s January opinion upholding Novartis’ U.S. Patent No. 9,187,405. In the original ruling, Chief Judge Moore had dissented from the majority; in the rehearing, Moore authored the opinion vacating the January decision, with Judge Linn dissenting.


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