Posts Tagged: "patent infringement"

The Federal Circuit vacated and remanded the PTAB’s decision in an inter partes review proceeding, finding the Board did not set forth its reasoning for finding the asserted claims obvious in enough detail for the Court to determine whether it was supported by substantial evidence… The Board also did not set forth its reasoning in sufficient detail for the Court to determine whether its obviousness decision was procedurally proper. The Board must comply with certain procedural requirements in conducting an inter partes review under the Administrative Procedure Act (APA), including informing the patent owner of “the matters of fact and law asserted,” give the patent owner an opportunity to submit facts and arguments, and permit the patent owner to submit rebuttal evidence.

In the case of Aylus Networks, Inc. v. Apple Inc., the Federal Circuit affirmed the district court’s finding of summary judgment for Apple Inc. (“Apple”). The Court held that statements made by a patent owner during an inter partes review (“IPR”) proceeding, whether before or after an institution decision, can be relied upon to support a finding of prosecution disclaimer… To invoke prosecution disclaimer, the statements must constitute a clear and unmistakable surrender of claim scope. If a prosecution argument is subject to more than one reasonable interpretation, it cannot rise to the level of a clear and unmistakable disclaimer.

Lex Machina recently released a Hatch-Waxman/ANDA litigation report detailing trends and key findings from pharmaceutical cases filed in U.S. district courts between January 1st, 2009, and March 31st, 2017. More than eight years worth of data shows that patent infringement case filings in response to abbreviated new drug applications (ANDAs) filed with the U.S. Food and Drug Administration (FDA) declined in 2016 for the first time in three years.

In RecogniCorp, LLC v. Nintendo Co., the Federal Circuit affirmed the district court’s decision that RecogniCorp’s patent claims are directed to an abstract idea, and do not contain an inventive concept sufficient to make them patent-eligible under 35 U.S.C. § 101… Adding one abstract idea, such as math, to another abstract idea, such as encoding- decoding, does not make the claim non-abstract. A claim containing a mathematical formula can satisfy § 101 when it applies the formula in a structure or process which, as a whole, is performing a non-abstract function that the patent laws were designed to protect. Under Alice step two, a claim that is directed to a non-abstract idea is not rendered abstract simply because it uses a mathematical formula. However, the reverse is also true: A claim directed to an abstract idea does not automatically become patent eligible by adding a mathematical formula. The elements of the claim must be examined to determine whether there is an inventive concept beyond the addition of a mathematical formula, e.g. to be implemented on a computer. The claims must make it clear how the invention improves a specific technology, rather than simply stating to an abstract end-result.

Nichia Corporation (“Nichia”) sued Everlight Americas, Inc., Everlight Electronics Co., Ltd. and Zenaro Lighting (collectively, “Everlight”) for infringement of three of Nichia’s patents disclosing packaging designs and methods of manufacturing LED devices. Following a bench trial, the district court found that Everlight infringed all three patents and failed to prove the patents invalid. The district court denied Nichia’s request for a permanent injunction. Nichia appealed the district court’s refusal to enter a permanent injunction, and Everlight cross-appealed the district court’s infringement and validity findings. The Court affirmed on all grounds.

In Helsinn Healthcare S.A. v. Teva Pharms. USA, Inc., the Federal Circuit reversed the district court and held that Helsinn’s pre-AIA patent claims, “were subject to an invalidating contract for sale prior to the critical date,” and furthermore, “the AIA did not change the statutory meaning of ‘on sale’ in the circumstances involved here.” The asserted claims of the post-AIA patent were also ready for patenting prior to the critical date… The on-sale bar, before and after the AIA, does not require a finding that the offer or sale disclosed the details or claimed features of the invention, so long as the product embodies those features when sold. An invention is reduced to practice, and ready for patenting, when it is reasonably shown to work for its intended purpose, which for a pharmaceutical product is not contingent upon FDA approval.

The beauty of the patent troll narrative was it took little time to absorb and instantly painted a pejorative picture in the minds-eye of the listener. It became easy to repeat. Its bumper-sticker simplicity lead to widespread usage, which ultimately (and quickly) became accepted as fact without much, if any, critical thought. Most important, the strategy by-passed the arcane complexity of its convoluted subject matter by shifting the burden of Congressional persuasion to its victimized and under-resourced opponents… Expect big tech and its leftist bed-fellows to exert more effort to “de-propertize” patents on Capitol Hill and in the courts… Expect proponents of reform to mischaracterize patent reform as a step towards tort-reform, which is nearly comical given that the tortfeasor in the equation is the party that is trampling on the property rights of patent holders through infringement, which is many times purposeful and willful.

One of the key findings is that only 938 patent infringement actions were filed in district courts during the recent quarter, a total which is the lowest for a single quarter since the third quarter of 2011 when only 921 such cases were filed… The U.S. District Court for the Eastern District of Texas (E.D. Tex.) remains the most active court for patent infringement suits, receiving one-third of all patent infringement cases filed in 2017’s first quarter.

An Inter Partes Review (IPR) is an important tool for companies that face frequent patent infringement challenges. An IPR is essentially a mini-litigation focusing solely on patent validity conducted before a panel of administrative patent judges sitting in the Patent Trial and Appeal board (PTAB). Once an IPR is initiated, a decision on validity is issued within one year. The narrow focus, fast timing, and lower cost of an IPR, along with certain legal advantages that make proving invalidity easier in an IPR than in a district court, make it an attractive alternative to district court litigation when good invalidity arguments are available.

Rembrandt sued Samsung for patent infringement in the Eastern District of Texas and convinced a jury that Samsung infringed its two asserted patents, awarding $15.7 million in damages. Samsung appealed claim construction, denial of JMOL of obviousness, a Daubert motion on a damages expert, and the refusal to limit damages. The Federal Circuit agreed with the district court’s claim construction and its denial of Samsung’s JMOL motions, affirming those decisions… The Federal Circuit vacated because allowing Rembrandt to “avoid the consequence of its failure to mark undermines the marking statute’s public notice function.” The Federal Circuit remanded to the district court to properly limit damages, and also remanded the question of whether the marking statute applies on a patent-by-patent or claim-by-claim basis because the parties had not squarely addressed the issue during the present appeal.

The Federal Circuit affirmed a Patent Trial and Appeal Board (“Board”) decision finding a patent owned by Novartis AG and Mitsubishi Tanabe Pharma Corp. (collectively “Novartis”) to be unpatentable as obvious… Refusal by the Board to institute an IPR based on a particular reference does not necessarily preclude the Board from relying on that reference as additional support for a motivation to combine other references. Separate patentability arguments for dependent claims must be clearly argued lest they stand or fall with parent claims. A nexus for non-obviousness due to commercial success must clearly flow from the patented invention and not from subject matter known in the prior art.

A Federal Circuit Rule 36 judgment can be a valid and final judgment for purposes of preclusive effects. Additionally, district court findings affirmed by a Rule 36 judgment can have preclusive effect as long as each is “necessary” to the final appellate judgment. The Federal Circuit did not address the Circuit split regarding the preclusive effect of independent, alternative holdings.

Core Wireless sued Apple for infringing its patent directed to a cellular network system including a mobile station providing for improved transmission of data packets. The jury found that Apple did not infringe Core Wireless’ patent. At issue on appeal is whether the district court misapplied the magistrate judge’s pretrial claim construction and whether the claim construction adopted by the district court when ruling on Core Wireless’ JMOL was erroneous… Ultimately, the Court concluded that the district court correctly denied Core Wireless’s motion for judgment as a matter of law and properly upheld the jury’s verdict of noninfringement.

The old arguments that patents inhibit innovation, and non-exclusivity with compulsory licensing leads to a brave new world are now in vogue. We’ve stood at this fork in the road before. It requires courage to reject the easy path downward and restore the system which created our prosperity. If we lack the will, we have no one else to blame as we plunge deeper into the mire. That’s the last place anyone wanting to drain the swamp while growing the economy should go.

A claim term can be limited to an embodiment described in the specification, if the claim would otherwise be found invalid and the embodiment was not disclaimed. Thus, a claim term with no ordinary meaning can be defined according to a single example in the specification, if the example provides “a clear objective standard” for that term.