Posts Tagged: "Judge Ray Chen"

A Joint Stipulation of Dismissal Does Not Trigger Reexamination Estoppel Under Pre-AIA Section 317(b)

Appellant Affinity Labs of Texas, LLC (“Affinity”) appealed from the inter partes reexamination of its patent filed by Apple Inc. (“Apple”). Apple requested reexamination after Affinity asserted the patent against Apple in district court. The parties settled their dispute and filed a joint stipulation of dismissal with the district court… The estoppel provision of Pre-AIA Section 317(b), as applied to Inter Partes Reexamination, requires a “Final Decision,” which must show that the estopped party has not sustained its burden of proving invalidity of any patent claim in suit. Thus, a joint stipulation and order of dismissal “without prejudice” did not bar the maintenance of the Inter Partes Reexamination.

Affinity Labs of Texas Loses Reexamination Appeal; Reexamination Estoppel Does Not Apply

The Federal Circuit affirmed a Patent Trial and Appeal Board (“Board”) decision to uphold the unpatentability of several claims of a patent owned by Affinity Labs of Texas, LLC (“Affinity”). An Examiner initially found the claims to be unpatentable during two inter partes reexaminations and an ex parte reexamination of Affinity’s patent…. The estoppel provision of pre-AIA 35 U.S.C. § 317(b) for reexamination proceedings applies, claim-by-claim, to the party in the litigation, and does not trigger termination of reexamination proceedings involving other parties and other claims.

Refusal to institute IPR based on reference does not preclude use of reference for motivation to combine

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.

CAFC Affirms Attorney Fees Awarded Under ‘Holistic and Equitable’ Evaluation of Case

In conclusion, the Court held the district court did not abuse its discretion in determining that, under the totality of circumstances, this was an exceptional case, and affirmed the district court’s grant of § 285 fees… The Supreme Court’s totality of the circumstances analysis for fees under § 285 is a “holistic and equitable approach in which a district court may base its discretionary decision on other factors, including the litigant’s unreasonableness in litigating the case, subjective bad faith, frivolousness, motivation, and ‘the need in particular circumstances to advance considerations of compensation and deterrence.’”

Sprint Still on the Hook to Comcast for $7.5 Million

The Federal Circuit affirmed a jury award of $7.5 million for Sprint’s infringement of three Comcast patents. The district court did not error in construing the challenged claims, there was sufficient evidence to support both the jury’s verdict and the award of prejudgment interest.

AT&T Settlement Agreement Admissible in Sprint Patent Litigation

The Federal Circuit found that the district court did not abuse its discretion in admitting the AT&T settlement agreement for several reasons. First, the agreement covered the same patented technology at issue and thus was a reliable estimate of the technology’s value to Prism and potential infringers. Second, though both litigations were commenced the same day, the agreement came from an “earlier” case because it was entered into after all discovery was complete and on a fully developed record. This increased the likelihood that the settlement reflected the value of the patented technology rather than a desire to avoid a potential unfavorable judgment. Finally, the settlement was reached after a large share of litigation costs had already been expended, again reducing the role of litigation cost-avoidance in the decision to settle.

Federal Circuit: Disclaimer based on arguments actually made, not those that could have been made

The scope of surrender is not limited to what is necessary to overcome the prior art reference. Instead, patentees may surrender more than is required to overcome the prior art… Thus, the question is what a person of ordinary skill in the art would understand to have been disclaimed based on the argument actually made, not what one of ordinary skill in the art would have thought was necessary to disclaim the prior art identified. Ultimately, because of the breadth of the disclaimer, the Federal Circuit affirmed the district court’s construction relative to the first disclaimer.

Federal Circuit Remands Apple PTAB Victory Because Board Failed to Explain Motivation to Combine

The PTAB agreed with Apple and invalidated the patent. The Federal Circuit remanded because the Board failed to adequately explain its finding that a skilled artisan would have had a motivation to combine the references used to find obviousness… IPR practitioners should brief the Board with explicit reasoning why a skilled artisan not only could (or could not), but would (or would not) be motivated to combine the asserted references, and how those references work together (or do not).

Federal Circuit Finds District Court Mischarged the Jury on Induced Infringement

This case concerns ongoing disputes between Power Integrations and Fairchild Semiconductors. The companies sued each other in Delaware, each asserting infringement of multiple patents by the other. At issue were power supply controller chips used ubiquitously in modern electronics, the patents related to those chips, and how power is supplied and regulated from the upstream source to the downstream electronic device… Induced infringement requires successful communication between the alleged inducer and the third-party infringer; it is not sufficient in itself that others directly infringed the asserted claims.

Admissions that programming was commonly known doom patent owner in CBM appeal

The Federal Circuit affirmed the Board’s decision to invalidate certain claims in three patents owned by Ameranth. The Court relied heavily on Ameranth’s concessions within the specification that certain aspects of the invention were “typical” or “commonly known.” Practitioners should be wary of using such language and should take steps to identify specific technological improvements.

Federal Circuit Affirms in Part and Reverses in Part “Means Plus Function” Indefiniteness

In an indefiniteness analysis, particularly for a “means plus function” claim, the patent must particularly disclose the corresponding structure for performing the claimed function. It is not enough that a person of ordinary skill in the art would likely know what structure to implement. The Court also clarifies that in a willful infringement analysis, the preponderance of the evidence standard implemented in Halo should be used, rather than the clear and convincing evidence standard used in Seagate.

Light on analysis, heavy on conclusion, no claim construction, CAFC rules claims ineligible

How patent claims can be invalidated without a proper and thorough claim construction is baffling. It flies in the face of everything patent law stands for and does nothing but encourage patent examiners, PTAB judges and district courts to do a facial check based on a gut feeling, nothing more… That type of subjective, half-baked analysis is antithetical to the patent process and the Federal Circuit should be ashamed for engaging in such a review. The only way to competently determine what a claim is directed to and whether the claim adds significantly more, whatever that means, is to do a proper, thorough and competent claim construction, period. Seriously, if the Court is going to publish a decision like this that is heavy on conclusions, non-existent on analysis, and almost certainly drafted by an intern or Staff Attorney, then why even make it a non-precedential opinion?

Federal Circuit Affirms Anticipation Based on Converting Units of Measure; Remands for Consideration of Prior Conception

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.

Federal Circuit denies en banc rehearing, IPR proceedings can be instituted for less than all of the challenged claims

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.

Claims broad enough to encompass mental processes are unpatentable abstract ideas

The Court reasoned that the claims were limited to straightforward steps that a skilled artisan could perform mentally and that the inventors admitted to doing so. The claims, on their face, do not call for computer implementation, and Synopsys did not advance a claim construction requiring a computer. Additionally, complex details in the specification are insufficient to transform broad claims from an abstract idea into patentable subject matter. Given the breadth of the claims, the Court declined to decide if a computer-implemented version of the invention would be patentable under § 101.