Posts Tagged: "Judge Ray Chen"

Disclaimers of Claim Scope Viewed in Context of the Entire Prosecution History

The Federal Circuit agreed with the district court that this evidence did not demonstrate a “clear and unmistakable” disclaimer in claim scope. The Court emphasized that disavowals must be evaluated in the context of the entire prosecution history. Thus, the term “cells derived from a vascularized tissue” included both parenchymal (organ) and non-parenchymal cells. The file history statements did not amount to an unmistakable disclaimer of non-parenchymal cells, in light of the full prosecution history and the claim language pending at the time of the alleged disavowal.

En Banc Federal Circuit finds substantial evidence to support jury verdict in Apple v. Samsung

The Court found substantial evidence to support the jury’s finding of infringement. While Samsung’s expert offered conflicting testimony, a reasonable jury could have credited Apple’s expert. Thus, there was no error in the district court’s conclusion that substantial evidence supported the jury verdict of infringement… Note that the underlying dispute in this case does not concern design patents that were also asserted against Samsung, and which are currently being reviewed by the Supreme Court.

Federal Circuit recognizes its role as only an appellate court in Apple v. Samsung

This decision reestablishes what should always have been the case; namely that the Federal Circuit is an appellate court that does not consider evidence outside the record or engage in fact finding on their own. The Federal Circuit has been increasingly out of control for years, acting as a trial court and jury rather than an appellate court. Hopefully that will end today.

Federal Circuit presumes inventorship correct even when considering standing

Drone sued Parrot for indirect infringement of two patents relating to remote-controlled drones… The Federal Circuit sided with Drone and refused to substantively examine inventorship, where Drone’s claim to title was not otherwise in dispute. Inventorship of an issued patent is presumed correct, and Parrot provided no persuasive reason why the Court must litigate inventorship as part of the standing analysis. Alternatively, Parrot may challenge inventorship as an invalidity defense, but doing so under the guise of standing is improper.

Federal Circuit Affirms District Court Judgment on All Grounds in LifeNet Health v. LifeCell

Lifenet’s patent is for plasticized soft tissue grafts used for transplantation in humans. The specification discloses that plasticizers can be removed before implantation, although they need not be, as claim 1 discloses three options for the implanting technician, one option being direct implantation without removing plasticizers. LifeCell’s accused grafts are preserved in a solution prior to implantation, and it is undisputed that significant amounts of plasticizers are removed during this soaking process. During claim construction, the parties disputed the meaning of the term “non-removal.” The district court concluded that construction of this term was unnecessary because it was easily understood by a person of ordinary skill in the art to have its plain meaning.

Federal Circuit affirms Apple iPhone patent victory over GPNE

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.

Co-Inventors Must be Named, Even Those who Contribute to One Aspect of One Claim

On appeal, the Federal Circuit reviewed whether there was substantial evidence supporting the district court’s finding that Nathan and Matheson should be added as co-inventors. In determining that the inventorship evidence below was sufficient, the Court reiterated that all inventors are required to be named even if their contribution is limited to a single aspect of a single claim, and that co-inventors need not have collaborated at the same time to be named.

District Court may consider burden of litigation in deciding whether to stay a patent case

Murata argued that the district court should have relied on the traditional three-factor test, which does not consider the burden of litigation on the court and the parties. By considering the burden of litigation, it alleged that the court committed a reversible error. The Court disagreed, ruling that courts have broad discretion to manage their own dockets, including the power to grant a stay of a case. This discretion does not come from statute, but is an inherent power of the courts. Thus, a district court may consider other factors beyond the three-factor stay test at its discretion. Further, the legislative history of the AIA reveals that Congress intended IPR’s to reduce the burden of litigation.

CAFC: Reasonable Litigation Defenses No Defense to Willfulness; Permanent Injunction Denial Was Abuse of Discretion

Under the Federal Circuit’s reading of Halo, companies can no longer rely solely on reasonable litigation-inspired defenses to prevent a finding of willfulness… The Federal Circuit also found that the district court abused its discretion in failing to issue a permanent injunction. While there is a public interest in safer generators, there is also a public interest in the security of patent rights. The patent owner presented evidence that it had sufficient production abilities to satisfy market demand for the product. Finally, in similar contexts, Congress has expressly indicated that permanent injunctions may issue to prevent infringement of other life-saving goods like pharmaceuticals.

CAFC: PTAB Improperly Shifted Burden of Proof on Obviousness to Patent Owner in IPR

The Federal Circuit reversed the Board’s obviousness ruling, finding that the Board had improperly shifted burdens onto Magnum, the Patent Owner, in several instances. For example, Petitioner McClinton asserted that a motivation to combine argument made with respect to a first set of prior art references was also applicable to a second set of prior art references, but did not explain why the rationale applied to both sets of references. The Federal Circuit found that the Board improperly “expected [the Patent Owner] to explain, and faulted [the Patent Owner] for allegedly failing to explain” why the motivation to combine argument made by Petitioner based on the first set of prior art references would not be applicable to the second set of prior art references. The Board’s obviousness finding thus constituted an improper shifting of the burden to Magnum, the patentee, to prove that the claimed invention would not have been obvious.

Using a European technical effect approach to software patent-eligibility

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.

Using narrow claim breadth as a sign of software patent-eligibility

In two cases written by Judge Chen (DDR Holdings, LLC v. L.P., 2013-1505 (Chen, Wallach, Meyer (dissent) and Bascom Global Internet Services, Inc., v. AT&T Mobility LLC, 2015-1763 (Newman, O’Malley, Chen)) the patents were found to be patent-eligible principally because analysis typically regarded as being under Mayo step 2 demonstrated that the claims added “something more” to the abstract ideas than merely well-understood and conventional steps. In effect, Judge Chen’s opinions focus on whether the narrowness of the claim is adequate. If it is, the claim is not abstract. How narrow is “narrow enough” is, like “abstract”, not defined, but this approach bears a closer resemblance to the original limiting principle of the abstract idea doctrine – preemption – than many recent decisions.

Federal Circuit Vacates District Court’s Determination on Personal Jurisdiction

Polar argued on appeal that the district court erred in finding that Suunto did not have sufficient contacts in Delaware. The Court agreed with Polar. The Court held that there were sufficient contacts, because there was evidence Suunto purposefully shipped at least ninety-four accused products to Delaware retailers and fully expected that its products would then be sold in Delaware. The record also showed that Suunto entered into a distribution agreement with ASWO to market and distribute its products in the United States. It was Suunto who physically fulfilled orders, packaged products, and prepared shipments intended for Delaware. Suunto did not simply leave the products on a dock in Finland. Because Suunto purposefully availed itself of the Delaware market, the Court concluded that Suunto had sufficient minimum contacts with Delaware.

Federal Circuit Affirms Registration of MAYARI over Opposition from MAYA Trademark Holder

Oakville Hills Cellar, Inc. (“Oakville”), doing business as Dalla Valle Vineyards, appealed from the decision of the Trademark Trial and Appeal Board (TTAB) of the United States Patent and Trademark Office (USPTO) dismissing its opposition to a trademark application filed by Georgallis Holdings, LLC (“Georgallis”) to register a MAYARI mark for use on wine. Oakville had previously registered the mark MAYA, also for wine. Because there was substantial evidence to support the finding of the TTAB that there would be no likelihood of confusion, the Federal Circuit affirmed a registration of the mark MAYARI for wine products, affirming the TTAB’s decision and dismissing Oakville’s opposition.

In BASCOM v. AT&T the CAFC says software patent eligible again

This case arrived at the Federal Circuit on an appeal brought by BASCOM from the district court’s decision to grant a motion to dismiss under Rule 12(b)(6). In the majority opinion Chen made much of the civil procedure aspects of a 12(b)(6) motion, as well he should. Frankly, it is about time that the Federal Circuit notice that these patent eligibility cases are reaching them on motions to dismiss. This should be overwhelmingly significant in virtually all cases given that a motion to dismiss is an extraordinary remedy in practically every situation throughout the law. Simply put, judges are loath to dismiss cases on a motion to dismiss before there has been any discovery or any issues are considered on their merits. That is, of course, except when a patent owner sues an alleged infringer.