PTAB Holds Institution Decisions of IPRs are Final and Nonappealable
Written by Tony GuoThe Patent Trial and Appeal Board (PTAB) of the USPTO recently reaffirmed a holding that its institution decisions regarding whether or not to proceed with an inter partes review (IPR) of an issued patent are "final and nonappealable" under 35 U.S.C. § 314(d). In this case, Medtronic, Inc. v. Robert Bosch Healthcare Sys. Inc., Fed. Cir. No. 2015-1977 (10/20/2016), the PTAB terminated an IPR because the petitioner failed to disclose all real parties in interest, which is subject to a ban on judicial review in accordance with 314(d).
Federal Circuit Clarifies 35 U.S.C. 112 Indefiniteness in Method Claims
Written by Tony GuoThe Federal Circuit, this Friday, reversed a distrcit court's summary judgment that several patents related to VoIP technology were invalid as being indefinite under 35 U.S.C. 112. In its holding, the court concluded that Section 112 cannot be used on the basis that a "processing system" is indefinite, wherein the asserted claims comprise entirely of method claims. In other words, because the "processing system" has no discernable role in defining the scope of a claim of process, and wherein the point of novelty resides in the steps of the process or method, the unfleshed "processing system" does not render the method claims indefinite per se.
Following our previous post on Kimble v. Marvel Entertainment, LLC, the Supreme Court today has decided to uphold the longstanding rule in Brulotte v. Thys, which states that a patentee cannot continue to receive royalties for sales made after the expiration of the patent. Standing by the principle of stare decisis, the Court reasoned that in case after case, it construed 35 USC 154 to preclude measures that restrict free access to formerly patented inventions.
Yesterday, the USPTO issued the most recent guidelines of patent subject matter eligibility pursuant to 35 U.S.C. 101, i.e. the detemrination of when an invention will be found ineligible for an "abstract idea", "law of nature", or "natural phenomenon". This update follows the two preceding updates each from July 2015, and late 2014 (after the Alice decision).
USPTO Issues Revisions to PTAB Post Grant Procedure
Written by Tony GuoToday, the US PTO issued revisions to the Rules of Procedure for the Patent Trial and Appeal Board, at 81 Fed. Reg. 18750. This Federal Register Notice includes various changes to the duty of candor, the rules on pleading page limits, as well as grounds for instituting IPR and PGR proceedings.
Supreme Court Grants Cert. in Design Patent Damages Case
Written by Tony GuoIn the unending saga of Samsung v. Apple (and Apple v. Samsung), the Supreme Court has recently granted certiorari on a single question relating to damages in a case of design patent infringement, that is: where a design patent only covers a single component of an overall product, should a damages award be limited only to those profits attributed to that component? For more on this case, head over to SCOTUSblog - http://www.scotusblog.com/case-files/cases/samsung-electronics-co-v-apple/.
Circumventing the IPR Statute of Limitations via Discretionary Joinder
Written by Tony GuoIn an ongoing dispute between VirnetX Inc. vs. Apple Inc., Apple Inc. had challenged the validity of two asserted VirnetX patents (US Patent Nos. 6,502,135 and 7,490,151). Apple was initially unsuccessful in its IPR institution requests, because it was time barred under the IPR statute of limitations, which requires a PTAB IPR challenge to be brought within 1-year from the date that the complaint is served on the defendant. After several failed attempts, Apple Inc. recently circumvented the IPR statute of limitations, via 35 U.S.C. 315(c) joinder to another petitioner, The Mangrove Partners Master Fund, Ltd.
Apple's "Spell Correction" and "Slide-to-Unlock" Patents Invalidated by Federal Circuit
Written by Tony GuoIn the perpetual Apple v. Samsung (and Samsung v. Apple) battles for patent dominance, the Federal Circuit's most recent decision invalidated two of Apple's asserted patents, notwithstanding a jury verdict finding the opposite. The two claims were directed to Apple's mobile device patents, including automated spell corection, slide-to-unlock (found in the lower court to have been infringed by Samsung devices, and resulting in $119 million in damages). The claimed features were invalidated on appeal to the Federal Circuit based on 35 U.S.C. 103, in that each of the "slide-to-unlock" and "spell correction" claims were obvious in view of the prior art. In support of the patents, Apple presented evidence of copying, industry praise, long-felt but unsolved need, and commercial success all being secondary considerations of nonobvious. The Federal Circuit reviewed Apple's presented evidence, and collectively found the secondary evidence to be too weak to overcome the evidence of obviousness based on the prior art, and reversed the lower court's jury verdict.
Section 285 is Inappropriate for Deterrence Based Sanctions
Written by Tony GuoIn a recent decision in Lumen View v. FindTheBest.Com, the Federal Circuit held that Section 285 of U.S. patent laws does not support the deterrence based award of fees or sanctions, instead the Federal Circuit suggested that sanctions under Rule 11 of the FRCP to be the more appropriate vehicle. The Federal Circuit in this case did affirm the lower court's "exceptional case" finding under 35 U.S.C. 285 as well as the award of "reasonable attorney fees", but has vacated the doubling of the award to "deter baseless litigation" as unjustifiable.
Supreme Court Grants Cert in Challenge of IPR Proceedings
Written by Tony GuoThe Supreme Court has granted writ of certiorari in a pending Inter Partes Review (IPR) challenge in Cuozzo Speed Tech v. Lee. The questions on review relate to whether the court of appeals erred in holding that in IPR proceedings, the PTAB may construe claims in an issued patent according to their broadest reasonable interpretation, rather than their plain and ordinary meaning, as well as on whether the PTAB's decision to institute an IPR proceeding is itself unreviewable.
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USITC Has No Jurisdiction to Exclude Electronic Transmissions Under 19 U.S.C. 1337
Written by Tony GuoIn an interesting decision handed down by the Federal Circuit this week, it has been found that electronic transmissions of digital data are not "articles" which the United States International Trade Comissision (ITC) has jurisdiction to exlcude under 19 U.S.C. 1337. ClearCorrect Operating, LLC v. International Trade Commission, Fed. Cir., No. 2014-1527 (Nov. 10, 2015). After an interpretation of both the literal text of the statute as well as the legislative history, the Federal Circuit reversed the ITC's prior determination, and found the term "articles" to clearly mean only "material things".
New Federal Rules of Civil Procedure (2015) and Effects on Patent Litigation
Written by Tony GuoThe new Federal Rules of Civil Procedure (FRCP) will take effect on December 1, 2015, and shall govern all proceedings in civil cases commenced thereafter. Specific to patent litigation, the 2015 FRCP eliminated the previous form patent complaints (i.e. Civil Form 18) that allowed patentees to file a complaint without specifically setting forth its theory of infringement. After taking effect, the new FRCP will require a patentee's initial complaint to comply with the Supreme Court rulings in Twombly and Iqbal, under which the patentee must set forth sufficient facts to make a claim for relief plausible. In patent cases, courts may therefore begin requiring a showing of which patent claims are being infringed and possibly the inclusion of at least one claim chart comparing the accused product with at least one claim.
Federal Circuit Rules Laches Can Limit Patent Damages
Written by Tony GuoThe equitable defense of laches can apply to claims of patent infringement damages suits, even when they are filed within the six year statutory period as defined by 35 U.S.C. §286, ruled the en banc Federal Circuit in SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC., Fed Cir., No. 2013-1564 (Sept. 18 2015). In this narrow 6-5 decision, the court sitting en banc affirmed its earlier summary judgment, which dismissed SCA's patent infringement suit for laches, from September of last year.
Florida's 2015 Patent Troll Prevention Act Signed into Law
Written by Tony GuoNine states, including Florida, have recently enacted "anti-patent troll" legislation in 2015, joining the seventeen states that passed similar legislation last year in 2014. Florida's HB 439 ch. 501 part VII ("Patent Troll Prevention Act"), enacted in the 2015 session, prohibits bad faith assertions of patent infringement from being made, and provides a number of factors that allow a court to consider whether an allegation was made in bad faith. A determination of bad faith includes damages and reasonable attorney fees.
Tony S. Guo, Esq.