United States: Federal Circuit Patent Updates - December 2014

December 5, 2014 1:45 PM

Lourie, J. Affirming summary judgment that assignment of invention was valid and did not lack consideration and dismissing tort claims as barred under the statute of limitations.

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December 5, 2014 9:30 AM

Taranto, J. Affirming district court's denial of declaratory judgment jurisdiction where, when suit was filed, plaintiff was conducting phase III trials for biosimilar product and FDA approval was at least several years away.

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December 5, 2014 4:22 PM

Chen, J. Affirming finding that one patent direct to directed to systems and methods of generating a composite website claimed patentable subject matter and that the claim term "look and feel" was not indefinite. A second patent was found invalid as anticipated. Mayer, J., partially dissented on the 101 holding.

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December 4, 2014 12:40 PM

Prost, J. Reversing obviousness determination of district court where district court correctly found prior invention under 35 U.S.C. 102(g) but did not apply it under Section 103.

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December 4, 2014 11:15 AM

O'Malley, J. Affirming in part and reversing in part judgment in favor of patentee on patents alleged to be essential to practicing Wi-Fi standard. With respect to one patent, denial of JMOL affirmed because claim language recited the capability of a device rather than its operation. With respect to a second patent, although it would have been a "factual error" to find direct infringement of a method claim, a verdict covering both direct and indirect infringement was sustained where the jury could have found induced infringement. With respect to damages the Court held (1) it was not error to admit licenses that applied a royalty to a royalty base that did not comply with the entire market value rule, (2) argument by counsel referring to the total cost of a laptop when discussing the requested royalty rate was not objected to at trial and therefore would not be reviewed (3) the district court's instructions with respect to damages for standards-essential patents were erroneous. "In sum, we hold that, in all cases, a district court must instruct the jury only on factors that are relevant to the specific case at issue. There is no Georgia-Pacific-like list of factors that district courts can parrot for every case involving RAND-encumbered patents. The court should instruct the jury on the actual RAND commitment at issue and must be cautious not to instruct the jury on any factors that are not relevant to the record developed at trial. We further hold that district courts must make clear to the jury that any royalty award must be based on the incremental value of the invention, not the value of the standard as a whole or any increased value the patented feature gains from its inclusion in the standard. We also conclude that, if an accused infringer wants an instruction on patent hold-up and royalty stacking, it must provide evidence on the record of patent hold-up and royalty stacking in relation to both the RAND commitment at issue and the specific technology referenced therein." Taranto, J., partially dissented on an infringement holding.

WilmerHale represented the intervenor-appellant Intel and argued for the appellants.

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December 3, 2014 3:40 PM

O'Malley, J. Reversing and remanding finding that method of treatment claims were obvious where district court had misapplied law of inherency. "A party must . . . meet a high standard in order to rely on inherency to establish the existence of a claim limitation in the prior art in an obviousness analysis—the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art." The Court otherwise affirmed the district court's findings of motivation to combine, reasonable expectation of success and absence of unexpected results.

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