Aqua Shield v. Interpool Pool Cover Team (No. 2014-1263, 12/22/14) (Wallach, Taranto, Chen) December 22, 2014 6:15 PM Taranto, J. Vacating royalty award, non-willfulness finding, and denial of enhanced damages and attorney's fees and remanding. Regarding damages, "[i]f a potential user of the patented technology would expect to earn X profits in the future without using the patented technology, and X + Y profits by using the patented technology, it would seem, as a prima facie matter, economically irrational to pay more than Y as a royalty—paying more would produce a loss compared to forgoing use of the patented technology... [T]he district court did not err in considering [defendant's] profits. But it did err in treating the profits [defendant] actually earned during the period of infringement as a royalty cap. That treatment incorrectly replaces the hypothetical inquiry into what the parties would have anticipated, looking forward when negotiating, with a backward-looking inquiry into what turned out to have happened." A full version of the text is available in PDF form. |
Creative Kingdoms, LLC v. ITC (No. 2014-1072, 12/19/14) (Newman, Bryson, O'Malley) December 19, 2014 4:10 PM Affirming finding of no Section 337 violation. "Here, the novelty of the asserted claims includes the use of sensors in combination, and the scope of the asserted claims includes both mechanical and electronic sensors. But the two specifications contain no guidance as to how electronic sensors, such as accelerometers and gyroscopes, can be substituted or added to detect different motions, as required by the asserted claims. Instead, the specifications merely include a laundry list of the types of electronic sensors that could be used... Without any further guidance, the specifications fail to disclose how to make and use the full scope of the asserted claims. Accordingly, the asserted claims are invalid for lack of enablement." A full version of the text is available in PDF form. |
Stryker Corporation v. Zimmer, Inc. (No. 2013-1668, 12/19/14) (Prost, Newman, Hughes) December 19, 2014 1:22 PM Prost, J. Affirming jury's findings of validity and infringement of patents related to pulsed lavage devices and also affirming summary judgment of infringement of another patent. Also affirming jury's damages award and reversing judgment of willful infringement and award of treble damages. "An objective assessment of the case shows that [defendant] presented reasonable defenses to all of the asserted claims of [the] patents." Also vacating finding of exceptional case and award of attorneys' fees and remanding. A full version of the text is available in PDF form. |
University of Utah Research v. Ambry Genetics Corporation (No. 2014-1361, -1366, 12/17/14) (Prost, Clevenger, Dyk) December 17, 2014 11:30 AM Dyk, J. Affirming denial of preliminary injunction and finding invalid under §101 claims related to BRCA gene sequences. Although this case presented different claims, some of the asserted patents were previously considered by the Supreme Court in Association for Molecular Pathology v. Myriad Genetics, Inc. Following Myriad, the Court found the structure claims invalid. "Contrary to [patent owner's] statement, it makes no difference that the identified gene sequences are synthetically replicated. As the Supreme Court made clear, neither naturally occurring compositions of matter, nor synthetically created compositions that are structurally identical to the naturally occurring compositions, are patent eligible." The Court found the method claims invalid following Alice Corp. v. CLS Bank Int'l. The method claims were directed to "the patent-ineligible abstract idea of comparing BRCA sequences and determining the existence of alterations" and the non-patent-ineligible elements of those claims "set forth well-understood, routine and conventional activity engaged in by scientists at the time of [patent owner's] patent applications.". A full version of the text is available in PDF form. |
Promega Corp v. Life Tech (No. 2013-1011, -1029, -1376, 12/15/14) (Prost, Mayer, Chen) December 15, 2014 3:20 PM Chen, J. Reversing grant of JMOL of non-infringement for patent
related to DNA-based identification. The Court concluded that no
third party is required to satisfy the "to actively induce the
combination" language of §271(f)(1). The Court also held
"that there are circumstances in which a party may be liable
under §271(f)(1) for supplying ... a single component for
combination outside the United States." Also reversing denial
of summary judgment and finding invalid other patents due to lack
of enablement, affirming ruling that some sales were not covered by
a cross license, vacating damages award and remanding. Prost, J.
dissented-in-part and would have found that §271(f)(1)
requires inducement of a third party. A full version of the text is available in PDF form. |
Japanese Foundation v. Lee (No. 2013-1678, 2014-1014 12/9/14) (Prost, Dyk, Taranto) December 9, 2014 10:15 AM Prost, J. Vacating order that the PTO withdraw a terminal disclaimer. A full version of the text is available in PDF form. |
Memorylink Corp. v. Motorola Solutions, Inc. (No. 2014-1186, 12/5/14) (Lourie, Moore, O'Malley) 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. A full version of the text is available in PDF form. |
Sandoz, Inc. v. Amgen, Inc. (No. 2014-1693, 12/5/14) (Dyk, Taranto, Chen) 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. A full version of the text is available in PDF form. |
DDR Holdings, LLC v. Hotels.com, L.P. (No. 2013-1505, 12/5/14) (Wallach, Mayer, Chen) 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. A full version of the text is available in PDF form. |
Tyco Healthcare Grp. LP v. Ethicon Endo-Surgery, Inc. (No. 2013-1324, -1381, 12/4/14) (Prost, Reyna, Hughes) 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. A full version of the text is available in PDF form. |
Ericsson, Inc. v. D-Link Systems, Inc. (No. 2013-1625, -1631, -1632, -1633, 12/4/14) (O'Malley, Taranto, Hughes) 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. A full version of the text is available in PDF form. |
Par Pharmaceuticals, Inc. v. TWI Pharmaceuticals, Inc. (No. 2014-1391, 12/3/14) (O'Malley, Wallach, Hughes) 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. A full version of the text is available in PDF form. |
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