United States: Federal Circuit Patent Updates - August 2015

Last Updated: September 3 2015
Article by WilmerHale

View previous updates...

The Dow Chemical Company v. Nova Chemicals Corporation (No. 2014-1431, -1462, 8/28/15) (Prost, Dyk, Wallach)

August 28, 2015 5:22 PM

Dyk, J. Reversing award of supplemental damages. "We hold that the intervening change in the law of indefiniteness resulting from Nautilus provides an exception to the doctrine of law of the case or issue preclusion... In reviewing the supplemental damages award under the Nautilus standard, we hold that the claims are indefinite and reverse the award of supplemental damages." "Three conditions must be satisfied to reopen a previous decision under the change of law exception for both law of the case and issue preclusion. First, the governing law must have been altered... Second, the decision sought to be reopened must have applied old law... Third, the change in law must compel a different result under the facts of the particular case... Each of these requirements was satisfied here." The asserted claims relate to polymers and recite "a slope of strain hardening coefficient greater than or equal to 1.3." Four different methods existed for calculating the claimed slope and the methods do not always produce the same results. "Nether the patent claims nor the specification here discusses the four methods or provides any guidance as to which method should be used or even whether the possible universe of methods is limited to these four methods."

A full version of the text is available in PDF form.

Inline Plastics Corp. v. Easypak, LLC (No. 2014-1305, 8/27/15) (Newman, Clevenger, Dyk)

August 27, 2015 9:11 AM

Newman, J. Vacating judgment of non-infringement of patent relating to tamper-resistant plastic food containers. Also remanding for a determination of infringement in accordance with a corrected claim construction.

A full version of the text is available in PDF form.

Progressive Casualty v. Liberty Mutual (No. 2014-1466, -1538, -1549, -1586, -1636, -1637, -1639, -1656, 8/24/15) (Prost, Wallach, Taranto)

August 24, 2015 9:48 AM

Taranto, J. Affirming Board decisions in CBMs. Patentee argued that § 325(e) barred the Board from entering a decision in one CBM because the Board posted its decision "just over an hour after, but the same day as" it posted another decision in a related CBM. While § 325(e) can limit a petitioner's ability to maintain a proceeding, "[n]othing in the provision, or chapter 32 more generally, equates that limitation on a petitioner with the Board authority to enter a decision... We see nothing in the statute (or any regulation or other source) that forecloses the Board's treatment of the two same-day decisions as simultaneous and therefore outside § 325(e)(1)'s scope, regardless of the precise times of posting on an electronic docketing system."

A full version of the text is available in PDF form.

Hyatt v. Lee (No. 2014-1596, 8/20/15) (Moore, Mayer, Linn)

August 20, 2015 12:42 PM

Moore, J. Affirming summary judgment that § 122 did not prohibit the PTO's disclosure of confidential information. The applicant filed twelve families of patent applications collectively including over a hundred thousand claims. The PTO issued "Requirements" limiting the number of claims the applicant could pursue in each family. The applicant filed suit in the Eastern District of Virginia against the PTO alleging that the Requirements would violate § 122(a) by disclosing confidential information about otherwise non-public patent applications. The Court found that actions taken by the PTO under the "special circumstances" language of § 122(a) are reviewable under an abuse of discretion standard and further found that the PTO had not abused its discretion in finding that special circumstances justified the disclosure of confidential information.

A full version of the text is available in PDF form.

ABT Systems, LLC v. Emerson Electric Co. (No. 2014-1618, 2004-1700, 8/19/15) (Prost, Clevenger, Schall)

August 19, 2015 4:18 PM

Schall, J. Reversing denial of JMOL of invalidity and reversing judgment of no invalidity for patent related to heating, ventilation and air conditioning systems. Also vacating judgment of infringement and remanding with instructions to dismiss.  "We are also not persuaded by [patentee's] argument that commercial success is demonstrated by the number of licenses taken under the [patent]. While licenses can sometimes tilt in favor of validity in close cases, they cannot by themselves overcome a convincing case of invalidity without showing a clear nexus to the claimed invention."

A full version of the text is available in PDF form.

Personalized User Model, LLP v. Google Inc. (No. 2014-1841, 2015-1022, 8/18/15) (Prost, Lourie, Reyna)

August 18, 2015 1:12 PM

Lourie, J. Affirming grant of JMOL for a breach of contract claim. Claim that an employee was obligated to assign patents to his employer was barred by the statute of limitations. The Court also declined to review the district court's claim construction.  "Despite [patentee's] concerns that the construction might be given preclusive effect in future litigation involving its related patents, we may not provide an advisory opinion on the meaning of a claim term that does not affect the merits of this appeal and thus is not properly before us. We therefore decline to review the district court's claim construction."

A full version of the text is available in PDF form.

JVC Kenwood Corporation v. Nero, Inc. (No. 2014-1011, 8/17/15) (Newman, Dyk, Reyna)

August 17, 2015 3:40 PM

Newman, J. Plaintiffs sued software maker for induced and contributory infringement where software complied with DVD and Blue-Ray standards and patents were allegedly essential to standard. Where patents were part of patent pool and plaintiff itself had engaged in extensive licensing, plaintiff had burden of showing sale of unlicensed disks, which it failed to do. However, record was insufficient to support alternative holding based on patent exhaustion.

A full version of the text is available in PDF form.

Keranos, LLC v. Silicon Storage Technology (No. 2014-1360, -1500, 8/13/15) (Chen, Bryson, Hughes)

August 13, 2015 4:50 PM

Chen, J. Affirming district court's holding that exclusive licensee had all substantial rights in patent and therefore had standing to sue without patentee. Remanding to district court for further fact finding with respect to its denial of plaintiff's motion to amend its infringement contentions under the local rules of the Eastern District of Texas.

A full version of the text is available in PDF form.

Akamai Technologies, Inc. v. Limelight Networks, Inc. (No. 2009-1372, -1380, -1416, -1417, 8/13/15) (Prost, Newman, Lourie, Linn, Dyk, Moore, O'Malley, Reyna, Wallach, Hughes)

August 13, 2015 1:10 PM

Per curiam. On remand from Supreme Court, affirming jury verdict of direct infringement and holding no divided infringement. "We conclude, on the facts of this case, that liability under § 271(a) can also be found when an alleged infringer conditions participation in an activity or receipt of a benefit upon performance of a step or steps of a patented method and establishes the manner or timing of that performance."

WilmerHale represented the plaintiff-appellant Akamai.

A full version of the text is available in PDF form.

Power Integrations, Inc. v. Lee (No. 2014-1123, 8/12/15) (Moore, Mayer, Linn)

August 12, 2015 11:13 AM

Mayer, J. Vacating rejection of claims and remanding to the PTO for further consideration of claim construction in an ex parte reexamination in light of a contrary claim construction in district court proceedings.  "The fact that the board is not generally bound by a previous judicial interpretation of a disputed claim term does not mean, however, that it has no obligation to acknowledge that interpretation or to assess whether it is consistent with the broadest reasonable construction of the term."

A full version of the text is available in PDF form.

Suprema, Inc. v. ITC (No. 2012-1170, 8/10/15) (Prost, Newman, Lourie, Dyk, O'Malley, Reyna, Wallach, Taranto, Chen, Hughes)

August 10, 2015 4:30 PM

Reyna, J. Under Section 337, the importation of goods that, after importation, are used by the importer to directly infringe at the inducement of the goods' seller can be an unfair trade practice subject to ITC jurisdiction even where the goods have non-infringing uses. Judges O'Malley, Prost, Lourie and Dyk dissented.

A full version of the text is available in PDF form.

Ethicon Endo-Surgery, Inc. v. Covidien, Inc. (No. 2014-1370, 8/7/15) (Lourie, Bryson, Chen)

August 7, 2015 3:10 PM

Chen, J. In case involving utility and design patents covering surgical instruments, (1) reversing summary judgment of indefiniteness of one utility patent (2) reversing summary judgment of non-infringement of utility patents based on disputed issues of fact (3) reversing summary judgement of invalidity of design patents as functional but (4) affirming summary judgment that design patents were not infringed. With respect to indefiniteness, the existence of different methods of testing whether claim limitation was satisfied did not render claims indefinite where differences in result were due to natural variances in real world testing conditions. With respect to the design patents, the district court failed to properly evaluate alternative designs that were available to achieve the desired functionality and therefore demonstrated that the claims were ornamental.

A full version of the text is available in PDF form.

Carnegie Mellon University v. Marvell Technology Group, LTD (No. 2014-1492, 8/4/15) (Lourie, Linn, Hughes)

August 4, 2015 2:15 PM

Lourie, J. Affirming jury verdict that claims were not anticipated and infringed, reversing finding of willful infringement and partially reversing reasonable royalty award. The district court properly rejected a laches defense in light of evidence of copying. Enhanced damages for willful infringement were incorrectly awarded because the defendant's defenses were objectively reasonable. The infringer need not have in mind the objectively reasonable defense at the time of infringement, and "a defense may be objectively reasonable and yet properly not be presented to the jury." On damages, a reasonable royalty could not be based on chips that never entered the United States unless their "sale" occurred in the United States.

A full version of the text is available in PDF form.

Allergan, Inc. v. Sandoz Inc. (No. 2014-1275, 8/4/15) (Lourie, Linn, Hughes)

August 4, 2015 10:35 AM

Lourie, J. Affirming finding of infringement and rejecting obviousness, enablement and written description challenges to compositions and methods of treating glaucoma. Secondary considerations and teaching away supported claims having range limitations within the range of prior art disclosures. On written description, a "claim that recites a property that is necessarily inherent in a formulation that is described is not invalid as lacking written description merely because the property itself is not explicitly described." On enablement, even lacking efficacy data, the specification would have demonstrated utility to a person of ordinary skill. The district court's enablement finding was not in tension with its findings regarding predictability in the obviousness context.

A full version of the text is available in PDF form.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.