United States: Federal Circuit Patent Updates - August 2015

Last Updated: September 3 2015
Article by WilmerHale

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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.

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