United States: Federal Circuit Patent Updates - February 2016

Last Updated: February 18 2016
Article by WilmerHale

Lexmark International, Inc. v. Impression Products, Inc. (No. 2014-1617, 2/12/16) (en banc)

February 12, 2016 4:11 PM

Taranto, J. En banc decision reaffirming holdings of earlier CAFC decisions regarding patent exhaustion in light of recent Supreme Court cases: 1) "a patentee,  when  selling  a  patented  article  subject  to  a single-use/no-resale restriction that is lawful and clearly communicated to the purchaser, does not by that sale give the buyer, or downstream buyers, the resale/reuse authority that has been expressly denied;" and 2) "a U.S. patentee, merely by selling or authorizing the sale of a U.S.-patented article abroad, does not authorize the buyer to import the article and sell and use it in the United States." "A buyer may still rely on a foreign sale as a defense to infringement,  but  only  by  establishing  an express  or implied  license—a defense separate from exhaustion, as Quanta  holds—based  on  patentee  communications  or other circumstances of the sale." Dyk and Hughes, JJ., dissent.

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

Nike, Inc. v. Adidas AG (No. 2014-1719, 2/11/16) (Chen, Mayer, Stoll)

February 11, 2016 3:49 PM

Chen, J. Affirming in part, vacating in part, and remanding PTAB denial of a motion to amend in an IPR proceeding. "Under the particular circumstances presented here ..., we conclude that the Board should have explicitly  acknowledged and evaluated Nike's secondary considerations evidence." However, "[r]ecognizing that the Board operates under stringent time constraints, we do not hold that it is obliged to  explicitly address conclusory and unsupported arguments raised by a litigant." "[D]espite correctly reciting the Idle Free standard that multiple substitute claims are permissible  if  they  are  patentably  distinct  from  each other, the Board nevertheless did not engage in any such analysis comparing proposed substitute claims 48 and 49." A "portion of the Board's analysis on whether Nike's proposal of claim 48 and 49 constituted a reasonable number of substitute claims for originally issued claim 19 lacks critical fact-findings needed for any obviousness determination."  A statement of the patent owner "simply stating that its proposed claims were patentable over prior art known to [patent owner], but not part of the record of the proceedings" was adequate to satisfy the patent owner's burden under 37 C.F.R. § 42.20(c) "absent  an  allegation  of  conduct  violating  the  duty  of candor."

WilmerHale represented appellant Nike on appeal.

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

Transweb, LLC v. 3M Innovative Properties (No. 2014-1646, 2/10/16) (Wallach, Bryson, Hughes)

February 10, 2016 5:22 PM

Hughes, J.  Affirming judgment of invalidity in light of a prior public use, inequitable conduct, Walker Process antitrust violation, and an award of trebled attorney fees as antitrust damages. Regarding the necessary corroboration of oral testimony of a prior public use,  "[w]e treat the ultimate determination of whether such oral testimony is sufficiently corroborated as a question of fact,  which we review for clear error." "[T]here are no hard and fast rules as to what constitutes sufficient corroboration, and each case must be decided on its own facts." Attorney fees for defending the infringement suit "appropriately flow[ed] from the unlawful aspect of ... [the] antitrust violation and thus are an antitrust injury that can properly serve as the basis for antitrust damages."

WilmerHale represented appellant 3M on appeal.

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

Synopsys, Inc. v. Lee (No. 2015-1275, 2015-1183, 2/10/16) (Newman, Dyk, Wallach)

February 10, 2016 3:18 PM

Dyk, J. Dismissing as moot appeal of an Administrative Procedure Act suit challenging PTAB practice of issuing final decisions on fewer than all  of the claims raised in a petition for IPR, in light of the Synopsys v. Mentor case above. "Where a party challenges agency action alternatively in two separate suits, and a decision in one case resolves the issues presented in the companion case, the companion case becomes moot." Newman, J., dissents.

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

Synopsys, Inc. v. Mentor Graphics Corporation (No. 2014-1516, 2/10/16) (Newman, Dyk, Wallach)

February 10, 2016 1:55 PM

Dyk, J. Affirming PTAB decisions in an IPR that claims were not invalid and denying a motion to amend, and holding that the  Board  need  not  address  every  claim  raised  in  the petition for review in its final decision. "[W]e find no statutory requirement that the Board's final decision address every claim raised in a petition for inter partes review. Section 318(a) only requires the Board to address claims as to which review was granted." Newman, J., dissents.

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

Convolve, Inc. v. Compaq Computer Corp. (No. 2014-1732, 2/10/16) (Dyk, Taranto, Hughes

February 10, 2016 10:17 AM

Hughes, J. Affirming in part, vacating in part, reversing in part, and remanding summary judgment of noninfringement. The district court erred by importing limitations into certain claim steps and in granting summary judgment based on intervening rights. In determining whether intervening rights apply following reexamination, "amendments made during reexamination do not necessarily compel a conclusion that the scope of the claims has been substantively changed. ...   This is true even where the claims at issue were amended during reexamination after a rejection based on prior art."

A full version of the text available in PDF form.

Rosebuds LMS Inc. v. Adobe Systems Incorporated (No. 2015-1428, 2/9/16) (Moore, Hughes, Stoll)

February 9, 2016 4:50 PM

Moore, J. Affirming summary judgment of no liability for pre-issuance  damages under 35  U.S.C. § 154(d) because the defendant  had no actual notice of the published patent application that led to the asserted patent. "Constructive knowledge would not satisfy the actual notice requirement. ...[H]owever,  § 154(d)'s requirement of actual notice [does not] require[] an affirmative act by the applicant giving notice of the published patent application to the infringer." "[T]he ordinary meaning of "actual notice" also includes knowledge obtained without an affirmative act of notification." "Nor does our construction of 35 U.S.C. § 287(a) apply to § 154(d). ... Section 287(a) explicitly requires an act of notification, unlike § 154(d), which merely requires 'actual notice'." "Knowledge of related patents ... is ... legally  insufficient to establish actual notice of the published patent application."

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

Trivascular, Inc. v. Samuels (No. 2015-1631, 2/5/16) (Moore, O'Malley, Wallach)

February 5, 2016 4:13 PM

O'Malley, J. Affirming PTAB decision in an inter partes review (IPR) that the petitioner failed to prove the challenged claims obvious. "[T]he Board  is  not  bound  by  any findings made in its Institution Decision. At that point, the Board is considering the matter preliminarily without the benefit of a full record. The Board is free to change its view of the merits after further development of the record, and should do so if convinced its initial inclinations were wrong." "[T]here is a significant difference between a petitioner's burden to establish a 'reasonable  likelihood  of  success'  at  institution,  and  actually proving invalidity by a preponderance of the evidence at trial."

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

Trireme Medical, LLc v. Angioscore, Inc. (No. 2015-1504, 2/5/16) (Prost, Dyk, Chen)

February 5, 2016 10:44 AM

Dyk, J. Reversing dismissal of suit for correction of inventorship for lack of standing and remanding. "When the owner of a patent assigns away all rights to  the patent, neither he nor his later assignee has a 'concrete financial interest in the patent' that would support standing in a correction of inventorship action," but questions of fact as to whether such an assignment occurred here by reason of a Consulting Agreement could not be resolved on a motion to dismiss.

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

Trustees of Columbia Univ. v. Symantec Corporation (No. 2015-1146, 2/2/16) (Prost, Dyk, Hughes)

February 2, 2016 3:12 PM

Dyk, J. Affirming in part judgments of noninfringement and invalidity as to certain claims but reversing judgment of noninfringement as to other claims because of an incorrect claim construction. "Our case law does not require explicit redefinition or disavowal" in order to narrow a claim term from its ordinary meaning.

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

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