United States: Federal Circuit Patent Updates - January 2018

Last Updated: January 24 2018
Article by WilmerHale

Exmark Manufacturing Company v. Briggs & Stratton Power (No. 2016-2197, 1/12/18) (Wallach, Chen, Stoll)

January 12, 2018 9:18 AM

Stoll, J. After denying summary judgment of invalidity, a jury found infringement and awarded damages which the district court doubled based on willfulness. The Court held (1)  the district court erred by basing its summary judgment of no invalidity solely on the fact that the claims survived multiple reexaminations, (2)  the district court erred in denying a new trial on damages because the plaintiff's damages expert failed to provide an adequate explanation as to how she arrived at a 5% royalty rate for the patented feature relative to other conventional features of the accused products, (3) the district court abused its discretion by limiting the evidence relevant to damages to prior art that had been commercialized, and (4) the district court abused its discretion by excluding from the willfulness trial evidence relating to patent validity based on its determination that Briggs' invalidity defenses were objectively unreasonable. The Court affirmed the district court's denial of summary judgment that claim was indefinite, and affirmed its denial of Briggs' laches defense. Regarding damages, apportionment was required even though claim was directed to a "lawn mower" where improvement related to specific feature of mower; however, apportionment could be achieved by adjusting royalty rate as well as base. "Using the accused lawn mower sales as the royalty base Is particularly appropriate in this case because the asserted claims is, in fact, directed to the lawn mower as a whole." However, the expert's royalty rate was insufficiently supported. "It is not enough for an expert to simply assert that a particular royalty rates is reasonable in light of the evidence without tying the propped rate to that evidence."

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

Advanced Video Technologies v. HTC Corporation  (No. 2016-2309, -2310, -2311, 1/11/18) (Newman, O'Malley, Reyna)

January 11, 2018 4:41 PM

Reyna, J. Affirming dismissal for lack of standing based on failure to join co-owner (plaintiff's employee) of patent. The employee's employment agreement stated only that he "will assign" inventions, and no such assignment occurred. O'Malley, J., concurred in result but argued that precedent precluding involuntary joinder of co-owners is wrong.  Newman, J., dissented.  

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

Finjan, Inc. v. Blue Coat Systems, Inc. (No. 2016-2520, 1/10/18) (Dyk, Linn, Hughes)

January 10, 2018 2:08 PM

Dyk, J. Affirming finding that software claims were directed to patent-eligible subject matter, affirming jury verdict of infringement of two patents, reversing verdict of infringement of a third patent, and remanding on damages where there was a failure to apportion and the awarded reasonable royalty was not supported by substantial evidence. With respect to apportionment, plaintiff's attempt to apportion based on "smallest, identifiable technological component" of larger system was insufficient where component covered features other than the claimed method. Royalty rate of $8 a unit was unsupported by substantial evidence where based only on conclusory statement of licensing executive. A remand was proper to determine whether Finjan had waived right to damages based on alternative theories.   

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

Wi-Fi One, LLC v. Broadcom Corporation (No. 2015-1944, -1945, -1946, 1/8/18) (en banc)

January 8, 2018 12:56 PM

Reyna, J. The PTAB's decision about whether an IPR is time-barred under Section 315(b) is subject to appeal. O'Malley, J., concurred.  Hughes, joined by Lourie, Bryson and Dyk, dissented.

WilmerHale represented the appellee Broadcom.   

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

Monsanto Technology LLC v. E.I. Dupont de Nemours (No. 2017-1032, 1/5/17) (Dyk, Reyna, Wallach)

January 5, 2018 3:22 PM

Wallach, J. Affirming IPR obviousness and anticipation holding with respect to claims directed to crossing parent soybean lines to make a soybean having a modified fatty acid profile. The word "about" was interpreted by reference to prior art referred to in the specification. The claims were inherently anticipated by some plant progeny that had claimed characteristics even if others might not because the "clams do not require that the desired soybean progeny be produced each and every time."   

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.

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