United States: Spotlight On Upcoming Oral Arguments – September 2018

Tuesday, September 4, 2018

Centrak, Inc. v. Sonitor Technologies, Inc., No. 17-2504, Courtroom 201

Centrak appeals from a District of Delaware decision granting summary judgment of non-infringement in favor of Sonitor on the grounds that Sonitor did not make “all claimed elements” of the claimed system.  Centrak argues that the district court erred in holding that Sonitor did not “make” the accused system because some components are supplied or installed by others.  Specifically, Centrak argues that under 35 U.S.C. § 271, the entity that adds the last claim limitations to create the operable assembly of the claimed invention is liable for direct infringement, even if it uses parts supplied or installed by others.  Conversely, Sonitor argues that a party that makes only part of a claimed system does not “make” that system and thus cannot be liable for direct infringement.  Sonitor further argues that the undisputed evidence shows that Sonitor does not “combine” the components that Centrak alleges satisfies the elements of the asserted claims.

Wednesday, September 5, 2018

Blackbird Tech LLC v. Lululemon Athletica, Inc., No. 17-2350, Courtroom 201

Blackbird appeals from a District of Delaware decision granting summary judgment of non-infringement under the doctrine of equivalents.  In reaching its decision, the district court applied the disclosure dedication rule, which provides that “a patent drafter [who] discloses but declines to claim subject matter . . . dedicates that unclaimed subject matter to the public.”  Johnson & Johnston, 285 F.3d 1046, 1054 (Fed. Cir. 2002).  Blackbird contends that for the disclosure dedication rule to apply, the patentee must have disclosed the subject matter as an alternative to the claimed subject matter.  Blackbird argues that in this case, the specification discloses that sewing is a subset of lamination, not an alternative, and thus the disclosure dedication rule does not apply.  Lululemon argues that Blackbird’s disclosure-dedication argument is nothing more than a re-argument of its claim construction position, which the district court rejected.  Lululemon further argues that one of ordinary skill in the art would understand that sewing plies of materials together is a substitute, not an alternative, to laminating those plies. 

Asghari-Kamrani v. United Services Automobile Association, No. 18-1040, Courtroom 201

Asghari appeals from a PTAB decision determining that U.S. Patent No. 8,266,432 (“the ’432 patent”) is a covered business method (“CBM”) patent and subsequently holding that the claims were invalid under 35 U.S.C. §§ 102 and 103.  The ’432 patent is directed to the idea of using a “central-entity,” such as a bank or credit card company, to provide “centralized identification and authentication of users and their transactions to increase security in e-commerce.” 

Asghari argues that the PTAB’s determination conflicts with recent Federal Circuit precedent that narrowed the scope of patents eligible for CBM review to those that claim a “financial activity element.”  United Services Automobile Association (“USAA”) argues that the patent at issue was eligible for CBM review, because finance and e-commerce play a central role in the claims.  Additionally, Asghari argues that the PTO’s implementation regulation for the “technological invention” exception, is contrary to the statutory language of AIA § 18(d)(1).  The PTO states that a “technological invention” is one in which “the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art.”  Asghari contends that this definition is circular and improperly imports the novelty and nonobviousness standard into a jurisdictional test.  USAA argues that the PTO’s definition for “technological invention” is reasonable and that further guidance is provided in the Office Patent Trial Practice Guide and by the legislative history of Congress’ mandate. 

Asghari-Kamrani v. United Services Automobile Association, No. 17-2504, Courtroom 201

United Services Automobile Association (“USAA”) appeals from an Eastern District of Virginia’s decision denying USAA’s motion for attorney’s fees under 35 U.S.C. § 285.  USAA argues that the district court’s denial was based entirely on the court’s belief that “the inexperience of counsel should not result in damage to those who hired him.”  USAA argues that the court’s denial is inexplicable in light of the court’s statement that it had never seen a case like this before among the thousands it had presided over.  Asghari counters that the district court’s informal remarks cannot establish that USAA’s conduct was “exceptional.”  Asghari argues that the district court properly considered the totality of the circumstances, including USAA’s own litigation misconduct, and concluded that Asghari’s conduct was substantially justified. 

D’Agostino v. MasterCard International Inc., No. 18-1000, Courtroom 203

This appeal arises from a PTAB decision invalidating the challenged claims of U.S. Patent Nos. 8,036,988 and 7,840,486.  In December 2016, the Federal Circuit vacated and remanded the PTAB’s initial holding, which it said was based on an “unreasonable claim interpretation.”  On remand, applying the Federal Circuit’s claim construction, the PTAB held that the challenged claims were invalid under 35 U.S.C. § 102.  On appeal, D’Agostino argues that the PTAB lacked jurisdiction to entertain patentability arguments on remand.  Specifically, D’Agostino argues that the IPR statute “does not permit Board action more than 18 months after institution.”  Mastercard

argues that 35 U.S.C. §§ 6(b) and 316(c) grants the PTAB statutory authority to conduct IPR proceeding with no time restriction.  Mastercard further contends that 35 U.S.C. §§ 144 and 316(a) grant the PTAB the authority to proceed on remand, and that 28 U.S.C. § 2016 grants the Federal Circuit the authority to remand any judgment for further proceedings.

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.

Events from this Firm
23 Sep 2018, Seminar, Chicago, United States

Finnegan is a sponsor of the Intellectual Property Owners Association Annual Meeting, supporting the Women in IP Networking Brunch.

26 Sep 2018, Webinar, Washington, DC, United States

This latest series of webinars will explore emerging trends in the changing intellectual property (IP) legal environment in Europe and the United States.

26 Sep 2018, Webinar, Washington, DC, United States

This latest series of webinars will explore emerging trends in the changing intellectual property (IP) legal environment in Europe and the United States.

In association with
Related Topics
Related Articles
Related Video
Up-coming Events Search
Font Size:
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
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

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 or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq 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 of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions