United States: Spotlight On Upcoming Oral Arguments – September 2019

Tuesday, September 3, 2019

Chrimar Systems, Inc. v. ALE USA Inc., No. 18-2420, Courtroom 402

Chrimar sued ALE alleging that ALE’s products infringed four of Chrimar’s patents.  The district court found that the patents were valid and awarded damages and ongoing royalties to Chrimar.  ALE appealed, but did not challenge validity or ongoing royalties.  During the pendency of the district court action, third parties petitioned for inter partes review of the four patents asserted against Chrimar.  After the completion of briefing on appeal, but before the Federal Circuit issued its decision, the PTAB issued Final Written Decisions finding that all of the challenged claims were invalid.  Chrimar has appealed each of the Final Written Decisions and those appeals are currently pending before the Federal Circuit.  The Federal Circuit subsequently issued its opinion vacating the district court’s claim construction with respect to one of the four asserted patents (U.S. Patent No. 8,155,012 (“the ’012 patent”)) and remanded for further proceedings. 

Following the Federal Circuit’s remand, Chrimar issued a covenant not to sue to ALE and moved to voluntarily dismiss its claim for infringement of the ’012 patent.  Meanwhile, in light of the PTAB’s Final Written Decisions, ALE filed a motion to sever and stay ongoing royalties or to stay the entire case pending the result of Chrimar’s appeal.  The district court granted Chrimar’s motion to dismiss and denied ALE’s motion to stay as moot. 

On appeal, ALE argues that it was an abuse of discretion not to grant ALE’s motion to stay the case pending the outcome of Chrimar’s appeal.  ALE further argues that it was an abuse of discretion not to stay ongoing royalties because it should not have to pay royalties on invalid patents.  Chrimar argues that the mandate rule forecloses the relief that ALE seeks.  The mandate rule provides that all issues within the scope of the appealed judgment are foreclosed from further adjudication unless remanded by the Federal Circuit.  Chrimar argues that because ALE chose not to appeal validity or ongoing royalties, those issues are precluded from further adjudication. 

Fitbit, Inc. v. Valencell, Inc., No. 19-1048, Courtroom 203

This appeal arises from an IPR finding claims 1, 2, and 6-13 of U.S. Patent No. 8,923,941 (“the ’941 patent”) invalid.  Apple originally petitioned for inter partes review of claims 1-13 of the ’941 patent.  The PTAB instituted review of claims 1, 2, and 6-13.  Fitbit later filed a petition for inter partes review of only claims 1, 2, and 6-13 and a request for joinder.  The request was granted and Fitbit was joined as a party to the original inter partes review.  The Supreme Court then decided SAS Inst., Inc. v. Iancu, where it held that partial institution was impermissible. In response, the PTAB instituted review of claims 3-5 and allowed the parties to submit additional briefing. In the Final Written Decision, the Board ultimately found claims 3-5 were valid. Fitbit now appeals.

On appeal, Valencell argues that Fitbit waived any right to seek appellate review of claims 3-5 by failing to make any arguments with respect to those claims in its petition for inter partes review.  Fitbit argues that while its petition was limited to the claims 1, 2, and 6-13, its joinder motion expressly requested that the PTAB grant joinder with the Apple proceeding “in full.”  Thus, Fitbit argues that upon joinder it became a party to all of the challenges advanced by Apple and is entitled to challenge any aspect of the Final Written Decision that it is dissatisfied with.

Keith Manufacturing Co. v. Butterfield, No. 19-1136, Courtroom 402

Larry Butterfield appeals from a district court’s denial of his motion for attorney’s fees.  The question presented to the Court is whether a stipulated dismissal with prejudice constitutes a “judgment” under Federal Rule of Civil Procedure 54(a), allowing the defendant to move for an award of attorney’s fees.

While an employee of Keith Manufacturing, Mr. Butterfield filed for a patent. A dispute arose and Mr. Butterfield left Keith Manufacturing. Later, Mr. Butterfield’s patent application was granted, and Mr. Butterfield threatened Keith Manufacturing with an infringement action. Keith Manufacturing responded by filing an action seeking declaratory judgment of noninfringement and invalidity and a claim for correction of inventorship under federal law and a breach of contract claim under state law. Mr. Butterfield filed a motion to dismiss the complaint with a covenant not to sue Keith Manufacturing for patent infringement. The court dismissed the claims for declaratory relief of noninfringement and invalidity, but not the claims for correction of inventorship or breach of contract. Several months later, the parties agreed to a stipulated dismissal with prejudice under Federal Rule of Civil Procedure 41(a)(1)(A)(ii).  After dismissal, Mr. Butterfield moved for an award of attorney’s fees pursuant to Federal Rule of Civil Procedure 54(d).  The district court denied the motion holding that a voluntary dismissal by stipulation does not constitute a “judgment” within the meaning of Federal Rule of Civil Procedure 54(a) nor was Mr. Butterfield the prevailing party under federal law, although he would be under state law.

On Appeal, Mr. Butterfield argues that a party does not need to obtain a favorable judgment on the merits in order to be a “prevailing party.”  Mr. Butterfield contends that the stipulated dismissal with prejudice materially altered the legal relationship between the parties, and therefore, should be viewed as a judgment for the purposes of Federal Rule of Civil Procedure 54(a).  Mr. Butterfield further argues that the district court incorrectly relied on distinguishable precedent in denying his motion.  Keith Manufacturing argues that Mr. Butterfield cannot receive attorney’s fees because the stipulated dismissal destroyed the adversity in the case, thereby leaving Mr. Butterfield without an order, decree, or judgement as required by Rule 54.  Further, Keith Manufacturing asserts that Mr. Butterfield is not a prevailing party under either federal or state law.

Wednesday, September 4, 2019

GlaxoSmithKline LLC v. Teva Pharmaceuticals USA, Inc., No. 18-1976, Courtroom 402

GSK appeals a District Court’s decision granting Teva’s renewed motion for judgement as a matter of law and setting aside the jury’s finding of induced infringement and $235 million damage award.  Teva filed an Abbreviated New Drug Application seeking approval to market a generic version of GSK’s drug Coreg®.  The FDA originally approved Teva’s generic carvedilol product under a skinny label, which did not include an indication for treatment of congestive heart failure.  Teva marketed its product, for example on its website and in its product reference guide, as a generic version of Coreg® and indicated that its product could be used just like Coreg®.  Teva later replaced the skinny label with the “full” label that was essentially identical to GSK’s Coreg® label.

GSK brought suit against Teva alleging infringement of U.S. Patent No. RE40,000 (“the ’000 patent”), which is directed to a method of using carvedilol to treat congestive heart failure.  GSK argued that the labels for Teva’s generic carvedilol product and Teva’s marketing for its generic product caused physicians to prescribe Teva’s generic carvedilol for the treatment of congestive heart failure, thereby inducing infringement of the ’000 patent.  The jury found that Teva willfully induced infringement.  However, the district court set aside the jury’s infringement finding, concluding that no reasonable jury could have found that Teva caused doctors, as a class, to infringe. 

GSK argues that the district court erred in setting aside the jury’s infringement finding because substantial evidence establishes that Teva induced doctors to infringe.  Specifically, GSK argues that Teva intended to capture the treatment of all heart failure patients by encouraging doctors to prescribe its generic product just like Coreg® in its marketing materials.  GSK further argues that Teva’s skinny label contained information about the treatment of congestive heart failure, which suggested that its product should be used to treat congestive heart failure.  Teva argues that GSK did not provide substantial evidence that physicians who prescribed carvedilol for use in an infringing manner were induced to do so by Teva. Specifically, Teva contends that no evidence establishes that Teva’s marketing had any impact on physicians’ prescribing practices.  Teva further contends that its skinny label carved out the congestive heart failure indication, and therefore, could not promote infringement.

Thursday, September 5, 2019

Columbia Sportswear v. Seirus Innovative Accessories, No. 18-1329, Courtroom 201

Columbia Sportswear raises the question of whether the change in venue law as a result of the Supreme Court’s TC Heartland decision excuses “a non-rule based venue waiver through litigation conduct.”  After more than two years of litigation in the District of Oregon, TC Heartland was decided, tightening the venue requirements in patent cases. Seirus moved for a venue transfer to the Southern District of California.  The District Court found that Seirus had waived its venue objection both under Rule 12(g)(2) and based on “Defendant’s vigorous litigation of this case.”  Nevertheless, fourteen days before trial, the district court granted Seirus’s motion explaining that “TC Heartland is an intervening change in the law excusing Defendant’s waiver of its venue objection.” 

Columbia argues that the Federal Circuit has made a clear distinction between “rule-based waiver,” which is excused by an intervening change of law, and “non-rule-based waiver,” which is not.  Therefore, Columbia argues that the district court erred in transferring the case to a different district in a different state fourteen days before trial.  Seirus argues that it objected to venue properly after the TC Heartland decision and the district court correctly found that venue is improper in Oregon and that the change in law excused any rule-based or non-rule-based waiver.

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.

In association with
Related Topics
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please 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