Posts filtered by tags: Federal Circuit[x]


 

United States: PTAB's Decision To Institute CBM Review Not Reviewable By Federal Circuit - Winston & Strawn LLP

The Federal Circuit considered two questions: 1) whether the Patent Trial and Appeal Board's decision that a patent qualified for covered business method (CBM) review was reviewable on...
Tags: News, United States, Federal Circuit, Patent Trial and Appeal Board, CBM, Strawn LLP


United States: Looking Ahead To Avoid Spoliation Sanctions - Pearl Cohen Zedek Latzer Baratz

A recent Federal Circuit decision denying a petition for a writ of mandamus should serve as a cautionary tale and reminder for corporate entities regarding ...
Tags: News, United States, Federal Circuit, Cohen Zedek Latzer Baratz


Federal Circuit Continues to Remain Silent about its R.36 Opinions

Waterblasting, LLC v. Iancu (Fed. Cir. 2021) A few years ago, I wrote an article arguing that 35 U.S.C. § 144 requires the Federal Circuit to issue an opinion when it decides cases on appeal from the USPTO. The … Federal Circuit shall review the decision from which an appeal is taken on the record before the Patent and Trademark Office. Upon its determination the court shall issue to the Director its mandate and opinion , which shall be entered of record in the Patent and Trademark Office and ...
Tags: Law, Uspto, Patent, PTO, Trademark Office, Federal Circuit, IPR, PTAB, Iancu Fed, Federal Circuit Local Rule, Federal Circuit Continues to Remain Silent, Waterblasting LLC, Trademark Office Upon, Waterblasting, Iancu Petition


Boom! You Can’t Patent an Escrow Method

Boom! Payments, Inc. v. Stripe, Inc. (Fed. Cir. 2021) I used to play golf fairly regularly and got into the habit of announcing “BOOM!” on every drive.  It didn’t help my game.  BOOM!’s great name here also didn’t save its patent from dancing the Alice Two Step. (Note: I was 15 years old at the time–on my high-school freshman team getting free-rounds for the season).  This case is another affirmance of a dismissal for lack of patent eligibility. Under Alice/Mayo, the Supreme Court’s patent eligi...
Tags: Supreme Court, Law, Patent, Alice, Fed, PTO, Federal Circuit, Alice Mayo, Bogaard, Boom Payments Inc, Stripe Inc Fed


Conventionality is Irrelevant to Alice Step 1

by Dennis Crouch iLife Technologies, Inc. v. Nintendo of America, Inc. (Fed. Cir. 2021) (Non-Precedential Decision) The Trial: The jury sided with iLife–finding Nintendo liable for infringing iLife’s U.S. Patent No. 6,864,796 and awarding $10 million in damages. At trial, Nintendo had argued that the patent was invalid for lack of enablement and written description, but the jury denied those defenses. Nintendo also challenged the patent in an IPR, but the claims not proven invalid. Here, the c...
Tags: Law, Nintendo, Mario Kart, Patent, Federal Circuit, IPR, Dennis Crouch, Alice Mayo, Alice Step, iLife Technologies Inc, Nintendo of America Inc Fed, Michael Wilson Munck Wilson Mandala, Stephen Smith Cooley




United States: Product-by-Process Anticipation Analyses Apply To Product-by-Process Limitations Nested Within Method-of-Treatment Claims - Winston & Strawn LLP

In reversing a district court's judgment as a matter of law (JMOL) of no anticipation, the Federal Circuit clarified that a method-of-treatment claim reciting a product-by-process...
Tags: News, United States, Federal Circuit, Strawn LLP


Next Steps in Eligibility.

Two competing patent eligibility petitions have been filed with the Supreme Court.  In American Axle, the patentee argues that the Federal Circuit has gone too-far in finding its claimed method of manufacturing a frequency-tuned vehicle drive-shaft to be directed to a natural law (namely Hooke’s law).  In Ariosa Diagnostics, the petition goes the other way and argues that the Federal Circuit has unduly narrowed its conception of a product-of-nature under Myriad.  It would be interesting for the ...
Tags: Supreme Court, Law, Patent, Illumina Inc, Federal Circuit, Ariosa Diagnostics Inc, Hooke, Neapco Holdings LLC, American Axle Manufacturing Inc, Ariosa Diagnostics, Supreme Court In American Axle


Supreme Court will hear Assignor Estoppel Case

Minerva Surgical Inc. v. Hologic Inc. (Supreme Court 2021) The Supreme Court has granted certiorari in this case involving the traditional doctrine of assignor estoppel. Question Presented by Minerva: The question is whether a defendant in a patent infringement action who assigned the patent, or is in privity with an assignor of the patent, may have a defense of invalidity heard on the merits. Question Presented by Hologic: The question presented is whether the longstanding common-law doctrine ...
Tags: Supreme Court, Law, Patent, PTO, Lear, Federal Circuit, Adkins, Stoll, Hologic, Lemley, Minerva Surgical Inc, Hologic Inc Supreme Court, Licensee Estoppel Licensee, Assignor Estoppel See e g Coastal Dynamics Corp, SymbolicDisplays Inc


United States: Latest Federal Court Cases,12/14/20 - Schwabe Williamson & Wyatt

In the only precedential patent opinion issued this week, the Federal Circuit determined multiple issues in cross-appeals from the district court's disposition ...
Tags: News, United States, Federal Circuit, Wyatt, Schwabe Williamson, Latest Federal Court Cases


Moot on Appeal: Patentee’s Infringement Disclaimer Remove’s Challenger’s Ability to Appeal IPR

ABS Global, Inc. v. Cytonome/ST, LLC (Fed. Cir. 2021). In a split opinion, the Federal Circuit has dismissed ABS Global’s appeal of its failed IPR trial — finding the appeal moot. U.S. Patent No. 8,529,161. The simple story here is that Cytonome sued ABS for infringement of the ‘161 patent but lost on summary judgment of non-infringement.  ABS did not pursue an appeal, and expressly “disclaim[ed] such an appeal.” Meanwhile ABS had filed an Inter Partes Review proceeding that resulted in most of ...
Tags: Supreme Court, Law, Patent, Kessler, Board, Abs, Inter Partes Review, Global Inc, Federal Circuit, Prost, IPR, PTAB, Cytonome ST LLC Fed, ABS Global, Cytonome, Federal Circuit Appellant


United States: Divided Federal Circuit Reverses Another Convenience Transfer Denial By Judge Albright - RPX Corporation

The Federal Circuit has again overturned the denial of a convenience transfer motion by District Judge Alan D. Albright of the Western District of Texas. On November 9, a majority of the court...
Tags: News, United States, Albright, Federal Circuit, Western District of Texas, RPX Corporation, Alan D Albright


UPDATED: Must a Plaintiff Investigate a Patent’s Validity Prior to Suing for Infringement?

Updated below to correct an error in my original analysis. -DC WPEM LLC v. SOTI Inc. (Fed. Cir. 2021) WPEM sued SOTI for patent infringement based upon its mobile-device software management “Speed Lockdown” tool. The complaint cites MobiControl Version 11 as infringing.  In its answer, SOTI responded with information from its Version 10, which predates the asserted patent as well as other prior art references.  Settlement discussions ensued: Offer 1: P offers to settle for $429k; D says “no, t...
Tags: Law, Court, United States, Patent, District Court, Federal Circuit, Soti, Fed Cir, WPEM LLC, SOTI Inc Fed, WPEM, SOTI Inc, Accused Technology, Bill Ramey, Robert Greeson, DC WPEM LLC


Must a Plaintiff Investigate a Patent’s Validity Prior to Suing for Infringement?

WPEM LLC v. SOTI Inc. (Fed. Cir. 2021) WPEM sued SOTI for patent infringement based upon its mobile-device software management “Speed Lockdown” tool. The complaint cites MobiControl Version 11 as infringing.  In its answer, SOTI responded with information from its Version 10, which predates the asserted patent as well as other prior art references.  Settlement discussions ensued: Offer 1: P offers to settle for $429k; D says “no, the patent is invalid.” Offer 2: P offers to settle for $150k; ...
Tags: Law, Court, United States, Patent, District Court, Federal Circuit, Soti, Fed Cir, WPEM LLC, SOTI Inc Fed, WPEM, SOTI Inc, Accused Technology, Bill Ramey, Robert Greeson


Federal Circuit Statistics – 2020 edition

By Jason Rantanen This post uses data from the Compendium of Federal Circuit Decisions to provide a quick statistical overview of the Federal Circuit’s decisions this year, particularly in appeals arising from the district courts and USPTO. Decisions by origin Figure 1 shows the total number of Federal Circuit opinions and Rule 36 summary affirmances by origin.  The increase in decisions in appeals from the USPTO (orange) over the past decade is clearly visible, although last year there was a sl...
Tags: Law, Uspto, Patent, Federal Circuit, Jason Rantanen, Federal Circuit Decisions, Compendium of Federal Circuit Decisions, Federal Circuit Statistics, Lindsay Kriz


Toothbrush walks into a bar

by Dennis Crouch Maxill, Inc. v. Loops, LLC (Fed. Cir. 2020)f [Maxill v. Loops] The Loops patent covers a flexible toothbrush — and the claims require “an elongated body being flexible throughout the elongated body.”  US8448285 (Claim 1). Apparently, these brushes are sold primarily to “institutional” settings such as prisons. Early in the case, the patentee moved for summary judgment of infringement.  The district court denied the motion, and acted sua sponte to enter summary judgment of non-i...
Tags: Law, Toothbrush, Patent, Federal Circuit, Dennis Crouch, Maxill, Loops, Maxill Inc, Loops LLC Fed, William Addis


Federal Circuit: User Experience is not Computer Functionality

by Dennis Crouch Simio, LLC v. FlexSim Software (Fed. Cir. 2020) (opinion by Chief Judge Prost and joined by Judges Clevenger and Stoll). In this case, the Federal Circuit has affirmed the lower court’s summary dismissal of Simio’s infringement lawsuit on eligibility grounds.  The appellate panel also upheld the lower court’s refusal to permit the patentee to amend its complaint — seeing the proposed amendment as “futile.” Dennis Pegden has received many awards for his work developing software (...
Tags: Law, Patent, LLC, Federal Circuit, Stoll, Prost, Clevenger, Alice Step, Dennis Crouch Simio, FlexSim Software Fed, Simio, Dennis Pegden, Rockwell Later, FlexSim


Consolidated Appropriations Act of 2021

The huge appropriations bill includes a few IP gems: [LINK] Appropriation: $3.6 billion to USPTO. All money must com from PTO fees. The Copyright Office is appropriated $93 million; ICE has $15 million for IP border enforcement; The Federal Circuit receives $33 million. (I believe this is in addition to the judicial salaries of $229k for 2020). Illicit digital transmission: Big new copyright protections against streamers with felony penalties. CASE Act of 2020: Small-claims copyright court....
Tags: Supreme Court, Law, Ebay, Patent, Copyright Office, PTO, Federal Circuit


United States: December 2020 - Last Month At The Federal Circuit Podcast Series - Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

Welcome to the Last Month at the Federal Circuit – a look at recent Federal Circuit decisions impacting the intellectual property community.
Tags: News, United States, Federal Circuit, Finnegan Henderson Farabow Garrett, Dunner LLP


United States: Last Week In The Federal Circuit (December 14-18): And/or Confusion - Morrison & Foerster LLP

Last week, we got what may be the last big batch of Federal Circuit opinions of 2020. (In 2019, only six more opinions issued between this time and the end of the year.)
Tags: News, United States, Morrison, Federal Circuit, Foerster LLP


Government Contracts and Ownership of Technical Data

by Dennis Crouch The Boeing Company v. Air Force (Fed. Cir. 2020) This is a government contract case involving rights to technical data provided to the government from a contractor.  Boeing is working on a multi-billion-dollar F-15 Eagle Passive/Active Warning Survivability System (EPAWSS) project subject to a DoD contract.  Under the contract, Boeing “retains ownership” of the technical data it generates and delivers.  However, the U.S. Gov’t receives also “unlimited rights” to the data, includ...
Tags: Law, US, Boeing, Patent, Board, Federal Circuit, Boeing Company, Dennis Crouch, Armed Services Board of Contract Appeals ASBCA, Federal Circuit On, Air Force Fed


United States: Federal Circuit Compels Transfer Of Ownership Of Japanese Patent Applications - Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

In SiOnyx LLC v. Hamamatsu Photonics K.K., Nos. 2019-2359, 2020-1217 (Fed. Cir. Dec. 7, 2020), the Federal Circuit reversed the district court's denial ...
Tags: News, United States, Federal Circuit, Fed Cir, Finnegan Henderson Farabow Garrett, Dunner LLP, SiOnyx LLC, Hamamatsu Photonics


Doctrine of Equivalents in Lilly v. Apotex

Eli Lilly and Co v. Apotex, Inc. (Fed. Cir. 2020) You don’t see this often — the district court held on summary judgment that Apotex infringes under the doctrine of equivalents.  On appeal, the Federal Circuit has affirmed – finding no error. (Nonprecedential opinion) Lilly’s US7772209 claims a particular treatment scheme for pemetrexed disodium that includes a pre-treatment with folic-acid to avoid the harsh side-effects.  See, Crouch, Eligibility Cannot be Raised in IPR Appeal (2019).  Apote...
Tags: Law, Patent, Robert, Matthews, Lilly, Federal Circuit, Eli Lilly and Co, Eli Lilly Co, Apotex, Alimta, Apotex Inc Fed


What is an Article of Manufacture for Design Patent Law?

USPTO is seeking public comment on the meaning of an “article of manufacture” as used in 35 U.S.C. 171(a): Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title. The Federal Circuit’s recent decision in Curver Luxembourg refocused attention on the importance of the particular article of manufacture in the design patenting process. That case reiterated the point that design pat...
Tags: Law, Uspto, Patent, Fed, Federal Circuit, Curver Luxembourg SARL, Home Expressions Inc, Curver Luxembourg, Curver


Pre-AIA 102: Meaning of On Sale “in This Country”

by Dennis Crouch Caterpillar v. ITC & Wirtgen (Fed. Cir. 2020) Caterpillar filed a complaint with the International Trade Commission (ITC) against Wirtgen — arguing that the German manufacturer was importing infringing devices into the US.  However, the ITC found the claims invalidated by the company’s pre-filing sales.  On appeal here, the Federal Circuit has affirmed. Caterpillar’s U.S. Patent No. 7,140,693 covers a milling machine with retractable wheels (or tracks).   The invention here was ...
Tags: Law, US, America, Eu, United States, Italy, Itc, AIA, Patent, Caterpillar, Federal Circuit, Dennis Crouch, Invoice, International Trade Commission ITC, Wirtgen, ITC Wirtgen Fed


United States: We Updated Our Stats And Looked At The Timing Of Appeals - Morrison & Foerster LLP

We updated our stats, so we now have over a year of data since we started collecting data from every Federal Circuit decision.
Tags: News, United States, Federal Circuit, Foerster LLP, Timing Of Appeals Morrison


United States: SiOnyx LLC Et Al. V. Hamamatsu Photonics K.K. Et Al., Appeal Nos. 2019-2359, -1217 (Fed. Cir. Dec. 7, 2020) - Schwabe Williamson & Wyatt

In the only precedential patent opinion issued this week, the Federal Circuit determined multiple issues in cross-appeals from the district court's disposition of post-trial motions following a jury
Tags: News, United States, Federal Circuit, Wyatt, Fed Cir, Schwabe Williamson


Finjan’s Claims in IPR

Palo Alto Networks, Inc. v. Finjan, Inc. (Fed. Cir. 2020) Note – I originally misread this decision as applying the Phillips standard for claim construction. On review, I realize that I misread the decision. The court explains: For petitions for inter partes review filed on or after November 13, 2018, the Board applies the Phillips district court claim construction standard. 37 C.F.R. § 42.100(b) (2018); Phillips v. AWH Corp. , 415 F.3d 1303 (Fed. Cir. 2005) (en banc); Immunex Corp. v. Sanof...
Tags: Supreme Court, Law, US, Palo Alto, Patent, Sas, Fed, Board, Phillips, Sanofi, Federal Circuit, IPR, Palo Alto Networks Inc, Immunex Corp, Finjan, AWH Corp


United States: Contractors Should Not Leave Money On The Table: The Federal Circuit Clears The Way For Boeing To Use The Tucker Act To Sue DoD For "Illegal Exaction" In Connection With Contract Costs - Stinson

In these unprecedented, economically-challenging times for the aviation industry, it is especially important that airlines...
Tags: News, United States, Boeing, Federal Circuit, Stinson


Some pending en banc petitions before the Federal Circuit

In re Apple (level deference given on mandamus review of discretionary transfer decisions). [Uniloc Brief][Crouch’s prior post] Valeant Pharmaceuticals North America LLC v. Mylan Pharmaceuticals, Inc. (Proper venue for ANDA filing — what counts as having “has committed acts of infringement”). [ValeantANDAVenue][Crouch’s prior post] C R Bard Inc. v. AngioDynamics, Inc. (printed matter and eligibility). [BardPrintedMatter][Crouch’s prior post] EcoServices, LLC v. Certified Aviation Services, LLC  ...
Tags: Law, Patent, Federal Circuit, C R Bard Inc, Crouch, Teva Pharmaceuticals USA Inc, AngioDynamics Inc, ANDA, Mylan Pharmaceuticals Inc, GlaxoSmithKline LLC, Valeant Pharmaceuticals North America LLC, EcoServices LLC, Certified Aviation Services LLC, Prior Post