They Patented a Better SandBox — Obviousness IPRs

by Dennis Crouch Today’s decision by the Federal Circuit includes an example of thinly sliced bologna, with the court rejecting a PTAB IPR decision because the precise obviousness argument regarding a functional limitation was not expressly stated.  The court also does another go-round with the PTAB failing to consider commercial success.  Oren Tech v. Proppant Express (Fed. Cir. 2021) Lots of petroleum is trapped by deep rock formations that are difficult to drill-out one-by-one. Hydraulic frac...
Tags: Law, US, Smith, Patent, Board, The Board, Federal Circuit, Oren, IPR, Hendrick, Dennis Crouch, PTAB, Oren Tech, Proppant Express Fed, US Silica

United States: Federal Circuit Invalidates Device Patent As Directed To An Abstract Idea - Proskauer Rose LLP

Nearly seven years after the landmark Supreme Court decision in Alice Corp. v. CLS Bank Int'l, subject matter eligibility for patent claims under 35 U.S.C § 101 remains a moving target.
Tags: News, Supreme Court, United States, Federal Circuit, Alice Corp, Proskauer Rose LLP, CLS Bank Int

Arguing Obviousness: Teaching Away versus an Alternative Approach

by Dennis Crouch Obviousness is the central doctrine of patent law.  It is both the most common reason for rejection and often the most complicated issue because of both factual and legal complexities.  The new Chemours Co. decision provides an important addition to obviousness doctrine in two areas: (1) teaching away; and (2) commercial success.  The majority sided with the patentee and reversed the IPR Board’s single-reference obviousness determination.  The dissent argued that the opinion giv...
Tags: Law, Patent, Board, Newman, Reyna, The Board, Mfr, Federal Circuit, du Pont, Chemours Co, Dyk, PTAB, Daikin, Chemours, Posa, Chemours Company

United States: Last Week In The Federal Circuit (July 12-16): Under Alice, Another Patent Bites The Dust - Morrison & Foerster LLP

We could have a new Federal Circuit judge today (achieving gender parity on the Court). Last week, the Senate
Tags: News, United States, Morrison, Federal Circuit, Foerster LLP

Biglaw Partner Will Become Federal Circuit’s First Black Judge

Congratulations on this wonderful achievement!
Tags: Law, Courts, Biglaw, Quote Of The Day, Federal Circuit, Judicial Diversity

Congratulations to Judge Tiffany Cunningham

The Senate has confirmed Tiffany Cunningham, President Biden’s first pick for the Court of Appeals for the Federal Circuit.  Judge Cunningham is expected to be sworn in this week and immediately step into her new role (although the court typically slows down during August).  Judge Cunningham will be the first African American judge on the Federal Circuit. The vote was bipartisan, although 33 republicans voted NO, including my two senators (Josh Hawley and Roy Blunt).
Tags: Law, Senate, Biden, Patent, Cunningham, Federal Circuit, Josh Hawley, Tiffany Cunningham

Pleading Infringement: Twombly does not Require Element-by-Element Infringement Pleading

by Dennis Crouch BOT M8 v. Sony (Fed. Cir. 2021) Pleading Standards: The starting point of a civil lawsuit is the filing of the complaint that makes a claim for relief.  FRCP 3.  In order to properly state a claim, the rules require “a short and plain statement of the claim showing that the pleader is entitled to relief.” FRCP 8.  For many years, the rules included an Appendix of Form Complaints deemed legally sufficient to satisfy R. 8. Form 18 focused on patent infringement and included a bare...
Tags: Supreme Court, Law, US, Sony, Patent, Bell, Iqbal, Federal Circuit, Ashcroft, FRCP, Dennis Crouch, Twombly, Sony Fed, Element Claim Analysis, Bill of Lading Fed

United States: In Another Blow To Contracted Venue, The Federal Circuit Directs That Uber Be Transferred To Northern California - Winston & Strawn LLP

In re: Uber Technologies, Inc., On Petition for Writ of Mandamus to the United States District Court for the Western District of Texas in No. 6:20-cv-00843-ADA, Judge Alan D. Albright.
Tags: News, United States, Federal Circuit, Strawn LLP, Northern California Winston

United States: Litigators Take Note – Yu V. Apple Is Not Just About Subject Matter Eligibility Of Patents - Squire Patton Boggs LLP

Much of the discussion about the Federal Circuit's precedential opinion in Yu et al. v. Apple, Inc. et al. has focused on the perceived confusion and dysfunction of U.S. patent law that invalidates a claim directed to an "improved digital camera" as a patent-ineligible "abstract idea."
Tags: News, United States, Apple Inc, Federal Circuit, Eligibility Of Patents Squire Patton Boggs LLP

United States: IPR, CBM, And PGR Statistics For Final Written Decisions Issued In April And May 2021 - Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

The Patent Trial and Appeal Board issued 34 IPR, CBM, and PGR Final Written Decisions in April, including decisions following remands from the Federal Circuit, cancelling 230 (69.49%)...
Tags: News, United States, Federal Circuit, PGR, Appeal Board, Finnegan Henderson Farabow Garrett, Dunner LLP, IPR CBM

United States: Court Rejects Pre-Litigation Acts To Manipulate Venue - Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

In In re Samsung Elecs Co., No. 2021-139 (Fed. Cir. June 3, 2021),the Federal Circuit granted mandamus, ordering the transfer of pending cases by Ikorongo Tech and Ikorongo Texas against...
Tags: News, United States, Federal Circuit, Fed Cir, Finnegan Henderson Farabow Garrett, Dunner LLP, Samsung Elecs Co, Ikorongo Texas, Ikorongo Tech

United States: Federal Circuit Affirms That The Government Not Liable For Contractor's Costs Of Dealing With Outbreak - Peckar & Abramson PC

In an earlier blog, we wrote about the Civilian Board of Contract Appeals' (CBCA) decision denying a contractor's claim for the costs of demobilizing from a construction site due to concerns...
Tags: News, United States, Abramson, Federal Circuit, Civilian Board of Contract Appeals CBCA

United States: In Suits Against Ericsson And Nokia, IP Bridge Looks To Proceed On Standard Essentiality Theory Of Infringement - RPX Corporation

Last August, the Federal Circuit rejected an appeal filed by TCL (TCT Mobile) from a judgment based on a jury verdict against it—and in favor of Godo Kaisha IP Bridge 1...
Tags: News, Nokia, United States, Ericsson, Federal Circuit, Godo Kaisha, TCL TCT Mobile

United States: Federal Circuit Affirms Noninfringement Ruling For Online Retailers Due To Prosecution Disclaimer - RPX Corporation

The Federal Circuit has just upheld a California court's claim construction order that ended a long-running case filed by SpeedTrack, Inc. against a variety of retailers, including Amazon, Best Buy, and Costco.
Tags: News, California, United States, Federal Circuit, Amazon Best, SpeedTrack Inc

United States: Last Week In The Federal Circuit (June 28-July 2): What Do We Do With A Venue Dodger? - Morrison & Foerster LLP

The Federal Circuit sits for oral arguments this week. Despite juggling argument preparation and the July 4 holiday weekend, the Court still managed to release several decisions last week.
Tags: News, Court, United States, Morrison, Federal Circuit, Foerster LLP

United States: Double-Check The Prior Art And Validate The Math: Lessons From Apple Inc. v. Corephotonics, Ltd. - Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

In Apple Inc. v. Corephotonics, Ltd., No. 2020-1438 (Fed. Cir. June 23, 2021) (Taranto, Hughes, and Stoll), the Federal Circuit affirmed the PTAB's finding of no anticipation but vacated...
Tags: News, United States, Apple Inc, Federal Circuit, Stoll, Fed Cir, PTAB, Dunner LLP, Corephotonics Ltd, Taranto Hughes

En Banc: When Employees Leave with a Half-Baked Invention

I have been following the patent ownership lawsuit of Bio-Rad Laboratories, Inc. v. International Trade Commission and 10X Genomics.  The case is now pending on a petition for en banc rehearing before the Federal Circuit. Several former Bio-Rad employees left to form 10X Genomics.  While at Bio-Rad, the individuals began development of a number of ideas but did not complete conception or reduction-to-practice.  Some months later, after leaving and forming 10X, they completed the inventions and f...
Tags: Law, Court, Patent, Fed, AT T, Bio Rad, Bio Rad Laboratories Inc, Federal Circuit, International Trade Commission, Ewen, Federal Circuit Several, Fina Oil Chem Co, Integrated Network Corp, Vanderbilt Univ, ICOS Corp, BioRadEnBanc Bio Rad

What is Your Preferred Method for Attacking Functional Claims?

by Dennis Crouch VoIP-Pal.com, Inc. v. Apple, Inc., No. 20-1809 (Supreme Court 2021) VoIP-Pal sued Apple for infringing its U.S. Patent Nos. 9,537,762; 9,813,330; 9,826,002; and 9,948,549.  Apple filed four petitions for for inter partes review, but all four were denied by the PTAB. Judge Koh then dismissed the infringement case in Apple’s favor–finding that all asserted claims were directed to ineligible subject matter.  On appeal, the Federal Circuit affirmed without opinion (R.36). Now, VoI...
Tags: Apple, Law, Court, Patent, Apple Inc, Koh, Inc, Federal Circuit, Dennis Crouch, Nintendo of America Inc, iLife Technologies Inc, Neapco Holdings LLC, Court See American Axle Manufacturing Inc

United States: Supreme Court Hammers Final Nail In The IP Bridge V. TCL Coffin - Mintz

On Monday, the Supreme Court denied TCL Communication's certiorari petition, without comment, appealing the Federal Circuit's ruling that the essentiality of a patent claim is a question for the jury...
Tags: News, Supreme Court, United States, Tcl, Federal Circuit, Mintz, Supreme Court Hammers

United States: Federal Circuit Says No To Incorporating Argument By Reference - Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

In 3M Company v. Evergreen Adhesives, Inc., No. 2020-1738 (June 25, 2021), the Federal Circuit affirmed the PTAB's decision to deny 3M's Request for Rehearing, upholding the rejection of 3M's...
Tags: News, United States, Federal Circuit, 3M Company, PTAB, Finnegan Henderson Farabow Garrett, Dunner LLP, Evergreen Adhesives Inc

United States: Podcast: June 2021 - 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

Bald-Faced Attempt to Manipulate Venue Rejected

by Dennis Crouch In re Samsung Electronics Co., LTD (Fed. Cir. 2021) The Federal Circuit has again granted mandamus and ordered Judge Albright to transfer two cases case out of his W.D.Tex. court to a more convenient forum (N.D.Cal.). The underlying actions were filed by a patent holding company known as Ikorongo Texas LLC against Samsung and LG Electronics. As explained below, the owners of Ikorongo Texas formed the company as an attempt to solidify venue in W.D.Texas and avoid the case being t...
Tags: Apple, Texas, Supreme Court, Law, California, US, Samsung, Nevada, North Carolina, Patent, Albright, Federal Circuit, Lge, Tex, Dennis Crouch, N D Cal

PTO Director Review Process following Arthrex

by Dennis Crouch The USPTO has released some implementation information for Arthrex. In its decision, the Supreme Court held that the USPTO Director has power to review any IPR decision by the PTAB.  The Agency’s basic approach is as follows: At times, the PTO Director might initiate review of an IPR Decision sua sponte. This is unlikely. A party may request review of a final written decision for an IPR/PGR. The request must be filed within 30-days of the PTAB’s final written decision...
Tags: Supreme Court, Law, Office, Pop, Uspto, Patent, Agency, PTO, Federal Circuit, IPR, Dennis Crouch, PTAB, Request for Review

United States: Last Week In The Federal Circuit (June 21–25): How Airtight Does An Air Mattress Have To Be? - Morrison & Foerster LLP

The Federal Circuit announced last week that it will resume in-person oral arguments later this summer. The Court's new protocols generally take effect with the September 2021 sitting...
Tags: News, United States, Morrison, Federal Circuit, Foerster LLP

Assignor Estoppel Persists — But Only for Claims Specifically Assigned

Minerva Surgical Inc. v. Hologic Inc. (Supreme Court 2021) In my property law course, I spend a good bit of time walking through post-conveyance rights and obligations. What warranties are are promised to the buyer?  Do these need to be express or may they be implied? Can you disclaim the warranties by selling via quitclaim deed or “as is”? Are warranties different in for sale than for a gift? etc.  My class focuses on land and, to a lesser extent, personal property. Minerva asks the same questi...
Tags: Supreme Court, Law, Court, Houston, Patent, Roberts, Alito, Barrett, Minerva, Kagan, Kavanaugh, Federal Circuit, Gorsuch, Lemley Rethinking Assignor Estoppel, Breyer Sotomayor, Justices Thomas

Supreme Court: Closing out the Docket for 2020-21

by Dennis Crouch The US Supreme Court has almost cleaned-up its patent docket for the October 2020 term.  I still expect a decision at some point this week (by July 2) in Minerva Surgical, Inc. v. Hologic, Inc. focusing on the ongoing viability of assignor-estoppel.  The court has already decided its one other patent-focused case for the term–United States v. Arthrex, 594 U. S. ___ (2021). In Arthrex, the court altered the power of the PTO Director beyond statutory limitations in order to preser...
Tags: Supreme Court, Law, Court, US, United States, Patent, US supreme court, PTO, Federal Circuit, Hologic Inc, Western Digital Corp, IPR, Dennis Crouch, CVSG, Arthrex Inc, PTAB

Disclosure and Definiteness

I believe the clincher in this case is the fact that TVnGO’s patent claims use language not found anywhere within the patent specification.  The result, claims invalid as indefinite. — Dennis Crouch TVnGO v. LG Electronics (Fed. Cir. 2021) (nonprecedential) [Opinion] Patentee TVnGO sued LGE–alleging that its Smart TV’s infringed U.S. Patent Nos. 8,132,220, 9,124,945, 9,392,339, 9,407,969, and 9,794,621.  The district court found all asserted claims across the five related patents invalid as inde...
Tags: Supreme Court, Law, Patent, U S Supreme Court, Merrill, Eaton, Reyna, Federal Circuit, Prost, Lge, Winans, Dennis Crouch, Nautilus Inc, Biosig Instruments Inc, Schall, Yeomans

United States: The Supreme Court Decides Arthrex, Giving The PTO Director Discretion To Review PTAB Decisions - Marshall, Gerstein & Borun LLP

On June 21, 2021, the Supreme Court issued a decision vacating the Federal Circuit's judgment in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019).
Tags: News, Supreme Court, United States, Fed, PTO, Federal Circuit, Arthrex Inc, Smith Nephew Inc, Marshall Gerstein, Borun LLP

United States: Federal Circuit Finds Lack Of Enablement In Prior Art Reference - Marshall, Gerstein & Borun LLP

In Raytheon Technologies v. General Electric Corp., Appeal 2020-1755, (Fed. Cir. April 16, 2021), the Federal Circuit reversed a PTAB inter partes review...
Tags: News, United States, Federal Circuit, General Electric Corp, Fed Cir, Marshall Gerstein, Borun LLP, Raytheon Technologies

United States: A Fractured Vision Of Eligibility — Split Federal Circuit Panel Finds Digital Camera Claims Ineligible - Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

In Yu v. Apple Inc., No. 2020-1760 (Fed. Cir. June 11, 2021), a divided Federal Circuit panel affirmed finding that claims directed to a digital camera were ineligible under 35 U.S.C. § 101.
Tags: News, United States, Apple Inc, Federal Circuit, Fed Cir, Dunner LLP