10/21/2014
Category: Claim Construction 
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor
 
TitleCardSoft, LLC v. Verifone, Inc., No. 2014-1135 (Fed. Cir. Oct. 17, 2014).
IssueVeriFone appeals the district court’s construction of “virtual machine,” found in all asserted claims. It argues that the district court erred by not requiring the claimed “virtual machine” to include the limitation that the applications it runs are not dependent on any specific underlying operating system or hardware.
CardSoft, LLC, at *5.
Holding[T]he district court’s construction does not reflect the ordinary and customary meaning of “virtual machine” as understood by a person of ordinary skill in the art [to mean an interpreter platform between applications and the underlying hardware or operating system.]
Id. at *5 (text added).
 
 
10/18/2014
Category: Civil Procedure 
 
 
 
 By: Christian Hannon, Contributor 
 
TitleVermont v. MPHJ Tech. Invs., No. 2014-1481 (Fed. Cir. Aug. 7, 2014).
IssueMPHJ Technology Investments, LLC (“MPHJ”) petitions this court for a writ of mandamus, and also appeals from an order of the United States District Court for the District of Vermont remanding this case to state court.
MPHJ Tech. Invs., at *2.
HoldingBecause we lack jurisdiction to grant the requested relief, we dismiss the petition and appeal.
Id. at *2.
 
 
 
10/16/2014
Category: Antitrust  
 
 
 
By: Roy Rabindranath, Contributor 
 
TitleTyco Health Group LP v. Mutual Pharmaceutical Company, Inc. (Fed. Circ. August 6, 2014).
Issue[Whether the district court’s summary judgment order that Tyco did not violate the antitrust laws by [(1) filing an alleged “sham infringement lawsuit”] against Mutual or [(2)] by filing [an alleged sham “citizen petition”] with the Food and Drug Administration (“FDA”) seeking to bar Mutual from obtaining FDA permission to market its generic version of one of Tyco’s drugs [under Mutual’s Abbreviated New Drug Application (ANDA) with the FDA].
Tyco Healthcare Group, at *2 (text added).
HoldingThere is a recognized exception to Noerr-Pennington immunity for “sham litigation,” which the Supreme Court has defined as litigation that (1) is “objectively baseless in the sense that no reasonable litigant could realistically expect success on the merits” (the objective element), and (2) is motivated by a desire “to interfere directly with the business relationships of a competitor” (the subjective element). Prof’l Real Estate Investors, Inc. v. Columbia Pictures Indus., Inc., 508 U.S. 49, 60-61 (1993) (“PRE”). […] PRE’s two part test, however, is not limited to court litigation; it has been applied to administrative petitions, including FDA citizens petitions.
Id. at *8 15 (text added, internal citations omitted).
 
 
10/14/2014
 
 
 
 By: Jesus Hernandez, Blog Editor/Contributor
 
TitleVirtualagility Inc. v. Salesforce.com, Inc., No. 2014-1232 (Fed. Cir. July 10, 2014).
Issue
[Factors A and D] The district court concluded that the first factor— simplification of the issues—was “essentially neutral, if not slightly against” granting a stay because it was “not convinced” by the PTAB’s assessment that cancellation of some or all of the claims during CBM review was “probable.”
Virtualagility Inc., at *6.
[CBM Amendment] Defendants argued that the fact that VA has already filed a motion to amend claims in the CBM proceeding increased the likelihood that the CBM proceeding will simplify issues. In its decision denying the motion to stay pending appeal, the court observed that VA’s proposed amendments to the ’413 patent claims in the CBM proceeding were not a part of the record at the time of its decision on the motion now on appeal.
Id. at *7.
[Factor B] Defendants argue that the district court correctly concluded that the early stage of the litigation favors a stay. Defendants contend, however, that the district court did not weigh this factor heavily enough in favor of the stay because it erroneously considered the case’s status at the time it ruled on the motion rather than at the time when the motion was filed—seven months earlier.
Id. at *15.
[Factor C] Defendants argue that the district court erred in concluding that a stay would unduly prejudice VA. They contend that VA will not suffer undue prejudice because the timeframe for CBM review is short. They argue that, in any event, mere delay in having one’s claim adjudicated does not constitute undue prejudice. Defendants argue that VA has not identified any actual risk of fading memories or potentially unavailable evidence.
Id. at *20.
Holdings
[Factors A and D] We conclude that the district court clearly erred in finding that the first factor was neutral or slightly against a stay, and that the fourth factor weighed only slightly in favor of a stay. We hold that these factors strongly favor a stay in this case. The district court erred as a matter of law to the extent that it decided to “review” the PTAB’s determination that the claims of the ’413 patent are more likely than not invalid in the posture of a ruling on a motion to stay. Under the statutory scheme, district courts have no role in reviewing the PTAB’s determinations regarding the patentability of claims that are subject to CBM proceedings.
Id. at *11.
[CBM Amendment] We conclude that it is proper for us to consider the fact that VA filed a Motion to Amend in our review of the district court’s decision. Defendants did not waive the arguments regarding claim amendments. They argued to the district court that claim amendments during PTAB review are a distinct possibility and, in doing so, gave VA an opportunity to respond to this argument below. […] We also conclude that we are not improperly expanding the record on appeal if we consider the Motion to Amend. […] Cognizant of the limits imposed by Rule 201(b)(2), however, we reiterate that we consider only the fact that a Motion to Amend was filed— not the impact of the proposed amendments on the parties’ claim construction and infringement arguments.
Id. at *10-11 (internal citations omitted).
[Factor B] We hold that the timing factor heavily favors a stay. We note at the outset that it was not error for the district court to wait until the PTAB made its decision to institute CBM review before it ruled on the motion. Indeed, while some district courts ruled on motions to stay before the PTAB granted the petition for post-grant review […], others have waited until post-grant review was instituted, and still others denied as premature the motion to stay without prejudice to refiling after institution of post-grant review […]. We express no opinion on which is the better practice. While a motion to stay could be granted even before the PTAB rules on a post-grant review petition, no doubt the case for a stay is stronger after post-grant review has been instituted.
Id. at *16 (internal citations omitted).
[Factor C] We conclude that the district court clearly erred in finding that the undue prejudice factor weighed heavily against a stay. At best, this factor weighs slightly against a stay. We agree with the district court that competition between parties can weigh in favor of finding undue prejudice.
Id. at 21.
 
 
 
 
10/08/2014
Category: Administrative Law  
 
 
 
By: John Kirkpatrick, Contributor 
 
TitleTroy v. Samson Manuf. Corp., No. 2013-1565 (Fed. Cir. July 11, 2014).
Issues
[1] Mr. Troy challenges the district court’s refusal to consider evidence pertaining to issues not raised before the Board [in a civil action under 35 U.S.C. § 146].
Troy at *4 (text added).
[2] [E]ven if [Kappos v. Hyatt, 132 S. Ct. 1690 (2012)] requires that the district court admit such new evidence, this holding is applicable to [35 U.S.C. § 145] actions only.
Id. at *8 (text added).
Holdings
[1] "We conclude that the Supreme Court’s decision in Hyatt permits new evidence to be admitted without regard to whether the issue was raised before the Board."  Troy at *5 (text added). "[T]o the extent that our prior precedent, see, e.g., Conservolite v. Widmayer, 21 F.3d 1098, 1102 (Fed. Cir. 1994), held that new evidence on an issue not presented to the Board was generally to be excluded in district court proceedings, it is no longer viable following the Supreme Court’s Hyatt decision." Id. at *6 (text added).
[2] [T]he Supreme Court’s decision in Hyatt applies with equal force to both § 145 and § 146 actions.
Id. at *10 (text added).
 
 
10/06/2014
Category: Civil Procedure 
 
 

By: Christian Hannon, Contributor 
 
TitleTaylor v. Taylor Made Plastics, Inc., No. 2014-1212 (Fed. Cir. May 9, 2014)(non-precedential).
Issue[Did] James T. lack[] standing because Mary T. [,James T.'s ex-wife,] was a co-owner of the '566 patent by virtue of the divorce, and she had not joined the suit.
Taylor at 2 (txt added).
Holding[Yes,] [t]he long-established rule is that a suit for patent infringement must join all co-owners of the patent as plaintiffs.
Id. at *3 (text added).
 
 
10/03/2014
Category: Post-Grant Proceedings  
 
 
 
 By: Jesus Hernandez, Blog Editor/Contributor
 
TitleBenefit Funding Sys., LLC v. Advance Am. Cash Advance Centers Inc.., No. 2014-1122, -1124, -1125 (Fed. Cir. Sept. 25, 2014).
IssueAppellants’ argument on appeal rests on the single premise that the PTAB is not authorized to conduct CBM review based on § 101 grounds. Consequently, according to Appellants, the district court would not be bound by the results of the CBM review […]
Benefit Funding Sys., LLC, at *6.
HoldingThe argument that § 101 cannot support CBM review is a collateral attack [since a district court should not review the PTAB’s determination that contested claims are more likely than not invalid in the posture of a ruling on a motion to stay.]
Id. at *6-7 (text added).
 
 
10/01/2014
Category: Infringement 
 
 
 
 By: Jesus Hernandez, Blog Editor/Contributor  
 
TitleEMD Millipore Corp. v. AllPure Tech., Inc., No. 2014-1140 (Fed. Cir. Sept. 29, 2014).
Issues
[A. No Literal Infringement] Millipore claims that when the TAKEONE device is disassembled, all components of the transfer member are still removed from the magazine part (135), even if the components of the seal [...] are no longer physically connected. […]
EMD Millipore Corp. at *7.
[B. Prosecution History Estoppel Bars Millipore’s Doctrine of Equivalents Arguments] AllPure argues that the district court should not have considered whether Millipore could maintain a claim for infringement under the doctrine of equivalents because prosecution history estoppel bars such a claim.
Id. at *10.
Holdings
[A. No Literal Infringement] [W]e conclude that there is no genuine issue of material fact relating to whether the TAKEONE device literally contains “at least one removable, replaceable transfer member[,]” [because the TAKEONE device lacks a seal when it is disassembled, it necessarily lacks the claimed “removable, replaceable transfer member.”]
Id. at *7 (text added).
[B. Prosecution History Estoppel Bars Millipore’s Doctrine of Equivalents Arguments] The district court should have proceeded under the presumption that prosecution history estoppel applies [because, at the time of prosecution, the patentee amended claims to alter the scope in response to an Office Action. The amendment including both deletions and additions to the claim scope.].
Id. at *12 (text added).
 
 
 
 
 

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