04/03/2015
Category: Civil Procedure  
 
 
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor 
 
TitleVersata Soft., Inc. v. Callidus Soft., No. 2014-1468 (Fed. Cir. Feb. 27, 2015).
Issue[The Fed. Cir. issued opinion on appeal, but joint petition to dismiss case submitted to the district court was not presented to CAFC until after opinion on underlying appeal issued] Due to the unique timing and sequence of events, we stayed issuance of the mandate and directed the parties to respond whether the circumstances require that we vacate our prior opinion.
Versata Soft., Inc., at *2 (text added).
HoldingBecause the parties’ voluntary and unconditional dismissal mooted the appeal before the release of our prior opinion, we vacate the opinion and dismiss the appeal.
Id. at *2.
 
 
Editor Note
This case vacates a previous CAFC precedential opinion issued on the merits of the case, and prior to the controversy being settled. Previous opinion available here.
 
 
 
 
 
03/25/2015
Category: Civil Procedure  
 
 
 
By: Roy Rabindranath, Contributor
 
TitleABB Turbo Systems AG v. TurboUSA (Fed. Circ., Dec. 17, 2014).
Issue[…] the only issue we need to address is whether the district court erred in dismissing the trade-secret claim against TurboUSA and Willem Franken.
ABB Turbo, at * 6 (text added).
HoldingWe reverse [the district court’s ruling dismissing the trade-secret claim against the defendants], concluding that the district court relied on judgments about the merits that go beyond what is authorized at the complaint stage. We remand for further proceedings.
Id. at *2 (text added).
 
 
02/28/2015
Category: Civil Procedure 
 
 
 
By: Christian Hannon, Contributor 
 
TitleMemorylink v. Motorola Solutions, No. 2014-1186 (Fed. Cir. Dec. 5, 2014 ).
IssueMemorylink Corp. (“Memorylink”) appeals from the decisions of the United States District Court for the Northern District of Illinois (i) granting summary judgment in favor of Motorola Solutions, Inc. and Motorola Mobility, Inc. (collectively, “Motorola”) on the contract [] claims, [...] and (ii) dismissing various tort claims as barred by the statute of limitations [...].
Memorylink at *2.
HoldingBecause we conclude that the district court did not err in granting summary judgment or in dismissing the tort claims, we affirm.
Id.
 
02/20/2015
Category: Civil Procedure  
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor 
 
TitleNeurorepair, Inc. v. The Nath Law Group, No. 2013-1073 (Fed Cir. Jan. 15, 2015).
IssueThe question before this court is whether a California state court malpractice case involving patent law representation was properly removed to a federal court.
Neurorepair, Inc., at *2.
HoldingBased on Gunn v. Minton, this court vacates and remands the district court’s judgments with instructions to remand the case to California state court [because: A. NeuroRepair’s suit would not “necessarily raise” issues of patent law; B. At least one patent law issue is actually disputed; C. The patent issue in NeuroRepair’s suit is not “substantial”; and D. if cases such as NeuroRepair’s were heard in federal court, it would disrupt the federal-state balance].
Id. at *2 (text added).
 
 
02/03/2015
Category: Civil Procedure 
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor  
 
TitleFleming v. Escort Inc., 2014-1331, -1371 (Fed. Cir. Dec. 24, 2014).
Issues
1. Fleming’s first contention on appeal [...] is that Escort’s evidence in support of invalidity was insufficiently specific to support the verdict.
Fleming, at *6.
2. Fleming also challenges the proof of Orr’s prior invention by invoking the principle that “oral testimony by an alleged inventor asserting priority over a patentee’s rights ... must be supported by some type of corroborating evidence.”
Id. at *8.
3. Fleming’s final challenge is that, even if Orr had priority of invention by virtue of his activities through 1996, he lost priority under 35 U.S.C. § 102(g)(2)’s disqualification of prior inventions that have been “abandoned, suppressed, or concealed.”
Id. at *10.
Holdings
1. We conclude that there was sufficiently specific factual support for the invalidity determinations [and because broad claims do not require extensive testimony and expert’s testimony on radar communication was adequate in view of the scope of the claims].
Id. at *6 (text added).
2. Fleming is correct that none of the corroborating evidence constitutes definitive proof of Orr’s account or discloses each claim limitation as written. But the corroboration requirement has never been so demanding. [...] It is a flexible, rule-of- reason demand for independent evidence that, as a whole, makes credible the testimony of the purported prior inventor with regard to conception and reduction to practice of the invention as claimed. [...]
Id. at *10 (internal citations omitted).
3. In this case, there is no evidence of any active efforts to suppress or conceal (because during the entire period between conception and filing, the inventor was either actively improving the invention, or engaged in another project after bankruptcy of his firm.).
Id. at *11 (text added).


12/17/2014
Category: Civil Procedure
 
 
 
By: John Kirkpatrick, Contributor 
 
TitleAnticancer, Inc. v. Pfizer, Inc., No. 2013-1056 (Fed. Cir. Oct. 20, 2014).
Issues[The district court's action, in requiring Anticancer to pay defendants' attorney fees, in order for AntiCancer to supplement its Preliminary Infringement Contentions,] was [an unwarranted] sanction, [...] and that the summary judgment based on the [fee-shifting] was improper.
Anticancer, Inc., at *6 (text added).
HoldingWhen a complaint meets the standards of the Federal Rules, and there has been no reasonable opportunity for discovery and evidentiary development of the issues, it is rarely appropriate to summarily decide the merits against the complainant. We need not intrude upon the district court’s authority to require supplementation of the Preliminary Infringement Contentions when such supplementation may assist the procedures of trial. However, exercise of a court’s inherent authority to levy a sanction as a condition of supplementing the Contentions requires conduct that “constituted or was tantamount to bad faith.”
Id. at *27.

 
12/03/2014
Category: Civil Procedure 
 
 
 
By: Christian Hannon, Contributor  
 
TitleJang v. Boston Scientific Corp., No. 2014-134 (Fed. Cir. Sept. 16, 2014).
IssueBoston Scientific Corporation and Scimed Life Systems, Inc. petition for permission to appeal an order of the United States District Court for the Central District of California that denied summary judgment.
Jang at *2.
Holding[W]e conclude that the limited circumstances under which an interlocutory appeal might be
permitted are not met in this case.
Id. at *9.
 
11/27/2014
Category: Civil Procedure 
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor  
 
Titlee.Digital Corp. v. Futurewei Tech., Inc., No. 2014-1019, -1242, -1243 (Fed. Cir. Nov. 19, 2014).
Issues
[1: Collateral Estoppel] Based on the Colorado Court’s previous construction, the defendants moved to apply collateral estoppel to the construction of the sole memory limitation in the ’774 and ’108 patents. The district court granted the motions and adopted the Colorado Court’s construction. The court reasoned that the ’774 patent reexamination never addressed the sole memory limitation, and further held that the ’108 and ’774 patents are “closely related.”
e.Digital Corp., at *4.
[2: Conversion of Partial Judgment to Final Judgment] e.Digital stipulated to non-final partial judgment of non-infringement with Pantech, GoPro, and Apple, who moved to stay their respective cases pending the Huawei appeal. Apple then moved to convert its judgment to a final judgment, and GoPro, but not Pan- tech, joined the motion.
Id. at *4-5.
Holdings
[1: Collateral Estoppel] We hold that the district court correctly applied collateral estoppel to the ’774 patent because reexamined claim 33 recites the sole memory limitation identical to claims 1 and 19, and because the ’774 patent reexamination never addressed that limitation or the presence of RAM.
Id. at *5.
[2: Conversion of Partial Judgment to Final Judgment] We also hold that the court did not abuse its discretion when it converted a stipulated partial judgment into a final judgment pursuant to Fed. R. Civ. P. 54(b).
Id. at *3 (text added).
 
 
11/24/2014
 
Category: Civil Procedure 
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor 
 
TitleVersata Soft., Inc. v. Callidus Soft., Inc., No. 2014-1468 (Fed. Cir. Nov. 20, 2014).
IssueThe district court considered each factor [for granting a stay pending an AIA CBM post-grant review] and concluded that “[d]espite the presence of Congress’ thumb on the scales of justice,” the balance of factors did not favor a stay [because: (A) a stay in favor of CBM would not simplify issues; (B)the trial date is scheduled within months of the PTAB decision; (C) the motion to dismiss/transfer was an improper tactical advantage; and (D) motion to dismiss/transfer increased the burden of litigation.
Versata Soft., Inc., at *5 (text added).
Holding[T]he district court’s order denying a stay pending the PTAB’s review must be reversed [because: (A) a stay may be warranted even when a CBM proceeding does not address all asserted patents, claims, or invalidity defenses; (B) the PTAB decision is schedule to issue months BEFORE the scheduled trial date and there is no articulation of any critical process prior to the scheduled trial date; (C) the district court did not article why the motion to dismiss is an improper tactic; and (D) the stay will reduce the future burdens of litigation.
Id. at *5 (text added).
 
10/23/2014
Category: Civil Procedure 
 
 
 
 By: Eric Paul Smith, Contributor
 
TitleMformation Techs., Inc. v. Research in Motion Ltd., Nos. 2012-1679, 2013-1123 (Fed. Cir. Aug. 22, 2014).
Issues
[1] Whether "Mformation waived its right to argue that the district court changed its claim construction post-verdict . . . ."
Mformation Techs., Inc., at *7.
[2] Whether "the district court impermissibly added an order-of-steps claim requirement postverdict in its JMOL opinion . . . ."
Id. at *9.
[3] "[W]hether claim 1 of the '917 patent requires that a connection be completely established before transmission."
Id. at *12.
[4] Whether "BlackBerry is . . . entitled to JMOL even if an order-of-steps requirement is read into the claims."
Id. at *15.
Holdings
[1] "Mformation did not waive its right to challenge whether the district court altered its claim construct post-verdict . . . ."
Id. at *9.
[2] "[T]he district court at most clarified its previous construction that was already present in the jury instructions."
Id. at *11.
[3] "[C]laim 1 requires that a connection be established before transmission. . . . [T]he separate sub-step for establishing a connection would become 'superfluous' if we concluded that a connection did not have to be established (completed) before transmission."
Id. at *14.
[4] "[W]e affirm the district court's grant of JMOL of no infringement."
Id. at *16.
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.
 
 
 
10/06/2014
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).
 
 
09/29/2014
Category: Civil Procedure 
 
 
 
 By: Samuel Dillon, Contributor
 
TitleCEATS, Inc. v. Continental Airlines, Inc., No. 2013-1529 (Fed. Cir. June 24, 2014).
Issues[Whether the district court abused its discretion in] finding that [(1)] the mediator had no duty to disclose his dealings with one of the firms involved in the litigation [such that (2)] relief from judgment under Rule 60(b) was not warranted.
CEATS at *3 (text added).
Holdings
[1] We find that the district court erred in finding that a reasonably objective person would not have wanted to consider circumstances surrounding the Karlseng litigation when deciding whether to object to Faulkner’s appointment as mediator in this case. . . . In this case, at the same time Faulkner served as the court-appointed mediator, the Faulkner-Johnson-Fish relationship was directly at issue in a state appellate court. Importantly, this meant that Fish, as a firm, was actively defending Faulkner’s personal disclosure decisions while he was mediating this case. . . . Furthermore, the Texas appeals court’s decision . . . found that the Faulkner-Johnson-Fish relationship was a disqualifying, social and business relationship, which “could reasonably be seen as raising a question about the mediator’s impartiality” while this case was ongoing.
Id. at *14-15.
[2] We agree with Continental that CEATS has failed to show a meaningful risk of injustice in this case . . . , we do not believe there is a sufficient threat of injustice in other cases to justify the extraordinary step of setting aside a jury verdict . . . , [and] we do not believe that refusing to grant the relief CEATS seeks will undermine public confidence in the judicial process as a whole. . . . [W]e hold that the district court correctly denied CEATS relief from judgment under Rule 60(b)(6), despite what we deem to be a failure of the mediator’s disclosure obligations.
Id. at *18-20.
 
 
 
 
 
09/23/2014
Category: Civil Procedure 
 
 
 
 By: Karthik Subramanian, Contributor 
 
TitleMedism Ltd. v. Bestmed, LLC, No. 2013-1451 (Fed. Cir. July 14, 2014).
Issue“This appeal concerns Medisim’s challenges to the district court’s grant of JMOL on anticipation and unjust enrichment. Medisim argues that BestMed forfeited its right to JMOL under Rule 50(b) for both claims when it failed to properly move for JMOL under Rule 50(a) at the close of evidence. Medisim also challenges the district court’s grant of JMOL on anticipation and unjust enrichment on the merits. Finally, Medisim argues that the district court abused its discretion by granting a conditional new trial on anticipation. We address each of Medisim’s challenges in turn.”
Medisim at *6.
Holding“Because BestMed failed to preserve its right to JMOL on anticipation under Federal Rule of Civil Procedure 50, we vacate the district court’s grant of JMOL on that claim. However, we affirm the district court’s grant of JMOL on Medisim’s unjust enrichment claim and its conditional grant of a new trial on anticipation. We remand this case for further proceedings.”
Medisim at *2.
 
 
09/19/2014
Category: Civil Procedure
 
 
 By: Jesus Hernandez, Blog Editor/Contributor 
 
 
TitleSCA Hygene Prod. Aktiebolag v. First Quality Baby Prods., LLC, No. 2013-1564 (Fed. Cir. Sept. 17, 2014).
Issues
[1: Laches] SCA argues that the reexamination proceedings preclude application of the laches presumptions in this case because the reexamination period should be excluded from the total delay. The district court rejected that theory. In its view, because SCA filed suit more than six years after first learning of First Quality’s allegedly infringing activities, the laches presumptions applied.
SCA Hygene Prod. Aktiebolag at *9.
[2: Equitable Estoppel] The district court ruled that “SCA unquestionably misled First Quality though [sic] its 2003 letter and subsequent inaction.” [...] The court focused on SCA’s failure to respond to First Quality’s letter addressing the ’646 patent and on SCA’s decision to write First Quality regarding different products and a different patent.
Id. at *16 (internal citations omitted).
Holdings
[1: Laches] Because more than six years elapsed between the time SCA first learned of First Quality’s allegedly infringing activities and the time SCA filed infringement claims directed to those activities[, during which SCA monitored the infringing activities of First Quality], the district court properly found that the laches presumptions applied.
Id. at *9 (text added).
[2: Equitable Estoppel] SCA almost immediately filed a request for ex parte reexamination of the ’646 patent to address the issues raised by First Quality—an action that could reasonably be viewed as inconsistent with SCA’s alleged acquiescence. Thus, record evidence supports a version of events that differs from First Quality’s. A reasonable juror could conclude that First Quality raised an issue SCA had overlooked and that SCA, rather than acquiescing, took immediate action.
Id. at *19.


09/10/2014
 Category: Civil Procedure
 
 
 By: John Kirkpatrick, Contributor 
 
TitleMicrosoft Corp. v. Motorola, Inc., No. 2014-1089 (Fed. Cir. May 5, 2014) (non-precedential).
Issue[Does the Federal Circuit have jurisdiction under 28 U.S.C. § 1338(a)] based on the district court’s consolidation of Microsoft’s contract action with its patent infringement action[?]
Microsoft Corp. at *6 (text added).
HoldingThe patent infringement complaint is not part of this appeal, not having been decided by the district court. Under such circumstances, it is plausible to conclude, as the Ninth Circuit seems to have done here, that the act of “consolidation d[id] not merge the suits into a single cause, or change the rights of the parties.” Id. at *6 (internal citations removed).
 
 
08/12/2014
Category: Civil Procedure   
 
 
 
 By: John Kirkpatrick, Contributor
 
TitleAbbVie Deutschland GMBH & Co. v. Janssen Biotech, Inc., No. 2013-1338, 1346 (Fed. Cir. July 1, 2014).
Issues
[1] AbbVie argues that Centocor’s [(Jannsen's)] invalidity defenses as to [U.S. Patent 6,914,128] should not have been tried to the jury because of the preclusive effect of the [Board of Patent Appeals and Interferences'] prior judgment.
AbbVie at *14 (text added).
[2] [W]hether the ['128 patent] sufficiently otherwise describe[s] representative species to support the entire genus.
Id. at *22-23 (text added).
[3a] [T]hat the district court’s exclusion of the interference file history from evidence allowed Centocor to relitigate invalidity [for lack of written description support] from a clean slate.
Id. at *28 (text added).
[3b] [T]hat the district court erred in excluding expert testimony on the detailed reasoning of the PTO on the issues of written description, enablement, and obviousness during ex parte prosecution.
Id. at *28 (text added).
[3c] [T]hat the prejudicial effect of the contested evidentiary rulings was exacerbated by the jury instruction that new information presented at trial that was not considered by the PTO would make it easier for Centocor to carry its burden of proving invalidity by clear and convincing evidence.
Id. at *30 (text added).
Holdings
[1] Because a district court can make a de novo determination of facts upon the submission of new evidence, a Board decision that is reviewed under [35 U.S.C. § 146 (2006)] is not a “binding final judgment” to preclude a losing party from litigating the same or related issues in a parallel proceeding.
AbbVie at *16-17 (text added).
[2] [M]erely drawing a fence around a perceived genus is not a description of the genus. One needs to show that one has truly invented the genus, i.e., that one has conceived and described sufficient representative species encompassing the breadth of the genus.
Id. at *23 (text added).
[3a] [W]e need only address whether the evidentiary rulings affected AbbVie’s substantive rights concerning [the verdict for lack of written description support]. The evidence of the interference or other proffered evidence concerning obviousness is of little probative value to the written description determination.
Id. at *28 (text added).
[3b] In view of the record as a whole, including the substantial evidence of structural differences between Stelara [(the alleged infringing drug patented by Centocor)] and the antibodies [of AbbVie's patents] and the fact that the jury considered the number of structurally similar antibodies disclosed in AbbVie’s patents, [...] the district court did not abuse its discretion in excluding [testimony that the PTO concluded that the written description requirement was met.]
Id. at *30 (text added, internal citations removed).
[3c] “[I]f the PTO did not have all material facts before it, its considered judgment may lose significant force” and that “the challenger’s burden to persuade the jury of its invalidity defense by clear and convincing evidence may be easier to sustain.” [...] "[T]he jury may be instructed to evaluate whether the evidence before it is materially new, and if so, to consider that fact when determining whether an invalidity defense has been proved by clear and convincing evidence."
Id. at *32 (text added, quoting Microsoft Corp. v. i4i Ltd. Partnership, 131 S.Ct. 2238, 2251 (2011)).
 
 
 
08/08/2014
Category: Civil Procedure   
 
 
 
 By: Christian Hannon, Contributor 
 
TitleIn re Nintendo of Am., No. 2014-132 (Fed. Cir. June 24, 2014).
Issue[Did] [t]he distrcit court [correctly] den[y] the motion of Nintendo and the [eleven retailer defendants (the "Retailers")] to sever and stay the claims against the Retailers, and transfer the separated action against Nintendo to the Western District of Washington.
In re Nintendo of Am., at *2 (text added).
HoldingThe benefits of trying the case against Nintendo in the Western District of Washington are indisputable. We conclude that the district court should have exercised its discretion to grant the petition.
Id. at *6. 
 
 
08/06/2014

Category: Civil Procedure  

  

 By: Eric Paul Smith, Contributor

TitleMicrosoft Corp. v. DataTern, Inc., No. 2013-1184 (Fed. Cir. May 5, 2014).
Issue
[1] Whether "the district court had jurisdiction over . . . Microsoft's and SAP's declaratory judgment challenges to [U.S. Patent Nos. 5,937,402 and 6,101,502]."
Microsoft Corp., at *3.
[2] Whether the district court properly construed "the scope of the . . . summary judgment grant to SAP."
Id. at *3.
[3] Whether "the district court's grant of summary judgment that certain [Microsoft] and [SAP] products do not infringe [the '402 and '502 patents]" was proper.
Id. at *2-3.
Holding
"[T]he district court had jurisdiction over both Microsoft and SAP's declaratory judgment challenges to the '502 patent and over SAP's challenge to the '402 patent, but not over Microsoft's challenge to [the] '402 patent."
Id. at *3.
"[T]he district court erred in granting summary judgement of noninfringement to SAP for products other than BusinessObjects."
Id. at *21.
"[W]e affirm summary judgment of SAP's noninfringement of the '502 patent," id. at *18; "we affirm the district court's grant of summary judgment of noninfringement of the '502 patent to Microsoft," id. at *19; "we deny Microsoft’s declaratory judgment challenge to the ’402 patent on jurisdictional grounds and . . . our grant of summary judgment of noninfringement to SAP with regard to the ’402 patent does not require consideration of any claim construction issues, [therefore] we do not reach any of the ’402 patent claim construction issues in the Microsoft appeal," id. at 23 n.8.

 

 

07/29/2014
Category: Civil Procedure   
 
 
 
 By: Abby Lin, Contributor 
 
CaseSource Vagabond Sys. Ltd. v. Hydrapak, Inc., No. 2013-1270, -1387 (Fed. Cir. June 5, 2014).
IssuesSource Vagabond Systems, Ltd., Pearl Cohen Zedek Latzer LLP, Guy Yonay, and Clyde Shuman (collectively, “Source” or “Appellants”) appeal the decision of the district court sanctioning Source under Federal Rule of Civil Procedure 11 (“Rule 11”) for bringing a frivolous patent infringement suit against Hydrapak, Inc. (“Hydrapak”) [based on [1] an unsupported proposed claim construction and [2] a literal infringement allegation lacking any evidentiary support.]
Source Vagabond Sys. Ltd. at *2 (text added).
Holdings
[1] Source was required to “perform an objective evaluation of the claim terms” to satisfy its obligation to conduct a reasonable pre-suit evaluation. [...] By proposing a definition that ignores the canons of claim construction, Source did not meet that standard. The district court did not abuse its discretion in imposing Rule 11(b)(2) sanctions based upon Source’s frivolous claim construction arguments.
Id. at *15-16 (internal citations omitted).
[2] Since Source’s claim construction is […] inadequate, and, indeed, the literal infringement claim “lacked evidentiary support no matter how the claim was construed,” […], the district court did not abuse its discretion in imposing Rule 11 sanctions.
Id. at *17.
 
07/25/2014
Category: 103 
 
 
 
 By: Christian Hannon, Contributor 
 
TitleSTC.UNM v. Intel Corp., No. 2013-1241 (Fed. Cir. June 6, 2014).
Issue[Whether] Sandia can[] be involuntarily joined under Federal Rule of Civil Procedure 19 [to allow STC to assert the '998 patent against Intel].
STC.UNM at *2 (text added).
Holding[T]his court holds that the right of a patent co-owner to impede an infringement suit brought by another co-owner is a substantive right that trumps the procedural rule for involuntary joinder under Rule 19(a).
Id. at *11.
 
07/21/2014
Category: Civil Procedure    
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor 
 
TitleArlington Ind., Inc. v. Bridgeport Fittings, Inc., No. 2013-1357 (Fed. Cir. July 17, 2014).
IssueBridgeport argues that we have jurisdiction over its appeal [for contempt of an injunction] under both § 1292(c)(1) and § 1292(c)(2).
Arlington Ind., Inc. at *5.
HoldingBecause the district court’s order simply interpreted the 2004 Injunction and is not an otherwise final, appealable judgment, we dismiss the appeal for lack of jurisdiction.
Id. at *5.
 
07/12/2014
Category: Civil Procedure   
 
 
 
  By: John Kirkpatrick, Contributor
 
TitleKrauser v. BioHorizons, Inc., No. 2013-1461 (Fed. Cir. June 4, 2014).
Issues
[1] [Does] Krauser’s complaint [raise] a substantial patent law issue [that requires the Federal Circuit to accept a transfer from a sister circuit, according to the following theories?]
Krauser at *7 (text added).
[1a] Krauser’s original complaint contained a patent law claim of inventorship.
Id. (text added).
[1b] [T]he well-pleaded complaint rule requires [the Federal Circuit] to consider the issue of patent law inventorship even when adjudicating Krauser’s claims of ownership [based on past agreements] and a quantum meruit theory.
Id. at *10 (text added).
[1c] [E]ven if Krauser’s [ownership] claims are based in state law, there is federal jurisdiction because Krauser seeks remedies that might be preempted by federal patent law.
Id. at *11 (text added).
[2] [E]ven if [the above theories are] ultimately incorrect, [the theories] are nonetheless “plausible” and require [the Federal Circuit] to follow the law of the case of [the] sister circuit.
Id. at *8 (text added).
Holdings
[1a] We have repeatedly held that an amendment to the complaint that dismisses the patent law claims without prejudice, as here, deprives this court of jurisdiction over the case. Krauser at *10 (internal citation removed).
[1b] The resolution of the inventorship question is neither “necessary” nor “substantial” to the case.
Id. at *11.
[1c] [In an analogous situation, we found no] federal jurisdiction where plaintiff “[sought] remedies that might be preempted by federal patent law” because federal preemption was only a defense to the plaintiff’s suit.
Id. at *12 (text added, internal citation removed).
[2] [The Supreme Court] held that a transferee court would “not exceed its power in revisiting the jurisdictional issue, and once it conclude[s] that the prior decision was ‘clearly wrong’ it [is] obliged to decline jurisdiction.”
Id. at *8 (text added, internal citation removed).
 
 
 
07/02/2014
Category: Civil Procedure   
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor 
 
TitleMadstad Eng'g., Inc. v. U.S. Patent and Trademark Office, No. 2013-1511, 1512 (Fed. Cir. July 1, 2014).
Issues
[1: Jurisdiction] Because MadStad does not assert a claim under the AIA and, instead asserts a claim directly under the constitution challenging the AIA’s constitutionality, we must determine whether MadStad’s claims “arise under” an Act of Congress relating to patents as that jurisdictional principle has been interpreted by the United States Supreme Court.
Madstad Eng., Inc. at *5.
[2: Standing] MadStad contends that the district court’s reliance on Clapper was misplaced because the threats of harm upon which it relies are far less speculative than those asserted in Clapper. It also asserts that it faces a sufficient “substantial risk” of suffering the injuries it identifies to satisfy Article III standing under traditional standing principles which the Clapper Court did not expressly reject.
Id. at *12.
Holdings
[1: Jurisdiction] [W]e find, as we did impliedly in Patlex, that MadStad’s claims and this appeal “arise under” an Act of Congress relating to patents within the meaning of both 28 U.S.C. §§ 1338 and 1295(a)(1) [because assessing the use and scope of the term ‘inventor’ in the Constitution and the AIA is within the CAFC’s domain] and that we, thus, may properly exercise jurisdiction over this appeal.
Id. at *8-9 (text added).
[2: Standing] [W]e hold that the district court did not err by relying on Clapper or concluding that MadStad lacked standing to assert the constitutional claims in its complaint [because there is no evidence of a likelihood that any of the alleged harms are specifically attributable to the AIA, the alleged harms including: computer hacking, time and effort to file additional patent applications, competitive disadvantage, of lost business].
Id. at *27 (text added).
 
 
 
 
 
05/19/2014
Category: Civil Procedure  
 
 
 
By: Eric Paul Smith, Contributor   
 
TitleIn re Toyota Motor Corp., No. 2014-113 (Fed. Cir. Apr. 3, 2014).
IssueWhether the Eastern District of Texas's conclusion that "the convenience factors do not indicate that transfer to the Eastern District of Michigan would be clearly more convenient" was an abuse of discretion.
In re Toyota at *3; see id. at *5.
Holding"With nothing on the transferor-forum side of the ledger, the analysis shows that the transferee forum is clearly more convenient. In these circumstances, the district court's no-transfer conclusion was a clear abuse of discretion."
Id. at *5 (citations, internal quotation marks, and emphasis omitted).
 
05/07/2014
Category: Civil Procedure  
 
 
 
By: Christian Hannon, Contributor  
 
TitleNissim Corp. v. Clearplay, Inc., 2013-1429 (Fed. Cir. Mar. 14,2014) (non-precedential).
Issue[Can] a party can waive review of [a] discretionary [non-jurisdictional] decision[?] [...] [Are] interlocutory rulings [...] the basis for collateral estoppel[?]
Nissim at *3-4.
Holding[Appeallate courts] may only review final judgments. Because Nissim explicitly waived its right to challenge the only final judgment properly on appeal [since interlocutory rulings are not final judgments], we dismiss the appeal for lack of jurisdiction.
Id. at *2 (text added).
 
05/07/2014
Category: Civil Procedure  
 
 
 
By: Eric Paul Smith, Contributor 
 
TitleMedtronic Inc. v. Boston Scientific Corp., Nos. 2011-1313, 1372 (Fed. Cir. Mar. 11, 2014) (non-precedential).
Issues[1] With respect to literal infringement the issue is . . . whether the district court abused its discretion in concluding that Berger’s report lacked foundation sufficient to deem him a reliable infringement expert." Medtronic at *3. [2] "With respect to infringement under the doctrine of equivalents, [the issue is again whether] Berger's opinion was unreliable." Id. at *4.
Holding
[1] "Concluding that Dr. Berger was an unreliable infringement expert on this record was not an abuse of discretion."
Id. at *4.
[2] "Having excluded Dr. Berger's opinion, the district court was correct to include that MFV failed to prove infringement of the doctrine of equivalents by a preponderance of the evidence"
Id. at *4-5.
 
 
Contributor Note
This case is on remand from the SCOTUS. The SCOTUS opinion is available here.
 
 
 
04/08/2014
Category: Civil Procedure 
 
 
 
 
 By: Jesus Hernandez, Blog Editor/Contributor 
 
TitleIn re Teles AG Informatinstechnologien, No. 2012-1297 (Fed. Cir. April 4, 2014).
Issues
[1] While we have jurisdiction to review the district court’s dismissal pursuant to § 1295(a)(1), the question is whether we also have jurisdiction to review the Board’s action [if the district court lacked jurisdiction and improperly dismissed the case].
In re Teles AG Informatinstechnologien at *3 (text added).
[2] In 1999, Congress amended § 145 and related provisions [authorizing patent applicants to challenge the Board’s adverse examination decisions in district court instead of directly appealing to the CAFC]. This case raises the question of whether § 145 civil actions remained available to patent owners seeking to challenge adverse reexamination decisions after Congress amended the statute in 1999 and before 2011 [AIA], when Congress amended the statute to clarify that § 145 review was not available to patent owners.
Id. at *3 (text added).
Holdings
[1] [Because of the different language in § 145 concerning appeals by patent owners versus patent applicants,] [w]e […] hold that the 1999 amendments eliminated the right of patent owners to secure review under § 145, and affirm that the district court lacked jurisdiction over the § 145 action.
Id. at *14 (text added).
[2] [T]he statutory deadline for filing an appeal to this court had passed, and no evidence suggested bad faith in Teles’ filing with the district court. Under these circumstances, it was in the interest of justice to transfer the case pursuant to §1631, and we “treat [Teles’] petition for review, which was timely filed with the district court, as if it had been properly transferred” to this court rather than dismissed.
Id. at *5.
 
 
 
04/01/2014
Category: Civil Procedure 
 
 
 
 By: Jesus Hernandez, Blog Editor/Contributor 
 
TitleSenju Pharma. Co. v. Apotex Inc., No. 2013-1027 (Fed. Cir. March 31, 2014).
IssueThis is a patent case calling on us to consider the application of claim preclusion doctrine (res judicata) to a second suit on the same patent based on amended claims resulting from a reexamination of the patent.
Senju Pharma. Co. at *2.
HoldingWe hold that, in the absence of a clear showing that such a material difference in fact exists in a disputed patentable reexamination claim, it can be assumed that the reexamined claims will be a subset of the original claims and that no new cause of action will be created. This applies whether the judgment in the original suit was based on invalidity of the claims or simply on non-infringement. We conclude […] that the claims in this case that emerged from reexamination do not create a new cause of action that did not exist before.
Id. at *15.
 
 
 
 
03/26/2014
Category: Civil Procedure 
 
 
 
 By: Jesus Hernandez, Blog Editor/Contributor 
 
TitleStoneEagle Services, LLC v. Gillman, No. 2013-1248 (Fed. Cir. March 26, 2014).
Issue[Did] the district court [lack] subject matter jurisdiction over the lawsuit because there was no actual controversy regarding StoneEagle’s inventorship claim—the sole claim in StoneEagle’s original complaint arising under federal law [?]
StoneEagle Services, LLC at *4.
HoldingAs StoneEagle’s only factual allegations concerning inventorship are that Gillman authored the patent application, the complaint, viewed in its totality, has not alleged a controversy over inventorship that satisfies Article III. [...] Additionally, StoneEagle did not allege any other facts existing at the time this com- plaint was filed which would give rise to a federal ques- tion or other cause of action properly before a federal court. […] For these reasons, the district court lacked jurisdiction over this case. […]
Id. at *7 (internal citations omitted).
 
 
 
 
 
03/25/2014
Category: Civil Procedure  
 
 
 
 By: Jesus Hernandez, Blog Editor/Contributor
 
TitleBrain Life, LLC v. Elekta Inc., No. 2013-1239 (Fed. Cir. March 24, 2014).
Issues
[1: Claim Preclusion] First, Brain Life contends that, because the asserted claim limitations in this suit differ from the asserted claims in the MIDCO suit, claim preclusion is inapplicable.
Brain Life, LLC at *9.
[2: Claim Preclusion] Next, Brain Life contends that, because the trial court in the MIDCO Litigation dismissed the method claims without prejudice, Supreme Court precedent counsels that those claims are not subject to res judicata. Brain Life contends that, when a claim is dismissed without prejudice, a party can sue again on the same claim, against the same defendant, in the same court.
Id. at *9-10.
[3: Issue Preclusion and Kessler Doctrine] Finally, Brain Life argues that Elekta’s ERGO++ product did not exist until after the first suit reached final judgment. Because that product did not exist, Brain Life contends that it could not have been accused in the MIDCO Litigation and that neither claim nor issue preclusion could apply to that product.
Id. at *10.
Holdings
[1: Claim Preclusion] [The] principles [of claim preclusion] bar the assertion of infringement of either the method or system claims to the extent the alleged acts of infringement predate the final judgment in the MIDCO Litigation [but not to acts of infringement after the MIDCO litigation].
Id. at *11 (text added).
[2: Claim Preclusion] [T]o the extent Brain Life’s allegations of infringement are directed to products created and, most importantly, acts of alleged infringement occurring after entry of the final judgment in the MIDCO Litigation, those claims are not barred by the doctrine of claim preclusion [because under the principles of res judicata, a party could not assert claims for any conduct that has not taken place yet].
Id. at *13 (text added).
[3: Issue Preclusion and Kessler Doctrine] [Because] Elekta only acquired the ERGO++ product after the MIDCO Litigation was finalized [...], the ERGO++ has never acquired the status of a noninfringing device in connection with the ’684 patent. [Therefore] neither claim preclusion, issue preclusion, nor the Kessler Doctrine stand as a bar to Brain Life’s current allegations of infringement regarding the ERGO++.
Id. at *22 (text added).
 
 
 
03/23/2014
Category: Civil Procedure   
 
 
 
By: Samuel Dillon, Contributor  
 
TitleHemphill v. Johnson & Johnson, No. 2013-1503 (Fed. Cir. Jan. 14, 2014) (non-precedential).
IssuesAllegra Hemphill appeals from two decisions of the United States District Court for the District of Columbia. [1] The district court denied Hemphill’s Motion for Relief from Judgment pursuant to Rule 60(b), in which she sought to have the court set aside its January 2013 order dismissing Hemphill’s complaint for failure to state a claim. [2] The district court also granted defendant Johnson & Johnson’s motion for sanctions under Rule 11(b), barring Hemphill from filing future patent infringement actions against Johnson & Johnson without first obtaining leave of the district court. Hemphill at *2 (text added).
Holding[1] Hemphill has not shown any grounds for relief under Rule 60(b) [because their patent expired more than six years ago], and we affirm the district court’s decision. . . . [2] We have reviewed the record and find that the district court’s analysis complies with [the guidelines for anti-filing injunctions], particularly in light of Hemphill’s multiple unmeritorious filings against J&J and others. Hemphill at *4 (text added).
 
 
 
03/12/2014
Category: Civil Procedure  
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor 
 
TitleDanisco US Inc. v. Novozymes A/S, No. 2013-1214 (March 11, 2014).
IssueThe district court […] dismissed Danisco’s declaratory judgment claims [for lack of subject matter jurisdiction], holding as a matter of law that the facts as alleged did not create a justiciable Article III case or controversy as to Counts 1 and 2. […] The court acknowledged that Novozymes’s ’573 patent presented a substantial risk to Danisco, but found that a justiciable controversy did not exist because Danisco had challenged Novozymes’s ’573 patent on the day that it issued, and thus that Danisco’s action “was filed prior to the time Novozymes took, or even could have taken, any affirmative action to enforce its patent rights.” […]
Danisco US Inc. at *5 (internal citations omitted, text added).
Holding[B]ecause a totality of the circumstances shows that Novozymes’s posturing [(e.g., litigious conduct since 2001)] put Danisco in a position of either pursuing arguably illegal behavior, i.e., infringement, or abandoning that which it claims a right to do, i.e., make and sell the RSL products that are the embodiments of its ’240 patent, we conclude that the district court erred as a matter of law in dismissing Counts 1 and 2 of Danisco’s complaint for lack of subject matter jurisdiction. […]
Id. at *12 (internal citations omitted).
 
03/09/2014

Category: Civil Procedure 

 

By: Jesus Hernandez, Blog Editor/Contributor 

TitleIn re Apple, Misc. No. 156 (Feb. 27, 2014).
IssueThe question before the court on mandamus is whether there was such a “‘clear’ abuse of discretion” that refusing transfer would produce a “patently erroneous result[,]” [when the requesting party vaguely identifies witnesses and sources of information].
In re Apple at *3 (text added, internal citations omitted).
HoldingBased on the sparse, and general, record before the district court[, including vague identification of witnesses and sources of information], we cannot say “that the facts and circumstances are without any basis for a judgment of discretion.” […]
Id. at *5 (text added, internal citations omitted).

 

03/09/2014
Category: Civil Procedure 
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor 
 
TitleIn re Barnes & Noble, Misc. No. 162 (Feb. 27, 2014).
IssueBarnes & Noble argued that only Hoyle [B.E. Tech. founder, the plaintiff, and inventor of patent at issue] is located in the Western District of Tennessee, whereas many of the relevant Barnes & Noble witnesses reside in California[…] California is where all of its relevant evidence is located […] [and] many third party witnesses with knowledge about potential prior art are closer to the transferee venue.
In re Barnes & Noble at *2 (text added).
HoldingBarnes & Noble has failed to meet its exacting burden to demonstrate that the district court was clearly and indisputably incorrect in concluding that the case should not have been transferred to the Northern District of California [because the plaintiff B.E. Tech.’s operational presence in the original venue is as equally compelling as Barnes & Noble’s grounds for transfer, and, as such, such evidence is not grounds to reverse the district court’s findings].
Id. at *5 (text added).
 
02/21/2014
Category: Civil Procedure
 
 
By: Jesus Hernandez, Blog Editor/Contributor  
 
TitleLighting Ballast Control, LLC v. Philips. Elect. N. Amer., Corp., No. 2012-1014 (Fed. Cir. Feb. 21, 2014) (en banc).
IssueThe court en banc granted the petition filed by patentee Lighting Ballast Control, in order to reconsider the holding in Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed. Cir. 1998) (en banc) establishing the standard of appellate review of district court decisions concerning the meaning and scope of patent claims—called “claim construction.” Implementing the Supreme Court’s decision in Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996) (Markman II) [...], this court in Cybor held that patent claim construction receives de novo determination on appeal, that is, review for correctness as a matter of law.
Lighting Ballast Control, LLC at *6.
Holding[W]e apply the principles of stare decisis, and confirm the Cybor standard of de novo review of claim construction, whereby the scope of the patent grant is reviewed as a matter of law. After fifteen years of experience with Cybor, we conclude that the court should retain plenary review of claim construction [...]. The totality of experience has confirmed that Cybor is an effective implementation of Markman II, and that the criteria for departure from stare decisis are not met.
Id. at *7.
 
 
Editor Note
For further insight, check out the Audio Brief of Lighting Ballast Control v. Philips, which condenses oral arguments before the en banc CAFC into 10 minutes.
 
02/05/2014
Category: Civil Procedure 
 
 
 
By: Samuel Dillon, Contributor 
 
TitleAugust Tech. Corp. v. Camtek, LTD., No. 2012-1681, 2013-1023 (Fed. Cir. Nov. 18, 2013) (non-precedential).
Issues"On appeal, Camtek argues that the district court erred when it: (1) awarded $645,946 in sanctions for civil contempt; and (2) found that a post-trial sale constituted willful infringement." August Tech. at *8. "The threshold issue before us is whether we have jurisdiction over this appeal." Id.
Holdings
[1] Because the district court’s civil contempt order is not a final appealable order, we lack jurisdiction to consider this appeal.
August Tech. at *8.
[2] Likewise, we do not have jurisdiction to consider the court’s willfulness finding because: (1) as the prevailing party, Camtek lacks standing to appeal the court’s decision denying enhanced damages; and (2) there is no final judgment on willfulness.
Id.
 
01/30/2014
Category: Civil Procedure 
 
 
 
By: Eric Paul Smith, Contributor   
 
TitleSimpleAir, Inc. v. Microsoft Corp., No. 2:11-cv-416-JRG (E.D. Tex. Aug. 27, 2013).
IssueGoogle seeks to compel SimpleAir, Inc. ('SimpleAir') to produce four documents listed as entried 205, 206, 207, and 208 ('Withheld Documents') in SimpleAir's privilege log. Each of the Withheld Documents is correspondence involving AirMedia, Inc. ('AirMedia'), the predecessor-in-interest to SimpleAir, dated between 1998 and 1999." SimpleAir at *1 (citations omitted).
Holding"[T]he Court finds that SimpleAir's assertion of attorney-client privilege over the Withheld Documents, at the time they were created, is meritorious." Id. at *2. "[C]ontrol of a business cannot be divorced from ownership of substantially all of the business assets, even if the nature of such business changes direction over time. Control follows ownership and not the other way around. The Court is not persuaded that the transfer[s] of the Asserted Patents . . . amounted to only a mere transfer of some assets through which the privilege failed to survive. . . . AirMedia's attorney-client privilege as relates to the Withheld Documents has survived the transfers discussed above and is now properly vested in SimpleAir." Id. at *7.
 
01/22/2014
Category: Civil Procedure 
 
 
  
By: Jesus Hernandez, Blog Editor/Contributor 
 
TitleMedtronic, Inc. v. Mirowski Fam. Ventures, LLC, No. 12-1128 (Jan. 22, 2014).
IssueThis case asks us to decide whether the burden of proof shifts when the patentee is a defendant in a declaratory judgment action, and the plaintiff (the potential infringer) seeks a judgment that he does not infringe the patent.
Medtronic, Inc. at *1.
HoldingWe hold that, when a licensee seeks a declaratory judgment against a patentee to establish that there is no infringement, the burden of proving infringement remains with the patentee. We reverse the Federal Circuit’s determination to the contrary.
Id. at *1.
 
 
 
01/07/2014

Category: Post-Grant Proceedings 

 

 

 By: Jesus Hernandez, Blog Editor/Contributor

01/03/2014
Category: Civil Procedure 
 
 
 
 By: Abby Lin, Contributor 
 
TitleOrenshteyn v. Int’l. Business Machines, Corp., No. 02 Civ. 5074 (JFK), 2013 BL 295952 (S.D.N.Y. October 25, 2013).
Issues“IBM’s summary judgment motion asserts the invalidity of [2] Claims 14 and 56 of the ‘942 Patent, as well as [1] Claim 1 of the ‘569 patent. To decide the motion, the Court must determine the extent to which Plaintiff is collaterally estopped by the opinion from the Southern District of Florida affirmed by the Federal Circuit, which invalidated Claim 1 of the ‘942 Patent. If the Florida decision has preclusive effect, then any issues decided by that court cannot be relitigated here. If collateral estoppel does not apply, or if there are issues here that were not decided in Florida, then the Court must independently make a validity determination based on those outstanding issues” Orenshtyen at *10 (text added).
Holdings
[1] “[B]ecause Claim 1 of the ‘569 Patent contains no limitations that were not present in invalid Claim 1 of the ‘942 Patent, it presents no new issues to decide, and collateral estoppel bars Plaintiff’s argument.” Id. at *15.
[2] “[The ‘simultaneous connection’ limitation of Claims 14 and 56] is the only limitation not considered in the Florida ruling. [However, Plaintiff is estopped from arguing that the prior art] ‘lacks many of the other claim limitations’ of his patents, because the Florida court has already determined that those limitations (all of which were present in Claim 1 of the ‘942 Patent) were anticipated by the [] prior art.” Id. at *18 (text added).
 
12/10/2013
Category: Civil Procedure 
 
 
 
 
 By: Jesus Hernandez, Blog Editor/Contributor   
12/04/2013
Category: Civil Procedure 
 
 
 
 By: Jesus Hernandez, Blog Editor/Contributor  
 
TitleFuturewei Tech., Inc. v. Acacia Research Corp., No. 2013-1090 (Fed. Cir. Dec. 3, 2013).
Issue"[In view of co-pending litigation in Texas and California,] [t]he [Central District of California] court [i] dismissed count 11[, that Huawei was a third party beneficiary,] for failure to state a claim." Futurewei Tech., Inc. at *6 [text added]. "As to [ii] count 16, […] the court reasoned that, under Federal Rule of Civil Procedure 13(a), this count is a compulsory counterclaim to the claims in the Texas case and therefore must be brought in that case." Id. at *5. "Huawei appeals the district court’s dismissal of counts 11 and 16 of the complaint." Id., Inc. at *6.
HoldingWe affirm the dismissal of those counts, but we rely on the first-to-file rule, concluding that […] counts 11 and 16 both belong in the Eastern District of Texas [because: [i] interpreting count 11 as a declaratory judgment action, the substantive issues of that count are already being litigated in Texas; and [ii] count 16 amounts to a counterclaim that should be litigated in the same forum as overarching substantive claims].
Id. at *6 (text added).
 
11/27/2013
Category: Civil Procedure
 
 
 
By: Abby Lin, Contributor  
 
TitleIn re Nintendo Co., No. 151 (Fed. Cir. Sept. 25, 2013) (nonprecedential).
IssueJoinder/Severance: “[P]etitioners argue that UltimatePointer should not have been allowed to use Rule 18 […] to add claims involving products by other manufacturers and to use the mere presence of those claims to defeat Nintendo’s request that the retailers be severed to facilitate transfer.”
In re Nintendo, at *6.
Holding“Because we find that the district court erred in failing to first consider whether the retailer defendants should have been severed and whether transfer was appropriate prior to addressing whether the non-Nintendo claims could be joined under Rule 18, we grant the petition and remand for further proceedings.” In re Nintendo, at *12. “The fact that Rule 18 permits the joinder of certain claims does not answer the question of how those claims should be adjudicated. Again, fairness and efficiency must guide that inquiry.” Id. at *14.
 
11/21/2013
Category: Civil Procedure
 
 
 
By: John Kirkpatrick, Contributor 
 
TitleUnwired Planet LLC v. Google Inc., Case No. 3:12-CV-0504-MMD (VPC) (D. Nev. Oct. 10, 2013).
Issues
[1] "[Google argues that] the order allows Unwired to assert more patent claims than even Unwired asked to assert [...]."
Unwired Planet LLC at *4 (citation removed, text added).
[2] "With respect to reductions of prior art references, Google’s view was that limitations on its prior art defenses 'has the effect of depriving Google of viable defenses to Unwired Planet’s claims.'" Order at *2. "Google [suggests] that the court committed clear error or that the order is manifestly unjust."
Id. at *3, 4 (text added).
Holdings
[1] "[I]n attempting to navigate through the parties’ briefs and the Federal Circuit Advisory Council’s proposed order, this court erred and increased the number of Unwired’s asserted claims beyond what the parties requested and beyond what is reasonable and manageable for trial."
Id. at *6.
[2] "Google has made a persuasive argument that if the court’s order stands, and Google is limited to 40 references to respond to 40 claims just after claim construction, and to 20 references to respond to 18 claims to be asserted before trial, this will have the effect of limiting Google to one reference per claim."
Id. at *7.


11/08/2013
Category: Civil Procedure
 
 
 
By: Christian Hannon, Contributor   
 
TitleK-Tech Telecommunications, Inc. v. Time Warner Cable Inc., No. 2012-1425 (Fed. Cir. Apr. 18, 2013).
Issues
[1] “K-Tech contends that its First Amended Complaints comply with Form 18 and that the district court applied the incorrect standard in analyzing the sufficiency of each complaint.” K-Tech, at *8.
[2] “The defendants [...] assert that the respective First Amended Complaints fail to meet either the plain language of Form 18 or the form interpreted through the lens of Twombly and Iqbal.” Id.
Holdings
[1] [I]t is clear the district court applied the wrong standard to K-Tech’s complaints in requiring that a plaintiff preemptively identify and rebut potential non-infringing alternatives to practicing the claims of an asserted patent. […] Form 18 includes no indication that a patent holder must prospectively anticipate such noninfringement arguments. For this reason alone, it is clear the rationale employed by the district court when dismissing K-Tech’s actions was erroneous.
K-tech at *13 (internal citations omitted).
[2] [W]e find that K-Tech’s amended complaints in both actions satisfy [the Form 18] standards. DirecTV and TWC know what K-Tech’s patents claim, and they know what K-Tech asserts their systems do, and why. K-Tech has alleged that DirecTV and TWC must and do modify or “translate” digital signals they receive, and it has alleged that they do so using K-Tech’s patented methods and systems. We find these allegations adequate to satisfy Form 18 and, thus, to satisfy the pleading standards that govern these actions [because K-tech is not required to identify specific infringing devices by name if they are not discernible prior to discovery].
Id. at *17 (text added).
 
10/28/2013
Category: Civil Procedure
 
 
By: Abby Lin, Contributor   
 
TitleRembrandt Vision Tech., L.P., v Johnson & Johnson Vision Care, Inc., No. 2012-1510 (Fed. Cir. Aug. 7 2013).
Issues
[1] Expert Testimony: “Rembrandt argues that, because the court erroneously excluded Dr. Beebe’s testimony [under Federal Rules of Civil Procedure 26 and 37], [this Court] should reverse the district court’s grant of judgment as a matter of law”. Rembrandt at *6. “The issue is ... whether, under Rule 37(c)(1), it was “substantially justified or harmless that Dr. Beebe waited until trial to disclose the testing methodology that he claims he actually employed [as opposed to those he disclosed in his expert report].” Id. at *8 (text added).
[2] Circumstantial Evidence: “Rembrandt also argues that its circumstantial evidence that the accused lenses are generally known as ‘soft’ precludes judgment as a matter of law … the district court erred by categorically excluding that circumstantial evidence … [which] shows that accused lenses meet the ‘soft’ limitation.” Id. at *6. “JJVC argues that the court did not err … because the ‘soft’ limitation requires the lenses to meet a specific hardness measure…[and] Rembrandt did not present any admissible evidence that the accused lenses were ‘soft’”. Id. at *7.
Holdings
[1] “The district court did not err in concluding that the late disclosure was not substantially justified. The court rightly found that ‘[t]here is simply no excuse for Dr. Beebe waiting until cross-examination to disclose his testing procedure.’ … The district court [also] did not err in finding that Dr. Beebe’s failure to disclose his testing methodology harmed JJVC [because Dr. Beebe’s testimony that the errors in his report were typos was an substantive and substantial shift in his testimony and significantly hampered JJVC’s ability to adequately cross-examine Dr. Beebe and its opportunity to develop or introduce competing evidence.] … We conclude that the district court did not abuse its discretion in excluding Dr. Beebe’s trial testimony under Rule 37.” Rembrandt at *8-9 (internal citations omitted, text added).
[2] “The court was within its discretion to exclude … evidence [which were general statements that the accused lenses are ‘soft’ because they had the potential to confuse the jury and did not bear on whether the accused lenses had a Shore D Hardness of less than five.  See FED. R. EVID. 403.” Id. at *9-10(text added). “Because Rembrandt failed to offer any admissible evidence that the accused lenses met the ‘soft gas permeable contact lens’ limitation, we affirm the district court’s judgment that JJVC does not infringe the asserted claims of the ‘327 patent.” Id. at *10.
 
10/03/2013
Category: Civil Procedure
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor  
 
TitleTecSec, Inc. v. Int'l Business Mach., Inc., No. 2012-1415 (Fed. Cir. Oct. 2, 2013).
Issues
[1-2] The defendants now assert that, under [1] the mandate rule and [2] the doctrine of collateral estoppel, our Rule 36 judgment [regarding claim construction at the summary judgment stage] precludes TecSec from re-raising its claim construction arguments.
TecSec, at *8 (text added).
[3] "TecSec argues that the district court erred when it concluded that the terms “system memory means” and “digital logic means” were means-plus-function limitations." Id. at *19.
[4] [The defendants] contend that the software programs recited in the specification are not sufficient to perform the recited [computer-implemented means-plus-function terms] because they are generic disclosures of software, not specific algorithms to implement the claimed functions.
Id. at at *22 (text added).
Holdings
[1] “[A] Rule 36 judgment simply confirms that the trial court entered the correct judgment. It does not endorse or reject any specific part of the trial court’s reasoning.” [...] Had claim construction been the only issue in the [summary judgment appeal], and had that claim construction been essential to sustaining the judgment of noninfringement, the preclusive effect of our Rule 36 judgment would have been undeniable. But that was not the case. Here, the mandate rule does not preclude TecSec from challenging claim construction.
TecSec, at *11 (text added, internal citations omitted).
[2] Because claim construction was neither actually determined by nor critical and necessary to our summary affirmance in the [summary judgment appeal], collateral estoppel does not preclude the present challenge.
Id. at *13 (text added).
[3] "[W]e hold that the district court erred when it concluded that the term “system memory means for storing data” was a means-plus-function limitation [because a person skilled in the art would recognize that term to mean a specific structure that stores data.]." Tecsec, at *20 (text added). "[Also,] the district court erred when it held that the term “digital logic means” was a means-plus-function limitation [because 'digital logic' defines structure and the claim further defines said term to have structural elements]." Id. at *21 (text added).
[4] [T]he examples [in the specification detailing how the software operates generally] provide detailed prose that shows how the specific software products operate to implement the claimed functions. “This court does not impose a lofty standard in its indefiniteness cases.” Finisar, 523 F.3d at 1341. Short of providing source code, it is difficult to envision a more detailed disclosure.
Id. at *24 (text added).
 
08/30/2013
Category: Civil Procedure
 
 Goose Family
 
By: Jesus Hernandez, Blog Editor/Contributor  
 
TitleTrading Tech. Int'l, Inc. v. Open E Cry, LLC, No. 2012-1583 (August 30, 2013).
Issue(s)[1-2] "[W]hether the claims of the ’411 patent[, a continuation, and the '055 patent, a CIP,] satisfied the written description requirement of 35 U.S.C. § 112(a) in light of eSpeed [a previous case involving parent patents] [...]” Trading Tech. Int'l, Inc., at *12 (text added).
[3] "[W]hether prosecution history estoppel [and/or disclaimer in a parent patent of a CIP at issue] barred TT from asserting infringement under the doctrine of equivalents as to products with price columns that move automatically.” Id. at *12 (text added).
Holding(s)[1] “The ’411, ’768, and ’374 patents all rely on the same underlying disclosure as the ’132 and ’304 patents discussed in eSpeed. But the claims of the patents now before us are different, as are the issues at play, and eSpeed’s ruling on claim construction does not govern the written description inquiry in this case. “ Trading Tech. Int'l, Inc., at *17.
[2] “[T]he ’055 patent differs fundamentally from those at issue in eSpeed, and its unique written description was never considered in that case. […] We therefore conclude that TT is entitled to summary judgment that the claims of the ’055 patent have not been proven invalid by clear and convincing evidence for lack of adequate written description.” Id. at *20-21.
[3] “[T]he intrinsic record specific to the ’055 patent distinguishes eSpeed […]. The ’055 patent, as a continuation-in-part of the ’132 patent, includes extensive disclosures that were not present in the ’132 or ’304 patents, and those subsequent disclosures directly contradict the prosecution-based surrenders of claim scope discussed in eSpeed.” Id. at *24-25.
 

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