Wednesday, November 26, 2014

Petitions for Inter Partes Review Citing Same Prior Art May be Decided Differently

The Board denied the petitioner's request for rehearing of an earlier decision partially denying institution of inter partes review and rejected the arguments regarding the institutions of earlier petitions. "[The petitioner] contends that its Petition presented the 'same evidence' that was presented in [proceedings brought forth by two other petitioners] and that because the Board found 'equivalent disclosures' of [a prior art reference] sufficient to anticipate and/or render obvious claims 1-6 and 12 in those cases, we must do the same here. . . . It simply is not true that the records in all three cases present the 'same evidence.' . . . The differences between [the expert's] declaration in the present case and the one submitted in the [related] proceeding are material, and lead to the different results in our institution decisions. . . . The evidence of inorganic particles in [the prior art reference] was considered in our Decision to Institute and, when considered in light of the Petition and [the expert's] declaration in this proceeding, found to be insufficient to establish a reasonable likelihood of unpatentability. . . . The rule [the petitioner] proposes—that every Petition citing the same art must be decided identically, regardless of the arguments set forth in the Petition—ignores the adversarial, adjudicative nature of an inter partes review.."

Petition for Inter Partes Review by Mitsubishi Plastics, Inc., IPR2014-00524 (PTAB November 21, 2014, Order) (Crumbley, APJ)

Tuesday, November 25, 2014

Medical Device Claims Indefinite Under Nautilus

The court granted defendant's motion for summary judgment that plaintiff's medical device patents were invalid as indefinite. "The question here is whether the absence of identified boundaries in terms of proximity, distance, or location renders the claims indefinite under a new and more rigorous standard imposed by the Supreme Court? The Court finds that it does. . . . There is no question that the relationship terms lack any quantitative parameters or a range of distance between the mount or anchor and a target or disc space. . . . The accurate targeting of the surgical site and positioning the mount, anchor, or fixation member to limit movement provide 'some standard for measuring the scope of the phrase[s],' but something more, short of absolute or mathematical precision, is required. . . . These claims all have some meaning and are not insolubly ambiguous, but they do fall short of the new, more rigorous reasonable certainty standard for indefiniteness. The lack of clarity in these claims leaves the next inventor in the 'zone of uncertainty,' not knowing what is claimed and what is still open."

Abdou v. Alphatec Spine, Inc., 3-12-cv-01804 (CASD November 19, 2014, Order) (Benitez, J.)

Monday, November 24, 2014

Failure to Disclose Federal Circuit Order May Support Inequitable Conduct Defense

The court granted defendants' motion to amend its answer to add a claim for inequitable conduct and rejected plaintiff's argument that the amendment was futile. "Defendants' proposed Amended Answer alleges, on information and belief, that during prosecution of the [patent-in-suit], [plaintiff] and its attorneys withheld [a] Federal Circuit Order with the intent to deceive the PTO. . . . According to the Amended Answer, had the PTO been aware of the Federal Circuit Order which stated that the specification's language requires scan conversion entirely on 'a floating point basis' . . . the PTO would not have permitted the issuance of claims in the [patent]. . . . [I]t is undisputed that the examiner was not given actual notice of the Federal Circuit's subsequent decision. While Plaintiff contends this alleged non-disclosure is not material, as the Federal Circuit Order is merely cumulative of the District Court Order, Defendants have articulated a plausible theory to the contrary. . . . The Amended Answer alleges that the Federal Circuit Order is material because it contained adverse statements not contained in the District Court Order. Had such statements by the Federal Circuit been before the PTO, the PTO may have either rejected the . . . claims for failure to satisfy §112 due to lack of written description, or may have found the [patent] could not claim priority to [an earlier] patent and then, considering the expanded range of prior art, may have rejected those claims.”

Graphics Properties Holdings, Inc. v. Google Inc., 1-12-cv-01394 (DED November 20, 2014, Order) (Stark, J.)

Friday, November 21, 2014

Damages Expert’s Linear Valuation of User Activations Excluded

The court granted in part defendant's motion in limine to exclude the opinion of plaintiff's damages expert concerning the value of user activations. "The Court grants the Motion with respect to [the expert's] opinion that user activations beyond the initial activation should be valued at a constant $0.115 rate. Based on the evidence before the Court, [the expert's] report applies too linear a relationship between the first and all subsequent activations. If there is a quantifiable value for the second, third, and other activations, [plaintiff] may present evidence of that value at trial."

Uniloc USA, Inc. et al v. Activision Blizzard, Inc., 6-13-cv-00256 (TXED November 18, 2014, Order) (Davis, J.)

Thursday, November 20, 2014

Dilatory Tactics and Gamesmanship Warrant Limiting Number of Disputed Claim Terms to Five

The court sua sponte limited the parties to five terms for claim construction because of their litigation tactics. "Nearly a year into this litigation, the record thus far suggests that both parties have engaged in dilatory tactics — and potentially gamesmanship — inconsistent with the Court’s efforts to reach a 'just, speedy, and inexpensive determination of the action.'. . . [I]n light of the consistent delays and, in the Court’s view, needless disputes that have been emblematic of this litigation thus far, the Court invokes its inherent authority to reduce the number of claim terms that it will construe during claims-construction to five terms. The parties’ failure to move this case forward consistent with the Court imposed schedule seriously impacts the time to consider and resolve disputes related to the construction of terms in the relatively straightforward patents at issue."

Zamperla, Inc. et al v. IE Park srl, 6-13-cv-01807 (FLMD November 18, 2014, Order) (Dalton, J.)

Wednesday, November 19, 2014

Excluding Dollar Amount of Prior License to Aggregator Does Not Undermine Jury’s Finding of Obviousness

Following a jury trial, the court denied plaintiff's motion for judgment as a matter of law that its patent was not obvious and rejected plaintiff's argument that it should have been permitted to present the dollar amount of its license with a patent aggregator as a secondary consideration of nonobviousness. "[Plaintiff] argues that the Court's decision to exclude the dollar amount of its license agreement with [the aggregator] precluded the jury from considering that agreement as an indicator of non-obviousness. . . . [T]he Court, citing circumstances surrounding the [aggregator] agreement that were vastly different from those of other licensing agreements, found that evidence of the exact dollar amount of the license would 'skew the jury's perception of a reasonable royalty, causing unfair prejudice to [defendant].'. . . [Plaintiff] argues that the very fact that it has executed a multi-million-dollar licensing agreement with [the aggregator] demonstrates that the [patent-in-suit] was not obvious. [Plaintiff] overstates the case. Although the jury was not presented with the precise dollar amount of the [aggregator] agreement, it heard testimony describing the agreement, and specifically stating that it was 'much, much higher' in value than the other license agreements in evidence. . . . Although evidence of a multi-million-dollar licensing agreement may be evidence of non-obviousness, the Federal Circuit has 'often held [that] evidence of secondary considerations does not always overcome a strong prima facie showing of obviousness.'"

Digital Reg of Texas, LLC v. Adobe Systems Incorporated, et al, 4-12-cv-01971 (CAND November 17, 2014, Order) (Wilken, J.)

Tuesday, November 18, 2014

Provisional Rights Must be Pled as Separate Claim

The court denied plaintiff's motion to compel discovery as to when defendant became aware of plaintiff's patent applications. "The Court’s research indicates that a claim of pre-issuance infringement pursuant to 35 U.S.C. § 154(d) should generally be expressly pled in a complaint as a claim that is separate from a claim of infringement pursuant to 35 U.S.C. § 271. Plaintiff has not offered any legal authority or argument that its conclusory reference in its prayer for relief and allegation regarding only one of the two elements of a claim of pre-issuance infringement is sufficient to have alleged a claim of pre-issuance infringement pursuant to 35 U.S.C. § 154(d). . . . As such, the supplemental answers Plaintiff seeks . . . would involve information that is not relevant to a claim or defense currently in the case and Plaintiff is not entitled to obtain discovery regarding that issue."

Sorna Corporation v. Pacsgear, Inc., 0-13-cv-02794 (MND November 14, 2014, Order) (Brisbois, M.J.)