Thursday, May 28, 2015

No Judgment of Noninfringement as to Claims Abandoned Due to Court Ordered Narrowing

The court granted in part defendant's motion for judgment as a matter of law as to plaintiff's abandoned claims. "[Defendant] presents an issue that has not been directly addressed by the Federal Circuit and upon which at least two district courts disagree. . . . [I]t would be fundamentally unfair and plain error for the Court to enter judgment against [plaintiff] on all of its abandoned claims because [plaintiff] was under Court order to narrow its claims to thirty-five. On the other hand, with regard to the thirty-five claims that [plaintiff] litigated, [defendant] is entitled to judgment on its counterclaim. . . . Although [plaintiff] withdrew or voluntarily dismissed all but five claims, [defendant] did not amend its counterclaim [for declaratory judgment of non-infringement] to correspond to [plaintiff's] dismissals. Therefore, the Court concludes that [defendant] is entitled to judgment on the thirty claims that the Court allowed [plaintiff] to pursue through trial, but failed to offer evidence on at trial."

Eagle Harbor Holdings, LLC, et al v. Ford Motor Company, 3-11-cv-05503 (WAWD May 26, 2015, Order) (Settle, J.)

Wednesday, May 27, 2015

Buying and Selling Intellectual Property Rights Constitutes “Financial Product or Service” for CBM Review

The Board granted institution of covered business method review of an IP rights management patent, finding the patent was directed to a financial product or service. "[T]he [challenged] patent states that the invention provides an integrated rights management and licensing system and method involving the buying, and selling of intellectual property rights. . . . Patent Owner contends that none of the challenged claims expressly recites a method or apparatus for performing data processing or other operations used in the practice, administration or management of a financial product or service. We do not interpret the statute as requiring the literal recitation of the terms data processing of financial products or services. . . . The suggestion to adopt a definition limiting financial services or products to a particular industry, financial services industry, was considered but not adopted during rulemaking as the statute does not limit the program expressly to financial institutions, and such a narrow construction of the statute would be contrary to the legislative history of Section 18. . . . [T]he [challenged] patent claims systems and methods that are directed to a financial activity—buying and selling intellectual property rights—that constitutes a financial product or service under § 18(d)(1)."

Petition for Covered Business Method Patent Review by Getty Images (US), Inc., CBM2015-00023 (PTAB May 21, 2015, Order) (Tierney, APJ)


Is the PTAB more likely to institute an IPR if the district court stays concurrent litigation?

A Docket Navigator subscriber recently asked us this question so we decided to investigate. As it turns out, there appears to be some correlation between a district court’s decision to stay a case pending IPR and the outcome of the PTAB’s institution decision. Click here to view a summary of our findings.

Tuesday, May 26, 2015

Teva Does Not Require Reinstatement of District Court’s Claim Construction Reversed on Appeal

The court denied defendant's motion to reopen the judgment and rejected its argument that Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831 (2015), invalidated the Federal Circuit's claim construction in a prior appeal in this action. "[Defendant] argues that under Teva’s new approach, the claim construction of 'lodging the member' issued by the Federal Circuit on appeal is not valid, but rather the construction previously issued by this Court should be reinstated. [Defendant] argues that this Court engaged in fact-finding to arrive at its construction and the Federal Circuit therefore should have honored that construction unless it found clear error in this Court’s fact-finding. . . . Nothing in Teva suggests that the Federal Circuit must review immaterial or improper fact-finding under a clear error standard. Rather it appears rather clearly that such fact-finding is to be disregarded and a de novo standard applied."

Smith & Nephew Incorporated, et al v. Arthrex, Incorporated, 3-04-cv-00029 (ORD May 19, 2015, Order) (Mosman, J.)

Friday, May 22, 2015

Navigating PTAB Data: What to Look For and How to Find It

Register here!

Wednesday, May 27, 2015 1:00 PM - 1:45 PM CDT


In this interactive webinar, users will learn how to find the answers to a list of questions that came up in the recent PTAB IP Counsel Exchange in San Jose, using Docket Navigator. Participants will gain practical knowledge about how to find PTAB information based on real data, removing the need to “guess” how the Board is interpreting current legal issues.

A list of questions that arose during the conference was created, and here are a few examples:

  • What are the success rates of stays pending IPR or CBM in the district courts? Are stays more or less likely in “experienced” patent courts?
  • How can I find PTAB decisions interpreting real parties-in-interest?
  • How many patents have been cancelled by the new PTAB proceedings?
  • How many times has unpatentable subject matter (USC §101) been granted (or denied) as a ground for trial in the PTAB?
  • What district court cases have relied on the issue of unpatentable subject matter (USC §101) as a basis for a decision?

The “take away” after the webinar will be the full list of the questions that were addressed, including live links to the search results for each question. When a link is clicked on, the answers will be updated in real-time. Free passwords to Docket Navigator are available to all in-house counsel participants upon request.

Time will be reserved for Q&A at the conclusion of the panel.

Don't forget to register!

Failure to Disclose IPR in Reexam May Support Inequitable Conduct Claim

The court granted defendant's motion to amend its pleadings to include a claim for inequitable conduct based on plaintiff's failure to disclose IPR proceedings in a related patent during reexamination of the patents-in-suit. "[Defendant] has cited legal support for its argument that the failure to disclose the PTAB’s decision to grant IPR of the [related] patent could be a material omission because the patents are closely related. And, given [defendant's] allegations that the same actors were involved in all of the relevant proceedings and regarding the temporal proximity between the PTAB’s decision and further communications with the PTO in the reexaminations, sufficient facts are alleged from which the fact-finder could reasonably infer that the omission was intentional."

PPC Broadband, Inc. v. Corning Gilbert Inc., 5-11-cv-00761 (NYND May 20, 2015, Order) (Sharpe, J.)


Institution of IPR Excluded from Evidence

The court granted plaintiff's motion in limine to preclude evidence of the institution of inter partes review. "There is no claim that any relevant final decision has been made. Any probative value in the fact that [defendant] has chosen to take advantage of other avenues and forums is substantially outweighed by the danger of misleading the jury and [a] waste of time involved in explaining to the jury what is involved in such proceedings and the natural counterclaim that that such proceedings are Defendants’ attempt to vexatiously delay and multiply proceedings and impose costs on Plaintiff."

Allure Energy, Inc. v. Nest Labs, Inc. et al, 9-13-cv-00102 (TXED May 18, 2015, Order) (Clark, J.)

Thursday, May 21, 2015

No Preliminary Injunction for Patent Subject to Pending Reissue Application

The court denied plaintiff's motion for a preliminary injunction prohibiting the sale of defendant's oil cooler kits because there was a substantial question of enforceability of the patent-in-suit in light of a pending reissue application. "Defendant directed the Court to Plaintiff’s application for a reissue patent for the [patent] to rebut the presumption that the [patent-in-suit] is valid. . . . Plaintiff may be correct that the reissue patent application does not address whether the [patent] is invalid for obviousness or indefiniteness, but the purpose of a reissue patent application is to correct a patent 'wholly or partially inoperative or invalid.'. . . It is true that the original patent remains in effect until it is reissued; however, whether a patent remains in force is different from whether there is a substantial question concerning the enforceability the [patent]."

Neal Technologies Incorporated v. Innovative Performance Research LLC, 2-15-cv-00311 (AZD May 19, 2015, Order) (Bolton, J.)

Wednesday, May 20, 2015

Misconduct of Plaintiff's Lead Trial Counsel Does Not Warrant New Trial

Despite finding attorney misconduct, the court denied defendant's motion for a new trial and rejected the argument that plaintiff tainted the jury verdict by discussing the results of another case involving one of the patents-in-suit. "[Plaintiff] told the jury that: (1) another jury found the [patent] valid; (2) the Federal Circuit affirmed that verdict; and (3) as a result, [a third party] paid over $500 million dollars to [plaintiff]. . . . [T]he Court first concludes that there was 'attorney misconduct' in the sense that there were multiple violations of the Court's orders regarding the proper and improper uses of facts about the [other case]. These violations were committed by [plaintiff's] lead counsel . . . The Court's efforts to ensure a fair trial to both sides were made all the more difficult by [plaintiff's lead counsel's] decision to walk up to the line the Court had drawn and, several times, step right over it. . . . The Court finds that it is not reasonably probable that [lead counsel's] conduct with respect to the [prior case] influenced the jury's verdict. The Court reaches this conclusion based primarily on the strength of the evidence presented by [plaintiff]. After all, this was a case in which the undisputed damages evidence was that an entire industry -- other than [defendant] and one Chinese company -- took licenses from [plaintiff] for innovative technology that saved thousands of lives and billions of dollars in healthcare costs."

Masimo Corporation v. Philips Electronics North America Corporation, et al, 1-09-cv-00080 (DED May 18, 2015, Order) (Stark, J.)