On April 18, 2025, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) affirmed a decision by the U.S. District Court for the District of Delaware (“district court”) that found four Recentive Analytics, Inc. (“Recentive”) patents directed to the use of machine learning—U.S. Patent Nos. 11,386,367 (the “’367 patent”); 11,537,960 (the “’960 patent”); 10,911,811 (the “’811 patent”); and 10,958,957 (the “’957 patent”) (collectively, “asserted patents”)—ineligible under 35 U.S.C. § 101.  Recentive Analytics, Inc. v. Fox Corp., No. 2023-2437, ---F.4th---, 2025 WL 1142021 (Fed. Cir. Apr. 18, 2025).  

On March 28, 2025, the United States Court of Appeals for the Federal Circuit issued an opinion affirming the United States District Court for the District of New Jersey decision that Mylan Laboratories Ltd. (“Mylan”) induced healthcare providers to infringe the asserted claims of U.S. Patent No. 10,143,693 (“the ’693 patent”), and that Mylan did not demonstrate by clear and convincing evidence that the ’693 patent is invalid. Janssen Pharms., Inc. v. Mylan Lab’ys Ltd., No. 2023-2042, slip op. (Fed. Cir. Mar. 28, 2025).

On April 15, 2025, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) affirmed the Patent Trial and Appeal Board’s (“Board”) decision finding all challenged claims of Sage Products, LLC’s patents anticipated based on prior art, including the ChloraPrep Public Assessment Report (“PAR”) and other references. Sage Prods., LLC v. Stewart, No. 23-1603 (Fed. Cir. Apr. 15, 2025).

On March 24, 2025, the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) issued an opinion affirming a district court’s judgement of infringement while vacating and remanding the district court’s damages award, finding that there was insufficient evidence to support the damages ascribed to convoyed sales. Wash World Inc. v. Belanger Inc., No. 2023-1841, slip op. at *26 (Fed. Cir. Mar. 24, 2025).

On March 24, 2025, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion vacating and remanding a decision of the U.S. Patent Trial and Appeal Board (the “Board”) that a published patent application (“Lettich”) qualified as prior art to a pending application, U.S. Patent Application No. 11/005,678 (the “’168 Application”), because the Board’s analysis as to Lettich’s prior art status was incomplete.  In re Riggs, No. 22-1945, __ F.4th ___ (Fed. Cir. Mar. 24, 2025).

Lashify, Inc. is an American company, with headquarters and employees in the United States, that distributes, markets, and sells eyelash extensions (and cases and applicators for the eyelash extensions) in the United States.  Lashify alleged, in a Section 337 Investigation at the International Trade Commission, that certain importers of similar products infringed three of its patents: a utility patent (U.S. Patent No. 10,721,984) and two design patents (U.S. Design Patent Nos. D877,416 and D867,664).  

On February 12, 2025, the United States District Court for the District of Delaware denied defendant Parse Biosciences’s (“Parse”) motions for summary judgment that:  (i) Parse had never actually conducted any direct or indirect infringing activity with respect to the claims of certain asserted patents (the “Giresi Patent” family) or that any such infringement was de minimis and (ii) the claims of certain asserted patents (the “Brenner Patent” family) are invalid for lack of written description support and for failure to claim what the inventor “regarded as” their invention.

On February 26, 2025, the Supreme Court of the United States issued a unanimous decision limiting the Lanham Act’s scope of damages in a trademark infringement action.

On January 29, 2025, the U.S. Court of Appeals for the Federal Circuit affirmed the grant of a preliminary injunction by the Northern District of West Virginia in favor of Regeneron Pharmaceuticals, Inc. against Samsung Bioepis Co., Ltd. (“SB”) and other biosimilar applicants. Regeneron had sued defendants for infringing its U.S. Patent No. 11,084,865, which covers formulations of aflibercept, a fusion protein that binds to vascular endothelial growth factor (VEGF) and is used to treat angiogenic eye diseases. Regeneron markets aflibercept under the brand name EYLEA^®.

On, January 27, 2025, the United States Court of Appeals for the Federal Circuit affirmed-in-part and reversed-in-part a decision from the Patent Trial and Appeal Board (“PTAB”) on certain claims of Gesture Technology Partners, LLC’s (“Gesture”) U.S. Patent No. 8,878,949 (the ʼ949 patent) and, in so doing, held that the PTAB had jurisdiction to conduct inter partes review (“IPR”) on expired patents.

On January 14, 2025, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued a precedential opinion affirming a final written decision from the U.S. Patent Trial and Appeal Board (“PTAB”) finding the challenged claims of U.S. Patent No. 10,687,400 unpatentable.  Lynk Labs, Inc. v. Samsung Elecs. Co., Ltd., (Fed. Cir. January 14, 2025).  In its decision, the CAFC considered the question of when a published patent application is deemed prior art in an inter partes review (“IPR”) and concluded, as did the PTAB, that they are prior art as of their filing date.

On January 6, 2025, the United States Court of Appeals for the Federal Circuit (“CAFC”) affirmed the decision of the Patent Trial and Appeal Board (“PTAB”) rejecting a challenge to U.S. Patent No. 7,332,277 (“the ‘277 patent”) by Laboratory Corporation of America Holdings (“Labcorp”).

On May 6, 2021, plaintiffs sued defendants for patent infringement in the United States District Court for the District of Delaware.  The parties are biotechnology companies and competitors that offer tools for studying genetic material on a cellular level, including competing sequencing-based tools for performing spatial analyses of biological molecules.  

On December 16, 2024, the United States Court of Appeals for the Federal Circuit issued its opinion in Palo Alto Networks, Inc. v. Centripetal Networks, LLC, holding that the Patent Trial and Appeal Board (PTAB) erred in its decision regarding the unpatentability of claims from Centripetal Networks’ U.S. Patent No. 10,530,903 (“the ’903 Patent”). 

Mirror Worlds Technologies, LLC ("Mirror Worlds") owns U.S. Patent Nos. 6,006,227; 7,865,538; and 8,255,439, which claim methods for storing, organizing, and presenting data in time-ordered streams on a computer system.  In 2017, Mirror Worlds filed suit against Meta Platforms, Inc. (formerly Facebook, Inc.) in the U.S. District Court for the Southern District of New York (“District Court”), alleging that several Facebook features infringed the patents.  

In biomodal Ltd. v. New England BioLabs, Inc., No. 24-cv-11697-RGS, Dkt. No. 78 (D. Mass. Nov. 2024), Defendant New England BioLabs, Inc. (“NEB”) filed a motion to dismiss the claims of infringement of five patents as relating to ineligible subject matter under 35 U.S.C. § 101, while Plaintiff biomodal Ltd. (“biomodal”) filed a motion for a preliminary injunction to enjoin NEB from marketing its allegedly infringing products.

On October 18, 2024, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision addressing claim construction at the Rule 12(b)(6) stage. In UTTO Inc. v. Metrotech Corp., No. 2023-145 (Fed. Cir. Oct. 18, 2024), the Federal Circuit rejected a categorical claim construction bar at the Rule 12(b)(6) stage and clarified that the standard allows a court to arrive at a sufficient claim construction at the Rule 12(b)(6) stage without a formal Markman hearing.

In Champion Power Equipment Inc. v. Firman Power Equipment Inc., No. CV-23-02371-PHX-DWL (D. Ariz. Oct. 18, 2024), defendant filed a motion for a protective order seeking two forms of relief:

1. a patent prosecution bar that would preclude certain attorneys representing plaintiff from performing patent prosecution work for a period of two years following the conclusion of the action; and
2. an order allowing each side the opportunity to object before its confidential information was shared with the other party’s non-technical experts.

The United States District Court for the District of Arizona denied the former and granted the latter. Id. at 2.

Intellectual property policy may not have driven many voters to the polls on November 7, but change was on the ballot. Below, we summarize changes in U.S. intellectual property law that you might see starting in January 2025.

On October 31, 2024, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming the final written decisions of the Patent Trial and Appeal Board (“PTAB”) finding that two of Centripetal Network, LLC’s (“Centripetal”) patents directed to network security are unpatentable. Centripetal Networks, LLC v. Palo Alto Networks, Inc., Appeal No. 2023-1654, __ F.4th __ (Fed. Cir. Oct. 31, 2024).

On October 24, 2024, the Federal Circuit issued a precedential opinion that may have implications for litigation involving standard essential patents (SEPs). Telefonaktiebolaget LM Ericsson v. Lenovo (United States), Inc., No. 24-1515 (Fed. Cir. Oct. 24, 2024). The Court vacated the district court’s denial of Lenovo’s request for an antisuit injunction to prevent Ericsson from enforcing injunctions obtained in Colombia and Brazil, and remanded the case for further proceedings below. In doing so, the Federal Circuit clarified that the “dispositive” requirement of the general framework for analyzing foreign-antisuit-injunction requests may be met even where a foreign antisuit injunction would not resolve the entire foreign proceeding, but only the foreign injunction.

On October 8, 2024, the U.S. Court of Appeals for the Federal Circuit vacated a decision by the District of Connecticut that had dismissed AlexSam, Inc.’s patent infringement claims against Aetna, Inc. AlexSam had alleged that Aetna’s Mastercard-branded and VISA-branded products infringed claims of AlexSam’s U.S. Patent No. 6,000,608 (“’608 patent”). 

On September 23, 2024, Judge Kleeh of the Northern District of West Virginia denied Regeneron Pharmaceuticals, Inc.’s (“Regeneron”) motion for a preliminary injunction against Amgen Inc. (“Amgen”) related to Amgen’s filing of an abbreviated Biologics License Application (“BLA”) seeking authorization to commercialize “ABP 938,” a biosimilar version of Regeneron’s Eylea.

On October 2, 2024, the Court of Appeals for the Federal Circuit (“CAFC”) issued a precedential opinion reversing-in-part decisions from the United States District Court for the Western District of Missouri in Case No. 5:19-cv-06021-SRB, Judge Stephen R. Bough, denying defendant Weber’s motions for judgment as a matter of law and for a new trial. Provisur Technologies, Inc. v. Weber, Inc., __ F.3d __ (Fed. Cir. October 2, 2024). In its decision, the CAFC found that the district court had wrongly upheld a jury verdict finding infringement where the accused product could not readily be placed in an infringing configuration and finding willfulness based on testimony suggesting a failure to seek advice of counsel. The CAFC further found that the district court abused its discretion by upholding a flawed damages verdict.

On September 17, 2024, Judges Taranto, Chen and Cunningham of the United States Court of Appeals for the Federal Circuit (“CAFC”) upheld the invalidation of a patent belonging to Angel Technologies Group, LLC and dismissed other infringement claims brought against Meta Platforms, Inc. as moot, after other patents at issue were found unpatentable in inter partes review by the Patent Trial and Appeal Board (“PTAB”). Angel Techs. Grp. LLC v. Meta Platforms, Inc., No. 2022-2100 (C.A.F.C. 2024).

On September 16, 2024, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion vacating and remanding a decision from the District Court of Minnesota which held the asserted claims of medical patents to be indefinite.

In Platinum Optics Tech. Inc. v. Viavi Sols. Inc., the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision on the requirements for standing to appeal from an inter partes review (IPR) final written decision of the Patent Trial and Appeal Board (PTAB).  The appellate decision, authored by Judge Cecchi, District Judge, United States District Court for the District of New Jersey, sitting by designation, dismissed the appeal of Platinum Optics Technology, Inc. (PTOT), a Taiwanese optical filter manufacturer, for lack of standing.  The CAFC held that PTOT failed to show an injury in fact that was concrete, particularized, and imminent, as required by the Constitution and the case law.

On July 30, 2024, United States Senators Christopher Coons (R-Delaware) and Thomas Cotton (R-Arkansas) introduced the “Realizing Engineering, Science, and Technology Opportunities by Restoring Exclusive Patent Rights Act of 2024” or the “RESTORE Patent Rights Act of 2024” to the Senate.  This bill intends to give a patent owner a rebuttable presumption of permanent injunction when the patent owner prevails on its claim of patent infringement.

In Allergan USA, Inc. et al., v. MSN Laboratories Private Ltd., et al., the United States Court of Appeals for the Federal Circuit issued a precedential decision relating to obviousness-type double patenting (“ODP”) and patent-term adjustments.  The Court held that a claim that is first-filed and first-issued, but later-expiring, cannot be found invalid under the ODP doctrine based on a later-filed, later-issued, but earlier-expiring reference claim that shares the same priority date with that of the challenged claim.

On September 9, 2024, the United States Court of Appeals for the Federal Circuit (“CAFC”) reversed the U.S. District Court for the Northern District of California’s decision finding asserted claims invalid under 35 U.S.C. § 101.  In 2015, Contour IP Holding LLC (“Contour”) sued GoPro, Inc. (“GoPro”), alleging that several GoPro products infringe certain claims of U.S. Patent Nos. 8,890,954 and 8,896,694.  In 2021, Contour filed a second lawsuit against GoPro, alleging that GoPro’s new products similarly infringe the asserted patents.  The asserted patents share substantially the same specification and are directed to portable, point-of-view (“POV”) video cameras.

In Platinum Optics Tech. Inc. v. Viavi Sols. Inc., the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision on the requirements for standing to appeal from an inter partes review (IPR) final written decision of the Patent Trial and Appeal Board (PTAB). The appellate decision, authored by Judge Cecchi, District Judge, United States District Court for the District of New Jersey, sitting by designation, dismissed the appeal of Platinum Optics Technology, Inc. (PTOT), a Taiwanese optical filter manufacturer, for lack of standing. The CAFC held that PTOT failed to show an injury in fact that was concrete, particularized, and imminent, as required by the Constitution and the case law.

In Celanese Int’l Corp. v. ITC, the Federal Circuit addressed whether the America Invents Act (“AIA”) changed the on-sale bar such that the sale of a product made using a secret process would no longer invalidate later-sought claims on that process. 

In Sanho Corp. v. Kaijet Tech. Int’l Ltd., issued July 31, 2024, the U.S. Court of Appeals for the Federal Circuit addressed the Leahy-Smith America Invents Act (“the AIA”) public disclosure exception to prior art, 35 U.S.C. § 102(b)(2)(B). 

On July 26, 2024, the Court of Appeals for the Federal Circuit (“CAFC”) issued a precedential opinion reversing-in-part decisions from the U.S. Patent Trial and Appeal Board (“PTAB”) in two inter partes reexamination proceedings that had found all claims of SoftView LLC’s U.S. Patent No. 7,461,353 (“the ’353 patent”) invalid under the estoppel provision set forth in 37 C.F.R. § 42.73(d)(3)(i). SoftView LLC v. Apple Inc., __ F.3d __ (Fed. Cir. July 27, 2024). In its decision, the CAFC upheld the validity of § 42.73(d)(3)(i) and the estoppel standard adopted in the regulation but held that the regulation applies only to new claims and amended claims.

On July 12, 2024, the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) affirmed a decision by the U.S. District Court for the Middle District of North Carolina granting a preliminary injunction that barred NeoGenomics Laboratories, Inc. (“NeoGenomics”) from making, using, selling, advertising, or distributing its cancer assay test. Natera, Inc. v. NeoGenomics Lab’ys, Inc., No. 2024-1324, at *2 (Fed. Cir. July 12, 2024).

On July 16, 2024, the United States Patent and Trademark Office (“USPTO”) issued new guidance on the patentability of AI-related inventions. Although the USPTO emphasized that its guidance does not change the law of 35 U.S.C. § 101, patent applicants and patent litigation defendants are likely to scrutinize the guidance for insights that will help them secure (or as the case may be, to invalidate) new AI-related patents.

On June 25, 2024, the United States Court of Appeals for the Federal Circuit (“CAFC”) reversed a decision by the United States District Court for the District of Delaware dismissing Amarin Pharma, Inc.’s induced infringement claims against Hikma Pharmaceuticals USA Inc.  Amarin Pharma, Inc. v. Hikma Pharmaceuticals USA Inc., No. 2023-1169 (Fed. Cir. June 25, 2024).  The CAFC held that the totality of Amarin’s allegations plausibly stated a claim for induced infringement of patents allegedly covering Hikma’s generic version of Amarin’s Vascepa® product.

On July 9, 2024, Director Vidal of the United States Patent and Trademark Office (USPTO) granted Director Review in a set of three related inter partes review (IPR) proceedings between Petitioner Prime Time Toys LLC and Patent Owner Spin Master, Inc. (IPR2023-01339, IPR2023-01348, and IPR2023-01461).  In her decision, Director Vidal reversed the Patent Trial and Appeal Board’s (“PTAB’s”) denial of institution and remanded the case back to the Board for further proceedings.  This is a rare decision by Director Vidal, as she has only granted Director Review for six of the approximately thirty requests for Director Review decided so far in 2024.

While the patent litigation world is closely watching the Unified Patent Court, the Court of Justice is thinking about a matter that might yet again shake up the European patent litigation landscape.  In this update we discuss the February 22, 2024, Opinion Ag, C-339/22 of the Advocate General, Nicholas Emilio, in the case between BSH Hausgeräte GmbH and Electrolux AB, about cross-border jurisdiction in patent cases under the Brussels 1 bis Regulation.  If the Court of Justice follows the Advocate General’s opinion, cross-border infringement cases before national European courts may make a serious comeback.  This, in turn, could make national courts attractive again for cross-border patent matters.

On June 21, 2024, the United States Court of Appeals for the Federal Circuit (“CAFC”) affirmed a decision by the United States District Court for the District of New Jersey dismissing Beteiro, LLC’s (“Beteiro”) claims of patent infringement under Rule 12(b)(6) on the grounds that the asserted claims of the patents-in-suit claim nonpatentable subject matter under 35 U.S.C. § 101.  The CAFC held that Beteiro’s patents—related to remote gaming and gambling activities—amounted to the practice of an abstract idea using conventional computer equipment and did not qualify for patent protection under the two-step framework of Alice/Mayo.

On June 17, 2024, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued a precedential opinion reversing a decision from the United States District Court for the District of Massachusetts in Case No. 1:23-cv-11780-FDS, Judge F. Dennis Saylor, IV, granting a preliminary injunction enjoining defendant EOFlow’s use of alleged trade secrets. Insulet Corp. v. EOFlow, Co. Ltd., __ F.3d __ (Fed. Cir. June 17, 2024). In its decision, the CAFC found that the district court had abused its discretion in weighing the equitable factors governing preliminary injunctions and in defining the set of information eligible for trade secret protection.

On June 10, 2024, Judge Stanley R. Chesler of the United States District Court for the District of New Jersey granted the Amneal defendants’ motion for partial judgment on their counterclaims in a Hatch-Waxman dispute, and ordered the Teva plaintiffs to delist certain inhaler patents from the Orange Book. Teva Branded Pharmaceutical Products R&D, Inc. v. Amneal Pharmaceuticals of New York, LLC, No. 23-cv-20964 (SRC) __ F. Supp. 3d __ (D.N.J. June 10, 2024).

On May 21, 2024, the United States Court of Appeals for the Federal Circuit (the “Federal Circuit” or “court”) issued an en banc opinion, affirming-in-part, vacating-in-part, and remanding a United States Patent and Trademark Office, Patent Trial, and Appeal Board (“Board”) decision that the prior art, including U.S. Design Patent No. D773,340 (“Lian”) did not render unpatentable Appellee GM Global Technology Operations LLC’s (“GM”) U.S. Design Patent No. D797,625 (the “D’625 patent”), pursuant to 35 U.S.C. §§ 102 and 103. LKQ Corp. v. GM Glob. Tech. Operations LLC, No. 2021-2348, __F.4th__, 2024 WL 2280728 (Fed. Cir. May 21, 2024). The en banc court affirmed the Board’s § 102 decision of no anticipation but vacated and remanded its § 103 decision of nonobviousness because the court overruled the long-standing Rosen-Durling test. Id. 

On May 20, 2024, the United States Court of Appeals for the Federal Circuit (“CAFC”) affirmed the United States District Court for the District of Delaware’s decision to deny recovery of attorneys’ fees incurred in inter partes review proceedings (“IPRs”), as well as recovery from plaintiff’s counsel. Dragon Intellectual Property, LLC (“Dragon”) separately sued DISH Network L.L.C. (“DISH”) and Sirius XM Radio Inc. (“SXM”), as well as eight other defendants, for patent infringement in December 2013. DISH and SXM (collectively, “Appellants”) sent letters to Dragon’s counsel explaining that their products do not practice the asserted claims and that a reasonable pre-suit investigation would have shown that. Ignoring the letters, Dragon continued to pursue its lawsuits.

On May 9, 2024, the USPTO’s Patent Trial and Appeal Board (“PTAB”) denied the Petition for inter partes review of Luminex International Co., Ltd (“Luminex”), under 35 U.S.C. § 315(b), finding that Luminex filed the Petition more than one year after the date on which a real party in interest was served with a complaint alleging infringement of the challenged patent. Luminex Int’l Co., Ltd. v. Signify Holdings B.V., IPR2024-00101, Paper 10 (PTAB May 9, 2024).

On May 2, 2024, the United States Court of Appeals for the Federal Circuit (“CAFC”) vacated an amended final judgment of patent infringement entered by the U.S. District Court for the Eastern District of Texas against NetScout Systems, Inc. Packet Intelligence LLC v. NetScout Systems, Inc., No. 2022-2064. The CAFC’s decision was based on its affirmance of parallel Patent Trial and Appeal Board (“PTAB”) decisions finding the asserted patent claims unpatentable as obvious.

On May 1, 2024, the Court of Appeals for the Federal Circuit (“CAFC”) issued a precedential opinion reversing a decision from the United States District Court for the Western District of Texas in Case No. 2 6:19-cv-00628-ADA, Judge Alan D. Albright, granting dismissal for lack of constitutional standing. Intellectual Tech LLC v. Zebra Technologies Corp., __ F.3d __ (Fed. Cir. May 1, 2024). In its decision, the CAFC found that plaintiff patentee retained an exclusionary right under the asserted patent and that this was sufficient to establish standing.

On April 15, 2024, the United States Court of Appeals for the Fourth Circuit affirmed a decision by the Eastern District of Virginia finding that (i) a trademark applicant’s applied-for design was functional and therefore unregistrable and (ii) applicant failed to establish the acquired distinctiveness required for trade dress registrability. TBL Licensing, LLC v. Vidal, No. 23-1150, 2024 WL 1609096 (4th Cir. Apr. 15, 2024).

On March 27, 2024, the United States Court of Appeals for the Federal Circuit (the “Federal Circuit”) issued an opinion, affirming a United States District Court for the Northern District of Illinois (the “district court”) decision relating to U.S. Patent Nos. 7,676,411 (the “’411 patent”); 7,813,996 (the “’996 patent”); 6,766,304 (the “’304 patent”); and 6,772,132 (the “’132 patent”), (collectively, the “patents-in-suit”). The district court held the asserted claims of the ’411 and ’996 patents invalid, and a jury found the asserted claims of the ’304 and ’132 patents valid and infringed and awarded $6,610,985 in damages. The Federal Circuit affirmed. Brumfield, Tr. for Ascent Tr. v. IBG LLC, No. 2022-1630, __F.4th__, 2024 WL 1292151 (Fed. Cir. Mar. 27, 2024). 

On April 4, 2024, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) affirmed the U.S. District Court for the District of Delaware’s decision finding asserted claims invalid under 35 U.S.C. § 101. In October 2021, AI Visualize, Inc. accused Nuance Communications, Inc. and Mach7 Technologies, Inc. of infringing certain claims of U.S. Patent Nos. 8,701,167; 9,106,609; 9,438,667; and 10,930,397. The asserted patents share substantially the same specification and are directed to the visualization of medical scans.

On March 27, 2024, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) issued a precedential opinion (i) reversing the Patent Trial and Appeal Board’s (“Board”) finding that certain challenged claims of a patent directed to a method for aligning a laser projector with respect to a work surface are unpatentable and (ii) affirming the Board’s finding that certain other challenged claims of the patent are not unpatentable. Virtek Vision Int’l ULC v. Assembly Guidance Sys., Inc., __ F.4th __ (Fed. Cir. Mar. 27, 2024).

On February 20, 2024, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming the decision of the Patent Trial and Appeal Board (“Board”) finding unpatentable the challenged claims of a medical-imaging patent directed to using a headset to view three-dimensional images of a patient. D3D Technologies, Inc. v. Microsoft Corp., __ F.4th __ (Fed. Cir. Feb. 20, 2024).

On February 28, 2024, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) reversed the U.S. District Court for the Eastern District of New York’s summary judgment decision to dismiss AlexSam, Inc.’s (“AlexSam’s”) lawsuit for breach of contract against MasterCard International Inc. (“MasterCard”). AlexSam owns two U.S. patents directed to prepaid cards that can be used with point-of-sale devices. In 2005, AlexSam granted MasterCard a license to the two patents. In exchange, MasterCard agreed to pay ongoing royalties in the amount of a fee per licensed transaction. The two patents expired on July 10, 2017.

On March 6, 2024, the Court of Appeals for the Federal Circuit (“CAFC”) reversed decisions from the United States District Court for the Western District of Texas in consolidated Case Nos. 6:21-cv-00347 and 6:21-cv-01007, Judge Alan D. Albright, finding the claims of the ’035 patent indefinite. Maxell, Ltd. v. Amperex Technology Ltd., __ F.3d __ (Fed. Cir. March 6, 2024). In its precedential decision reversing and remanding, the CAFC found that the district court erred in finding claim language contradictory and therefore indefinite.

On March 4, 2024, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion vacating and remanding four final written decisions of the Patent Trial and Appeal Board (“PTAB”), which found all claims of U.S. Patent Nos. 8,152,788; 8,784,398; 8,771,249; and 8,708,990 to be unpatentable as obvious.

On March 15, 2024, the United States Court of Appeals for the Federal Circuit (“CAFC”) affirmed a decision by the United States District Court for the Eastern District of Virginia, ordering the correction of inventorship of U.S. Patent No. 9,376,049 (the “’049 patent”) to add Gary Mackay and Dan Hewson as named inventors. Tube-Mac Indus., Inc. v. Campbell, No. 2022-2170 (Fed. Cir. Mar. 15, 2024). The CAFC reviewed the inventorship disputes de novo and the district court’s underlying factual findings for clear error.

On February 8, 2024, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) reversed and vacated several Patent Trial and Appeal Board decisions related to the patentability of U.S. Patent Nos. 10,639,812 and 10,625,436. The patents relate to high-speed slicers used to slice and package food products.

On January 19, 2024, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming the final determination of the International Trade Commission (“ITC”), which found that: (i) intervenor Universal Electronics, Inc. (“Universal”) had ownership rights to assert the ’196 patent in the investigation, (ii) Universal satisfied the domestic industry requirement of 19 U.S.C. § 1337 (Section 337) and (iii) appellant Roku failed to establish the ’196 patent was obvious over prior art.

On February 7, 2024, the Court of Appeals for the Federal Circuit (“CAFC”) reversed a final written decision from the U.S. Patent Trial and Appeal Board (“PTAB”) finding the challenged claims of the ’753 patent not unpatentable. Google LLC v. EcoFactor, Inc., __ F.3d __ (Fed. Cir. Feb. 7, 2024). In its precedential decision reversing and remanding, the CAFC found that the PTAB relied on an implicit construction of a claim limitation and that this construction was wrong.

On January 22, 2024, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming the decision of the Patent Trial and Appeal Board (“Board”) invalidating the claims of U.S. Patent No. 9,458,814 (“’814 patent”) on obviousness grounds. The ’814 patent is directed to a remote start system for a vehicle. The system includes a remote start transmitter physically separate from the vehicle. The transmitter is configured to receive a signal from a user and transmit the signal to the vehicle. The vehicle, upon receiving the transmitted signal, automatically performs multiple functions: a vehicle brake is operated, a climate control system is activated, and the engine is started.

On January 9, 2024, the United States Court of Appeals for the Federal Circuit affirmed a decision by the Western District of Washington, determining that claims in two of plaintiff’s patents were directed to ineligible subject matter under 35 U.S.C. § 101.  IBM Corp. v. Zillow Group, Inc., No. 2022-1861 (Fed. Cir. Jan. 9, 2024).  Plaintiff had asserted the patents, which claim methods and systems for improving how search results are displayed to users.  Defendant moved to dismiss under Rule 12(b)(6).  The district court found the claims constituted ineligible subject matter as they are directed to abstract ideas and lack an inventive concept.  The Federal Circuit panel (Judges Prost, Hughes, and Stoll) agreed, stating that the claims “do not disclose any technical improvement to how computer applications are used.”  Judge Stoll dissented in part, on the basis that plaintiff’s proposed construction of “user context vector” in the ’676 patent should have been addressed.

On January 18, 2024, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming the decision of the Patent Trial and Appeal Board (“Board”) finding unpatentable the challenged claims of a patent directed to a 3D pointing device for outputting yaw, pitch, and roll angles in a 3D reference frame and denying the patent owner’s motion to amend its claims.  CyWee Group Ltd. v. ZTE (USA), Inc., __ F.4th __ (Fed. Cir. Jan. 18, 2024).

On December 26, 2023, the United States Court of Appeals for the Federal Circuit (“CAFC”) reversed a decision from the United States District Court for the Central District of California in Case No. 2:21-cv-03402-GW-AGR, Judge George H. Wu, granting appellee motion for summary judgment of non-infringement. K-Fee System Gmbh v. Nespresso USA, Inc., __ F.3d __ (Fed. Cir. December 26, 2023). In its precedential decision, the CAFC found that the district court’s non-infringement finding was based on an erroneous construction of the claim term “barcode.”

On December 4, 2023, the United States Court of Appeals for the Federal Circuit (the “Federal Circuit”) issued an opinion, affirming in part, reversing in part, vacating in part, and remanding the decision of the United States District Court for the Western District of Texas (the “district court” or “Western District”) that U.S. Patent Nos. 7,523,353 (the “’353 patent”) and 7,725,759 (the “’759 patent”), (collectively, the “asserted patents”) were infringed and damages should be awarded. VLSI Tech. LLC v. Intel Corp., No. 2022-1906, 2023 WL 8360083 (Fed. Cir. Dec. 4, 2023). More specifically, the Federal Circuit affirmed the infringement of the ’373 patent but reversed the infringement of the ’759 patent; vacated the damages award for the ’373 patent; reversed the denial of Appellant’s, Intel Corporation (“Intel”), motion for leave to amend; and remanded the matter.

On December 7, 2023, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming the decision of the District Court of Delaware, which found non-infringement by Lupin Ltd., Lupin Pharmaceuticals, Inc. (“Lupin”) and other defendants of U.S. Patent Nos. 9,278,096 and 9,125,910 (’096 and ’910 patents, respectively), and infringement by Lupin of claim 12 of U.S. Patent No. 9,101,626 (’626 patent). All three patents are owned by H Lundbeck A/S (“Lundbeck”).

On November 21, 2023, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming the decision of the Patent Trial and Appeal Board (“Board”) finding claims 1–17 of U.S. Patent No. 9,693,961 (“’961 patent”) unpatentable for lack of written description and anticipation.

On November 17, 2023, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming the decision of the Patent Trial and Appeal Board (“Board”) finding unpatentable the challenged claims of a patent directed to methods for making semiconductor devices. Bell Semiconductor LLC v. Advanced Semiconductor Eng’g, Inc., __ F.4th __ (Fed. Cir. Nov. 17, 2023).

On November 3, 2023, the U.S. Court of Appeals for the Federal Circuit affirmed an award of $5.2 million in attorneys’ fees entered against PersonalWeb Technologies LLC under 35 U.S.C. § 285.  In re PersonalWeb Techs. LLC, Nos. 2021-1858, 2021-1859, 2021-1860 (Fed. Cir. Nov. 3, 2023).  The court (Reyna, Dyk, and Lourie) reviewed the district court’s exceptional case determination and fee calculation for abuse of discretion.

On October 25, 2023, the Court of Appeals for the Federal Circuit (“CAFC”) affirmed two final written decisions from the U.S. Patent Trial and Appeal Board (“PTAB”), determining that appellant IPR petitioner did not meet its burden of proving unpatentability.  Netflix Inc. v. DivX LLC, __ F.3d __ (Fed. Cir. October 25, 2023).  In its precedential decision, the CAFC found no error in how the PTAB understood appellant’s petition arguments and further found that certain other arguments newly raised by appellant on appeal had been forfeited.

On October 6, 2023, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming the Western District of Texas’s holding of indefiniteness as to certain claims of U.S. Patent No. 8,751,585 (the “’585 Patent”).  WSOU Investments LLC (“WSOU”) accused Google LLC (“Google”) of infringing independent claim 9, and claims 10-16 dependent therefrom, of the ’585 Patent.  The ’585 Patent is directed to a management method for electronic messages in a user’s inbox in a communication system.  The district court construed the limitation, “a collaborative application management processor configured to manage collaborative application,” to be indefinite as a means-plus-function limitation without sufficient corresponding structure.

On October 16, 2023, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion that (i) reversed the District Court for the Northern District of California’s pre-verdict judgment as a matter of law (JMOL) of nonobviousness, (ii) affirmed the district court’s decision to deny defendant’s pre-verdict and post-trial motions for JMOL regarding noninfringement, (iii) reversed the district court’s denial of defendant’s pre and post-trial motions to exclude the testimony of patent owner’s damages expert, (iv) vacated the lost profits award, and (v) remanded the case for further consistent proceedings.  Cyntec Co. v. Chilisin Electronics Corp., No. 2022-1873, --F.4th.--, 2023 WL 6798376 (Fed. Cir. Oct. 16, 2023).

On October 19, 2023, the United States Court of Appeals for the Federal Circuit issued an opinion that reversed-in-part, vacated, and remanded the United States Patent and Trademark Office’s Patent Trial and Appeal Board (the “Board”) decision that the prior art, including Claire Simonnet & Alex Groisman, High-Throughput and High-Resolution Flow Cytometry in Molded Microfluidic Devices, 78 Analytical Chemistry 5653 (2006) (“Simonnet”), did not render unpatentable Appellee Cytonome/ST, LLC’s (“Cytonome”) U.S. Patent No. 10,583,439 (the “’439 patent”), pursuant to 35 U.S.C. §§ 102 and 103.  ABS Glob., Inc. v. Cytonome/St, LLC, No. 2022-1761, 2023 WL 6885009 (Fed. Cir. Oct. 19, 2023).

On September 1, 2023, the United States Court of Appeals for the Federal Circuit issued an opinion upholding the Patent Trial and Appeal Board’s (“PTAB”) (i) construction of the claim term “connection rejection message” as having its plain and ordinary meaning; (ii) finding that the proposed substitute independent claim was impermissibly broader than the original claim; and (iii) finding that the proposed substitute claims that were dependent on the impermissible independent claim were also impermissibly broadened.  Sisvel International S.A. v. Sierra Wireless, Inc., No. 2022-1387, -- F.4th --, 2023 WL 5659063 (Fed. Cir. Sept. 1, 2023).

On September 11, 2023, the United States Court of Appeals for the Federal Circuit issued an opinion, vacating the United States Patent and Trademark Office’s Patent Trial and Appeal Board (the “Board”) decision that the prior art, including U.S. Patent No. 7,859,588 (“Parulski”), did not render unpatentable Appellee Corephotonics, Ltd.’s (“Corephotonics”) U.S. Patent No. 10,225,479 (the “’479 patent”) pursuant to 35 U.S.C. § 103.  Apple Inc. v. Corephotonics, Ltd., No. 2022-1350, 2023 WL 5838695 (Fed. Cir. Sept. 11, 2023).

On September 20, 2023, the Court of Appeals for the Federal Circuit affirmed a decision of the United States District Court for the District of Delaware in Case No. 1:17-cv-00509-TBD, Judge Timothy B. Dyk, finding claims of asserted U.S. Patent No. 7,033,590 (“the ’590 patent”) invalid for lack of enablement.  Baxalta Inc. et al. v. Genentech Inc., __ F.3d __ (Fed. Cir. September 20, 2023).  In its precedential decision, the CAFC held that the asserted claims are indistinguishable from those recently found invalid by the Supreme Court in Amgen Inc. v. Sanofi, 598 U.S. 594, 610–12 (2023).

On September 21, 2023, the United States Court of Appeals for the Federal Circuit affirmed a decision by the United States Patent and Trademark Office, Patent Trial and Appeal Board (“PTAB”), holding that claims of U.S. Patent No. 7,295,648 (the “’648 patent”) owned by Elekta Limited (“Elekta”) were unpatentable as obvious.  Elekta Ltd. v. ZAP Surgical Sys., Inc., No. 2021-1985 (Fed. Cir. Sept. 21, 2023).  The CAFC panel (Reyna, Stoll and Stark) reviewed the PTAB’s legal conclusions de novo and its factual findings for substantial evidence.  In affirming the PTAB, the CAFC concluded that the PTAB’s factual findings as to both the motivation to combine prior art references and the reasonable expectation of success in making the combination were supported by substantial evidence.

On September 28, 2023, the U.S. Court of Appeals for the Federal Circuit issued an opinion affirming the decision of the Patent Trial and Appeal Board finding unpatentable the challenged claims of a patent directed to an adaptive alarm system, used in combination with pulse oximetry sensors, for medical applications. Masimo Corp. v. Sotera Wireless, Inc., F.4th (Fed. Cir. Sept. 28, 2023).

USC IP Partnership, L.P. (“USC”) filed a patent infringement lawsuit against Facebook, Inc., succeeded by Meta Platforms, Inc. (collectively, “Meta”), in the United States District Court for the Western District of Texas.  USC accused Meta’s “News Feed” feature of infringing U.S. Patent No. 8,645,300 (“the ’300 Patent”).  The ’300 Patent claims a method for predicting which webpages to recommend to a web visitor based on inferences of the visitor’s intent by using an “intent engine.”  Meta moved for summary judgment of invalidity of all claims of the ’300 Patent on the ground that they are ineligible for patenting, under 35 U.S.C. § 101.  A week before trial was scheduled, Judge Alan Albright granted summary judgment.  USC IP P’ship, L.P. v. Facebook, Inc., 576 F. Supp. 3d 446 (W.D. Tex. 2021) (“Dist. Ct. Order”).

On August 7, 2023, the United States Court of Appeals for the Seventh Circuit reversed in part a decision by the Northern District of Illinois, holding that an agreed forum selection clause applies only to the parties to the agreement and cannot be invoked by a co-defendant that did not have a similar agreement.  Nulogy Corp. v. Menasha Packaging Co., LLC, No. 22-1583, 2023 WL 5010784, at *1 (7th Cir. Aug. 7, 2023).  The Court reviewed the district court’s threshold determinations regarding the forum selection clause de novo.

On July 24, 2023, the Court of Appeals for the Federal Circuit (CAFC) affirmed a decision of the United States District Court for the District of Delaware in Case No. 1:20-cv-00755-RGA-JLH, Judge Richard G. Andrews, finding claims of one asserted patent valid and infringed and claims of another asserted patent anticipated but otherwise infringed.  United Therapeutics Corp. v. Liquidia Techs., Inc., __ F.3d __ (Fed. Cir. July 24, 2023).  In its precedential decision, the CAFC held, inter alia, that the district court did not err in declining to import safety and efficacy limitations into method of treatment claims in the first patent, and also did not err in finding that a decision of unpatentability by the U.S. Patent Trial and Appeal Board (“PTAB”) of the U.S. Patent and Trademark Office, currently on appeal, did not bar liability for induced infringement.

On July 14, 2023, the United States Court of Appeals for the Federal Circuit (the “Federal Circuit”) issued an opinion, affirming the decision of the United States District Court for the Central District of California (the “district court” or “Central District of California”) that U.S. Patent Nos. 9,087,321 (the “’321 patent”) and 10,936,685 (the “’685 patent”), (collectively, the “asserted patents”) are invalid under 35 U.S.C. § 101.  Trinity Info Media, LLC v. Covalent, Inc., No. 2022-1308, 2023 WL 4536366 (Fed. Cir. July 14, 2023).

Medtronic, Inc., asserted U.S. Patent Nos. 8,626,314 and 8,036,756 against Axonics, Inc., in a patent infringement lawsuit.  In response, Axonics challenged various claims of the Medtronic patents for obviousness in inter partes reviews (IPRs).  In both IPRs, the Patent Trial and Appeal Board concluded that Axonics had failed to prove any of the challenged claims unpatentable.  Axonics appealed.  On July 10, 2023, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion vacating the Board’s final written decisions in both IPRs.

On July 14, 2023, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion reversing the decision of the Patent Trial and Appeal Board (“PTAB”), holding that a patent that has only ever contained claims with an effective filing date that postdates the effective date of the America Invents Act (“AIA”) may not be subject to an interference—even if the allegedly interfering patent has a priority date prior to the AIA.  SNIPR Technologies Limited v. Rockefeller University, No. 2022-1260, -- F.4th --, 2023 WL 4536369 (Fed. Cir. July 14, 2023).

On July 5, 2023, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion reversing the U.S. District Court for the Western District of Wisconsin’s decision dismissing—on the basis of res judicata—the induced infringement suit of Appellant, Inguran, LLC (“Inguran”). Inguran, LLC v. ABS Global, Inc., __ F.4th __ (Fed. Cir. July 5, 2023).

On June 21, 2023, the Court of Appeals for the Federal Circuit (CAFC) affirmed a decision of the United States District Court for the Middle District of Florida in Case No. 6:21-cv-01366-PGB-DCI, Judge Paul G. Byron, dismissing plaintiff’s patent infringement suit.  Yoldas Askan v. Faro Techs., Inc.,__F.3d__(Fed. Cir. June 21, 2023).  In its order, the CAFC held that the district court did not abuse its discretion in dismissing the case as a sanction for plaintiff’s failure to comply with a discovery order and as precluded under the Kessler doctrine, under which “an adjudged non-infringer” can “avoid repeated harassment for continuing its business as usual post-final judgment in a patent action where circumstances justify that result.”

On June 27, 2023, the United States Court of Appeals for the Federal Circuit (“CAFC”) affirmed a decision by the United States Patent and Trademark Office, Patent Trial and Appeal Board (“PTAB”), holding that proposed substitute claims were not patentable for lack of written description and lack of enablement under 35 U.S.C. § 112.  Medytox, Inc., v. Galderma S.A., No. 2022-1165 (Fed. Cir. June 27, 2023).  The CAFC panel (Dyk, Reyna, and Stark) reviewed the PTAB’s legal conclusions de novo and its factual findings for substantial evidence.  In affirming the PTAB, the CAFC concluded that the substitute claims were not enabled because a skilled artisan would not have been able “to make and use all of what is claimed.”

The PTAB recently released public versions of earlier decisions about the implications of Unified Patents’ business model and when the PTAB should decide disputes about identification of real parties in interest (“RPIs”).  On March 8, 2023, the PTAB issued a determination that Unified Patents should have identified its members Apple and Samsung as RPIs in its IPR challenge of MemoryWeb’s patent, which had been asserted against those members.  Unified Patents, LLC v. MemoryWeb, LLC, IPR2021-01413, Paper 56 (P.T.A.B. Mar. 8 2023).  On May 16, 2023, USPTO Director Vidal granted director review of the decision and vacated the RPI determination, finding it had been unnecessary to resolve the proceeding.  Unified Patents, LLC v. MemoryWeb, LLC, IPR2021-01413, Paper 76 (P.T.A.B. May 22, 2023).

On May 24, 2023, the United States Court of Appeals for the Federal Circuit (the “Federal Circuit”) issued an opinion affirming the United States Patent and Trademark Office’s Patent Trial and Appeal Board (the “Board”) decision that U.S. Patent 7,736,355 to Itou, et al. (“Itou”) could not be used as prior art to invalidate five Teleflex Innovations S.à.R.L. (“Teleflex”) patents, which were on appeal.  Medtronic, Inc. v. Teleflex Innovations S.à.R.L., No. 2021-2356, 2023 WL 3606143 (Fed. Cir. May 24, 2023).

On May 9, 2023, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming the unpatentability decision of the Patent Trial and Appeal Board (“Board”), finding, with respect to the independent claims, that the Board either did not misconstrue the claims or that any error with respect to the Board’s claim construction was harmless.  With respect to the dependent claims, the CAFC found that there was a sufficient motivation to combine the asserted prior art references.  Bot M8 LLC v. Sony Interactive Entertainment LLC, No. 2022-1291, -- F.4th --, 2023 WL 3311550 (Fed. Cir. May 9, 2023).

On April 12, 2023, the Court of Appeals for the Federal Circuit (“CAFC”) affirmed a decision of the United States District Court for the District of Delaware in Case No. 1:19-cv-00474-KAJ, Judge Kent A. Jordan, invalidating asserted claims of plaintiff’s ’589 patent as obvious. UCB Inc. v. Actavis Laboratories UT Inc., __ F.3d __ (Fed. Cir. Apr. 12, 2023). In its order affirming invalidity, the CAFC affirmed the district court’s holding of invalidity for obviousness but found legal error in the district court’s anticipation holding because it misapplied the CAFC’s decision in Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015).

On April 18, 2023, the United States Court of Appeals for the Federal Circuit (“CAFC”) reversed a decision by the United States District Court for the Eastern District of Texas holding that certain claims of three reissued U.S. patents were not invalid under 35 U.S.C. § 251. Cioffi v. Google LLC, No. 2018-1049 (Fed. Cir. Apr. 18, 2023). The CAFC panel (Reyna, Bryson, and Taranto) reviewed the district court’s decision de novo and reversed the district court, concluding that the asserted claims failed to satisfy the “original patent” requirement.

On April 24, 2023, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming the decision of the U.S. Patent and Trademark Office Patent Trial and Appeal Board (“Board”) finding that Leica Microsystems, Inc. (“Leica”) failed to show that the claims of a patent directed to a fluorescence detection system were unpatentable as obvious. Leica Microsystems, Inc. v. Regents of the University of Michigan, Appeal No. 22-1445 (Fed. Cir. Apr. 24, 2023).

Canopy Growth Corp. (“Canopy”) filed a patent infringement lawsuit against GW Pharma Ltd. and GW Research Ltd. (collectively, “GW”) in the United States District Court for the Western District of Texas. Judge Alan Albright issued an order construing the sole disputed claim limitation: “CO2 in liquefied form under subcritical pressure and temperature conditions.” Based on the issued claim construction order, the parties stipulated to non-infringement, and the court entered final judgment in favor of GW as to infringement and dismissed GW’s remaining affirmative defenses and counterclaims without prejudice. Canopy appealed the court’s claim construction. On April 24, 2023, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming Judge Albright’s claim construction and the entry of final judgment of non-infringement.

On March 22, 2023, Circuit Judge Bryson, as visiting judge in the United States District Court for the District of Delaware, ruled on competing motions about the next steps in a case where the patent plaintiff’s damages theories, as set forth in expert reports, had been repeatedly rejected by Delaware District Court judge Andrews. Judge Bryson allowed the case to proceed to trial, albeit with a very limited damages case. Acceleration Bay LLC v. Activision Blizzard Inc., C.A. No. 16-453-WCB (D. Del. Mar. 22, 2023).

On April 5, 2023, in a precedential order, the Court of Appeals for the Federal Circuit (CAFC) affirmed the Eastern District of Texas’s claim construction of U.S. Patent No. 5,802,467 (the “’467 patent”), as well as the jury’s corresponding finding of non-infringement. Salazar v. AT&T Mobility LLC, No. 2021-2320 (Fed. Cir. Apr. 5, 2023).

On February 21, 2023, Magistrate Judge Aaron of the United States District Court for the Southern District of New York recommended that the District Court grant defendant’s Rule 12(b)(6) motion to dismiss patent claims, finding that the claims of the asserted patent were directed to patent-ineligible subject matter.  Stylitics, Inc. v. Findmine, Inc., Case No. 1-22-cv-02983 (S.D.N.Y. February 21, 2023).

​On March 13, 2023, the United States Court of Appeals for the Federal Circuit (“CAFC”) affirmed-in-part and reversed-in-part an order of the United States District Court for the Northern District of California (N.D. Cal.) dismissing as unreviewable a lawsuit challenging the instructions of the Director of the U.S. Patent and Trademark Office (“USPTO”) regarding the standard for discretionary denial of petitions for inter partes review (IPR) based on pending parallel litigation involving the same patents.  Apple Inc. v. Vidal, No. 2022-1249, —F.4th— (Fed. Cir. Mar. 13, 2023).  The CAFC affirmed the unreviewability dismissal of the challenge to the Fintiv instructions as contrary to statute and arbitrary and capricious but reversed and remanded the dismissal of the challenge to the instructions as improperly issued without a notice-and-comment period.

On February 24, 2023, the United States Court of Appeals for the Federal Circuit (CAFC) reversed a final written decision by the Patent and Trademark Office’s Patent Trial and Appeal Board (“PTAB”), finding the challenged claim not unpatentable as obvious.  Intel Corp. v. PACT XPP Schweiz AG, No. 2022-0138 (Fed. Cir. Feb. 24, 2023).  In doing so, the CAFC held that the PTAB improperly required the petitioner to show the prior art references could be “bodily incorporated.”

On February 15, 2023, the Federal Circuit affirmed a district court’s grant of summary judgment of invalidity under the public use bar of pre-AIA 35 U.S.C. § 102(b), based on the patentee’s disclosure of devices having the patented technology at an industry event.  Minerva Surgical, Inc. v. Hologic, Inc., No. 2021-2246 (Fed. Cir. Feb. 15, 2023).  The Court found that the patentee had allowed sophisticated industry members to scrutinize the devices closely, such that they would have understood the invention, without any obligations of confidentiality.

On February 10, 2023, Director of the U.S. Patent & Trademark Office Katherine K. Vidal issued a decision affirming a Patent Trial and Appeal Board decision to deny institution of inter partes review. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 12 (Feb. 10, 2023). The Board had found, and Director Vidal agreed, that Petitioners’ expert testimony was entitled to little weight because it merely repeated, verbatim, the conclusory arguments in the petition itself. Director Vidal’s decision is “word from the top” that the practice of simply “parroting” a petition’s arguments in the expert declaration is strongly disfavored and unlikely to carry the day on invalidity.

On February 17, 2023, the Court of Appeals for the Federal Circuit (CAFC) vacated a decision of the United States District Court for the District of Nebraska in Case No. 8:22-cv-00314-CRZ, where Judge Brian C. Buescher had granted a preliminary injunction against appellant plaintiff.  Lite-Netics LLC v. Nu Tsai Capital LLC, __ F.3d __ (Fed. Cir. February 17, 2023).  In its order, the CAFC held that the district court abused its discretion by barring plaintiff from suggesting to customers that appellee defendant is a patent infringer and that they might be sued.

On February 1, 2023, the United States Court of Appeals for the Federal Circuit (CAFC) granted a petition for writ of mandamus directing the United States District Court for the Western District of Texas (W.D. Tex.) to vacate its order denying transfer and to transfer the case to the United States District Court for the Northern District of California (N.D. Cal.).  In re Google LLC, No. 2023-101, —F.4th— (Fed. Cir. Feb. 1, 2023).  The Federal Circuit found that the W.D. Tex. clearly abused its discretion in, inter alia, weighing the court congestion factor against transfer where plaintiff did not compete in the market and is not threatened in the market in a way that might otherwise add urgency to case resolution.
 

On February 8, 2023, in a precedential order, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed the decision by the Director of the U.S. Patent and Trademark Office to deny CyWee Group Ltd.’s (“CyWee’s”) request for rehearing of two IPR proceedings.  In doing so, the CAFC rejected CyWee’s argument that the Director is required to actually review, or be able to review, all institution decisions and final written decisions within the statutory time frames set by 35 U.S.C. §§ 316(a)(11) and 314(b).  CyWee Group Ltd. v. Google LLC, No. 2020-1565 (Fed. Cir. Feb. 8, 2023).
 

On January 9, 2023, the United States Court of Appeals for the Federal Circuit (CAFC) granted writs of mandamus to the United States District Court for the Eastern District of Texas in Nos. 2:21-cv-00045-JRG and 2:21-cv-00046-JRG, Chief Judge J. Rodney Gilstrap, vacated district court orders transferring two patent cases to the United States District Court for the Central District of California and instructing the court to recall the cases.  In re Stingray IP Solutions, LLC, __F.3d _(Fed. Cir. January 9, 2023).  In its order, the CAFC held that defendants could not avoid application of Federal Rule of Civil Procedure 4(k)(2) by merely consenting to jurisdiction in a district other than the one chosen by plaintiff.

On January 17, 2023, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed a decision by the United States District Court for the District of Massachusetts holding that certain claims of U.S. Pat. No. 7,299,067 (’067 patent) were not patentable under 35 U.S.C. § 101. Riggs Tech. Holdings, LLC. v. Cengage Learning, Inc., No. 2022-1468, (Fed. Cir. Jan. 17, 2023).  The CAFC panel (Taranto, Chen, and Stoll) reviewed the district court’s dismissal de novo and reached the same conclusion as the district court:  the representative claim is directed to an abstract idea containing no inventive concept and the patent is not eligible for patent protection.

On December 29, 2022, the Court of Appeals for the Federal Circuit dismissed an interlocutory appeal of an order by the District of Utah maintaining the confidentiality of defendant’s source code and denying access by plaintiff’s in-house counsel.  Modern Font Applications LLC v. Alaska Airlines, Inc., No. 2021-1838 (Fed. Cir. Dec. 29, 2022).  The Federal Circuit found that the district court decision did not satisfy the factors of the collateral order doctrine so as to permit interlocutory review because the order would be reviewable after a final judgment.

On December 20, 2022, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) issued a precedential opinion affirming in part, reversing in part, and vacating and remanding in part, the decision of the U.S. District Court for the Central District of California in a patent infringement and trade dress litigation between money-clip wallet competitors Mosaic Brands, Inc. (“Mosaic”) and Ridge Wallet LLC (“Ridge”).  Mosaic Brands, Inc. v. Ridge Wallet LLC, Appeal No. 22-1001 (Fed. Cir. Dec. 20, 2022).

On December 8, 2022, the United States Court of Appeals for the Federal Circuit (CAFC) found that the Patent Trial and Appeal Board’s (PTAB) finding that certain patent claims were unpatentable in an inter partes review (IPR) proceeding renders a similar claim of a related patent unpatentable based on collateral estoppel. Google LLC v. Hammond Dev. Int’l, Inc., No. 2021-2218 (Fed. Cir. Dec. 8, 2022).

On November 30, 2022, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed a decision by the U.S. District Court for the Western District of Washington striking portions of a plaintiff’s expert report and granting summary judgment of non-infringement to defendant.  Treehouse Avatar LLC v. Valve Corp., No. 21-1171 (Fed. Cir. Nov. 30, 2022).  The CAFC found that the district court did not abuse its discretion in its decision to strike portions of the report, nor did it err in its finding that plaintiff failed to rebut defendant’s evidence of non-infringement.

On November 14, 2022, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed a decision by the Patent Trial and Appeal Board (PTAB) allowing claim amendments during inter partes review (IPR) proceedings that addressed issues additional to those raised by the grounds relied upon for institution of the IPR. Am. Nat’l Mfg. Inc. v. Sleep No. Corp., Nos. 2021-1321, 1323, 1379, 1382, (Fed. Cir. Nov. 14, 2022). The Court found that the PTAB had not erred when it permitted Sleep Number, the patent owner, to submit claim amendments in IPR that addressed Section 112 issues (which were additional to amendments addressing the instituted grounds).

On November 8, 2022, in a precedential order, the Court of Appeals for the Federal Circuit (CAFC) granted Apple Inc.’s petition for a writ of mandamus vacating the scheduling order of the District Court for the Western District of Texas and directing that court to stay all proceedings on the merits and resolve Apple’s pending motion to transfer.  While the CAFC did not decide the extent to which merits discovery may proceed while issues of venue and venue discovery are still pending, it nevertheless ruled that transfer decisions must “proceed expeditiously” as “the first order of business.”  In re Apple Inc., No. 2022-162 (Fed. Cir. Nov. 8, 2022).
 

On November 1, 2022, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion reversing-in-part, vacating-in-part, and remanding a summary judgment decision by the United States District Court for the Southern District of California, Judge Cathy Ann Bencivengo, finding asserted claims from a family of related patents indefinite and thus invalid. Finjan LLC, Inc. v. ESET, LLC, No. 2021-2093 (Fed. Cir. Nov. 1, 2022). The CAFC held, inter alia, that the district court’s construction of the term “Downloadable,” appearing in all asserted claims, was improperly restricted to the narrowest of competing definitions provided in the patent family.

On October 19, 2022, the Federal Circuit, on a petition for writ of mandamus, vacated and remanded an order by Judge Mazzant of the Eastern District of Texas (EDTX) denying FedEx Corporate Services, Inc.’s motion to transfer the case to the Western District of Tennessee (WDTN). In re FedEx Corp. Servs., Inc., No. 2022-156 (Fed. Cir. Oct. 19, 2022). The Court found that the district court had erred in its analysis of the local interest factor and had failed to provide a sufficient explanation regarding witness-related factors, the latter of which left the Court “unable to effectively conduct mandamus review on the present record.”

On October 17, 2022, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed the ruling of the Western District of Washington (W.D. Wash.) that patents directed to abstract ideas absent a transformative inventive concept are not deemed to be patentable subject matter under 35 U.S.C. § 101. IBM v. Zillow Grp., Inc., No. 2021-2350, -- F.4th -- (Fed. Cir. Oct. 17, 2022).

On October 4, 2022, the Director of the United States Patent and Trademark Office (the “Director”) issued a precedential decision finding that the conduct of Petitioner OpenSky Industries, LLC (“OpenSky”) was an abuse of process, sanctioning Petitioner, and remanding to the Patent Trial and Appeal Board (the “Board”) for further proceedings.  OpenSky Industries, LLC v. VLSI Technology LLC, IPR2021-01064, Paper 102 (P.T.A.B. Oct. 4, 2022).

On September 30, 2022, the United States Court of Appeals for the Federal Circuit (CAFC) denied a petition for writ of mandamus challenging, inter alia, the denial of a motion to dismiss for improper venue under 28 U.S.C. § 1400(b) by the United States District Court for the Western District of Texas (W.D. Tex.).  In re Monolithic Power Systems, Inc., No. 2022-153, -- F.4th --  (Fed. Cir. Sept. 30, 2022).  Noting that mandamus review is not ordinarily available for rulings on improper venue motions, a panel majority found that the district court’s fact-specific ruling does not involve the type of broad, fundamental and recurring legal question or usurpation of judicial power that warrants the extraordinary remedy of mandamus.

On September 16, 2022, Judge Albright of the Western District of Texas denied three related Defendants’ motion to transfer venue, under 28 U.S.C. § 1404(a), from the Western District of Texas to the Northern District of California, on the grounds that venue in California would be improper for one of the moving Defendants, a holding company.  MOV-ology LLC v. BigCommerce Holdings, Inc. et al, Case No. 6-22-cv-00084 (WDTX).

On September 19, 2022, Magistrate Judge Payne of the U.S. District Court for the Eastern District of Texas issued a Report and Recommendation regarding certain foreign defendants’ motion to dismiss for failure to perfect service of process.  Arigna Tech. Ltd. v. Nissan Motor Co., No. 2:22-cv-00126-JRG-RSP (E.D. Tex. Sept. 19, 2022).  Judge Payne recommended denying the motion, finding that service on an agent of the foreign defendants’ U.S. subsidiary was proper.

On September 7, 2022, the Court of Appeals for the Federal Circuit (“CAFC”) affirmed a district court dismissal under the duplicative-litigation doctrine.  Under the duplicative-litigation doctrine, plaintiffs cannot “maintain two separate actions involving the same subject matter at the same time in the same court … against the same defendant.”  Arendi S.A.R.L. v. LG Elecs. Inc., No. 2021-1967, 2022 BL 313997 (Fed. Cir. Sept. 7, 2022).

On August 31, 2022, the Court of Appeals for the Federal Circuit (CAFC) affirmed a determination of non-infringement by the International Trade Commission (ITC).  Although the CAFC disagreed with the ITC as to whether the claims were directed towards capability, the CAFC nevertheless affirmed the finding of non-infringement because the capability had not been proven.  INVT SPE LLC v. Int’l Trade Comm’n, No. 2020-1903, -- F.4th -- (Fed. Cir. Aug. 31, 2022).

On August 29, 2022, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion in a consolidated appeal relating to two inter partes reexamination (“IPR”) decisions from the Patent Trial and Appeal Board (“PTAB”) finding all challenged claims of United States Patent 6,393,096 unpatentable.  Best Medical Int’l., Inc. v. Elekta Inc., Nos. 2021-2099, 2021-2100 (Fed. Cir. Aug. 29, 2022).  The CAFC held, inter alia, that Appellant patentee lacked standing to appeal the PTAB’s IPR unpatentability decision with respect to a claim that Appellant previously had canceled in an ex parte reexamination (“reexamination”).

On August 17, 2022, the Federal Circuit reversed a district court’s grant of summary judgment of invalidity, finding that IPR estoppel under 35 U.S.C. § 315(e)(2) barred Ingenio, Inc.’s invalidity argument, even though the challenged claim had not been addressed by the PTAB in the final written decision in Ingenio’s IPR.  Click-to-Call Techs. LP v. Ingenio, Inc., No. 2022-1016 (Fed. Cir. Aug. 17, 2022).

On August 12, 2022, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) affirmed the decision of the Patent Trial and Appeal Board (“PTAB”), which found unpatentable the challenged claims of a patent relating to housings for ultrasonic flow meters. Kamstrup A/S v. Axioma Metering UAB, __ F.4th __ (Fed. Cir. Aug. 12, 2022).

On August 3, 2022, the Judicial Panel on Multidistrict Litigation (“JPML”) ordered that four patent cases—two patent infringement actions in the United States District Court for the Eastern District of Texas and one declaratory judgment action each in the United States District Courts for the Southern District of New York and the Northern District of Texas—be consolidated in the Eastern District of Texas and that the Honorable J. Rodney Gilstrap shall preside over the multidistrict district litigation.  In re Taasera Licensing, LLC, Pat. Litig., No. MDL 3042 (J.P.M.L.).

On July 27, 2022, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed a decision by the United States District Court for the Central District of California (C.D. Cal.) awarding fees incurred by defendant for two proceedings under its inherent equitable powers and denying fees incurred in earlier, related proceedings.  Realtime Adaptive Streaming LLC v. Netflix, Inc., Nos. 2021-1484, 2021-1485, 2021-1518, 2021-1519 (Fed. Cir. July 27, 2022).  The CAFC found that the C.D. Cal. did not abuse its discretion in granting attorney’s fees incurred in the C.D. Cal. as a result of the patentee’s improper forum shopping to avoid an adverse ruling, but denying fees incurred in earlier district court and inter partes review (IPR) proceedings because there was no evidence that plaintiff knew or should have known at that time that its claims were weak.

On July 18, 2022, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued a precedential opinion affirming a judgment by the United States District Court for the Eastern District of Delaware (Chief Judge Colm F. Connolly) that plaintiff's organ transplant diagnosis patents encompassed unpatentable subject matter.  CareDx, Inc. v. Natera, Inc., __ F.3d __ (Fed. Cir. July 18, 2022).  In its decision, the CAFC held that the district court correctly found the asserted claims to be directed to a natural phenomenon and that the claimed combination of steps is not inventive.

On July 14, 2022, the Court of Appeals for the Federal Circuit (CAFC) sanctioned plaintiff-appellant Pop Top Corp. for the filing of a frivolous appeal, granting defendant-appellee Rakuten Kobo Inc. $107,748 in attorney’s fees and doubled costs.  Pop Top Corp. v. Rakuten Kobo Inc., No. 21-2174 (Fed. Cir. July 14, 2022).

On June 30, 2022, Judge Noreika of the Federal District Court for the District of Delaware denied defendants’ motion for summary judgment that certain asserted claims were indefinite and modified her construction of the term that formed the basis of defendants’ indefiniteness argument.  Chemours Company FC, LLC v. Daikin Industries, Ltd., Case No. 17-1612, (D. Del. June 30, 2022).

On June 21, 2022, the Court of Appeals for the Federal Circuit (CAFC) granted a request for rehearing, vacated its prior decision, and reversed the district court’s decision that the patent claim was not invalid for inadequate written description.  Novartis Pharmaceuticals v. Accord Healthcare Inc., No. 2021-1070 (Fed. Cir. June 21, 2022).

On June 3, 2022, the United States Court of Appeals for the Federal Circuit (“CAFC”) affirmed the correction of an obvious minor clerical error in the asserted claim language and a judgment of willfulness by the United States District Court for the Central District of California (“CDCA”).  Pavo Sols. LLC v. Kingston Tech. Co., Inc., No. 2021-1834 (Fed. Cir. June 3, 2022).  The CAFC found that the CDCA properly corrected an obvious minor clerical error in the asserted claims and held that defendant’s reliance on such error was not a defense to willful infringement.

On May 26, 2022, Judge Joan M. Azrack of the United States District Court for the Eastern District of New York granted defendants’ motion to dismiss or transfer for improper venue on account of plaintiffs’ failure to plead sufficient venue-related allegations, and further denied plaintiffs’ request for venue discovery.  UI Technologies, Inc., et al. v. Ricoma International Corp., et al., 2-22-cv-00220 (May. 26, 2022).

On May 23, 2022, the Court of Appeals for the Federal Circuit (CAFC) granted writs of mandamus to the United States District Court for the Eastern District of Texas in No. 2:19-cv-00362-JRG, Chief Judge J. Rodney Gilstrap, directing the district court to transfer patent cases to the United States District Court for the Northern District of California.  In re Google LLC, __ F.3d __ (Fed. Cir. May 23, 2022).  In its order, the CAFC held that the district court abused its discretion in failing to weigh the local interest factor in favor of transferee forum and erred in its analysis of other factors.

On May 20, 2022, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) vacated a final written decision from the U.S. Patent Trial and Appeal Board (“PTAB”), remanding for the PTAB to resolve a factual dispute over inventorship that it had left unaddressed.  Google LLC v. IPA Technologies Inc., No. 2021-1179 (Fed. Cir. May 19, 2022).

On May 6, 2022, the United States Court of Appeals for the Federal Circuit (“CAFC”) affirmed a final written decision from the U.S. Patent Trial and Appeal Board (“PTAB”) of the U.S. Patent and Trademark Office.  Konda v. Flex Logic Techs., Inc., No. 2022-1162, __ F. App’x __ (Fed. Cir. May 6, 2022).  The PTAB agreed that a prior art reference rendered unpatentable the challenged claims.

On April 29, 2022, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) vacated and remanded the final written decision of the Patent Trial and Appeal Board (“PTAB”), which found that the Petitioner, Auris Health, Inc. (“Auris”), had failed to demonstrate that the challenged claims were unpatentable as obvious based on evidence of general skepticism about the field of invention.  Auris Health, Inc. v. Intuitive Surgical Operations, __ F.4th __ (Fed. Cir. April 29, 2022).

On April 7, 2022, Judge Selna of the United States District Court for the Central District of California (CDCA) granted plaintiff’s motion for a presumption of patent infringement and to shift the burden pursuant to 35 U.S.C. § 295.  PureCircle USA Inc. et al v. SweeGen, Inc. et al, 8-18-cv-01679.

On April 18, 2022, the United States Court of Appeals for the Federal Circuit (CAFC) reversed the dismissal of a declaratory judgment action for lack of personal jurisdiction by the United States District Court for the Norther District of California (NDCA).  Apple, Inc. v. Zipit Wireless, Inc., No. 2021-1760 (Fed. Cir. Apr. 18, 2022).  The CAFC found that the NDCA erred in applying a bright-line rule that patent infringement notice letters can never form the basis for personal jurisdiction.

On April 4, 2022, the Court of Appeals for the Federal Circuit (CAFC) issued a precedential opinion vacating claim constructions ordered by the United States District Court for the District of Massachusetts in No. 1:17-cv-12375-IT, Judge Indira Talwani.  Littelfuse, Inc. v.  Mersen USA EP Corp., __ F.3d __ (Fed. Cir. April 4, 2022).  In its order, the CAFC concluded that the district court’s constructions incorrectly limited claim scope to a preferred embodiment and rendered certain dependent claims superfluous.

On April 1, 2022, the Court of Appeals for the Federal Circuit (CAFC) reversed a district court’s claim construction and corresponding summary judgement of non-infringement decisions.  The lower court had improperly relied on extrinsic evidence to determine what had been disclaimed by the applicant during prosecution.  Genuine Enabling Tech. v. Nintendo Co., Ltd., No. 2020-2167 (Fed. Cir. Apr. 1, 2022).

On March 18, 2022, the Patent Trial and Appeal Board of the United States Patent and Trademark Office exercised its discretion under 35 U.S.C. § 314(a) to deny institution of a petition for inter partes review filed by Google LLC challenging a patent asserted against it in an ITC investigation and a parallel district court case. Google LLC v. EcoFactor, Inc., IPR2021-01578, Paper 9 (PTAB Mar. 18, 2022).  The PTAB’s denial relied primarily on the late stage of the ITC investigation.

On March 15, 2022, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) affirmed the judgment of the U.S. District Court for the Eastern District of Texas, dismissing the complaint of plaintiff Repifi Vendor Logistics, Inc. (“Repifi”) for failure to state a claim upon which relief can be granted, because the asserted claims are ineligible for patent protection under 35 U.S.C. § 101. Repifi Vendor Logistics, Inc. v. IntelliCentrics, Inc., __ F.4th __ (Fed. Cir. Mar. 15, 2022).

On March 3, 2022, the United States District Court for the Western District of Texas entered a redacted copy of its February 24, 2022 order striking plaintiff’s expert report on damages and excluding the testimony of its damages expert.  Daedalus Blue LLC v. SZ DJI Technology Co., Ltd., No. 6:20-cv-00073-ADA, Dkt. No. 173 (W.D. Tex. Mar. 3, 2022).  The Court found the expert’s initial, timely-served report used the wrong parties in his hypothetical negotiation analysis and, for that reason, could not withstand defendant’s Daubert challenge.  On the other hand, the expert’s “supplemental” report re-doing his analysis with the correct parties was untimely and thus stricken.

On February 25, 2022, the United States District Court for the Western District of Texas (WDTX) filed a redacted copy of its February 11, 2022 order denying a motion to dismiss for improper venue.  WSOU Investments LLC d/b/a Brazos Licensing & Dev. v. Canon Inc., No. 6:20-cv-00980-ADA, Dkt. No. 137 (W.D. Tex. Feb. 25, 2022).  The WDTX, applying a more relaxed burden for purposes of establishing venue through an alter ego theory, found that defendant had a regular and established place of business in the District through the office of its wholly-owned subsidiary.

On February 23, 2022, Judge Payne of the United States District Court for the Eastern District of Texas (“EDTX”) granted plaintiff’s motion to sever defendant’s counterclaims asserting patent infringement of claims directed to technologies that are distinct from those at-issue in plaintiff’s offensive case.  United Services Automobile Association v. PNC Bank, NA, 2-20-cv-00319.

On February 10, 2022, the Court of Appeals for the Federal Circuit (CAFC) issued an order reversing a decision by the United States District Court for the District of New Jersey, No. 2:13-cv-04606-MSG, Judge Mitchell S. Goldberg, granting plaintiff-appellee’s motion for summary judgment of no invalidity of an asserted design patent under the on-sale bar.  Junker v. Medical Components, Inc., __ F.3d __ (Fed. Cir. Feb. 10, 2022).  In its order, the CAFC held that a letter offering a quotation for product covered by the patent does constitute an offer for sale under pre-AIA 35 U.S.C. § 102(b).

On February 11, 2022, the Court of Appeals for the Federal Circuit (CAFC) affirmed a decision of the Patent Trial and Appeal Board (PTAB) terminating a petitioner’s participation in an inter partes review (IPR) based on the estoppel provision of 35 U.S.C § 315(e)(1).  Intuitive Surgical Inc. v. Ethicon LLC, No. 2020-1481 (Fed. Cir. Feb. 11, 2022).

On February 2, 2022, the United States Court of Appeals for the Federal Circuit vacated a decision from the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office, finding that the Board erred in concluding that applicant admitted prior art (“AAPA”) constitutes “prior art consisting of patents or printed publications” under 35 U.S.C. § 311(b).  Qualcomm Inc. v. Apple Inc., __ F.4th __ (Fed. Cir. Jan. 27, 2022).

On January 27, 2022, the Court of Appeals for the Federal Circuit (“CAFC”) reversed the judgment of the United States District Court for the Northern District of California finding certain claims invalid on the ground of claim indefiniteness under 35 U.S.C. § 112(b), because the district court erred by applying an incorrect legal standard.  Nature Simulation Sys. Inc. v. Autodesk, Inc., __ F.4th __ (Fed. Cir. Jan. 27, 2022).

On January 19, 2022, the United States Court of Appeals for the Federal Circuit (CAFC) granted mandamus directing the United States District Court for the Eastern District of Texas (EDTX) to transfer the case against petitioner to the United States District Court for the Northern District of California (NDCA).  In re Netflix, Inc., No. 2022-110 (Fed. Cir. Jan. 19, 2022).  The CAFC found that Chief Judge Rodney Gilstrap’s denial of transfer under 28 U.S.C. 1404(a) was a clear abuse of discretion.

On January 6, 2022, Chief Judge Gilstrap of the United States District Court for the Eastern District of Texas denied a motion to stay pending ex parte reexamination (“EPR”) of the patent asserted in the litigation, and found that defendant was relying on the EPR as part of a strategy of “examiner shopping.”  Longhorn HD LLC v. NetScout Systems, Inc., 2-20-cv-00349.

On January 3, 2022, the Court of Appeals for the Federal Circuit (CAFC) affirmed the district court’s finding that a patent claim does not fail the written description requirement merely because the specification fails to explicitly state a negative claim limitation.  Novartis Pharmaceuticals v. Accord Healthcare Inc., No. 2021-1070 (Fed. Cir. Jan. 3, 2022).

On December 8, 2021, Judge Albright of the U.S. District Court for the Western District of Texas issued a sealed opinion granting the defendants’ motion to transfer venue to the Northern District of Georgia.  Lynk Labs, Inc v. Home Depot USA, Inc., No. 6:21-cv-00097-ADA (W.D. Tex. Dec. 8, 2021).  A public, redacted version has since published, in which the court addresses the public and private interest convenience factors, finding that the Northern District of Georgia was a clearly more convenient forum.

​On December 8, 2021, the Court of Appeals for the Federal Circuit (“CAFC”) affirmed the decision of the Patent Trial and Appeal Board  (“Board”), finding that petitioner Lenovo Holding Company, Inc. (“Lenovo”) had failed to show by a preponderance of the evidence that the claims it challenged in an inter partes review (“IPR”) were unpatentable.  Lenovo Holding Company, Inc. v. DoDots Licensing Solutions LLC, __ F.4th __ (Fed. Cir. Dec. 8, 2021).

On December 1, 2021, the United States Court of Appeals for the Federal Circuit (CAFC) issued two opinions related to the same inter partes review (IPR) petitioner’s standing to appeal two decisions of the Patent Trial and Appeal Board (PTAB).  ModernaTx, Inc. v. Arbutus Biopharma Corp, — F.4th — (Fed. Cir. Dec. 1, 2021); ModernaTx, Inc. v. Arbutus Biopharma Corp f/k/a Protiva Biotherapeutics, Inc., — F.4th — (Fed. Cir. Dec. 1, 2021).  In the first opinion, the CAFC found that petitioner had established standing by demonstrating a sufficient risk of an infringement suit based on the patent owner’s statements and actions.  In the second opinion, the CAFC found that petitioner lacked standing at the time the appeal was filed because petitioner’s evidence of financial burden from the validity of the patent at issue was too speculative.

On November 15, 2021, the United States District Court for the Eastern District of Texas found that the asserted claims directed at data collection, storage, management, and access were abstract, but refused to dismiss the claims under the second step in the Alice analysis. Gravel Rating Systems, LLC v. McAfee, LLC, Case No. 4:21-CV-259-ALM.

On November 5, 2021, the Court of Appeals for the Federal Circuit (CAFC) issued an order affirming a decision by the United States District Court for the District of New Jersey, No. 2:19-cv-05802-ES-MAH, Judge Esther Salas, dismissing a patent infringement suit for improper venue and failure to state a claim.  Celgene Corp. v. Mylan Pharmaceuticals Inc., __ F.3d __ (Fed. Cir. Nov. 5, 2021).  In its order, the CAFC affirmed that plaintiff had not established that the domestic defendants committed acts of infringement in New Jersey or had regular and established places of business there and had not sufficiently pleaded a claim against the foreign parent defendant.

On November 04, 2021, the Court of Appeals for the Federal Circuit (CAFC) reversed the Patent Trial and Appeal Board’s (PTAB’s) holding that a patent claim was obvious, rejecting both the PTAB’s finding that the prior art disclosed all claim limitations and the PTAB’s finding that the combination of references would result in a reasonable expectation of success. University of Strathclyde v. Clear-Vu Lighting LLC, No. 2020-2243 (Fed. Cir. Nov. 04, 2021).

On October 19, 2021, the United States Court of Appeals for the Federal Circuit (“CAFC”) granted a petition for writ of mandamus ordering the United States District Court for the Western District of Texas to transfer the underlying action to the United States District Court for the District of Colorado.  In re DISH Network, L.L.C., No. 2021-182 (Fed. Cir. Oct. 19, 2021).  The CAFC held that Judge Albright abused his discretion when denying DISH’s motion to transfer on convenience grounds pursuant to 28 U.S.C. § 1404(a).

On October 14, 2021, the Court of Appeals for the Federal Circuit (CAFC) affirmed the decision of the United States District Court for the District of North Dakota awarding attorneys’ fees on remand after it had previously found a patent unenforceable due to inequitable conduct.  Energy Heating, LLC v. Heat On-The-Fly, LLC, __ F.4th __ (Fed. Cir. Oct. 14, 2021).

On October 13, 2021, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued an opinion rejecting a patentee’s arguments challenging the constitutionality of the U.S. Patent and Trademark Office’s (USPTO’s) structure based on its purported financial interest in instituting inter partes reviews (IPRs).  Mobility Workx, LLC v. Unified Patents, LLC, --- F.3d --- (Fed. Cir. Oct. 13, 2021).  The CAFC found that the financial interests of the Patent Trial and Appeal Board (PTAB) leadership and of individual administrative patent judges (APJs) were too remote to violate due process under the U.S. Supreme Court’s decision in Tumey v. Ohio.

On September 10, 2021, the Court of Appeals for the Federal Circuit (CAFC) issued an order denying a petition for a writ of mandamus to the United States District Court for the Western District of Texas, Nos. 6:20-cv-00952-ADA, 6:20-cv-00953-ADA, 6:20-cv-00956-ADA, 6:20-cv-00957-ADA, and 6:20-cv-00958-ADA, Judge Alan D. Albright, directing dismissal of five patent infringement actions for insufficient service of process and lack of personal jurisdiction.  In re:  ONEPLUS TECHNOLOGY (SHENZEN) CO., __ F.3d __ (Fed. Cir. Sept. 10, 2021).  In its order, the CAFC let stand Judge Albrights’s decision finding that the mandamus petitioner’s right to service only under the Hague Convention is not clear and indisputable.

On September 10, 2021, Judge Richard G. Andrews of the U.S. District Court for the District of Delaware issued a Memorandum Opinion on claim construction.  Peloton Interactive, Inc. v. ICON Health & Fitness, Inc., No. 20-662-RGA, slip. op. (D. Del. Sept. 10, 2021).  Judge Andrews held that certain claims of the asserted patent containing “translator device…” limitations were invalid as indefinite under 35 U.S.C. § 112 ¶ 6 because they failed to disclose corresponding structure for the claimed function.

On September 9, 2021, the Court of Appeals for the Federal Circuit (CAFC) affirmed the decision of the Patent Trial and Appeal Board in a post-grant review proceeding construing the claim term “pressure control assembly” as a means-plus-function limitation and finding the challenged claims indefinite for lack of corresponding structure.  Team Worldwide Corp. v. Intex Recreation Corp., __ F.3d __ (Fed. Cir. Sept. 9, 2021)

On September 1, 2021, the United States Court of Appeals for the Federal Circuit (CAFC) found that the District Court for the Central District of California erred in awarding damages for sales of infringing products prior to the date that the infringer received actual notice of infringement for failure to prove its compliance with the patent marking statute.  Lubby Holdings LLC v. Henry Chung, __ F.3d __ (Fed. Cir. Sep. 1, 2021).

On August 26, 2021, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an order affirming orders from the United States District Court for the Northern District of California excluding certain opinions of plaintiff’s damages expert.  MLC Intellectual Property LLC v. Micron Technology Inc., __ F.3d __ (Fed. Cir. August 26, 2021).  In its decision, the CAFC let stand the district court judge’s orders precluding plaintiff’s damages expert from characterizing certain license agreements as supporting his reasonable royalty rate determination.

On August 12, 2021, the United States District Court for the District of Delaware issued an opinion granting plaintiff Microsoft Corporation’s (“Microsoft”) motion for judgment on the pleadings related to infringement counterclaims brought by SynKloud Technologies, LLC (“SynKloud”).  SynKloud Techs. LLC v. HP, Inc., et al., No. 19-1360-RGA (D. Del. Aug. 12, 2021).  The Court ruled that the patents at issue related to the patent-ineligible abstract idea of “requesting an institution to obtain data from remote locations and to store that data in storage space assigned to a specific user.”

On August 5, 2021, Judge Gilstrap of the U.S. District Court for the Eastern District of Texas issued a Memorandum Opinion and Order Supported by Findings of Fact and Conclusions of Law regarding defendant Apple’s counterclaim for prosecution laches.  Personalized Media Communications, LLC v. Apple, Inc., No. 2:15-cv-01366-JRG, slip op. (E.D. Tex. Aug. 5, 2021).  Judge Gilstrap found and declared the asserted patent unenforceable under the doctrine of prosecution laches.  In doing so, Judge Gilstrap overturned a $308.5 million jury verdict.

On August 2, 2021, the United States Court of Appeals for the Federal Circuit (“CAFC”) granted a petition for a writ of mandamus ordering the United States District Court for the Western District of Texas to transfer the underlying action to the Central District of California.  In re Hulu, LLC, __ F.3d __ (Fed. Cir. Aug. 2, 2021).

On July 21, 2021, the United States District Court for the Eastern District of Texas, Marshall Division, denied plaintiff’s motion for summary judgement that its patent was not invalid due to inter partes review (“IPR”) estoppel pursuant to 35 U.S.C. § 315(e)(2).  General Access Solutions, Ltd. v. Sprint Spectrum LLC, 2-20-cv-00007 (Robert W. Schroeder, III).

On July 13, 2021, the Court of Appeals for the Federal Circuit (CAFC) issued an order denying a petition for a writ of mandamus to the United States District Court for the Western District of Texas, No. 6:20-cv-00622-ADA, Judge Alan D. Albright, directing transfer.  In re: TCO AS, __ F.3d __ (Fed. Cir. July 13, 2021).  In its order, the CAFC let stand Judge Albright’s decision denying Petitioner’s motion to transfer.

On July 13, 2021, the United States Court of Appeals for the Federal Circuit (“CAFC”) affirmed in part, reversed in part, and remanded appellant Bot M8 LLC’s (“Bot M8”) appeal of several underlying orders related to the dismissal of its patent infringement action against Sony Corporation of America (“Sony”).  Bot M8 LLC v. Sony Corporation of America, ___ F.3d ___ (Fed. Cir. July 13, 2021).  The CAFC clarified that while a plaintiff need not plead infringement on an element-by-element basis, reciting claim elements and merely concluding that the accused products have those elements is insufficient.

On July 6, 2021, Judge Noreika of the United States District Court for the District of Delaware issued an Order denying defendant’s motion in limine to preclude plaintiff from asserting claims of a patent that were found unpatentable by the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office in an inter partes review.  TrustID, Inc. v. Next Caller Inc., Slip. Op. (D. Del. July 6, 2021).  The Court determined that plaintiff was not collaterally estopped.

On June 30, 2021, the Court of Appeals for the Federal Circuit (CAFC) granted petitions for writs of mandamus ordering the United States District Court for the Western District of Texas to transfer the underlying actions to the Northern District of California.  In re Samsung Elecs. Co., LTD, __ F.3d __ (Fed. Cir. June 30, 2021).

On June 21, 2021, the United States District Court for the Southern District of California awarded defendants’ fees and costs pursuant to 35 U.S. Code § 285 for work performed in defending against claims of patent infringement in district court, and more significantly, also awarded defendants’ fees and costs for a related appeal, the related Covered Business Method (“CBM”) proceedings, and an appeal of the CBM proceedings.  Ameranth, Inc. v. Domino's Pizza, LLC et. al., 3-12-cv-00733.

On June 7, 2021, Judge Christina A. Snyder of the United States District Court for the Central District of California granted defendant’s motion to dismiss plaintiff’s complaint for lack of personal jurisdiction.  Trustee of the Summers Family Trust TA Neak Products Buff WA Pty, Ltd v. National Distribution Warehouse, Inc. d/b/a Teacher's Choice, case no. 2:20-cv-10741-CAS-Ex.  Judge Snyder specifically found that plaintiff had not carried its burden to establish purposeful direction targeted at California or a nexus to a forum-related activity.

On June 1, 2021, the United States Court of Appeals for the Federal Circuit (“CAFC”) vacated-in-part and remanded a ruling from the U.S. District Court for the District of Columbia related to prosecution laches.  Hyatt v. Hirshfeld, --- F.3d --- (Fed. Cir. June 1, 2021).  The CAFC determined that the appellant, U.S. Patent and Trademark Office (“PTO”), met its burden to prove prosecution laches, and remanded to the district court to determine whether appellee Gilbert Hyatt had a legitimate reason to excuse his prosecution delay.

On May 21, 2021, Judge Alan D. Albright of the United States District Court for the Western District of Texas granted a motion to transfer venue under 28 U.S.C. § 1404.  10Tales, Inc. v. TikTok Inc., Case No. 6:20-cv-00810-ADA (W.D. Tex. May 21, 2021).  The Court found that, under Fifth Circuit precedent, the Northern District of California was a “clearly more convenient” forum.

On May 12, 2021, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion reversing the decision of the U.S. District Court for the Northern District of California dismissing, for lack of personal jurisdiction, a declaratory judgment noninfringement action. Trimble Inc. v. PerDiemCo LLC, __ F.3d __ (Fed. Cir. May 12, 2021).

On May 11, 2021, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming a judgement of the United States District Court for the District of Delaware finding all asserted claims of appellant’s patents on DNA-sequencing technology invalid and denying appellant’s motion for a new trial.  Pac. Biosciences of Cal., Inc. v. Oxford Nanopore Techs., Inc., __ F.3d __ (Fed. Cir. May 11, 2021).  In its decision, the CAFC upheld a jury verdict finding the asserted claims invalid under 35 U.S.C. § 112 for lack of enablement, and affirmed the district court’s decision that appellee’s opening statement respecting the impact of the trial on the fight against Covid-19 did not warrant a new trial.

On May 5, 2021, the Court of Appeals for the Federal Circuit (CAFC) upheld a decision of the United States District Court for the Central District of California setting aside a judgment and injunction pursuant to Federal Rule of Civil Procedure 60(b)(3).  Cap Export, LLC v. Zinus, Inc., ___ F.3d ___, (Fed. Cir. May 5, 2021).  The CAFC found that the district court did not abuse its discretion in granting a motion to vacate the judgment under Rule 60(b)(3) where the patentee’s president and expert witness misrepresented his knowledge of highly material prior art in his deposition.

On April 22, 2021, the United States District Court for the Eastern District of Texas granted defendants’ motion opposing enhanced damages under 35 U.S.C. § 284.  Wapp Tech Ltd. Partnership v. Seattle Spinco, Inc., No. 4:18-cv-469 (E.D. Tex. Apr. 22, 2021).  The Court found plaintiffs’ argument that defendants did not present a good faith defense unpersuasive, and instead ruled that the case “was a ‘garden-variety’ patent case, rather than an egregious case of misconduct.”

On April 20, 2021, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an order granting a petition for a writ of mandamus directing Judge Alan D. Albright of the U.S. District Court for the Western District of Texas (“WDTX”) to transfer a case to the U.S. District Court for the Southern District of Florida (“SDFL”), pursuant to 28 U.S.C. § 1404(a).  In re TracFone Wireless, Inc., __ F. App’x __ (Fed. Cir. April 20, 2021).  The CAFC found that Judge Albright clearly abused his discretion when, in denying TracFone’s motion to transfer, he found that SDFL was not a clearly more convenient forum to litigate the case between the parties. 

On April 13, 2021, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming the decision of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB), finding that the claims of the challenged patent had not been proved obvious because the petition for inter partes review (IPR) failed to show that there would have been a motivation to combine the two allegedly invalidating prior art references.  Apple Inc. v. INVT SPE LLC, —F.3d — (Fed. Cir. Apr. 13, 2021).

On April 5, 2021, the Supreme Court of the United States issued an opinion reversing a decision by the Court of Appeals for the Federal Circuit (CAFC) that had found Google liable for copying elements of Oracle’s Java computer code.  Google LLC v. Oracle Inc., No. 18-956, 593 U.S. ____ (2021).  According to the Court, Google’s copying, which was limited to only those lines of code needed to enable Java programmers to create new and transformative programs, was a fair use as a matter of law.

On March 25, 2021, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming a ruling of the Patent Trial and Appeal Board (“PTAB”) finding patent claims directed to methods of interpreting genetic data to be patent ineligible.  In re Bd. of Trs. of the Leland Stanford Junior Univ., --- F.3d --- (Fed. Cir. Mar. 25, 2021).  The CAFC found that the rejected claims are drawn to patent-ineligible abstract mathematical calculations and statistical modeling, and that the claim limitations do not establish an inventive concept sufficient to transform such subject matter into patentable subject matter.

On March 11, 2021, Judge Alan D. Albright of the United States District Court for the Western District of Texas denied defendant’s motion to dismiss for improper venue or to transfer pursuant to 28 U.S.C. § 1404.  Precis Group, LLC, v. Tracfone Wireless, Inc., 6-20-CV-00303 (W.D. Tex. Mar. 11, 2021).  The Court found that a retail store operating in the district under an assumed name was defendant’s established place of business, and therefore sufficient to establish venue.
 

On March 9, 2021, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming estoppel and obviousness rulings by the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (“PTAB”).  Uniloc 2017 LLC v. Facebook Inc., ___ F.3d ___ (Fed. Cir. March 9, 2021).  The CAFC ruled that it had jurisdiction to review the PTAB’s decision as to estoppel related to the inter partes review (“IPR”) estoppel provision of Section 315(e)(1).  The CAFC further ruled that a joined party to a first IPR was not barred from maintaining review of claims that the primary challenger became estopped from challenging based on a decision in a second IPR to which the challenger was joined.
 

On March 2, 2021, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion reversing the district court’s conclusion that a claim was not invalid as indefinite.  Rain Computing, Inc. v. Samsung Elecs., Am., Inc., __ F.3d __ (Fed. Cir. Mar. 2, 2021).  The CAFC held that the claim term, “user identification module,” was a means-plus-function limitation under 35 U.S.C. § 112 ¶ 6, and invalid as indefinite for failure to disclose corresponding structure (here, an algorithm).
 

On February 24, 2021, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming the obviousness decision of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB). Daikin Indus., LTD v. The Chemours Co. FC, LLC, __ F.3d __ (Fed. Cir. Feb. 24, 2021).  The CAFC found that the petition for inter partes review (IPR) properly set forth a substitution-based theory of obviousness and that the PTAB’s substitution analysis was supported by substantial evidence.
 

On February 10, 2021, the Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming a decision by the United States District Court for the District of Delaware, invalidating all asserted claims of appellant’s four related patents under 35 U.S.C. § 112.  Infinity Computer Products v. Oki Data Americas Inc., __ F.3d __ (Fed. Cir. Feb. 10, 2021).  In its decision, the CAFC ruled that the asserted claims were rendered indefinite by conflicting statements made by appellant during prosecution of the asserted patents.
 

On January 28, 2021, the U.S. District Court for the Northern District of California (NDCA) issued an order granting summary judgment of noninfringement under the doctrine of equivalents.  Fluidigm Corp. v. IONpath, Inc., Case No. 3:19-cv-05639-WHA, Dkt. No. 210 (N.D. Cal. Jan. 28, 2021).  The NDCA found that the patentee “abdicated” its burden under the doctrine of equivalents by refusing to engage in the hypothetical claim analysis required under defendant’s ensnarement defense.
 

On January 21, 2021, the United States District Court for the Western District of Pennsylvania adopted the report and recommendation of the special master recommending the court grant defendant’s motion to exclude options set forth in an expert report prepared on behalf of patentee-plaintiff, because those opinions were contradicted by patentee-plaintiff’s statements to the patent office made during reexamination of the at-issue patent.
 

On January 6, 2021, Judge James V. Selna of the United States District Court for the Central District of California granted, in part, defendant Feit Electric Co., Inc.’s (“Feit”) motion for partial summary judgment related to plaintiff Zadro Prods, Inc.’s (“Zadro”) alleged failure to properly mark certain products.  Zadro Prods, Inc. v. Feit Electric Co., Inc., Case No. SACV-20-101-JVS (C.D. Cal. Jan. 6, 2021).  Judge Selna found that:  (1) Zadro’s alleged failure to disclose that it marked its products in a discovery response was not grounds for summary judgment; (2) an issue of material fact remained as to whether Zadro’s products practiced one of the patents in suit; and (3) Zadro’s marking of the packaging of its products which practiced one of the patents in suit (rather than the products themselves) was insufficient under 35 U.S.C § 287.
 

On January 9, 2021, Judge Alsup of the U.S. District Court for the Northern District of California granted, in part, a request for attorneys’ fees to the prevailing defendant.  Finjan, Inc. v. Juniper Network, Inc., case no. C 17-05659 (N.D. Cal. Jan. 9, 2021).  Judge Alsup found that plaintiff’s case stood out as exceptional in certain respects and, accordingly, issued a limited award for attorneys’ fees under 35 U.S.C. § 285.
 

On December 14, 2020, the Court of Appeals for the Federal Circuit (CAFC) affirmed a decision by the United States District Court for the Central District of California holding all asserted claims of appellant’s ’305 patent ineligible under 35 U.S.C. § 101.  Adaptive Streaming Inc. v. Netflix, Inc., __ F.3d __ (Fed. Cir. December 14, 2020).  The CAFC concluded that the district court correctly found that the claims were directed to an abstract idea and lacked any inventive concept, and that dismissal of appellant’s complaint under Rule 12(b)(6) was proper.
 

On December 8, 2020, the U.S. District Court for the Eastern District of Texas (EDTX) unsealed its November 30, 2020, order granting dismissal without prejudice for lack of personal jurisdiction.  TriOptima AB v. Quantile Techs. Ltd., Case No. 2:19-cv-00390-JRG, Dkt. No. 154 (E.D. Tex. Dec. 8, 2020); TriOptima AB v. Quantile Techs. Ltd., Case No. 2:19-cv-00390-JRG, Dkt. No. 149 (E.D. Tex. Nov. 30, 2020).  The EDTX found that the United Kingdom-based defendant was not subjected to specific personal jurisdiction in Texas by providing financial services that can affect Texas interests through a secure customer portal website.
 

On December 1, 2020, the United States District Court for the Northern District of Illinois issued an opinion denying plaintiff Abbott Laboratories’ motion to dismiss infringement counterclaims brought by defendants Grifols Diagnostic Solutions Inc., Grifols Worldwide Operations Ltd., and Novartis Vaccines and Diagnostics, Inc.  Abbott brought a declaratory judgment action against defendants asserting that U.S. Patent No. 7,205,101 (“the ’101 patent”) is invalid.  Defendants filed a counterclaim asserting that Abbott infringes claim 7 of the ’101 patent.  Abbott moved to dismiss the counterclaim on the basis that claim 7 is invalid as a matter of law under 35 U.S.C. § 101 because it is directed to a patent-ineligible natural phenomenon.
 

On November 18, 2020, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) denied institution of a petition for inter partes review (IPR).  Google LLC v. EcoFactor Inc., case no. IPR2020-00946 (PTAB Nov. 18, 2020).  In its decision, the PTAB exercised its discretion under 35 U.S.C. § 314(a) to deny institution because of a co-pending investigation before the International Trade Commission (ITC) involving the challenged patent.
 

On November 10, 2020, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion reversing-in-part the invalidity judgment of the United States District Court for the District of Delaware, as it pertained to patent eligibility, and vacating its remaining infringement, willfulness, and prior art invalidity findings.  C.R. Bard Inc. et al. v. Angiodynamics, Inc., __ F.3d __ (Fed. Cir. Nov. 10, 2020).
 

On Tuesday, November 3, 2020, the Court of Appeals for the Federal Circuit (CAFC) denied a petition for a writ of mandamus requesting the CAFC vacate the United States District Court for the Central District of California’s (C.D. Cal.) order granting an adverse inference instruction in connection with Ivantis Inc.’s failure to preserve relevant evidence for litigation.  In re Ivantis, Inc., F.3d __, (Fed. Cir. Nov. 3, 2020).  The CAFC found no reason to depart from the usual practice of waiting until after final judgment to review the C.D. Cal.’s order.
 

On October 23, 2020, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion vacating and remanding a bench ruling of the United States District Court for the District of Delaware holding all 159 claims in five asserted patents ineligible under 35 U.S.C. § 101. Realtime Data LLC v. Reduxio Systems, Inc., __ F.3d __ (Fed. Cir. October 23, 2020).  In its decision, the CAFC concluded that the district court’s analysis of patent eligibility under Section 101 was too cursory to allow for meaningful appellate review, and directed the district court to consider the issue further and elaborate on its reasoning.
 

On October 16, 2020, the United States District Court for the Northern District of California issued an order granting summary judgment of noninfringement under 35 U.S.C. § 271(e)(1). Edwards Lifesciences Corp. v. Meril Life Sciences Pvt. Ltd. , Case No. 4:19-cv-06593-HSG, Dkt. No. 98 (N.D. Cal., Oct. 16, 2020).  The Court found that defendant’s importation of samples into the United States for conducting preclinical investigations and for intended demonstrations at a clinical conference were exempt from patent infringement liability, regardless of whether there was a commercial purpose underlying such conduct.
 

On October 8, 2020, Judge Andrea R. Wood of the United States District Court for the Northern District of Illinois denied plaintiff Think Product, Inc.’s motion to reconsider a finding of patent invalidity.  Think Products, Inc. v. Acco Brands Corp. and Acco Brands, USA LLC, No. 18-cv-07506 (N.D. Ill. Oct. 8, 2020).  The Court had previously granted defendants Acco Brands Corporation’s and Acco Brands, USA LLC’s motion for summary judgment invalidating two patents based on collateral estoppel arising from rulings by the Patent Trial and Appeal Board (“PTAB”) invalidating for obviousness two similar patents.
 

On October 6, 2020, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) instituted an inter partes review (IPR) proceeding, rejecting Patent Owner’s argument that the PTAB should exercise its discretion under 35 U.S.C. § 325(d) to deny institution because the same prior art and arguments were before the Patent Office Examiner during original prosecution.  Sony Interactive Entertainment LLC v. Bot M8, LLC, Case No. IPR2020-00726 (PTAB Oct. 6, 2020).  In doing so, the PTAB agreed with Petitioner that the Examiner overlooked a reference’s teaching. 
 

On September 30, 2020, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming the decision of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (“PTAB”), finding certain challenged claims unpatentable under the PTAB’s claim construction of “low-power radio frequency signal,” and finding that substantial evidence supports the PTAB’s underlying factual findings relating to the challenged claims.  Emerson Electric Co. v. SIPCO, LLC, __ F.3d __ (Fed. Cir. Sept. 30, 2020).
 

On September 24, 2020, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming-in-part, reversing-in-part, vacating, and remanding a final judgment of the United States District Court for the Eastern District of Texas that Appellant’s patent claims are not infringed; that Cross-appellant is estopped from raising certain validity challenges based on its joinder to an inter partes review (“IPR”) before the Patent Trial and Appeal Board (“PTAB”); and that asserted claim 6 was not improperly broadened during reexamination.  Network-1 Technologies, Inc. v. Hewlett-Packard Co., __ F.3d __ (Fed. Cir. Sept. 24, 2020).  In its decision, the CAFC vacated the district court’s judgment of non-infringement as based on incorrect claim construction, vacated the district court’s judgment as a matter of law (“JMOL”) on validity for improperly applying statutory estoppel, and affirmed the district court’s decision with respect to improper claim broadening.
 

On September 10, 2020, the United States District Court for the Northern District of California granted a motion to dismiss allegations of patent infringement pursuant to 35 U.S.C. § 101.  FullView, Inc. v. Polycom, Inc., No. 18-CV-00510-EMC, 2020 WL 5430309 (N.D. Cal. Sept. 10, 2020).  The district court found that the at-issue claims were ineligible for two reasons.  First, the claims were not directed to a patent-eligible category under Section 101.  Second, the claims were directed to the abstract idea of combining multiple pictures to create one larger picture without offering an inventive concept, as required under the two-step test in Alice Corp. Pty. v. CLS Bank Int’l, 573 U.S. 208 (2014).
 

On September 8, 2020, the United States International Trade Commission (“ITC”) issued an opinion suspending enforcement of remedial orders pending appeal of the Patent Trial and Appeals Board’s (“PTAB”) final written decision (“FWD”) of unpatentability in a parallel inter partes review (“IPR”) proceeding.  Certain Unmanned Aerial Vehicles and Components Thereof, Inv. No. 337-TA-1133, Comm’n Op. (Sept. 8, 2020); Certain Unmanned Aerial Vehicles and Components Thereof, Inv. No. 337-TA-1133, Final Determination (Aug. 20, 2020).  In its opinion, the ITC relied on its broad discretion in selecting a remedy, its recognition of the PTAB’s leading role in assessing the validity of patent claims, and Congress’s goal for IPRs to be a substitute for litigation on patent validity issues.
 

On August 27, 2020, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion reversing the decision of the United States District Court for the District of Delaware dismissing plaintiff Baxalta Inc.’s (“Baxalta”) infringement suit against Genetech, Inc. (“Genentech”).  Baxalta Inc. v. Genentech, Inc., __ F.3d __ (Fed. Cir. Aug. 27, 2020).
 

On August 18, 2020, Director Iancu of the U.S. Patent and Trademark Office (“USPTO”) issued a Memorandum entitled “Treatment of Statements of the Applicant in the Challenged Patent in Inter Partes Reviews Under § 311.”  The Memo provides binding guidance concerning the USPTO’s view of the use of “applicant admitted prior art” (referred to as “AAPA” or “APA,” for short) by a petitioner to support a patentability challenge in an inter partes review (“IPR”).
 

On August 20, 2020, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming the decision of the U.S. District Court for the Northern District of California dismissing plaintiff-appellant Security People, Inc.’s suit under the Administrative Procedure Act (“APA”) challenging the constitutionality of the cancellation of its patent in an inter partes review proceeding (“IPR”).  Security People, Inc. v. Iancu, __ F.3d __ (Fed. Cir. Aug. 20, 2020).
 

On August 3, 2020, Judge Alan Albright of the United States District Court for the Western District of Texas granted defendants’ motion for judgment on the pleadings that plaintiff was barred from asserting infringement by defendants’ smartphone applications.  Lighthouse Consulting Group, LLC v. BB&T Corp., No. 6-19-CV-00594-ADA.
 

On Friday, July 28, 2020, the United States Court of Appeals for the Federal Circuit (“CAFC”) directed the United States District Court for the Western District of Texas (W.D. Tex.) to grant Adobe Inc.’s (“Adobe”) motion to transfer pursuant to 28 U.S.C. § 1404(a) to the United States District Court for the Northern District of California (N.D. Cal.).  In re: Adobe Inc., F.3d __, (Fed. Cir. Jul. 28, 2020).  The CAFC found that the court (i) did not properly accord weight to convenience of the transferee forum; (ii) overlooked that the willing witness factor favored transfer; and (iii) “ran afoul of governing precedent in giving dispositive weight to its ability to more quickly schedule a trial.”  The CAFC ultimately held that “the district court’s denial of transfer here was a clear abuse of discretion.”
 

On July 22, 2020, the Court of Appeals for the Federal Circuit (CAFC) affirmed the Patent Trial and Appeal Board’s (PTAB) denial of a rehearing on a motion to amend the claims of a patent challenged in an inter partes review (IPR).  Uniloc 2017 LLC v. Hulu, LLC & Netflix, Inc., No. 19-1686, __ F.3d __ (Fed. Cir. Jul. 22, 2020).  The CAFC held that the PTAB may consider any ground of unpatentability—not just anticipation or obviousness grounds based on patents or printed publications under Section 311(b)—when considering the patentability of substitute claims during an IPR.
 

On July 13, 2020, the United States District Court for the Eastern District of Michigan issued a ruling on a motion to dismiss claims relating to willfulness, induced, and contributory infringement.  Michigan Motor Techs. LLC v. Volkswagen Aktiengesellschaft, Case No. 19-10485 (E.D. Mich. July 13, 2020).  The Court granted the motion after finding that plaintiff had not met the pleading requirements from Fed. R. Civ. P. 8(a)(2), and specifically ruled that an allegation of willful infringement for enhanced damages requires a pleading of egregious conduct.
 

On July 7, 2020, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an Order on Motion vacating and remanding the underlying decisions in ex parte appeals of the Patent Trial and Appeal Board (“PTAB”) of the U.S. Patent and Trademark Office (“USPTO”) affirming the examiner’s rejection of patent application claims.  In re Boloro Global Ltd., No. 2019-2349 (Fed. Cir. July 7, 2020).  In doing so, the CAFC applied the reasoning from its decisions in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019) and VirnetX Inc. v. Cisco Sys., Inc., No. 2019-1671, 2020 WL 2462797 (Fed. Cir. May 13, 2020), which held that administrative patent judges (“APJs”) were “principal officers” and not constitutionally appointed at the time the PTAB issued its final decisions in the underlying inter partes review and re-exam proceedings, respectively.
 

On July 1, 2020, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion vacating and remanding the decision of the United States District Court for the Southern District of Florida denying attorney fees following a judgment of patent invalidity under 35 U.S.C. § 101. Electronic Communication Techs., LLC v. ShoppersChoice.com, LLC, F.3d (Fed. Cir. July 1, 2020).
 

On June 23, 2020, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) instituted a third inter partes review (IPR) of U.S. Patent No. 7,039,435.  LG Electronics Inc. v. Bell Northern Research LLC, case numbers IPR2020-00318.  In its decision, the PTAB declined to exercise its discretion under 35 U.S.C. § 314(a) to deny review on efficiency and fairness grounds.
 

On June 8, 2020, the Court of Appeals for the Federal Circuit (CAFC) reversed an order of the United States District Court for the Central District of California (CDCA) awarding fees under 35 U.S.C. § 285 and 15 U.S.C. § 1117(a).  Munchkin, Inc. v. Luv N’ Care, Ltd., No. 2019-1454, __ F.3d __ (Fed. Cir. Jun. 8, 2020).  The CAFC found that the CDCA abused its discretion because the facts relied upon by the movant did not support a determination that plaintiff acted unreasonably in bringing and maintaining its case.
 

On May 29, 2020, the U.S. District Court for the Southern District of New York issued an opinion granting defendant StoneCastle Cash Management LLC’s motion to dismiss related to plaintiff Island Intellectual Property, LLC’s patent infringement, misappropriation of trade secrets, and related state law claims.  Island Intellectual Property, LLC v. StoneCastle Asset Management LLC, No. 19-CV-4792 (JPO) (S.D.N.Y. May 29, 2020).  The Court first ruled that the two groups of asserted patents, directed towards computer-implemented, multibank reciprocal-deposit systems, failed the Supreme Court’s two-step Alice test, and were therefore unpatentable under 35 U.S.C. § 101.  The Court also ruled that Island’s misappropriation of trade secrets claims were too generalized to survive a motion to dismiss. 
 

On May 22, 2020, the Patent Trial and Appeal Board (“PTAB”) of the U.S. Patent and Trademark Office issued a decision instituting inter partes review (“IPR”) over Patent Owner’s argument that the PTAB should exercise its discretion to deny institution because the IPR petition relied on several references that were considered by the patent examiner during prosecution of the application leading to the patent-at-issue.  Medacta USA, Inc. v. RSB Spine, LLC, IPR Case No. 2020-00264, Paper 24 (PTAB May 22, 2020).  The PTAB found that the examiner “erred in a manner material to the patentability of the challenged claims” by overlooking certain aspects of the prior art references.
 

On May 19, 2020, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming the obviousness decision of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB), and finding non-appealable the PTAB’s decision to institute inter partes review (IPR) notwithstanding a challenge that Petitioner-Appellee failed to identify “all real parties in interest.”  ESIP Series 2, LLC v. Puzhen Life USA, LLC, __ F.3d __ (Fed. Cir. May 19, 2020).  The CAFC found that substantial evidence supported the PTAB’s finding that a skilled artisan would have been motivated to combine the teachings of each prior art reference to arrive at the claimed invention, and that Patent Owner-Appellant’s challenge to the PTAB’s “real parties in interest” determination was not appealable.
 

On May 14, 2020, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming a final decision by the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) that appellant’s patent claims are unpatentable.  Lone Star Silicon Innovations LLC v. Iancu, __ F.3d __ (Fed. Cir. May 14, 2020).  In its affirmance, the CAFC found that the PTAB had correctly construed a disputed claim term and that substantial evidence supported the PTAB’s finding of obviousness.
 

On Friday, May 5, 2020, the United States Court of Appeals for the Federal Circuit (“CAFC”) re-designated as precedential its January 28, 2020 order in Cienna Corp. v. Oyster Optics, LLC and Andrei Iancu, __ F.3d __, (Fed. Cir. May 5, 2020).  The order affirmed the judgement of the Patent Trial and Appeal Board (“Board”) finding the challenged claims patentable.
 

On April 23, 2020, the Court of Appeals for the Federal Circuit (CAFC) dismissed an appeal of an inter partes review (IPR) proceeding for lack of Article III standing.  Argentum Pharms. LLC v. Novartis Pharms. Corp., No. 2018-2273, __ F.3d __ (Fed. Cir. Apr. 23, 2020).  The Federal Circuit found that the petitioner failed to prove that it suffered an injury in fact.
 

On April 20, 2020, the Supreme Court of the United States issued an opinion holding that an inter partes review (“IPR”) institution decision by the United States Patent and Trademark Office’s Patent Trial & Appeal Board (“PTAB”) on the impact of a dismissal-without-prejudice of a district court complaint on 35 U.S.C. § 315(b)’s one-year time-bar limitation to file an IPR is not appealable.  Thryv, Inc. v. Click-to-Call Techs., LP, No. 18-916, 590 U.S. ____ (2020).  According to the Court, 35 U.S.C. § 314(d)’s prohibition on appeal of IPR institution decisions and the Court’s decision in Cuozzo Speed Techs., LLC v. Lee, 136 S.Ct. 2131, 579 U.S. ___ (2016) were determinative.
 

On April 14, 2020, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion reversing a finding of patentability by the U.S. District Court for the Eastern District of Texas.  Ericsson Inc. v. TCL Commc’n Tech. Holdings Ltd., No. 2018-2003, __ F.3d __ (Fed. Cir. 2020).  The CAFC first found in favor of appellant TCL on the procedural issue of whether it could decide TCL’s ineligibility argument, despite the issue not being raised below in its motion for judgment as a matter of law.  Then, on the merits, the CAFC reversed the district court’s denial of TCL’s summary judgment motion that the asserted patent claims failed the Supreme Court’s two-step Alice test, and were therefore unpatentable under 35 U.S.C. §101.
 

On April 7, 2020, the United States International Trade Commission (ITC) published the public version of an earlier final initial determination by an ITC administrative law judge (ALJ) finding that the applicants of the asserted patent, directed at harness-type child carriers, intentionally made false statements to the United States Patent Office (PTO) during examination.  In re Certain Child Carriers and Components Thereof, Inv. No. 337-TA-1154.  The ALJ ruled that this intentional misconduct was egregious misconduct rendering the patent unenforceable.
 

On March 26, 2020, the Court of Appeals for the Federal Circuit (CAFC) affirmed the judgement of the Patent Trial and Appeal Board (Board) concerning claim construction.  Genentech, Inc. v. Iancu, F.3d __, (Fed. Cir. Mar. 26, 2020).  The CAFC found a single statement in the prosecution history instructive on claim construction where the claims and specification do not clearly define the claimed term.  The claims were clearly under that claim construction.

 

On March 18, 2020, the United States Court of Appeals for the Federal Circuit (“CAFC”) found that the Patent Trial and Appeal Board (“PTAB”) erred in allowing same-party and new-issue joinder in inter partes review (“IPR”) proceedings.  Facebook, Inc. v. Windy City Innovations, Inc., Nos. 2018-1400, 2018-1401, 2018-1402, 2018-1403, 2018-1537, 2018-1540, 2018-1541, __ F.3d __ (Fed. Cir. Mar. 18, 2020).  The CAFC vacated the PTAB’s final written decisions with respect to the claims that were improperly added through joinder.
 

COVID-19 has taken an unprecedented toll on the United States and the world at large.  It has impacted nearly every facet of both professional and personal life and, with that, the patent landscape, too—especially as it pertains to the interplay between in-person events (trials, hearings, depositions and the like) and the need for “social distancing.”
 

On March 5, 2020, the United States District Court for the District of Delaware issued an Opinion granting defendant’s motion for judgment on the pleadings based on patent-ineligible subject matter.  CG Tech. Dev., LLC v. Fanduel, Inc., Case No. 1:17-cv-01041-RGA (D. Del. Mar. 5, 2020).  The Court rejected plaintiff’s law-of-the-case argument and held that the claim-at-issue failed the Supreme Court’s two-step Alice test, and was therefore unpatentable under 35 U.S.C. §101.
 

On March 6, 2020, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an Opinion affirming a final written decision by the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office (“USPTO”).  Customedia Techs., LLC v. Dish Network Corp., Case Nos. 2018-2239, 2019-1000, ____ F.3d ____ (Fed. Cir. Mar. 6, 2020).  The CAFC held that the PTAB correctly found that the challenged patent claims were unpatentable under 35 U.S.C. § 101 because they were directed to patent ineligible subject matter, as interpreted by the Supreme Court’s decision in Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014).

On February 19, 2020, the Court of Appeals for the Federal Circuit (CAFC) affirmed the judgment of the United States District Court for the Southern District of Florida concerning the notice requirement for collecting back-damages in cases of patent infringement.  Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., ___ F.3d __ (Fed. Cir. Feb. 19, 2020).  In particular, the CAFC found that the statutory patent marking requirement continues to limit damages after a patentee or licensee ceases sales of unmarked products, and that willful infringement does not establish actual notice under the statute.  35 U.S.C. § 287. 
 

On February 13, 2020, the Court of Appeals for the Federal Circuit (CAFC) granted a writ of mandamus, ordering the Eastern District of Texas (“EDTX”) to dismiss or transfer the patent infringement suit filed there against Google LLC (“Google”).  In re Google LLC, No. 2019-126, __ F.3d __ (Fed. Cir. Feb, 13, 2020).  Applying In re Cray, CAFC found that the EDTX lacked venue under the 28 U.S.C. § 1400(b).
 

On January 7, 2020, Magistrate Judge Christopher Burke of the District of Delaware issued a Report and Recommendation recommending denial of plaintiff’s motion to dismiss counterclaims of unenforceability based on the doctrine of infectious unenforceability.  Guardant Health, Inc. v. Foundation Medicine, Inc., Case No. 1:17-cv-1616-LPS-CJB, D.I. 343 (D. Del. Jan. 7, 2020).  The Court found defendants’ allegations supported the existence of an “immediate and necessary” relation between plaintiff’s alleged concealment of the true inventorship of certain earlier-issued patents and enforcement of the patent at issue in the counterclaims.

On January 30, 2020, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming the a final decision by the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) that appellant’s patent claims are unpatentable.  Koninklijke Philips NV v. Google LLC, __ F.3d __ (Fed. Cir. Jan. 30, 2020).  While the CAFC ruled that the PTAB lacked the discretion to institute review inter partes review (IPR) based on grounds not presented in an IPR petition, it affirmed the PTAB’s obviousness decision based on a ground that was contained in appellee’s petition.
 

On January 14, 2020, the United States District Court for the Northern District of Illinois issued a ruling on a motion to compel documents withheld as being privileged, containing attorney work product, and subject to the common interest doctrine.  Beijing Choice Elec. Tech. Co. v. Contec Med. Sys. USA, Inc., slip op. (N.D. Ill. Jan 14, 2020).  The Court granted-in-part and denied-in-part the motion.

On January 6, 2020, the Court of Appeals for the Federal Circuit (CAFC) reversed the Patent Trial and Appeal Board (PTAB) judgment in an inter partes examination (IPR) of a U.S. patent.  Google LLC v. Koninklijke Philips N.V., Appeal No. 2019-1234 (Fed. Cir. Jan. 6, 2020) (nonprecedential).  The CAFC applied the obvious-to-try inquiry and found that the claims were obvious.

On December 27, 2019, the Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming the decision of invalidity on obviousness grounds of the United States District Court for the District of Delaware.  Persion Pharms. LLC v. Alvogen Malta Operations Ltd., __ F.3d __ (Fed. Cir. Dec. 27, 2019).  The CAFC found no clear error in the district court’s reliance on inherency in its analysis or in its factual findings.

On Thursday, December 12, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion reversing a final determination and vacating exclusion orders from the International Trade Commission (ITC) against appellant garage door opener importers.  Techtronic Indus. Co. v. Int’l Trade Comm’n, —F.3d— (Fed. Cir. Dec. 12, 2019).  The CAFC held that the ITC erred in its claim construction, and confirmed that, where a patentee consistently describes an invention as having a particular feature, the patentee’s claims must be construed as including that feature. 

On December 5, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion vacating-in-part, reversing-in-part and remanding for further proceedings the decision and order of the United States District Court for the Central District of California imposing “fair, reasonable and non-discriminatory” (FRAND) rates in a binding worldwide license between an owner of certain standard-essential patents (SEPs) and a manufacturer of mobile devices that implement technology covered by the SEPs.  TCL Commc’n Tech. Holdings Limited v. Telefonaktiebolaget LM Ericsson, F.3d (Fed. Cir. Dec. 5, 2019).  The CAFC ruled that the district court deprived the SEP owner of its right to a jury trial when the district court decided from the bench to impose a term of the FRAND license that was—in substance—compensatory relief for the mobile phone manufacturer’s past wrongful acts.
 

On November 15, 2019, the Court of Appeals for the Federal Circuit (CAFC) reversed a decision by the United States District for the District of Delaware granting defendants’ motion for judgment on the pleadings based on patent-ineligible subject matter.  Koninklijke KPN N.V. v. Gemalto M2M GmbH, __ F.3d __ (Fed. Cir. Nov. 15, 2019).  The CAFC held that the claims-at-issue are directed to a non-abstract improvement in the functionality of an existing technological process, and thus, the claims passed muster under 35 U.S.C. § 101, as interpreted by the Supreme Court’s decision in Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014).
 

On November 8, 2019, the Court of Appeals for the Federal Circuit (CAFC) vacated the judgment of the Patent Trial and Appeal Board (PTAB) reversing the patent examiner’s rejection of new claims presented by Firepass Corp. (Firepass) in an inter partes reexamination of a U.S. patent.  Airbus S.A.S. v. Firepass Corp., __ F.3d __, (Fed. Cir. Nov. 8, 2019).  The CAFC found that the PTAB erred in its analysis of analogous art.
 

On November 7, 2019, the Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming a Patent Trial and Appeal Board (“PTAB”) decision finding invalidity on obviousness grounds.  Telefonaktiebolaget LM Ericsson v. TCL Corp. et al., __ F.3d __ (Fed. Cir. Nov. 7, 2019).  The CAFC ruled that the PTAB did not abuse its discretion in admitting late-submitted evidence regarding the public availability of a foreign publication and in finding that the foreign publication was available as prior art.

On October 30, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion vacating a decision of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) that Liqwd, Inc.’s patent claims are unpatentable as obvious.  Liqwd, Inc. v. L'Oreal USA, Inc., __ F.3d __ (Fed. Cir. Oct. 30, 2019).  The CAFC ruled that the PTAB erred in concluding that evidence of copying the patented invention was legally irrelevant.
 

On October 23, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming the finding of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) that Koninklijke Philips N.V.’s patent claims are not unpatentable.  Google LLC v. Koninklijke Philips N.V., __ Fed. Appx. __ (Fed. Cir. Oct. 23, 2019).  The CAFC ruled that the PTAB correctly found that Google failed to meet its burden of establishing that the claims were unpatentable as anticipated and that it was not an abuse of discretion for the PTAB to decline to consider Google’s untimely, backup obviousness argument.
 

On October 17, 2019, the Court of Appeals for the Federal Circuit (“CAFC”) vacated the judgement of the United States District Court for the District of Delaware granting a motion to dismiss for failure to state a claim on the ground that the defendant had a valid license to the patents-in-suit.  Fraunhofer-Gesellschaft v. Sirius XM Radio Inc., __ F.3d __ (Fed. Cir. Oct. 17, 2019).  The CAFC found that the license defense could not be resolved on a motion to dismiss because the license was ambiguous, and remanded to the district court. 
 

On October 3, 2019, the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office issued a Decision Denying Institution of Inter Partes Review (IPR) under 35 U.S.C. § 314(a).  PayPal, Inc. v. IOENGINE LLC, IPR Case No. IPR2019-00884, Paper 22 (PTAB Oct. 3, 2019).  The PTAB exercised its statutorily-authorized discretion to deny institution based primarily on a customer-supplier relationship between the instant petitioner and a prior petitioner.
 

On October 3, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming the patent-ineligibility judgment of the United States District Court for the District of Delaware.  Am. Axle & Mfg., Inc. v. Neapco Holdings LLC, __ F.3d __ (Fed. Cir. Oct. 3, 2019).  The CAFC ruled that the district court properly granted summary judgment that a patent directed to methods for manufacturing propshafts with liners capable of simultaneously damping two modes of vibrations was patent-ineligible under 35 U.S.C. § 101.

On September 25, 2019, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion vacating a final written decision by the Patent Trial and Appeal Board (“PTAB”) finding certain patent claims eligible for covered-business-method-patent (“CBM”) review.  SIPCO, LLC v. Emerson Elec. Co., —F.3d—, (Fed. Cir. September 25, 2019).  The CAFC remanded to the PTAB for further consideration of the statutory “technical invention” exception to CBM eligibility.

On September 18, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion vacating and remanding the jurisdictional finding of the United States District Court for the Southern District of Florida.  Inspired Development Group, LLC v. Inspired Products Group, LLC, __ F.3d __ (Fed. Cir. Sept. 18, 2019).  The CAFC ruled that the district court lacked subject matter jurisdiction because the parties’ claims did not arise under the patent laws of the United States pursuant to 28 U.S.C. § 1338(a).

On September 9, 2019, the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office designated two decisions as precedential.  Infiltrator Water Technologies, LLC v. Presby Patent Trust, IPR Case No. IPR2018-000224, Paper 18 (PTAB Oct. 1, 2018) (designated: Sept. 9, 2019); General Electric Company v. United Technologies Corporation, IPR Case No. IPR2017-00491, Paper 9 (PTAB July 6, 2017) (designated: Sept. 9, 2019).  In Infiltrator Water, the PTAB held that a dismissal of a complaint without prejudice for lack of personal jurisdiction does not reset the one-year time bar for a petitioner to file a petition for inter partes review.  In General Electric, the PTAB denied institution where the patent owner disclaimed the challenged claims.

On August 29, 2019, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (“PTAB”) designated as precedential a January 31, 2019 decision in Cisco Systems, Inc. v. Chrimar Systems, Inc., Case IPR2018-01511 (PTAB Jan. 31, 2019) (Paper 11).  The PTAB found that 35 U.S.C. § 315(a) bars a patent challenger from challenging a patent at the PTAB more than one year after filing a declaratory judgement (“DJ”) action in district court challenging the same patent, even if the patent challenger voluntarily withdrew the DJ action without prejudice.

On August 16, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion vacating and remanding the United States District Court for the Northern District of California’s decision granting a Rule 12(c) motion for judgment on the pleadings.  MyMail, Ltd. V. ooVoo, LLC, __ F.3d __ (Fed. Cir. Aug. 16, 2019).  The CAFC held that the district court erred by declining to resolve a claim construction dispute prior to its ruling that the patents asserted by plaintiff MyMail are directed to unpatentable subject matter.

On August 29, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion dismissing three related appeals, each challenging the decision of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) to terminate an inter partes review (IPR). Biodelivery Scis. Int’l v. Aquestive Therapeutics, Inc., __ F.3d __ (Fed. Cir. Aug. 29, 2019).  The CAFC found that 35 U.S.C. § 314(d) bars it from reviewing the PTAB’s decision, even though the PTAB had previously issued a final written decision of patentability in each IPR.

On August 12, 2019, the Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion vacating and remanding the obviousness finding of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (“PTAB”).  MTD Products Inc. v. Iancu, __ F.3d __ (Fed. Cir. Aug. 12, 2019).  The CAFC ruled that the PTAB’s claim construction on which its obviousness finding was premised was incorrect because the construction conflated corresponding structure in the patent’s specification with a structural definition for the term, instead of construing the term as a means-plus-function term under 35 U.S.C. § 112, ¶ 6.  

On August 2, 2019, the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office designated as precedential two Decisions on Institution.  Valve Corp. v. Elecs. Scripts Prods. Inc., IPR Case Nos. IPR2019-00064, -00065, -00085, Paper 10 (PTAB May 1, 2019) (designated: Aug. 2, 2019); Becton, Dickinson & Co. v. B Braun Melsungen AG, Case No. IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (designated: Aug. 2, 2019).  In Valve, the PTAB held that General Plastic factor 1—concerning discretionary denials under 35 U.S.C. § 314(a) for “follow-on” petitions—applied to a joined petitioner.  In Becton, Dickinson, the PTAB delineated a list of factors to consider when determining whether to exercise its discretion to deny a petition under 35 U.S.C. § 325(d) where “the same or substantially the same prior art or arguments previously were presented to the Board.”

On July 29, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming a decision of the District Court for the District of Delaware dismissing a patent-infringement complaint for failure to state a claim.  Amgen Inc. v. Computer Biosciences. Inc., __ F.3d __ (Fed. Cir. July 29, 2019).  The CAFC affirmed the District Court’s application of the doctrine of argument-based estoppel and held that the patent owner could not succeed on its infringement claim.

On July 23, 2019, the Court of Appeals for the Federal Circuit (“CAFC”) made public an opinion affirming a district court’s sua sponte summary judgment that design patents covering the hood and headlamps of Ford’s F-150 truck are not invalid for claiming functional features.  Automotive Body Parts Assoc. v. Ford Global Techs., LLC, ___ F.3d ___ (Fed. Cir. July 23, 2019).  The CAFC rejected arguments that the aesthetic appeal of replacement parts that match the original equipment makes the designs functional.  The CAFC also rejected an argument for a design-patent-specific exception to the permissible-repair doctrine.

On Monday, July 15, 2019, the International Trade Commission (ITC) issued the public version of an opinion affirming in part an initial determination issued by Administrative Law Judge (ALJ) Dee Lord.  In re Certain Road Construction Machines and Components Thereof, Investigation No. 337-TA-1088,—Fed. Reg.—(July 15, 2019).  The ITC affirmed the ALJ’s determination that asserted patent claims directed to automated paving machines were directed to patent-ineligible subject matter and therefore invalid.

On July 10, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion dismissing for lack of standing an appeal of a Patent Trial and Appeal Board (PTAB) inter partes review (IPR) decision finding certain patent claims not unpatentable.  General Electric Co. v. United Technologies Corp., —F.3d—, (Fed. Cir. July 10, 2019).  The CAFC ruled that the patent challenger lacked standing to appeal the adverse decision even though, among other things, it is a direct competitor of the patent owner.

On June 24, 2019, the United States Supreme Court granted certiorari to review whether a decision by the Patent Trial and Appeal Board (PTAB) to institute an inter partes review (IPR) is an appealable decision.

On June 14, 2019, the Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming Patent Trial and Appeal Board (“PTAB”) decisions declining to dismiss petitions for inter partes review (IPR).  Regents of the Univ. of Minn. v. LSI Corp. et al., —F.3d—, (Fed. Cir. June 14, 2019).  The CAFC ruled that the doctrine of sovereign immunity does not bar IPR of state-owned patents.

On May 23rd, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming the Patent Trial and Appeal Board’s inter partes review (IPR) unpatentability decision.  Papst Licensing GmbH v. Samsung Elec. Am. Inc., __ F.3d __(Fed. Cir. May 23, 2019).  The CAFC ruled that claim-construction and prior-art rulings in an earlier IPR created issue preclusion barring the patent owner from contesting those issues in the appeal of a later IPR.

On May 21, 2019, the Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion reversing a summary judgment of patent invalidity granted by the U.S. District Court for the District of Delaware.  Quest Integrity USA, LLC, v. Cokebusters USA Inc., __ F.3d__ (Fed. Cir. May 21, 2019).  The CAFC ruled that the district court abused its discretion and wrongly applied the sham-affidavit doctrine when it disregarded affidavits submitted by the patent owner, and that those affidavits created a material issue of disputed fact and should have blocked summary judgment.

On May 13, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion on an appeal from a Final Written Decision in an inter partes review (IPR) proceeding before the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office.  AVX Corp. v. Presidio Components, Inc., __ F.3d__ (Fed. Cir. May 13, 2019).  The CAFC held that the appellant, AVX, lacked standing to appeal the decision and therefore dismissed the appeal.

On May 1, 2019, the Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming a grant of attorney’s fees and costs under 35 U.S.C. § 285 by the United States District Court for the Southern District of California.  Thermolife Int’l LLC et al. v. GNC Corp. et al., __ F.3d__ (Fed. Cir. May 1, 2019).  The CAFC ruled that the district court had correctly decided that the (consolidated) cases were exceptional under § 285 because plaintiffs failed to conduct an adequate pre-filing investigation and because they engaged in a pattern of bringing suit against numerous defendants without carefully reviewing their claims.

On April 22, 2019, the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO) made public its Final Written Decision on the patentability of challenged claims in a covered business method patent review (CBM) proceeding.  Fidelity Information Services, LLC v. Mirror Imaging, LLC, CBM Case No. CBM2017-00064 (PTAB Apr. 22, 2019).  The PTAB held the challenged claims were patent ineligible under 35 U.S.C. § 101, consistent with the USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019).

On April 19, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion reversing a decision of the U.S. District Court for the District of Oregon.  Versatop Support Sys. v. Georgia Expo, Inc., —F.3d—, (Fed. Cir. April 19, 2019).  The CAFC ruled that the district court had incorrectly found no infringement based on the “use in commerce” requirement of the Lanham Act.

On April 5, 2019, the Patent Trial and Appeal Board (“PTAB”) at the United States Patent and Trademark Office designated as “Informative” two prior decisions relating to the PTAB’s discretion about whether to institute inter partes review (“IPR”) proceedings for trial.  In each, the PTAB exercised its discretion to deny institution of an IPR proceeding, even though the Petitioner demonstrated a reasonable likelihood of prevailing on some claims.

On April 1, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming a dismissal under Federal Rule of Civil Procedure 12(b)(6) by the United States District Court for the Eastern District of Virginia.  Cleveland Clinic Foundation et al. v. True Health Diagnostics, —F. App’x—, (Fed. Cir. Apr. 1, 2019).  The CAFC ruled that the district court had correctly decided that the asserted claims are invalid as patent ineligible abstract ideas under 35 U.S.C. § 101.

On March 18, 2019, the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office designated as precedential a Decision on Patent Owner’s Request for Rehearing.  Amazon.com, Inc. v. Uniloc Luxembourg S.A., IPR Case No. IPR2017-00948 (PTAB Jan. 18, 2019).  The PTAB held that, while a Petitioner may only challenge patent claims in an inter partes review based on prior art patents and publications under 35 U.S.C. §§ 102 and 103, it is nonetheless proper to consider patent eligibility under 35 U.S.C. § 101 for any proposed substitute claims.

On Monday, March 4, 2019, the United States Supreme Court issued an opinion affirming a dismissal of the plaintiff’s copyright claim. Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, 586 U.S. ____ (2019). The Supreme Court held that a copyright plaintiff may not commence a lawsuit until after the Register of Copyrights officially registers the copyright.

On Tuesday, February 26, 2019, the Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming a dismissal under Federal Rule of Civil Procedure 12(b)(6) by the U.S. District Court for the Northern District of Florida. University of Florida Research Foundation, Inc. v. General Electric Company, —F.3d— (Fed. Cir. Feb. 26, 2019). The CAFC ruled that the district court had correctly decided that the patent claims are invalid under 35 U.S.C. § 101.


On February 14, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion reversing and remanding a decision by the United States District Court for the District of Delaware granting summary judgment of invalidity for lack of written description.  CenTrak, Inc. v. Sonitor Techs., Inc., —F.3d—, (Fed. Cir. Feb. 14, 2019).  The CAFC ruled that there were genuine issues of material fact as to whether it was necessary to disclose in the patent specification particular implementation details to satisfy the written description requirement.

On February 13, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion vacating covered-business-method review (CBM) decisions by the Patent Trial and Appeal Board (PTAB).  Trading Technologies International, Inc. v. IBG LLC, —F.App’x—, (Fed. Cir. Feb. 13, 2019).  The CAFC ruled that the challenged patents were not eligible for CBM review because they were for “technological inventions.”

On Wednesday, January 30, 2019, Judge Kiyo A. Matsumoto of the United States District Court for the Eastern District of New York denied the request of defendant Presidio Components, Inc., (the “Company”) to supplement its invalidity contentions.  American Technical Ceramics Corp. et al. v. Presidio Components, Inc., Case No. 14-cv-6544 (E.D.N.Y. Jan. 30, 2019).  Judge Matsumoto determined that the Company was statutorily estopped from raising invalidity grounds that it did not include in its petition for inter partes review (“IPR”) to the U.S. Patent and Trademark Office (“USPTO”), and, thus barred the Company from supplementing its invalidity contentions in the subsequent district court proceeding. 

On Thursday, January 24, 2019, the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO) issued a decision exercising its statutorily authorized discretion to deny institution of a petition for inter partes review (IPR).  Deeper, UAB v. Vexilar, Inc., IPR Case No. 2018-01310 (PTAB Jan. 24, 2019).  The PTAB determined that instituting IPR would be an inefficient use of the PTAB’s finite resources because the petitioner had shown a reasonable likelihood of prevailing on its invalidity challenges with respect to only two of the twenty-three challenged claims as to one of the four grounds.
 

On January 22, 2019, the United States Supreme Court issued an opinion affirming a decision by the Court of Appeals for the Federal Circuit (CAFC) that the Leahy-Smith America Invents Act (AIA) did not change the “on sale” bar.  Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., 586 U.S., case no. 17-1229.  The Supreme Court held that a commercial sale to a third party may still place the invention “on sale” under 35 U.S.C. § 102(a)(1) of the AIA, even if the third party was required to keep confidential the details of the invention.

On Monday, January 14, 2019, the Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion vacating and remanding a decision by the Trademark Trial and Appeal Board (“TTAB”) refusing to register a design mark based on likelihood of confusion.   In re Guild Mortgage Co., —F.3—, (Fed. Cir. January 14, 2019).  The CAFC ruled that the TTAB failed to consider the relevant evidence and argument directed to DuPont factor 8.

On January 9, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming a decision on reconsideration by the Patent Trial and Appeal Board (PTAB) that held challenged claims to be unpatentable on a non-instituted ground that was not addressed by the PTAB in its final written decision.  AG Technologies S.A. v. Amazon.com Inc., —F.3d—, (Fed. Cir. Jan. 9, 2019).  The CAFC ruled that the PTAB had not exceeded its statutory authority or deprived the patent owner of fair process by belatedly considering the additional ground.

On Thursday, December 20, 2018, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming a dismissal under Federal Rule of Civil Procedure 12(b)(6) by the U.S. District Court for the Western District of Washington.  Glasswall Solutions Ltd. v. Clearswift Ltd., —F.App’x—, (Fed. Cir. Dec. 20, 2018).  The CAFC ruled that the district court had correctly decided that the asserted claims are invalid as patent ineligible abstract ideas under 35 U.S.C. § 101.

On Friday, December 7, 2018, the Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion reversing and remanding a decision by the United States District Court for the Northern District of Texas, in which the district court dismissed plaintiff’s declaratory judgment action against defendant for lack of personal jurisdiction.  Jack Henry & Associates, Inc. v. Plano Encryption Technologies LLC, —F.3d— (Fed. Cir. Dec. 7, 2018).  The CAFC ruled that defendant’s patent assertion campaign against multiple banks in the Northern District of Texas was sufficient to establish the minimum contacts necessary to subject PET to personal jurisdiction in that venue.

On Thursday, November 29, 2018, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming a decision by the District Court for the Eastern District of Tennessee dismissing Maxchief Investments Limited’s (“Maxchief”) declaratory judgment action against Wok & Pan, Ind., Inc. (“Wok”) for lack of personal jurisdiction.  Maxchief Investments Limited v. Wok & Pan, Ind., Inc., —F.3d— (Fed. Cir. Nov. 29, 2018).  The CAFC ruled that Wok lacked sufficient contacts with the forum state of Tennessee to support a finding of specific personal jurisdiction.

On November 19, 2018, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion reversing in part a patent-infringement judgment of the United States District Court for the Northern District of California.  Enplas Display Device Corp. v. Seoul Semiconductor Co., —F.3d—, (Fed. Cir. November 19, 2018).  The CAFC ruled that the jury’s damages award was based on sales of non-infringing products, and reversed the District Court’s denial of judgment as a matter of law as to the damages award.

On Friday, November 9, 2018, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming in part a final written decision by the Patent Trial and Appeal Board (PTAB).   Arista Networks, Inc. v. Cisco Sys., Inc., —F.3d— (Fed. Cir. Nov. 9, 2018).  The CAFC ruled that the PTAB had correctly decided that the equitable doctrine of assignor estoppel does not apply in inter partes review (“IPR”) proceedings.

On November 6, 2018, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming a final written decision by the Patent Trial and Appeal Board (PTAB) finding the patent claims that had been challenged by inter partes review (IPR) to be not unpatentable.   Acceleration Bay, LLC v. Activision Blizzard Inc., —F.3d—, (Fed. Cir. November 6, 2018).  The CAFC ruled that the patent challenger had not proved that an article available on the Internet before the critical date was a “printed publication,” and that the article therefore was not available as prior art.

On October 30, 2018, the Court of Appeals for the Federal Circuit issued an opinion vacating an earlier decision from the International Trade Commission (“ITC”) regarding a shoe company’s (the “Company”) trademark in its All Star shoes trade dress.  Converse, Inc. v. Int’l Trade Comm’n, —F.3d—, (Fed. Cir. October 20, 2018).  The Court held that the presumption of secondary meaning that applies to registered marks does not apply before the registration.  The Court also clarified the considerations to be assessed in determining whether a mark has acquired secondary meaning. 

On October 23, 2018, the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office issued a final written decision in an inter partes review (IPR) challenging United States Patent No. 9,073,641.  C&D Zodiac, Inc. v. B/E Aerospace, Inc., Case IPR2017-01275, paper no. 41 (October 23, 2018).  In that decision, the PTAB relied on evidence of prior-art designs to show unpatentability, even though prior art in IPRs is limited to patents and printed publications.

On Tuesday, October 2, 2018, the International Trade Commission (ITC) issued the public version of an initial determination issued by Administrative Law Judge (ALJ) Clark S. Cheney. In re Certain Magnetic Tape Cartridges and Components Thereof, Investigation No. 337-TA-1058,—Fed. Reg.— (October 2, 2018).  The ALJ applied prior art to find asserted patent claims invalid, even though the respondents may have been estopped by statute from relying on that prior art.

 

On October 10, 2018, the United States Patent and Trademark Office (“USPTO”) announced that it had published its final rule changing the America Invents Act (“AIA”) trial proceeding claim-construction standard to the same standard used in district court and International Trade Commission (“ITC”) proceedings.  (83 FR 51340.)  As we previously reported, see Shearman & Sterling LLP, USPTO Issues Proposed Rulemaking to Adopt District-Court Claim Construction Standard for AIA Trial Proceedings, the USPTO in May 2018 proposed this change as part of its ongoing efforts to “shape and improve” AIA trial proceedings.

On October 1, 2018, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming a decision by the Patent Trial and Appeal Board (PTAB) cancelling a patent in inter partes reexamination.  Natural Alternatives Int’l, Inc. v. Iancu, —F.3d— (Fed. Cir. Oct. 1, 2018).  The PTAB and the CAFC both rejected the patent-owner’s argument that the patent in question was entitled to claim priority to one of the owner’s earlier patent applications.

On September 28, 2018, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion reversing a decision by the United States District Court for the Southern District of New York in which the District Court had sanctioned plaintiff’s counsel with an award of attorneys’ fees pursuant to 28 U.S.C. § 1927.  Gust, Inc. v. AlphaCap Ventures, LLC, —F.3d— (Fed. Cir. September 28, 2018).  Applying an “exacting” abuse-of-discretion standard, the CAFC ruled that the District Court erred in finding plaintiff’s lawyers to have litigated in bad faith, and therefore reversed the award of attorneys’ fees.

On Monday, September 17, 2018, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion reversing a final written decision by the Patent Trial and Appeal Board (PTAB) and finding the patent claims that had been challenged by inter partes review (IPR) to be unpatentable for obviousness.  E.I. du Pont de Nemours & Co. v. Synvina C.V., —F.3d—, (Fed. Cir. September 17, 2018).  The CAFC first ruled that the patent challenger had standing to appeal, and then on the merits determined that the PTAB had applied the wrong legal standard for obviousness, and therefore reversed.

On September 12, 2018, the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office issued a decision exercising its statutorily authorized discretion to deny institution of a petition for inter partes review (IPR).  NHK Spring Co., Ltd. v. Intri-Plex Techs., Inc., IPR Case No. 2018-00752 (PTAB Sept. 12, 2018).  In doing so, the PTAB ruled that the IPR petition’s reliance on substantially the same arguments that the patent owner overcame during original prosecution justified a discretionary denial in this instance, as did the advanced stage of a parallel litigation involving the same parties.

On September 4, 2018, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming a judgment of the United States District Court for the District of Delaware finding a patent claim invalid for indefiniteness.  Intellectual Ventures I LLC v. T-Mobile USA, Inc. et al., —F.3d—(Fed. Cir. September 4, 2018).  The CAFC ruled that the claim was invalid because it included a limitation that was entirely subjective and user-defined.

On August 20, 2018, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion reversing a decision of the Patent Trial and Appeal Board (PTAB) in which the PTAB had rejected a design patent application for indefiniteness.  In re Ron Maatita, —F.3d—, (Fed. Cir. Aug. 20, 2018).  The CAFC ruled that the PTAB had wrongly applied the indefiniteness standard in the context of a design patent claiming the design of the sole of an athletic shoe.

On Thursday, August 16, 2018, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion denying a patent challenger’s petition for a writ of mandamus in connection with the Patent Trial and Appeal Board’s decision not to institute requested inter partes reviews (IPR).  In re. Power Integrations, Inc., —F.3d—, (Fed. Cir. August 16, 2018).  The CAFC ruled that the mandamus petition was tantamount to an appeal of the non-institution decision, which is foreclosed by statute.

On Thursday, August 16, 2018, the Court of Appeals for the Federal Circuit (CAFC), sitting en banc, issued an opinion reversing the Patent and Trial Board’s determination that a dismissal without prejudice of a district-court complaint resets the statutory clock for filing inter partes reviews (IPR), and vacating the Patent and Trial Board’s final written decision.  Oracle Corp. v. Click-to-Call Techs. LP, —F.3d—, (Fed. Cir. August 16, 2018).  The CAFC held that service of an infringement complaint triggers the one-year bar regardless of whether that complaint is later dismissed without prejudice.

On Friday, August 3, 2018, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion dismissing the patent challenger’s appeal in an inter partes review (IPR) proceeding. JTEKT Corp. v. GKN Automotive Ltd., —F.3d—, (Fed. Cir. August 3, 2018).  The CAFC determined that the unsuccessful patent challenger lacked standing to pursue the appeal and so dismissed it, leaving the unsuccessful patent challenger subject to the estoppel attached to an unsuccessful IPR under the America Invents Act, without any review by an Article III court.

On Wednesday, August 1, 2018, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion reversing a district court dismissal in a design-patent case.  Advantek Marketing, Inc. v. Shanghai Walk-Long Tools Co., —F.3d—, (Fed. Cir. August 1, 2018).  The CAFC determined that prosecution-history estoppel did not bar the patent owner’s infringement claim, and remanded the case for further proceedings.

On July 24, 2018, the Court of Appeals for the Federal Circuit (“CAFC”) unsealed an opinion vacating a final written decision in two inter partes reviews (“IPRs”).  Applications in Internet Time, LLC v. RPX Corp., —F.3d— (Fed. Cir. July 9, 2018).  The CAFC remanded the IPRs to the Patent Trial and Appeal Board (“PTAB”) for further consideration of whether an RPX client was a real party-in-interest (“RPI”) to the IPRs, in which RPX had claimed to be the sole RPI.

In Saint Regis Mohawk Tribe et al. v. Mylan Pharmaceuticals Inc. et al., the Federal Circuit held that tribal sovereign immunity cannot be asserted in inter partes review (“IPR”) proceedings before the Patent Trial and Appeal Board (“Board”).

On July 10, 2018, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion in an appeal from a District Court decision in a patent-infringement case, affirming the District Court’s finding of patent validity, but vacating the District Court’s award of enhanced damages of two-and-a-half times the original damages amount. Polara Eng. Inc. v. Campbell Co., Appeal Nos. 2017-1974 and 2017-2033 (Fed. Cir. July 10, 2018). The CAFC found that the District Court wrongly assessed the closeness of the case, and remanded the enhanced-damages issue to the District Court for further consideration.

On July 2, 2018, a motions panel of the Court of Appeals for the Federal Circuit (CAFC) issued an order remanding an inter partes review (IPR) to the Patent Trial and Appeal Board (PTAB). Adidas AG v. Nike, Inc., Appeal Nos. 2018-1180 and 2018-1181. The CAFC noted that the final written decision that was the subject of the appeal had addressed only one of the two sets of grounds of unpatentability that had been asserted in the petition for inter partes review, and directed the PTAB to issue a new decision addressing both grounds.

On June 22, 2018, the United States Supreme Court reversed the Court of Appeals for the Federal Circuit (CAFC) on the issue of whether damages suffered overseas can be recovered as remedy for infringement under the U.S. patent laws. WesternGeco LLC v. ION Geophysical Corp., 585 U.S. ____, case no. 16-1011. The Supreme Court ruled that such damages can be recoverable.

On June 11, 2018, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed a district court’s denial of a motion for recovery of attorneys’ fees. Stone Basket Innovations, LLC v. Cook Medical LLC, appeal no. 2017-2330. The CAFC ruled that the fee-seeking defendant had not made its litigation position sufficiently clear early enough in the litigation to justify an award of attorneys’ fees pursuant to the “exceptional case” provision of 35 U.S.C. § 285.

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On June 1, 2018, the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office designated as precedential an opinion in which it issued instructions concerning patent claim amendments in inter partes review (“IPR”) proceedings.  Western Digital v. SPEX Techs., Case No. IPR2018-00082, paper no. 13 (April 25, 2018).  The PTAB also made a specific note of the duty of candor applicable to both patent owners and petitioners.

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On May 31, 2018, the United States Court of Appeals for the Federal Circuit (CAFC) denied a request for en banc rehearing of its Berkheimer patent-eligibility panel opinion.  Berkheimer v. HP Inc., Appeal No. 2017-1437.  (See our prior post on the CAFC’s Berkheimer opinion here.)  Eight of the Court’s twelve judges who decided the issue signed opinions concurring in or dissenting from the decision declining en banc rehearing.  The concurring opinion filed by five of the judges (Judges Moore, Dyk, O’Malley, Taranto, and Stoll) is of particular interest because of its emphasis on the fact issue the Court recently found to be underlying the question of patent eligibility under 35 U.S.C. § 101.

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On May 19, 2018, the United States District Court for the Eastern District of Wisconsin denied a patent owner’s request for reconsideration of a decision that the patent owner had not complied with the marking statute, and that therefore its damages in the pending infringement case would be limited, pursuant to that statute.  Acantha LLC v. Depuy Orthopaedics, Inc., et al., Case No. 15-C-1257 (E.D. Wis. May 19, 2018).  The Court rejected the patent owner’s argument that placing a patent notice in its surgical guide constituted sufficient marking.

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Between May 8, 2018 and May 11, 2018, the United States Court of Appeals for the Federal Circuit issued a series of three opinions clarifying questions left open in the wake of the Supreme Court’s decision in TC Heartland LLC v. Kraft Foods Grp. Brands LLC, which held that for purposes of the patent venue statute, 28 U.S.C. § 1400(b), a domestic corporation “resides” only in its state of incorporation.

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As part of its ongoing efforts to “shape and improve” post-grant trial proceedings under the America Invents Act (AIA), the United States Patent and Trademark Office (USPTO) announced on May 8, 2018, a Notice of Proposed Rulemaking to change the AIA trial proceeding claim-construction standard to the same standard used in district court and International Trade Commission (ITC) proceedings.  83 FR 21221.    

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On Tuesday, May 1, 2018, the United States Court of Appeals for the Federal Circuit issued a decision affirming liability of plaintiff’s trade secret misappropriation claim, but vacating the monetary damages award.  Texas Advanced Optoelectronic Solutions, Inc. v. Renesas Electronics America, Inc., f/k/a Intersil Corp., Appeal Nos. 2016-2121, 2016-2208, and 2016-2235.  The Court held that plaintiff Texas Advanced Optoelectronic Solutions (“TAOS”) did not have a jury trial right on its claim for disgorgement of defendant Intersil’s profits, since disgorgement is equitable in nature and was not historically heard by law courts, at least as it concerned intellectual property claims. 

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On April 25, 2018, the United States Supreme Court ruled on two cases concerning inter partes review (“IPR”) proceedings:  Oil States Energy Svcs. v. Green’s Energy Grp., case no. 16-712, and SAS Inst. Inc. v. Iancu, case no. 16-969.  In the first case, the Court ruled that IPRs can be a Constitutionally permissible way for the Patent Office to revoke already-issued patents, and in the second case, the Court ruled that the Patent Office is required to rule on either all or none of the patent claims challenged in a request for IPR.

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On April 16, 2018, the United States Supreme Court heard oral argument in the case of WesternGeco LLC v. ION Geophysical Corporation, which presents the question whether a patent owner can recover damages suffered outside of the United States for infringing acts that occurred within the United States.

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On April 5, 2018, the United States International Trade Commission (ITC) published the public version of an earlier order by an ITC administrative law judge (ALJ) denying a motion in limine seeking to exclude evidence of the development of a domestic industry after the filing of the complaint.  In re Certain Digital Cameras, Software, and Components Thereof, Inv. No. 337-TA-1059, Order No. 52.  The ALJ ruled that, while the filing date “may be the bench mark,” there is “no rigid rule that the Commission must consider only at [sic] the investments in a domestic industry at the time of the filing of the complaint.”

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On April 6, 2018, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming an examiner’s rejection of various patent claims in an inter partes reexamination. Knowles Elec. LLC v. Iancu, case no. 2016-1954.  The United States Patent and Trademark Office (“PTO”) had intervened in the appeal to defend the examiner’s rejection.  In its opinion, the CAFC ruled that the PTO had standing to defend the examiner’s rejection even though the petitioner in the inter partes reexamination had abandoned the appeal.
 

On March 27, 2018, Judge Leonard P. Stark of the United States District Court for the District of Delaware granted a motion to dismiss, finding the subject matter of plaintiff’s patent claims to be unpatentable pursuant to the abstract-idea exception to 35 U.S.C. § 101.  Triplay, Inc. v. WhatsApp, Inc., No. 13-1703 (D. Del. Mar. 27, 2018).  The Court based its ruling on, among other things, the lack of allegations relating to patentability in the complaint, explicitly declining to convert the motion from one for judgment on the pleadings into one for summary judgment.

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On March 23, 2018, a divided panel of the United States Court of Appeals for the Federal Circuit (CAFC) found that the Patent Trial and Appeal Board (PTAB) had not sufficiently explained its reasoning in a final written decision invalidating certain patent claims, and reversed the invalidity ruling.  DSS Tech. Mgmt. v. Apple Inc., appeal nos. 2016-2523 and 2016-2524.  One member of the panel (Newman, J.) dissented, both on the merits, and on whether the panel should have ordered remand instead of reversing.

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On March 14, 2018, the United States Court of Appeals for the Federal Circuit (“CAFC”) ruled that a patent that discloses a technological species (“a fibre optics bundle”) provides written-description support for claims directed to a technological genus (“a light guide”).  Hologic, Inc. v. Smith & Nephew, Inc., appeal no. 2017-1389.  The opinion presents the inverse of the situation in the Knowles case summarized in last week’s Litigation Weekly.

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On March 13, 2018, the United States Court of Appeals for the Federal Circuit (CAFC) ruled that a party was collaterally estopped to challenge a Patent Trial and Appeal Board (PTAB) ruling on a claim-construction issue.  The estoppel arose from a previous IPR decision concerning a related patent.  Nestle USA, Inc. v. Steuben Foods, Inc., appeal no. 2017-1193.

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On March 1, 2018, the United States Court of Appeals for the Federal Circuit (CAFC) ruled that a patent that disclosed a technological genus (solder pads) did not provide written-description support for claims to one species within that genus (solder pads configured for connection via a solder reflow process), even though the record showed that the species was known to those of skill in the art at the time of the invention.  Knowles Electronics LLC v. Cirrus Logic, Inc., appeal no. 2016-2010.

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On February 27, 2018, the United States District Court for the District of Delaware granted summary judgment that claims of a patent directed to manufacturing driveline shaft assemblies are invalid under 35 U.S.C. § 101 because the claims are directed to unpatentable subject matter.  American Axle & Mfg. v. Neapco Drivelines LLC, case no. 15-CV-1168.  The decision is particularly interesting because it applies section 101 of the United States patent laws to mechanical inventions, outside of the computer context where recently such defenses have most often been raised.

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​On February 22, 2018, the United States District Court for the Eastern District of New York dismissed a trade-dress complaint with prejudice on the grounds that the complaint failed to identify the features of the claimed trade dress, failed to plead that any features are non-functional, and failed to plead a likelihood of confusion.  Eliya Inc. v. Steve Madden, Ltd., No. 2:15-CV-1272 (E.D.N.Y. Feb. 22, 2018).  In its already-amended complaint, plaintiff Eliya asserted product-configuration-type trade-dress rights under the Lanham Act in features of three of its shoe models, and claimed that defendant Steve Madden had infringed on those rights. Steve Madden moved to dismiss the complaint for failure to state a claim; a magistrate judge entered a report and recommendation to grant the motion; and the district judge adopted the recommendation, dismissing the complaint with prejudice.   The opinion illustrates the importance of making a detailed, fully articulated pleading when asserting product-configuration trade-dress rights.

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On February 8, 2018, the United States Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming in part and vacating in part a finding of section 101 unpatentability. Berkheimer v. HP Inc., ___ F.3d ___ (appeal no. 2017-1437).  The district court had granted a motion to dismiss on section 101 grounds, and while the CAFC affirmed the dismissal as to some claims, as to other claims it remanded the case to the district court, emphasizing the role of fact issues in section 101 analyses and thus complicating resolution of section 101 issues.

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On February 9, 2018, the United States Court of Appeals for the Federal Circuit (“CAFC”) entered an order transferring the appeal in a Walker Process antitrust action to the United States Court of Appeals for the Fifth Circuit.  Xitronix Corp. v. KLA-Tencor Corp., ___ F.3d ___ (appeal no. 2016-2746).  Despite language in earlier decisions suggesting the contrary, and over both sides’ objections, the CAFC held that patent law is not a necessary element of a Walker Process claim, and that therefore the CAFC lacked subject-matter jurisdiction over the appeal.

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On February 1, 2018, the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office, faced with a motion to stay proceedings pending resolution of the patent owner’s bankruptcy filing, entered an order requiring further briefing and requiring the parties to report on the bankruptcy court’s view of whether the automatic-stay bankruptcy statute applies to inter partes review (IPR) proceedings.  Twitter, Inc. v. Youtoo Techs., LLC, case no. IPR2017-00829, paper no. 27. 

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On February 2, 2018, the United States Court of Appeals for the Ninth Circuit affirmed a district court’s ruling that even if a gallery owner had copied an artist’s drawing of two dolphins, the copied elements were unprotectable “ideas that nature has already expressed for all.”  Folkens v. Wyland Worldwide, No. 16-15882 (9th Cir. Feb. 2, 2018). 

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On February 2, 2018, the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office denied a patent owner’s motion for discovery concerning a petitioner’s identification of the real party in interest in an inter partes review (IPR).  Artesian Home Prods. v. Gutterglove, Inc., No. IPR2018-00015. 

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On January 25, 2018, the United States Court of Appeals for the Federal Circuit issued an opinion affirming the trial court’s decisions that a user-interface patent claims patentable subject matter and that unrebutted expert testimony did not require a jury to find anticipation, as well as its claim-construction decisions, all while damages issues remained unresolved in the trial court.  Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., appeals nos. 2016-2684 and 2017-1922.

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​On January 11, 2018, the United States Court of Appeals for the Federal Circuit issued an opinion affirming the district court’s decision that an obligation to assign, without an actual assignment, does not transfer ownership in a patent.  Advanced Video Technologies LLC v. HTC Corp., appeal nos. 2016-2309, 2016-2310, 2016-2311.  Ownership in a patent initially vests with the named inventors, each of whom is a co-owner of a pro rata undivided interest in the patent.  Because each inventor owns a pro rata undivided interest, he or she may take actions without approval of any other co-owner.  For example, the inventor may make or sell a product covered by the patent, non-exclusively license others to make or sell such a product, or transfer by assignment ownership to a third party.  Where a patent is co-owned by more than one party, Federal Circuit jurisprudence requires that all co-owners must be joined to confer standing to bring a lawsuit against an alleged infringer. 

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On January 11, 2018, Judge William J. Martinez of the United States District Court for the District of Colorado granted a defendant’s motion to dismiss some patent-infringement claims, ruling they were barred in light of an earlier patent suit between the two parties, but withheld for later decision the question of whether other patent-infringement claims were barred.  XY, LLC v. Trans Ova Genetics, LC, case no. 1:17-CV-944-WJM-NYW.

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​On January 10, 2018, the United States Court of Appeals for the Federal Circuit issued an opinion considering the apportionment problem in patent damages and overturning a jury’s $40M reasonable-royalty award.  Finjan, Inc. v. Blue Coat Systems, appeal no. 2016-2520.
 
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Last fall, a jury found Snap-On Inc. to be a willful patent infringer and awarded patent owner Milwaukee Electric Tool Corp. (Milwaukee) approximately $28 million in damages.  On December 29, 2017, Judge J. P. Stadtmueller of the United States District Court for the Eastern District of Wisconsin entered an order resolving the parties’ post-trial motions.  In the order, Judge Stadtmueller upheld the jury’s finding of willful infringement and required Snap-On to pay prejudgment interest for part of the time period requested by Milwaukee, but denied Milwaukee’s request to further enhance damages.  Milwaukee Electric Tool Corp. v. Snap-On Inc., case no. 14-CV-1296-JPS.

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On January 2, 2018, the United States District Court for the District of Massachusetts entered an order denying an accused infringer’s motion to compel the testimony of the named inventor of a patent in suit, even though the inventor was an employee of the plaintiff patent owner when the suit was filed, and was obligated by contract to testify if requested by the patent owner.  Koninklijke Philips N.V. v. Wangs Alliance Corp., case no. 14-CV-12298-DJC.

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On December 11, 2017, Judge Richard Andrews of the United States District Court for the District of Delaware ordered plaintiff Ansell Healthcare Products LLC (Ansell) to produce two documents that it had exchanged with its damages expert, Mr. John Hansel, in connection with his review of an internal settlement proposal.  Ansell Healthcare Prods. LLC v. Reckitt Benckiser LLC, case no. 1:15-cv-00915.  The first document addresses Ansell’s settlement position with respect to a lump sum paid-up worldwide license to defendant Reckitt Benckiser LLC (Reckitt) for Ansell’s polyisoprene article patents.  The second document contains analysis of the business case for Ansell’s global patent litigation against Reckitt.

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On December 11, 2017, Magistrate Judge Christopher J. Burke of the United States District Court for the District of Delaware issued a report and recommendation to Chief Judge Leonard Stark recommending denial of defendant Amazon.com, Inc.’s (Amazon) Section 101 motion to dismiss for failure to state a claim.  M2M Sols. v. Amazon, Inc., case no. 17-cv-202.

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On December 14, 2017, a panel of Administrative Patent Judges (Judges Scott Daniels, Neil Powell, and Timothy Goodson) of the Patent Trial and Appeal Board (PTAB) for the United States Patent and Trademark Office denied the parties’ joint motion to terminate an inter partes review (IPR) proceeding due to settlement.  Rubicon Commc’ns, LP v. Lego A/S, IPR case no. IPR2016-01187.

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On December 13, 2017, a panel of Administrative Patent Judges (Judges Grace Karaffa Obermann, Bart Gerstenblith, and Robert Kinder) of the Patent Trial and Appeal Board (PTAB) for the United States Patent and Trademark Office granted Petitioner Campbell Soup’s motion for a modified protective order in inter partes review (IPR) proceedings brought against patents owned by Gamon Plus.  Campbell Soup Co. v. Gamon Plus, Inc., IPR case nos. IPR2017-00087, IPR2017-00091, IPR2017-00094.

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On December 7, 2017, Judge Rodney Gilstrap of the United States District Court for the Eastern District of Texas (ED Tex.) granted motions by three suppliers to intervene in a patent lawsuit brought against retailer Wal-Mart in the Marshall Division of that district.  Team Worldwide Corp. v. Wal-Mart, case no. 2:17-cv-235.  The ED Tex. has been a notoriously popular district for patent suits for more than a decade, a period when patent suits typically could be brought in any district where the defendant was subject to personal jurisdiction.  Earlier this year, however, the United States Supreme Court limited patent venue to districts (i) where the defendant corporation is incorporated, or (ii) where the defendant has a place of business and is alleged to have infringed.  T.C. Heartland LLC v. Kraft Foods Group, 137 S.Ct. 1514 (2017).  One result of the ruling was predicted to be an upswing in E.D. Tex. suits naming national retailers as the defendants instead of their suppliers, on the theory that the retailers would be subject to venue in that district even if their suppliers were not.

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The United States Patent and Trademark Office has adopted a new rule, 37 C.F.R. § 42.57, that among other things gives communications with foreign-jurisdiction patent agents the same protection they would be accorded if they were communications with a U.S. attorney.

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On November 27, 2017, the U.S. Supreme Court heard oral argument in two cases dealing with the United States Patent and Trademark Office inter partes review (IPR) proceedings that were created in the America Invents Act in 2011.  IPRs have been a frequent topic of discussion in the U.S. intellectual-property community since they began; the general impression is that they are a very useful and very effective way of invalidating issued patents, but there is also concern among patent owners that IPRs may be too effective, invalidating patents that a District Court judge or jury would have upheld.

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On November 27, 2017, the United States District Court for the District of Minnesota ordered summary judgment of patent eligibility in Soultran, Inc. v. U.S. Bancorp, No. 13-cv-2637.  The claimed invention was directed to a method of check processing comprising (i) receiving check data from a point-of-sale terminal, (ii) crediting the merchant’s account, (iii) receiving the physical check and scanning it, and (iv) comparing the resulting image to the check data.  The Court ruled this invention to be patent-eligible pursuant to 35 U.S.C. § 101, as a matter of law.

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On November 17, 2017, the Patent Trial and Appeal Board (the “Board”)—the division of the United States Patent and Trademark Office that handles inter-partes review proceedings—announced new internal operating procedures that will govern how the Board will handle inter partes review proceedings that the Court of Appeals for the Federal Circuit remands to the Board after appeal.  See P.T.A.B. Standard Operating Procedure (“SOP”) 9

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On November 15, 2017, the United States Court of Appeals for the Federal Circuit issued two opinions explaining how district courts should determine whether, in cases filed prior to the recent Supreme Court TC Heartland venue decision, a defendant waived the defense of improper venue.  In the first opinion, In re Micron Techs., No. 2017-138, the Court issued a writ of mandamus and ordered the District Court to reconsider its decision that the defendant had waived the defense; in the second opinion, In re Cutsforth, Inc., No. 2017-135, the Court issued a writ of mandamus and ordered the District Court to reconsider its decision that the defendant had not waived the defense.

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