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 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 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 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 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 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 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 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 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 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 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 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 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.
 

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 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 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 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 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 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 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 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 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 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 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 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 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 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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