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  • Federal Circuit Reverses Grant Of Preliminary Injunction Enjoining Use Of Alleged Trade Secrets As Abuse Of Discretion
    06/25/2024

    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.

  • The Federal Circuit Creates A New Standard For Assessing The Nonobviousness Of Design Patents
    06/04/2024

    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. 

  • Federal Circuit Vacates District Court’s Judgment Of Patent Infringement Following Affirmance Of Invalidity At The PTAB
    05/14/2024

    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.

  • Federal Circuit Clarifies Standard For The Injury In Fact Requirement For Standing
    05/07/2024

    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.

  • The Federal Circuit Is Amenable, Under Certain Circumstances, To Allowing A Patent Owner To Seek Foreign Damages For Domestic Infringement
    04/23/2024

    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). 

  • Federal Circuit Finds District Court’s Construction Of “Barcode” Too Narrow
     
    01/09/2024


    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.”

  • Federal Circuit Affirms Attorneys’ Fees Award Against Patentee PersonalWeb
     
    11/14/2023

    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.
  • Federal Circuit Finds PTAB Sufficiently Addressed Arguments Actually Raised In IPR Petitions
     
    11/07/2023

    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.
    Categories : IP Litigation ProcedureIPRsPTAB
  • Federal Circuit Affirms PTAB Claim Construction Interpretation And Upholds Refusal To Allow Impermissibly Broad Substitute Claims
     
    10/11/2023

    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).
    Categories : IP Litigation ProcedureIPRsPTAB
  • Federal Circuit Holds That Pure AIA Patents Are Not Subject To Interferences
     
    08/01/2023

    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).
    Categories : IP Litigation ProcedurePTAB
  • Federal Circuit Affirms Dismissal For Failure To Comply With Discovery Order And Under Kessler Doctrine
     
    07/06/2023

    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.”
  • Federal Circuit Revives Lawsuit Challenging The USPTO Director’s Fintiv Instructions On A Limited Basis To Determine Whether They Were Improperly Issued Without A Notice-and-Comment Period
     
    03/24/2023

    ​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.
    Categories : IP Litigation ProcedureIPRsPTAB
  • Federal Circuit Vacates Preliminary Injunction Barring Patent Owner From Notifying Customers Of Competitor’s Alleged Infringement
     
    02/28/2023

    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.
  • Federal Circuit Holds That Court Congestion Factor Of The Transfer-For-Convenience Analysis Has Less Significance For Plaintiffs Not Engaged In Product Competition In The Marketplace
     
    02/14/2023

    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.
     
  • Federal Circuit Vacates Order Transferring Case To District Where Foreign Defendants Had Consented To Personal Jurisdiction
     
    02/03/2023

    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.
  • The Court of Appeals For The Federal Circuit Finds Collateral Estoppel Applies Between Two IPR Proceedings And Invalidates Claims
     
    12/13/2022

    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).
  • Federal Circuit Denies Petition For Writ Of Mandamus On Venue Issues Based On Location Of Remote Employees’ Homes
     
    10/11/2022

    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.
  • The Western District Of Texas Denies Motion To Transfer Based On Improper Venue As To Holding Company Defendant
     
    10/11/2022

    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).
  • Eastern District Of Texas Magistrate Recommends Denying Motion To Dismiss For Failure To Perfect Service Of Process
     
    09/30/2022

    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.
  • Federal Circuit Affirms Duplicative-Litigation Doctrine
     
    09/30/2022

    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).
  • Federal Circuit Holds IPR Estoppel Applies To A Patent Claim Identified In An IPR Petition But Not Considered In The Final Written Decision
     
    09/07/2022

    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).
  • The Judicial Panel On Multidistrict Litigation Consolidates Four Patent Cases In The Eastern District Of Texas
     
    08/16/2022

    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.).
  • Eastern District Of New York Transfers Patent Case For Improper Venue
     
    06/07/2022

    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).
  • Federal Circuit Orders Transfer From E.D. Texas To N.D. California Where Accused Product Was Developed
     
    06/02/2022

    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.
  • Central District Of California Finds A Presumption Of Patent Infringement And Shifts The Burden To Defendants Pursuant To Section 295
     
    04/27/2022

    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.
  • Federal Circuit Again Finds Communications Attempting To Resolve A Patent Dispute Can Be A Basis For Personal Jurisdiction In Declaratory Judgment Action
     
    04/27/2022

    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.
  • Federal Circuit Rules A “Fastening Stem” Need Not Fasten Separate Pieces
     
    04/19/2022

    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.
  • Western District Of Texas Rejects Expert’s Hypothetical Negotiation Analysis That Used The Wrong Parties
     
    03/15/2022

    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.
  • Western District Of Texas Relies On Relaxed Alter Ego Theory To Deny Motion To Dismiss For Improper Venue
     
    03/08/2022

    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.
  • U.S. District Court For The Eastern District Of Texas Bifurcates Trial Over Counterclaims Asserting Patent Infringement Claims Directed To Distinct Technologies
     
    03/01/2022

    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.
  • Federal Circuit Grants Mandamus Directing Transfer From Eastern District Of Texas To Northern District Of California
     
    01/25/2022

    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.
  • The District Court For The Eastern District Of Texas Denies Motion To Stay Pending Ex Parte Reexamination
     
    01/19/2022

    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.
    Categories : IP Litigation ProcedureIPRsPTAB
  • Judge Albright Of The Western District Of Texas Grants Motion To Transfer On Convenience Grounds
     
    12/21/2021

    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.
  • Federal Circuit Decides IPR Petitioner’s Standing In Two Appeals, With Different Outcomes
     
    12/08/2021

    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.
    Categories : IP Litigation ProcedureIPRsPTAB
  • Eastern District Of Texas Denies Motion To Dismiss Patent Case Asserting Claims Directed To Abstract Idea
     
    11/24/2021

    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.
  • Federal Circuit Affirms Dismissal For Improper Venue And Failure To State A Claim As To Domestic And Foreign Defendants Respectively
     
    11/16/2021

    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.
  • Federal Circuit Orders Transfer Of Another Judge Albright Case
     
    11/03/2021

    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).
  • Federal Circuit Rejects Arguments That The USPTO Is Unconstitutionally Structured
     
    10/19/2021

    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.
    Categories : IP Litigation ProcedureIPRsPTAB
  • Federal Circuit Denies Mandamus Request Seeking To Require Service Under Hague Convention
     
    10/06/2021

    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.
  • The Federal Circuit Reverses Damages Award For Sales Of Infringing Products Prior To Actual Notice Of Infringement
     
    09/09/2021

    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).
  • Federal Circuit Affirms Exclusion Of Damages Expert’s Royalty Rate Opinions
     
    08/31/2021

    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.
  • District Court Limits Expansion Of IPR Estoppel Law
     
    08/03/2021

    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).
    Categories : IP Litigation ProcedureIPRs
  • Federal Circuit Denies Petition To Transfer Case Out Of Western Texas
     
    07/28/2021

    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.
  • Federal Circuit Finds District Court’s Element-By-Element Infringement Pleading Standard Overly Demanding
     
    07/20/2021

    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.
  • District Of Delaware Denies Motion To Preclude Plaintiff From Asserting At Trial Patent Claims Found Unpatentable By The US Patent Office’s Patent Trial And Appeal Board
     
    07/13/2021

    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.
  • District Court Awards Fees And Costs Incurred In District Court Patent Litigation, Related USPTO CBM Proceedings, And Related Appeals
     
    06/29/2021

    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.
  • Internet Sales To Forum Residents Processed By Forum-Based Payment Processing Service Not Enough To Establish Personal Jurisdiction Over Retailer
     
    06/22/2021

    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.
  • Western District Of Texas Grants Motion To Transfer Venue On Section 1404 Convenience Grounds
     
    06/02/2021

    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.
  • Federal Circuit Finds Accused Infringer’s Reference To Covid-19 Fight Insufficient To Undo Invalidity Verdict
     
    05/18/2021

    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.
  • Federal Circuit Affirms Setting Aside Patent Award Where Patentee’s President Misrepresented His Knowledge Of Material Prior Art
     
    05/11/2021

    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.
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