Table of Contents
I.
Patentability Requirements ......................................................................................... 1
A. Corroboration .......................................................................................................... 1
B. Prior Art Invalidity.................................................................................................. 1
1.
Reference Disclosure ...................................................................................... 1
2.
Anticipation (§ 102) ........................................................................................ 1
3.
Obviousness (§ 103) ....................................................................................... 2
C. Invalidity Based on § 112 ....................................................................................... 4
1.
Written Description (¶ 1) ................................................................................ 4
2.
Indefiniteness (¶ 2) .......................................................................................... 4
D. Double Patenting ..................................................................................................... 5
1.
Obviousness-Type........................................................................................... 5
E. Section 101.............................................................................................................. 5
1.
Found in Nature .............................................................................................. 5
2.
Abstract Idea Exclusion .................................................................................. 5
3.
Reissued Patents.............................................................................................. 6
F. Lack of Subject Matter Jurisdiction ........................................................................ 6
1.
Standing .......................................................................................................... 6
2.
Declaratory Judgment Jurisdiction ................................................................. 7
3.
Controversy over Inventorship Jurisdiction .................................................... 7
G. Anti-Competitive Behavior ..................................................................................... 8
1.
Antitrust .......................................................................................................... 8
H. Spoliation Sanctions................................................................................................ 8
1.
Reasonably Foreseeable Litigation ................................................................. 8
2.
Prejudice ......................................................................................................... 8
II. Literal Infringement .................................................................................................... 8
A. Summary Judgment/JMOL ..................................................................................... 8
1.
Scope of Products Subject to Summary Judgment ......................................... 8
2.
Attorney Argument v. Evidence ..................................................................... 8
B. Indirect Infringement .............................................................................................. 9
1.
Induced Infringement ...................................................................................... 9
C. Direct Infringement of a Claimed Process .............................................................. 9
1.
Initiating a Step of a Process ........................................................................... 9
D. Joint Infringement/Vicarious Liability ................................................................. 10
E. Evidence of Infringement ..................................................................................... 10
1.
Negative Limitations ..................................................................................... 10
III.
DOE Infringement ................................................................................................ 10
A. Substantial Equivalence ........................................................................................ 10
1.
Summary Judgment/JMOL ........................................................................... 10
B. Vitiation Bar/Specific Exclusion .......................................................................... 10
IV.
Relief ..................................................................................................................... 10
A. Attorneys’ fees ...................................................................................................... 10
1.
Inadequate Prefiling Investigation/Sanctions (Rule 11) ............................... 10
2.
Exceptional Case (§ 285) .............................................................................. 11
3.
Sanctions Under Inherent Powers ................................................................. 12
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Amount ......................................................................................................... 12
B. Injunction .............................................................................................................. 12
1.
Preliminary Injunction .................................................................................. 12
2.
SEPs/FRAND and Injunctions...................................................................... 12
C. Reasonable Royalty .............................................................................................. 13
1.
Minimum Measure of Damages.................................................................... 13
2.
Expert Testimony and Methodology ............................................................ 13
3.
Non-Infringing Alternatives.......................................................................... 13
V. Claim Construction ................................................................................................... 14
A. Special Constructions............................................................................................ 14
1.
Constructions Adequate for Rule 11 ............................................................. 14
B. Claim Language .................................................................................................... 14
1.
Ordinary Meaning ......................................................................................... 14
2.
Open/Closed Claims, Generic and Negative Limitations ............................. 14
3.
Section 112, paragraph 6............................................................................... 15
4.
Functional and Structural Language ............................................................. 16
5.
Effect of Other Limitations in Claim ............................................................ 16
6.
Effect of Other Claims .................................................................................. 16
C. Written Description ............................................................................................... 17
1.
Lexicography ................................................................................................ 17
2.
Disclosed Embodiment(s) ............................................................................. 17
3.
Interchangeable Use of Terms ...................................................................... 17
4.
Advantages/Purposes/Problems Addressed .................................................. 17
5.
Limitations Not Imported ............................................................................. 18
D. Prosecution History............................................................................................... 18
1.
Reexam/Review ............................................................................................ 18
2.
Related Applications ..................................................................................... 18
3.
Issuing Application ....................................................................................... 18
4.
Foreign Counterparts .................................................................................... 18
E. Extrinsic Evidence ................................................................................................ 19
1.
Party Admissions/Marking/Expert Testimony ............................................. 19
2.
Inventor/Prosecutor Statements .................................................................... 19
F. Prefer Narrow/Preserve Validity........................................................................... 19
G. Timing of Construction and Parties’ Positions ..................................................... 19
1.
Construing the Words in the Construction.................................................... 19
2.
Agreed and Proposed Constructions ............................................................. 20
3.
Using Additional Language to Apply Claim Constructions ......................... 20
H. Limited and Ordinary Meaning Constructions ..................................................... 20
1.
Questions of Fact in Applying Constructions ............................................... 20
VI.
Procedural Law ..................................................................................................... 20
A. Setting Aside Judgment (60(b)) ............................................................................ 20
B. JMOL (Rule 50) / Summary Judgment (Rule 56) ................................................ 21
1.
Jurisdictional Effect ...................................................................................... 21
C. Discovery/Evidence .............................................................................................. 21
1.
Expert Testimony .......................................................................................... 21
2.
Opening the Door .......................................................................................... 21
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D.
E.
VII.
A.
Transfer to New Judge or Venue .......................................................................... 21
Severance .............................................................................................................. 22
Federal Circuit Appeals ........................................................................................ 22
New Arguments/Issues on Appeal/Waiver/Judicial Estoppel .............................. 22
1.
District Court/ITC Appeals ........................................................................... 22
B. Appelate Jurisdiction ............................................................................................ 22
1.
1292(c)(2) Jurisdiction When Damages Remain .......................................... 22
2.
Standing to Appeal ........................................................................................ 23
3.
Appellate Review of Decisions Made without Jurisdiction .......................... 23
C. Standards of Review and Record/Appendix on Appeal ....................................... 23
1.
Review Judgments not Opinions .................................................................. 23
D. Briefing Related and Multi-Defendant Cases ....................................................... 23
VIII. Patent Office Proceedings ..................................................................................... 23
A. Interferences .......................................................................................................... 23
1.
Written Description ....................................................................................... 23
B. Reexamination ...................................................................................................... 24
1.
Inter Partes .................................................................................................... 24
C. Inter Partes Review ............................................................................................... 24
D. Rejection Appeal Procedure ................................................................................. 24
1.
Board Reliance on New Grounds of Rejection ............................................. 24
E. Reasonable Interpretation of Claims ..................................................................... 24
1.
Indefiniteness of Claims ............................................................................... 24
F. Appeals to District Court Under Section 145 ....................................................... 25
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I.
Patentability Requirements
A.
Corroboration
Where documents do not show the claimed invention, corroborating testimony by a
coinventor is inadequate. Allergan, Inc. v. Apotex Inc., 2013-1637, 6/10/14.
“[A]s a threshold matter, in order for the rule of reason requirement to even apply there
must be some evidence that a fact-finder can find reasonable; the putative inventor must
first provide credible testimony that only then must be corroborated.” General Elec. Co.
v. Wilkens, 2013-1170, 5/8/14.
B.
Prior Art Invalidity
1. Reference Disclosure
a.
Inherency
i.
Newly-discovered properties or uses
A newly discovered use was claimed and the district court was affirmed for finding of no
inherency because a prior art reference’s described use could possibly be performed
without incurring the newly-claimed use. Allergan, Inc. v. Apotex Inc., 2013-1637,
6/10/14.
b.
Sparse or Ambiguous Disclosure
“The court was not clearly erroneous, however, in its determination that in this case, the
disclosure was too sparse and ambiguous for a person of ordinary skill to comprehend
[the reference]’s disclosure as anticipating the [asserted] patent.” Allergan, Inc. v.
Apotex Inc., 2013-1637, 6/10/14.
2. Anticipation (§ 102)
a.
Publications/Patents
Usenet newsgroup post found to be a publication, because audience was those of ordinary
skill in the art and locating the post would not be too difficult, because it was
“sufficiently disseminated at the time of its publication.” Suffolk Techs. LLC v. AOL
Inc., 2013-1392, 4/27/14.
b.
Explanatory Evidence/Testing Requirements
Defendant failed to show anticipation based on a prior art composition that might be
“hypertonic” in a patient as required by the claim, because they had the burden and did
not do any testing to see if it would have been hypertonic. Braintree Labs., Inc. v. Novel
Labs., Inc., 2013-1438, 4/22/14.
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c.
Summary Judgment/JMOL
Expert declaration undisputed except by attorney argument is sufficient to support
summary judgment of invalidity even if cross examination of that expert might
undermine the testimony. Suffolk Techs. LLC v. AOL Inc., 2013-1392, 4/27/14.
3. Obviousness (§ 103)
a.
Differences Between the Prior Art and the Claims at Issue
i.
Only one Embodiment Rendered Obvious
“Given the breadth of the [] claimed invention, appellants did not have the exacting
burden of showing a reasonable expectation of success in [one embodiment]. Appellants
instead had the burden of showing that any compounds within the broad genus claimed []
were obvious at the time of the invention.” Allergan, Inc. v. Apotex Inc., 2013-1637,
6/10/14.
b.
Expert Testimony
Expert cannot support obviousness judgment with “testimony primarily consisted of
conclusory references to her belief that one of ordinary skill in the art could combine
these references, not that they would have been motivated to do so.” InTouch Techs., Inc.
v. VGo Commc’ns, Inc., 2013-1201, 5/9/14 (emphasis in original).
Judgment of obviousness based on jury verdict overturned where expert’s testimony did
not “(1) identify sufficient reasons or motivations to combine the asserted prior
references; (2) focus on the relevant time frame []; or (3) consider any objective evidence
of nonobviousness.” InTouch Techs., Inc. v. VGo Commc’ns, Inc., 2013-1201, 5/9/14.
c.
Secondary Indicia of Nonobviousness
i.
Unexpected Results
“Glenmark also argues that later-discovered benefits cannot be considered in an
obviousness analysis, here referring to the improved kidney and blood vessel function
that were observed after the patent application was filed. That is incorrect; patentability
may consider all of the characteristics possessed by the claimed invention, whenever
those characteristics become manifest.” Sanofi-Aventis Deutschland Gmbh v. Glenmark
Pharms. Inc., 2012-1489, 4/21/14.
“The evidence of superior efficacy does nothing to undercut the showing that there was a
reasonable expectation of success with the 150 mg monthly dose, even if the level of
success may have turned out to be somewhat greater than would have been expected.”
Hoffmann-La Roche Inc. v. Apotex Inc., 2013-1128, 4/11/14.
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ii.
Nexus
“[T]he district court’s findings on unexpected results, which were closely intertwined
with its analysis of motivation to combine and reasonable expectation of success, were
not commensurate with the full scope of the patent’s claims.” Allergan, Inc. v. Apotex
Inc., 2013-1637, 6/10/14.
“MRC has the standard backwards. As the patentee, it was MRC’s burden of production
to demonstrate a nexus between the claimed design and the secondary considerations.”
MRC Innovations, Inc. v. Hunter Mfg., LLP, 2013-1433, 4/2/14.
d.
Teaching Away
A study without meaningful conclusions due to sample size issues “points to a fault in the
study,” but does not teach away from the studied medicine. Hoffmann-La Roche Inc. v.
Apotex Inc., 2013-1128, 4/11/14.
e.
Inventor Actions or Knowledge/Obvious to Try
“Patentability does not turn on how the invention was made, but on whether it would
have been obvious to a person of ordinary skill in the field.” Sanofi-Aventis Deutschland
Gmbh v. Glenmark Pharms. Inc., 2012-1489, 4/21/14.
f.
Chemical Compounds
i.
Obvious to Try
Claims with a monthly dose were obvious in view of prior art with proportional daily and
weekly doses and prior art suggesting equal efficacy for intermittant treatments as for
continuous treatments. Hoffmann-La Roche Inc. v. Apotex Inc., 2013-1128, 4/11/14.
ii.
Lead Compound Analysis
Small changes to a compound often used as a starting point at the time are obvious.
Bristol-Myers Squibb Co. v. Teva Pharms. USA, Inc., 2013-1637, 6/10/14.
g.
Design Patents
“[I]t is the mere similarity in appearance that itself provides the suggestion that one should
apply certain features to another design.” MRC Innovations, Inc. v. Hunter Mfg., LLP,
2013-1433, 4/2/14.
“That inquiry involves a two-step process. First, the court must identify “a single
reference, ‘a something in existence, the design characteristics of which are basically the
same as the claimed design.’”” MRC Innovations, Inc. v. Hunter Mfg., LLP, 2013-1433,
4/2/14 (quoting Durling v. Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996)).
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Once the primary reference is found, other “secondary” references “may be used to
modify it to create a design that has the same overall visual appearance as the claimed
design.” MRC Innovations, Inc. v. Hunter Mfg., LLP, 2013-1433, 4/2/14 (quoting
Durling v. Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996)).
C.
Invalidity Based on § 112
1. Written Description (¶ 1)
a.
Genus Disclosure Supporting Sub-Genus or Species Claim
“The ’205 application need only reasonably convey to one skilled in the art that Tobinick
had possession of at least one embodiment that meets the Board’s construction of local
administration. The epidural injection technique is such an embodiment.” Tobinick v.
Olmarker, 2013-1499, 5/19/14 (emphasis in original).
2. Indefiniteness (¶ 2)
“[A] patent is invalid for indefiniteness if its claims, read in light of the specification
delineating the patent, and the prosecution history, fail to inform, with reasonable
certainty, those skilled in the art about the scope of the invention.” Nautilus, Inc. v.
Biosig Instruments, Inc., S. Ct. No. 13–369, June 2, 2014.
“The definiteness requirement, so understood, mandates clarity, while recognizing that
absolute precision is unattainable.” Nautilus, Inc. v. Biosig Instruments, Inc., S. Ct. No.
13–369, June 2, 2014.
“The parties nonetheless dispute whether factual findings subsidiary to the ultimate issue
of definiteness trigger the clear-and-convincing evidence standard and, relatedly, whether
deference is due to the PTO’s resolution of disputed issues of fact. We leave these
questions for another day.” Nautilus, Inc. v. Biosig Instruments, Inc., S. Ct. No. 13–369,
June 2, 2014.
a.
Valid
i.
Construable
“First, “matching” itself is not indefinite, having been construed by this court as
“identifying a counterpart order or quotation for an incoming order or quotation.””
Chicago Bd. Options Exch., Inc. v. Int’l Sec. Exch., LLC, 2013-1326, 4/7/14.
b.
Means plus function elements
“Without evidence, ordinarily neither the district court nor this court can decide whether,
for a specific function, the description in the specification is adequate from the viewpoint
of a person of ordinary skill in the field of the invention.” elcommerce.com, Inc. v. SAP
AG, 2011-1369, 2/24/14.
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“The burden was on SAP to prove its case, and in the absence of evidence provided by
technical experts who meet the Daubert criteria there is a failure of proof.”
elcommerce.com, Inc. v. SAP AG, 2011-1369, 2/24/14.
i.
Computer-implemented
Claimed “means for assembling” is indefinite where “[t]he portion of the specification
describing this step explains that “code assembler instructions” do the assembling. Id.
col. 11 ll. 60–61. It discloses inputs to and outputs from the code assembler instructions,
but does not include any algorithm for how the second code module is actually
assembled.” Augme Techs., Inc. v. Yahoo! Inc., 2013-1121, 6/20/14.
Integrator means properly found to be indefinite, because the specification did not
“disclose an algorithm—i.e., a step-by-step procedure—for performing the claimed
function.” Triton Tech of Texas, LLC v. Nintendo of America, Inc., 2013-1476, 6/13/14.
“Based upon this discussion of size-based, pro rata matching, a person of ordinary skill in
the art would understand the algorithmic structure for performing the claimed function.”
Chicago Bd. Options Exch., Inc. v. Int’l Sec. Exch., LLC, 2013-1326, 4/7/14.
c.
Claims with Relative Terms
“Copious” upheld against indefiniteness challenge. Braintree Labs., Inc. v. Novel Labs.,
Inc., 2013-1438, 4/22/14.
D.
Double Patenting
1. Obviousness-Type
“[A] patent that issues after but expires before another patent” can “qualify as a double
patenting reference for that other patent” “under the circumstances of this case”. Gilead
Sciences, Inc. v. Natco Pharma Ltd., 2013-1412, 4/22/14.
E.
Section 101
1. Found in Nature
Only “discoveries that possess “markedly different characteristics from any found in
nature,” id., are eligible for patent protection.” Dolly the sheep is genetically identical to
the sheep whose cells were used as the source material for Dolly’s embryo and cannot be
patented by a claim reading: “A live-born clone” even though that claim does not read on
the source material sheep. In re Roslin Institute (Edinburgh), 2013-1407, 5/8/14.
2. Abstract Idea Exclusion
“[T]here is no meaningful distinction between the concept of risk hedging in Bilski and
the concept of intermediated settlement at issue here. Both are squarely within the realm
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of “abstract ideas” as we have used that term.” Alice Corp. Pty Ltd. v. CLS Bank Int’l,
No. 13-298 (S. C.t, June 19, 2014).
a.
Transformation Exception
“[W]e consider the elements of each claim both individually and “as an ordered
combination” to determine whether the additional elements “transform the nature of the
claim” into a patent-eligible application.” Alice Corp. Pty Ltd. v. CLS Bank Int’l, No.
13-298 (S. C.t, June 19, 2014).
“Taking the claim elements separately, the function performed by the computer at each
step of the process is “[p]urely conventional.”” Alice Corp. Pty Ltd. v. CLS Bank Int’l,
No. 13-298 (S. C.t, June 19, 2014).
“[T]he claims in Diehr were patent eligible because they improved an existing
technological process, not because they were implemented on a computer.” Alice Corp.
Pty Ltd. v. CLS Bank Int’l, No. 13-298 (S. C.t, June 19, 2014).
3. Reissued Patents
a.
Errors Sufficient for Reissue
Reissue application seeking to “modify the recorded terminal disclaimer to delete the
common ownership provision, and to modify the claims that gave rise to the disclaimer,”
found to be inadequate because it did not identify “an “error” within the meaning of
section 251.” In re Dinsmore, 2013-1637, 6/10/14.
F.
Lack of Subject Matter Jurisdiction
1. Standing
a.
Right to Sue/Enforce
“The court’s finding that any necessary licenses existed, expressly or impliedly, has not
been shown to be incorrect in law or clearly erroneous in fact.” Sanofi-Aventis
Deutschland Gmbh v. Glenmark Pharms. Inc., 2012-1489, 4/21/14.
b.
Constitutional Standing
“[W]here Congress has accorded a procedural right to a litigant, such as the right to
appeal an administrative decision, certain requirements of standing—namely immediacy
and redressability, as well as prudential aspects that are not part of Article III—may be
relaxed. See Massachusetts v. E.P.A., 549 U.S. 497, 517–18 (2007). However, the
“requirement of injury in fact is a hard floor of Article III jurisdiction that cannot be
removed by statute.” Summers, 555 U.S. at 497. That injury must be more than a general
grievance, Hollingsworth, 133 S. Ct. at 2662, or abstract harm, City of Los Angeles v.
Lyons, 461 U.S. 95, 101 (1983).” Consumer Watchdog v. Wisconsin Alumni Research
Foundation, 2013-1377, 6/4/14.
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Appellant did not allege that it did or would engage in the activity covered by the patent.
“[Appellant] relies on the Board’s denial of [its] requested administrative action—
namely, the Board’s refusal to cancel claims 1–4 of the ’913 patent. That denial,
however, is insufficient to confer standing.” Consumer Watchdog v. Wisconsin Alumni
Research Foundation, 2013-1377, 6/4/14.
c.
Subset of Joint Owners
“Accordingly, because [one co-owner] has not voluntarily joined this suit, and because
no exception to this general substantive rule applies, [the other co-owner] lacks standing
to maintain its suit against [the accused infringer].” STC.UNM v. Intel Corp., 20131241, 6/6/14.
2. Declaratory Judgment Jurisdiction
a.
Controversy of “sufficient immediacy and reality” based on
the “totality of the circumstances”
i.
Threats Against Customers
“To the extent that Appellees argue that they have a right to bring the declaratory
judgment action solely because their customers have been sued for direct infringement,
they are incorrect.” Microsoft Corp. v. DataTern, Inc., 2013-1184, 5/5/14.
“Appellees cannot seek a declaration from a New York court on behalf of customers they
must indemnify where a suit against these very same customers on all the same issues
was already underway in a Texas court.” Microsoft Corp. v. DataTern, Inc., 2013-1184,
5/5/14.
A product seller could DJ based on the sufficient immediacy and reality of an inducement
claim where “claim charts show that [the seller] provides its customers with the necessary
components to infringe the [asserted] patents as well as the instruction manuals for using
the components in an infringing manner.” Microsoft Corp. v. DataTern, Inc., 2013-1184,
5/5/14.
ii.
Subsequent Infringement Allegation
“[B]y virtue of their conditional nature, [patentee]’s counterclaims could only become a
part of the case after the court made a de facto determination that they passed Rule 11
muster. The same is true for [patentee]’s discussion of infringement in its proposed
scheduling order, which was made in the context of its conditional counterclaims.”
Microsoft Corp. v. DataTern, Inc., 2013-1184, 5/5/14.
3. Controversy over Inventorship Jurisdiction
“A claim of ownership does not necessarily require consideration of patent law
inventorship.” Krauser v. BioHorizons, Inc., 2013-1461, 6/4/14 (emphasis in original).
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G.
Anti-Competitive Behavior
1. Antitrust
Affirming summary judgment against tying allegations. DSM Desotech, Inc. v. 3D Sys.
Corp., 2013-1298, 4/18/14.
H.
Spoliation Sanctions
1. Reasonably Foreseeable Litigation
Spoliation sanction upheld where “[i]t was pointed out to the district court that attorney
work product claims were made relative to this period, before Glenmark’s later institution
of a litigation hold.” Sanofi-Aventis Deutschland Gmbh v. Glenmark Pharms. Inc.,
2012-1489, 4/21/14.
2. Prejudice
Where key witnesses testified that email was a mode of communication between them,
“[i]t was reasonable for the district court to infer that some destroyed emails related to
issues for which litigation was expected.” Sanofi-Aventis Deutschland Gmbh v.
Glenmark Pharms. Inc., 2012-1489, 4/21/14.
II.
Literal Infringement
A.
Summary Judgment/JMOL
1. Scope of Products Subject to Summary Judgment
“While SAP’s complaint and DataTern’s counterclaims invoked SAP products generally,
broad pleadings alone do not define the scope of judgment when only a subset of those
issues were litigated. Tol-O-Matic, Inc. v. Proma Produkt-Und Mktg. Gesellschaft, 945
F.2d 1546, 1554–55 (Fed. Cir. 1991). Here, only BusinessObjects was fairly at issue, and
the district court’s judgment could not have extended beyond BusinessObjects.”
Microsoft Corp. v. DataTern, Inc., 2013-1184, 5/5/14.
2. Attorney Argument v. Evidence
“[A]ttorney argument, alone, may not create a material question of fact regarding
technical evidence. Here, however, it was AgiLight’s own expert who provided the crosssectional images of the AgiLight devices. Those images are evidence. GE’s attorney
merely placed an image of an undisputedly substantially ellipsoidal inner profile over
AgiLight’s cross-sectional images. These cross-sectional images point to a genuine
dispute as to whether AgiLight’s accused devices include a substantially ellipsoidal inner
profile.” GE Lighting Solutions, LLC. v. AgiLight, Inc., 2013-1267, 5/1/14.
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B.
Indirect Infringement
1. Induced Infringement
“Absent the knowledge and affirmative act of encouragement, no party could be charged
with inducement.” Microsoft Corp. v. DataTern, Inc., 2013-1184, 5/5/14.
a.
Intent to Induce
i.
Knowledge of the patent
ii.
Pleading Intent
Plaintiffs adequately pled intent because the allegations, taken collectively and in context,
also gave rise to an “inference that [the defendant] elected not to disclose the reports of
adverse events not because it believed they were meaningless but be-cause it understood
their likely effect on the market.” Matrixx Initiatives, Inc. v. Siracusano, 131 S. Ct. 1309,
1324-25 (2011). Cited as applying to inducement in In Re Bill of Lading Transmission &
Processing Sys. Patent Litig., 2010-1493, 6/7/12.
iii.
Good Faith Belief of Invalidity
“we appear to have not previously determined whether a good-faith belief of invalidity
may negate the requisite intent for induced infringement. We now hold that it may.”
Commil USA, LLC v. Cisco Sys., Inc., 2012-1042, 6/25/13.
iv.
Intent of Company
“We also find no error in the district court’s reliance on the statements of DuPont’s
individual employees to infer DuPont’s subjective belief concerning the License. Those
employees were high-level executives and in-house attorneys, who directly participated
in the negotiation with Monsanto as DuPont’s corporate representatives. In addition,
because DuPont had waived its attorney-client privilege to pursue the reformation
counterclaims, the court properly considered the statements of DuPont’s inhouse
attorneys who were part of the negotiation team.” Monsanto Co. v. E.I. Du Pont de
Nemours & Co., 2013-1349, 5/9/14.
C.
Direct Infringement of a Claimed Process
1. Initiating a Step of a Process
Claim requiring that a code module “initiate retrieval of [a] second code module” is not
satified by a code module that downloads another module that then downloads the
specified “second code module.” Augme Techs., Inc. v. Yahoo! Inc., 2013-1121,
6/20/14.
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D.
Joint Infringement/Vicarious Liability
“Respondents ask us to review the merits of the Federal Circuit’s Muniauction rule for
direct infringement under §271(a). We decline to do so today.” Limelight Networks, Inc.
v. Akamai Techs., Inc., S. Ct. No. 12–786, June 2, 2014.
E.
Evidence of Infringement
1. Negative Limitations
Where construction of claim term requires “such that it does not include matching or
allocating through the use of open-outcry”, “ISE must demonstrate that CBOEdirect is
separate from the open-outcry aspects of Hybrid.” Chicago Bd. Options Exch., Inc. v.
Int’l Sec. Exch., LLC, 2013-1326, 4/7/14.
III.
DOE Infringement
A.
Substantial Equivalence
1. Summary Judgment/JMOL
“To survive summary judgment of noninfringement under the doctrine of equivalents,
Augme had to present evidence of equivalence under each prong of the function-wayresult test.” Augme Techs., Inc. v. Yahoo! Inc., 2013-1121, 6/20/14.
Lack of particularized testimony justified summary judgment when testimony concerned
the difference in how instructions were executed from cache memory rather than
permanent memory rather than the difference between the claimed permanent memory
and cache memory. Gemalto S.A. v. HTC Corp., 2013-1397, 6/19/14.
B.
Vitiation Bar/Specific Exclusion
“No reasonable jury could find equivalence here because doing so would require a
determination that embedded code is substantially the same as linked code—the very
thing that the construction of “embedded” excludes.” Augme Techs., Inc. v. Yahoo! Inc.,
2013-1121, 6/20/14.
IV.
Relief
A.
Attorneys’ fees
1. Inadequate Prefiling Investigation/Sanctions (Rule 11)
With respect to literal infringement a declaration was found to be inadequate for Rule 11
purposes, where “The declaration simply restated the claim construction arguments and
asserted the conclusory statement that he “analyzed the sample to ascertain whether or
not it infringes at least claim 1 [] by comparing every element of claim 1, as construed, to
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the [the accused product].”” Source Vagabond Sys. Ltd. v. Hydrapak, Inc., 2013-1270,
6/5/14.
2. Exceptional Case (§ 285)
“[A]n appellate court should apply an abuse-of-discretion standard in reviewing all
aspects of a district court’s §285 determination.” Highmark, Inc. v. Allcare Health
Mgmt. Sys., Inc., 572 U. S. ____, No. 12-1163, 4/29/14.
Proper evidentiary standard for section 285 is “preponderance of the evidence” not “clear
and convincing evidence”. Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.
S. ____, No. 12-1184, 4/29/14.
a.
Pleading Requirement
Ashcroft v. Iqbal, 556 U.S. 662 (2009) and Bell Atlantic Corp. v. Twombly, 550 U.S. 544
(2007) do not support denying a party’s fees motion because that party did not recite its
intent to seek fees in the pleadings. Raytheon Co. v. Indigo Sys. Corp., n. 1, 2011-1245,
8/1/12.
b.
Prevailing Party
Where many patents are litigated, a patentee can be the prevailing party even if some
claims and patents are invalidated. In re Omeprazole Patent Litig., 04-1562, 4/23/07.
Prevailing party status is a requirement for attorneys fees and is acquired when the patent
is invalidated by the PTO while the case is stayed. Inland Steel Co. v. LTV Steel Co.,
03-1483, 4/9/04.
An accused infringer who receives a summary judgement of noninfringement and then
dismisses its other defenses is a prevailing party. Brooks Furniture Mfg., Inc. v. Dutailier
Int’l, Inc., 03-1379, 1/4/05.
c.
Bad Faith Litigation/Litigation Misconduct
“[A] district court may award fees in the rare case in which a party’s unreasonable
conduct—whilenot necessarily independently sanctionable—is nonetheless so
“exceptional” as to justify an award of fees.” Octane Fitness, LLC v. ICON Health &
Fitness, Inc., 572 U. S. ____, No. 12-1184, 4/29/14.
d.
Baseless Claims
“[A] case presenting either subjective bad faith or exceptionally meritless claims may
sufficiently set itself apart from mine-run cases to warrant a fee award.” Octane Fitness,
LLC v. ICON Health & Fitness, Inc., 572 U. S. ____, No. 12-1184, 4/29/14.
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3. Sanctions Under Inherent Powers
“When reviewing the imposition of sanctions under a district court’s inherent powers, we
apply the law of the regional circuit in which the district court sits.” Monsanto Co. v. E.I.
Du Pont de Nemours & Co., 2013-1349, 5/9/14.
4. Amount
a.
Fees on Fees
District Court sanction including “fees incurred for the sanctions motions” affirmed
where the District Court “impos[ed] targeted sanctions by carefully fitting its sanctions to
the conduct that it found to be improper.” Monsanto Co. v. E.I. Du Pont de Nemours &
Co., 2013-1349, 5/9/14.
B.
Injunction
1. Preliminary Injunction
a.
Irreparable Harm
“[T]he district court committed legal error by giving no weight to Trebro’s evidence of
likely loss of market share and customers.” Trebro Mfg., Inc. v. FireFly Equip., LLC,
2013-1437, 4/9/14.
“[T]he fact that Trebro does not presently practice the patent does not detract from its
likely irreparable harm.” Trebro Mfg., Inc. v. FireFly Equip., LLC, 2013-1437, 4/9/14.
b.
Likelihood of Success
District Court abused its discretion where the “district court’s brief discussion of
invalidity considered only one feature of the patent.” Trebro Mfg., Inc. v. FireFly Equip.,
LLC, 2013-1437, 4/9/14.
c.
Balance of Equities
“To guide the district court’s analysis of the final two Winter factors, this court makes the
following observations of the record. With respect to the balance of equities, the evidence
suggests” Trebro Mfg., Inc. v. FireFly Equip., LLC, 2013-1437, 4/9/14.
d.
Reversing Denial on Appeal
Trebro Mfg., Inc. v. FireFly Equip., LLC, 2013-1437, 4/9/14.
2. SEPs/FRAND and Injunctions
“To the extent that the district court applied a per se rule that injunctions are unavailable
for SEPs, it erred. . . . A patentee subject to FRAND commitments may have difficulty
establishing irreparable harm. On the other hand, an injunction may be justified where an
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infringer unilaterally refuses a FRAND royalty or unreasonably delays negotiations to the
same effect.” Apple, Inc. v. Motorola, Inc., 2012-1548, 4/25/14.
C.
Reasonable Royalty
1. Minimum Measure of Damages
“If a patentee’s evidence fails to support its specific royalty estimate, the fact finder is
still required to determine what royalty is supported by the record.” Apple, Inc. v.
Motorola, Inc., 2012-1548, 4/25/14.
“Thus, a fact finder may award no damages only when the record supports a zero royalty
award. For example, in a case completely lacking any evidence on which to base a
damages award, the record may well support a zero royalty award.” Apple, Inc. v.
Motorola, Inc., 2012-1548, 4/25/14.
2. Expert Testimony and Methodology
Improper to be damages on broad license agreement of many patents. “We have
consistently explained that proof of damages must be carefully tied to the claimed
invention itself.” Apple, Inc. v. Motorola, Inc., 2012-1548, 4/25/14.
District Court erred when it “focused on individual claim limitations in isolation when
evaluating the reliability of [the expert]’s methods” and “[a]t no point did the court ask or
consider whether [the expert] had used reliable principles and methods, or sufficient data,
to value the entire scope of the asserted claims. Apple, Inc. v. Motorola, Inc., 2012-1548,
4/25/14.
“This court has upheld the use of similar methods involving comparable benchmark
products in the past.” Apple, Inc. v. Motorola, Inc., 2012-1548, 4/25/14.
“Simply because other reliable methods of estimating a reasonable royalty may exist does
not, by itself, render [an expert]’s approach inadmissible.” Apple, Inc. v. Motorola, Inc.,
2012-1548, 4/25/14.
“the value a consumer attributes to the infringing feature may be an important data point
for estimating a royalty, but it is not a required piece of information in all cases.” Apple,
Inc. v. Motorola, Inc., 2012-1548, 4/25/14.
“The district court’s decision states a rule that neither exists nor is correct. Experts
routinely rely upon other experts hired by the party they represent for expertise outside of
their field.” Apple, Inc. v. Motorola, Inc., 2012-1548, 4/25/14.
3. Non-Infringing Alternatives
“Nor is there a requirement that a patentee value every potential non-infringing
alternative in order for its damages testimony to be admissible.” Apple, Inc. v. Motorola,
Inc., 2012-1548, 4/25/14.
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V.
Claim Construction
A.
Special Constructions
1. Constructions Adequate for Rule 11
Rule 11 sanction against patentee upheld where “[i]nstead of looking to the words
themselves, [patentee] added language without support from the specification or
prosecution history, altering otherwise unambiguous claim language, a practice this court
has repeatedly rejected.” Source Vagabond Sys. Ltd. v. Hydrapak, Inc., 2013-1270,
6/5/14.
B.
Claim Language
1. Ordinary Meaning
a.
Exceptions
“We depart from the plain and ordinary meaning of claim terms based on the
specification in only two instances: lexicography and disavowal. Thorner, 669 F.3d at
1365. The standards for finding lexicography and disavowal are exacting.” Hill-Rom
Servs., Inc. v. Stryker Corp., 2013-1450, 6/27/14.
“However, the specification and prosecution history only compel departurecfrom the
plain meaning in two instances: lexicography and disavowal. The standards for finding
lexicography and disavowal are exacting.” GE Lighting Solutions, LLC. v. AgiLight,
Inc., 2013-1267, 5/1/14 (citations omitted).
b.
Negative Limitations
Exclusion of “linked code” from construction of “embedded code” claim term does not
require “lexicography or disavowal in the specification” because it is the ordinary
meaning. Augme Techs., Inc. v. Yahoo! Inc., 2013-1121, 6/20/14.
2. Open/Closed Claims, Generic and Negative Limitations
a.
Comprising
i.
Negative limitation
Claim interpreted to exclude electronic devices where any instructions were stored in offchip memory based on “the entire purpose of the invention.” Gemalto S.A. v. HTC
Corp., 2013-1397, 6/19/14.
“Call back mechanism” claim element required “targeted” calls to those who had
previously contacted the system; calls to everyone, including those (if any) who had
previously contacted the system, did not satisfy the requirement. InTouch Techs., Inc. v.
VGo Commc’ns, Inc., 2013-1201, 5/9/14.
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ii.
Methods
“[I]f grammar, logic, the specification, or the prosecution history require the steps to be
performed sequentially, then the claims are so limited.” Apple, Inc. v. Motorola, Inc.,
2012-1548, 4/25/14.
b.
Defining/Positioning/Connecting Terms
“An interface is a point of interaction. Interface devices are sometimes capable of both
sending and receiving data and sometimes limited to sending data.” Hill-Rom Servs.,
Inc. v. Stryker Corp., 2013-1450, 6/27/14.
“While the volume inside a dome may be considered an “opening” in a general sense, it
is not an opening in the context of an “annular gasket.” This is consistent with plain and
ordinary meaning of a “gasket””. GE Lighting Solutions, LLC. v. AgiLight, Inc., 20131267, 5/1/14.
c.
Range Limitations and Measurements
Where a claim used “patient” with respect to measurements of certain physical reactions,
“we instead interpret “a patient” to mean the general class of persons to whom the
patented compositions are directed, i.e., a patient population.” Braintree Labs., Inc. v.
Novel Labs., Inc., 2013-1438, 4/22/14.
d.
Linking Limitations
represents, etc.)
(associated
with,
corresponds,
“A value cannot “represent” an “amount of time” if there are additional factors, wholly
unrepresented by that value, that necessarily impact, or represent, the “amount of time.”
This is true even if there are particular circumstances under which the value is equal to
the amount of time. In re Rambus, Inc., 2013-1192, 6/4/14.
“From a general sense, the plain meaning of associating relates to a mere commonality,
while linking infers a joining.” Apple, Inc. v. Motorola, Inc., 2012-1548, 4/25/14.
3. Section 112, paragraph 6
a.
When Applied
“In the first step, we must determine if the claim limitation is drafted in means-plusfunction format. As part of this step, we must construe the claim limitation to decide if it
connotes “sufficiently definite structure” to a person of ordinary skill in the art, which
requires us to consider the specification (among other evidence).” Apple, Inc. v.
Motorola, Inc., 2012-1548, 4/25/14.
Claim term “heuristics” found to have sufficient structure in context of the specification
to preserve presumption flowing from claim language not using the term “means”.
Apple, Inc. v. Motorola, Inc., 2012-1548, 4/25/14.
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“[T]o one of skill in the art, the “structure” of computer software is understood through,
for example, an outline of an algorithm, a flowchart, or a specific set of instructions or
rules.” Apple, Inc. v. Motorola, Inc., 2012-1548, 4/25/14.
4. Functional and Structural Language
a.
Functional Definitions of Limitations, e.g. “such that”
“[D]efining a particular claim term by its function is not improper.” Hill-Rom Servs.,
Inc. v. Stryker Corp., 2013-1450, 6/27/14.
5. Effect of Other Limitations in Claim
a.
No Surplusage
Rejecting proposed construction of “analyzer serve”, because it “contradicts the claim
language because it reads “analyzer server” out of the claim.” Apple, Inc. v. Motorola,
Inc., 2012-1548, 4/25/14.
b.
Different terms have different meanings
“This distinction creates a presumption that “embedded” means something different than
“retrieved” or “downloaded.”” Augme Techs., Inc. v. Yahoo! Inc., 2013-1121, 6/20/14.
6. Effect of Other Claims
a.
Claim Differentiation
i.
Construction Supports Differentiation
“We thus hold that the district court erred by incorporating the dependent claim
limitations into the construction of IDC connector.” GE Lighting Solutions, LLC. v.
AgiLight, Inc., 2013-1267, 5/1/14.
ii.
Surplusage Rather Than Differentiation
“To read the bed frame limitation from claim 10 into claim 1 (even though claim 10 also
includes moving the bed frame “away from” the sod carrier) renders the term redundant
and offends principles of claim differentiation.” Trebro Mfg., Inc. v. FireFly Equip.,
LLC, 2013-1437, 4/9/14
b.
Related Patents
“The meaning of terms appearing in the [the grandchild] patent must be construed in light
of the same terms recited in the [grandparent] patent.” Gemalto S.A. v. HTC Corp.,
2013-1397, 6/19/14.
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C.
Written Description
1. Lexicography
Lexicography trumps rule of covering preferred embodiments. Braintree Labs., Inc. v.
Novel Labs., Inc., 2013-1438, 4/22/14.
a.
Definition by Intrinsic Use
Implicit definition rejected where the excerpts offered as definitional where “viewed in
context” of other language before or after them in the specification. Suffolk Techs. LLC
v. AOL Inc., 2013-1392, 4/27/14.
2. Disclosed Embodiment(s)
a.
Presumption of Claim Coverage
Rejecting accused infringer’s proposed construction where “were we to adopt [that]
proposed construction, that the entire inner profile must be substantially ellipsoidal, we
would exclude the specification’s only disclosed embodiment.” GE Lighting Solutions,
LLC. v. AgiLight, Inc., 2013-1267, 5/1/14.
Lexicography trumps rule of covering preferred embodiments. Braintree Labs., Inc. v.
Novel Labs., Inc., 2013-1438, 4/22/14.
b.
Limitations from Sole Embodiment
“[I]t is improper to read limitations from a preferred embodiment described in the
specification—even if it is the only embodiment—into the claims absent a clear
indication in the intrinsic record that the patentee intended the claims to be so limited.”
Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 913 (Fed. Cir. 2004); accord GE
Lighting Solutions, LLC. v. AgiLight, Inc., 2013-1267, 5/1/14.
3. Interchangeable Use of Terms
Interchangeable use of claim term “datalink” and more limited “cable” does not limit
meaning where “those terms are used synonymously only in describing a particular
numbered component in the figure depicting the preferred embodiment, and never in
describing the datalink of the invention generally.” Hill-Rom Servs., Inc. v. Stryker
Corp., 2013-1450, 6/27/14.
4. Advantages/Purposes/Problems Addressed
“The specification demonstrates that external memory storage was a defining feature of
prior art Java technology, and that the patented invention was designed to eliminate the
need for such external storage. Of course, “the claims cannot be of broader scope than the
invention that is set forth in the specification.” On Demand Mach. Corp. v. Ingram
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Indus., Inc., 442 F.3d 1331, 1340 (Fed. Cir. 2006).” Gemalto S.A. v. HTC Corp., 20131397, 6/19/14.
Narrow construction affirmed because broader construction “would defeat the invention’s
purpose of providing increased security by not transmitting the entire key.” Apple, Inc.
v. Motorola, Inc., 2012-1548, 4/25/14.
“[W]hile cleansing is the goal specifically articulated in the specification, it is not a claim
requirement.” Braintree Labs., Inc. v. Novel Labs., Inc., 2013-1438, 4/22/14.
5. Limitations Not Imported
Where a particular limiation was described as a depicted embodiment, but was not
described as the present invention, as essential, or as important, and where alternatives
where not disparaged, there was no disclaimer. GE Lighting Solutions, LLC. v.
AgiLight, Inc., 2013-1267, 5/1/14.
D.
Prosecution History
1. Reexam/Review
Reexamination prosecution statements, not disclaimers, used to “support” construction of
term. InTouch Techs., Inc. v. VGo Commc’ns, Inc., 2013-1201, 5/9/14.
2. Related Applications
“The meaning of terms appearing in the ’727 patent must be construed in light of the
same terms recited in the ’317 patent. All three asserted patents are directly related (the
’727 patent is a continuation of the ’485 patent, which is a continuation of the ’317
patent), derive priority from the same provisional application, and share the same
disputed claim language. Statements made by the applicant concerning the “memory”
limitation in the ’317 patent’s claims therefore apply with equal force to the “memory”
limitation in the ’727 patent’s claims with the same limitation.” Gemalto S.A. v. HTC
Corp., 2013-1397, 6/19/14.
3. Issuing Application
a.
Does Not Change Meaning
Post-issuance comments regarding “invention” for purposes of patent term extension
request, was not a clear disclaimer. Braintree Labs., Inc. v. Novel Labs., Inc., 2013-1438,
4/22/14.
4. Foreign Counterparts
“Statements made by Motorola during prosecution of a related Japanese patent further
support this construction.” even though “Motorola’s description of the TOSN came after
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the ’712 patent issued and was made in front of a foreign patent office.” Apple, Inc. v.
Motorola, Inc., 2012-1548, 4/25/14.
E.
Extrinsic Evidence
1. Party Admissions/Marking/Expert Testimony
Court relied on defendant’s expert testimony regarding meaning of “well-known term of
art” where plaintiff’s expert did not propose a construction of the term of challenge the
other expert’s definition. Microsoft Corp. v. DataTern, Inc., 2013-1184, 5/5/14.
2. Inventor/Prosecutor Statements
“[T]he testimony of two of the asserted patents’ inventors (Timothy Wilkinson and Scott
Guthery), persons skilled in the relevant art, confirms that the term had no such
meaning.” Gemalto S.A. v. HTC Corp., 2013-1397, 6/19/14.
Court relied on inventor’s testimony that a particular claim term “in general and in the
context of the ’502 patent” included a particular requirement. Microsoft Corp. v.
DataTern, Inc., 2013-1184, 5/5/14.
F.
Prefer Narrow/Preserve Validity
“Where the meaning of a claim term is clear, as it is here, we do not rewrite the claim to
preserve its validity. Liebel-Flarsheim, 358 F.3d at 911. Moreover, the parties point to no
evidence in this record that establishes an enablement problem and the district court did
not cite to any. Id. Courts should be cautious not to allow claim construction to morph
into a mini-trial on validity. Claim terms should be given their plain and ordinary
meaning to one of skill in the art at the relevant time and cannot be rewritten by the
courts to save their validity.” Hill-Rom Servs., Inc. v. Stryker Corp., 2013-1450, 6/27/14.
G.
Timing of Construction and Parties’ Positions
1. Construing the Words in the Construction
Construction construed as necessarily broader than dependent claim because district
court’s Markman opinion relied on claim differentiation. Augme Techs., Inc. v. Yahoo!
Inc., 2013-1121, 6/20/14.
“This is not an uncommon occurrence—parties in patent cases frequently stipulate to a
construction or the court construes a term, only to have their dispute evolve to a point
where they realize that a further construction is necessary.” GE Lighting Solutions, LLC.
v. AgiLight, Inc., 2013-1267, 5/1/14.
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2. Agreed and Proposed Constructions
Term with an agreed construction cannot be relied upon for an argument as to another
term where the argument should have been made with respect to the agreed term.
Braintree Labs., Inc. v. Novel Labs., Inc., 2013-1438, 4/22/14.
“While [patentee] agreed to, and is bound by virtue of its stipulation to, a narrower
construction of [a claim term] than that required by the [asserted] patent, that does not
change the correct construction of [another claim term]. The tail can’t wag the dog.”
Microsoft Corp. v. DataTern, Inc., 2013-1184, 5/5/14.
3. Using Additional Language to Apply Claim Constructions
“We are not persuaded by InTouch’s claim that the district court issued three conflicting
constructions of the term “arbitrator/arbitrating.” The district court simply used additional
language in its post trial orders to explain its conclusion that the VGo system lacked the
arbitrator limitation as defined. We find nothing improper in that conclusion.” InTouch
Techs., Inc. v. VGo Commc’ns, Inc., n. 4, 2013-1201, 5/9/14.
H.
Limited and Ordinary Meaning Constructions
1. Questions of Fact in Applying Constructions
“Thus, the claimed validation need not be flawless to meet the claimed message
validation information limitation—an issue to be resolved in an infringement analysis.”
Hill-Rom Servs., Inc. v. Stryker Corp., 2013-1450, 6/27/14.
VI.
Procedural Law
A.
Setting Aside Judgment (60(b))
Motion under 60(b)(3) properly denied where movant identified “nothing in the record
that shows it was not given a full and fair opportunity to present its case,” even if there
was an inpropriety with regard to mediation. CEATS, Inc. v. Continental Airlines, Inc.,
2013-1529, 6/24/14.
Motion under 60(b)(6) concerning asserted violations by mediators analyzed under 3 part
recusal test, because “mediators are bound by disclosure requirements similar to the
recusal requirements of judges.” 3 part test under Liljeberg v. Health Servs. Acquisition
Corp., 486 U.S. 847, 864 (1988) includes: “(1) “the risk of injustice to the parties in the
particular case;” (2) “the risk that the denial of relief will produce injustice in other
cases;” and (3) “the risk of undermining the public’s confidence in the judicial process.””
CEATS, Inc. v. Continental Airlines, Inc., 2013-1529, 6/24/14.
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B.
JMOL (Rule 50) / Summary Judgment (Rule 56)
1. Jurisdictional Effect
Until final judgment is entered a mere summary judgment does not divest the district
court of jurisdiction to enforce a settlement agreement and vacate the summary judgment.
Exigent Tech., Inc. v. Atrana Solutions, Inc., 05-1338, 3/22/06
C.
Discovery/Evidence
1. Expert Testimony
Not an abuse of discretion to strike an opinion in a supplemental report regarding validity
of a claim where the expert [Dr. Rhyne] “did opine on the validity of [another claim] in
his initial report and the district court’s construction did not vary greatly from the parties’
proposals.” Suffolk Techs. LLC v. AOL Inc., 2013-1392, 4/27/14.
2. Opening the Door
After a defendant refused to waive privilege on opinions during discovery and then a
defendant’s witness at trial was crossed by patentee as to whether he was a patent
attorney and how he had formed an opinion of noninfringement and on redirect he
testified that he got an opinion of noninfringement, the Federal Circuit concluded “the
testimony was improper”. However, because the jury instructions required that the
noninfringement opinion only be considered for willfulness, which the jury did not reach,
“we find that [patentee] failed to establish that the verdict was more probably than not
affected by this error.” InTouch Techs., Inc. v. VGo Commc’ns, Inc., 2013-1201, 5/9/14.
D.
Transfer to New Judge or Venue
Granting writ of mandamus to transfer severed manufacturer to convenient forum for it,
despite severed customers being in original forum. In re Nintendo of America, Inc.,
2014-132, 6/25/14.
“A transfer “is not proper when combined with a dismissal.” Hollyanne Corp. v. TFT,
Inc., 199 F.3d 1304, 1307 (Fed. Cir. 1999); see also Christianson v. Colt Indus. Operating
Corp., 486 U.S. 797, 818 (1988). Once the district court dismissed the case for lack of
jurisdiction, it “was without authority to transfer the case.”” In re Teles AG
Informationstechnologien, 2012-1297, 4/4/14.
“Taken on its own terms, the district court’s analysis presents a clear overall picture:
nothing favors the transferor forum, whereas several factors favor the transferee forum.
The analysis may not show that the transferee forum is far more convenient. But that is
not what is required. With nothing on the transferor-forum side of the ledger, the analysis
shows that the transferee forum is “clearly more convenient.”” In re Toyota Motor Corp.,
2014-113, 4/3/14.
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“The district court found that two factors—the availability of compulsory process to
secure attendance of witnesses and the cost of attendance for willing witnesses—are
neutral regarding transfer. That determination appears to be incorrect. No non-party
witnesses have been identified as being within the Eastern District of Texas. On the other
hand, it appears undisputed that a number of witnesses in the Eastern District of
Michigan have knowledge potentially relevant to infringement and validity issues, even if
it is not possible at present to specify further just how material their testimony might be
to the yet-undeveloped issues in the case.” In re Toyota Motor Corp., 2014-113, 4/3/14.
E.
Severance
Granting writ of mandamus to sever customers from manufacturer. In re Nintendo of
America, Inc., 2014-132, 6/25/14.
VII.
Federal Circuit Appeals
A.
New Arguments/Issues on Appeal/Waiver/Judicial Estoppel
1. District Court/ITC Appeals
a.
Judicial Estoppel
“[S]tatements made during prosecution of a later, unrelated patent cannot form the basis
for judicial estoppel.” Hill-Rom Servs., Inc. v. Stryker Corp., 2013-1450, 6/27/14.
b.
Exceptions
i.
District Court Addressed the Issue
No waiver where “the district court clearly recognized, considered, and ruled on the
issue.” Suffolk Techs. LLC v. AOL Inc., n.2, 2013-1392, 4/27/14.
c.
Improper Closing Argument
“[Patentee] also alleges that [defedant]’s counsel made improper statements in its closing
argument. [Patentee], however, failed to raise any objections at that time. Therefore, we
consider these arguments waived.” InTouch Techs., Inc. v. VGo Commc’ns, Inc., n. 9,
2013-1201, 5/9/14.
B.
Appelate Jurisdiction
1. 1292(c)(2) Jurisdiction When Damages Remain
“The jury found the damages for the period covered by the evidence at trial. The district
court’s issuance of an Order closing the case, with provision for an accounting of any
additional damages that may accrue if the decision is affirmed on appeal, does not negate
finality of a judgment that meets the terms of §1292(c)(2).” Sanofi-Aventis Deutschland
Gmbh v. Glenmark Pharms. Inc., 2012-1489, 4/21/14.
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2. Standing to Appeal
Some issues often discussed in “standing” terms are better viewed as interpretations of a
statutory cause of action. Lexmark Int'l, Inc. v. Static Control Components, Inc., 134 S.
Ct. 1377, 1386-88 (2014).
A party who has transferred the patent to an entity of which the party is the sole owner
during an inter partes reexamination “cannot bring [an] appeal before the court, for lack
of a cause of action.” Vaillancourt v. Becton Dickinson & Co., 2013-1408, 4/24/14.
3. Appellate Review of Decisions Made without Jurisdiction
“[W]e hold that the district court erred in dismissing the case rather than transferring it.
Once the district court held that it lacked jurisdiction, it should have transferred the case
pursuant to § 1631. . . . Under these circumstances, it was in the interest of justice to
transfer the case pursuant to § 1631, and we “treat [Teles’] petition for review, which was
timely filed with the district court, as if it had been properly transferred” to this court
rather than dismissed.” In re Teles AG Informationstechnologien, 2012-1297, 4/4/14.
C.
Standards of Review and Record/Appendix on Appeal
1. Review Judgments not Opinions
“A district court need not write an opinion that expressly discusses every admitted
exhibit. See Medtronic, Inc. v. Daig Corp., 789 F.2d 903, 906 (Fed. Cir. 1986)
(recognizing that a district court need not provide a “complete discussion of all possible
permutations and combinations” of the evidence because we “presume that a fact finder
reviews all evidence presented unless he explicitly expresses otherwise”).” General Elec.
Co. v. Wilkens, 2013-1170, 5/8/14.
D.
Briefing Related and Multi-Defendant Cases
“Fed. R. App. P. 28(i) [] authorizes incorporation of co-party briefing only in the case of
consolidated appeals. . . . We hold that incorporation of co-party briefing is only allowed
in consolidated cases as explained in Fed. R. App. P. 28(i) and that such incorporation
cannot be used to exceed word count.” Microsoft Corp. v. DataTern, Inc., 2013-1184,
5/5/14.
VIII. Patent Office Proceedings
A.
Interferences
1. Written Description
Board’s dismissal of interference for lack of written description of the count by the
challenging application reversed where the factual basis for determining that the
application met the written description requirement was evidenced by what that
“specification recognizes.” Tobinick v. Olmarker, 2013-1499, 5/19/14.
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B.
Reexamination
1. Inter Partes
a.
Analysis of Obviousness
Affirming obviousness even with valid secondary considerations in the form of praise by
requestor. Q.I. Press Controls, B.V. v. Lee, 2012-1630, 6/9/14.
C.
Inter Partes Review
“The unambiguous language of § 141 provides that a patent owner alone can appeal a
final decision in an inter partes reexamination to this court.” Vaillancourt v. Becton
Dickinson & Co., 2013-1408, 4/24/14.
A decision by the Director not to institute an inter partes review may not be appealed to
the Federal Circuit. St. Jude Medical, Cardiology Div., Inc. v. Volcano Corp., 2014-1183,
4/24/14.
A decision by the Director not to institute an inter partes review may not be directly
reviewed by Federal Circuit through the extraordinary means of mandamus. In re
Dominion Dealer Solutions, LLC, 2014-109, 4/24/14.
Patent holder sought mandamus relief. “The present case involves a decision by the
Director to institute an inter partes review. We conclude that immediate review of such a
decision is not available in this court.” In re Proctor & Gamble Co., 2014-121, 4/24/14.
D.
Rejection Appeal Procedure
1. Board Reliance on New Grounds of Rejection
“Here, when all these references were before the Board, and this court, an obligation is
owed to the public not to permit inconsistent results when a proper challenge to that
inconsistency is made on appeal.” Q.I. Press Controls, B.V. v. Lee, 2012-1630, 6/9/14.
E.
Reasonable Interpretation of Claims
1. Indefiniteness of Claims
“[W]hen the USPTO has initially issued a well-grounded rejection that identifies ways in
which language in a claim is ambiguous, vague, incoherent, opaque, or otherwise unclear
in describing and defining the claimed invention, and thereafter the applicant fails to
provide a satisfactory response, the USPTO can properly reject the claim as failing to
meet the statutory requirements of § 112(b).” In re Packard, 2013-1204, 5/6/14.
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F.
Appeals to District Court Under Section 145
“We therefore hold that the 1999 amendments eliminated the right of patent owners to
secure review under § 145.” In re Teles AG Informationstechnologien, 2012-1297,
4/4/14.
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