Fish & Richardson Litigation Blog

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Damages Award Vacated Where Jury Instruction Implied that Apportionment Was Not Needed If The Royalty Base Was The Smallest Saleable Patent Practicing Unit And Where The Expert Used The Nash Bargaining Solution Without Determining Whether It Applied

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VirnetX, Inc. v. Cisco Sys., Inc., ___ F.3d ___ (Fed. Cir. Sept. 16, 2014) (PROST, Chen) (E.D. Tex.: Davis) (4 of 5 stars)

Fed Cir affirmed a denial of JMOL of non-infringement on some patents but reversed on others, affirmed a denial of JMOL of invalidity on all patents, affirmed an evidentiary ruling, and vacated a damages award.

The four patents-in-suit relate to technology for providing security over networks—two were asserted against Apple’s “FaceTime” feature, while the other two were asserted against Apple’s “VPN On Demand” feature. Continue Reading »

Rule 19 Does Not Permit A Patent Co-Owner to Involuntarily Join Other Patent Co-Owners Without Their Consent

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STC.UNM v. Intel Corp., __ F.3d __ (Fed. Cir. Sept. 17, 2014) (en banc) (D.N.M.: Brack) (2 of 5 stars)

Fed Cir denies rehearing en banc where a split panel had affirmed dismissal of a suit in which a patent’s co-owner had not been voluntarily joined.  The panel held that Rule 19 did not permit involuntarily joining the co-owner.

Concurrence (Judges Dyk, Moore, and Taranto)

Term’s Narrow Ordinary Meaning and Usage in the Intrinsic Evidence Overcome Claim Differentiation; JMOL of Non-Infringement Appropriate Where Patentee Didn’t Argue Infringement Under Narrower Construction

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Cardsoft LLC v. Verifone, Inc., __ F.3d ___ (Fed. Cir. Oct. 17, 2014) (Prost, Taranto, HUGHES) (E.D. Tex.: Payne) (2 of 5 stars)

Fed Cir reverses claim construction and enters JMOL of non-infringement.  The patent covered a payment terminal that included a “virtual machine” having certain functionality.  The Fed Cir determined that “virtual machine,” by its ordinary meaning and by the problem that the specification and prosecution purported to overcome, should make it so that applications run on the machine are independent of the operating system or hardware on which the machine runs.  Continue Reading »

A Single “e.g.” Phrase, As Opposed To An “i.e.” Phrase, Failed To Save Facially Subjective Claim Term From Indefiniteness

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Interval Licensing LLC. v. AOL, et al., __ F.3d __ (Fed. Cir. Sept. 10, 2014) (Taranto, CHEN*) (Nos. 2013-1219, -1220, -1221, PTAB)

Fed Cir affirms judgment of invalidity, vacates judgment of noninfringement and remands for further proceedings.  The patents in suit were directed to an “attention manager for occupying the peripheral attention of a person in the vicinity of a display device.” Continue Reading »

Implicit Acknowledgement of A Problem in the Prior Art and Inventors’ Incorrect Statements About The Problem Being Solved Supported Obviousness Finding

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Scientific Plastic Products, Inc. v. Biotage, __ F.3d __ (Fed. Cir. Sept. 10, 2014) (NEWMAN, Moore, Wallach) (Nos. 2013-1219, -1220, -1221, PTAB)

Fed Cir affirms PTAB’s rejection and cancellation of all claims relating to a resealable cartridge for low pressure liquid chromatograph based on obviousness during inter partes reexamination.

Continue Reading »

Federal Circuit Has Jurisdiction Over Diversity Suit for Breach of Contract That Depended on Patent Infringement and Validity

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Jang v. Boston Scientific Corp., __ F.3d ___ (Fed. Cir. Sept. 16, 2014) (Dyk, Plager, LINN) (C.D. Cal.: Phillips)

Fed Cir denies transfer to the regional circuit and refuses interlocutory review over a ruling that the plaintiff could proceed with a breach of contract claim for patent royalties accrued before the defendant challenged the patent’s validity. Continue Reading »

Amending a Claim to Narrow the Scope of a Sub-Assembly Triggered Prosecution History Estoppel for the Whole Assembly

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EMD Millipore Corp. v. AllPure Tech., Inc., ___F.3d___ (Fed. Cir. Sept. 29, 2014) (PROST, O’Malley, Hughes)

Federal Circuit affirmed a grant of summary judgment of non-infringement, finding that AllPure did not literally infringe U.S. Patent No 6,032,543 and that prosecution history estoppel prevented Millipore from asserting the doctrine of equivalents. Continue Reading »

NOTICE: CAFC Holiday Closure

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By order of the Chief Judge, The United States Court of Appeals for the Federal Circuit will be closed on November 28, 2014; December 26, 2014, and January 2, 2015. For purposes of computation of time and motions to enlarge time these days will be considered “legal holidays.”

Drug Labels Can Provide The “Specific Intent” Required For Inducement Of Infringement

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Pharma-pills-multiple-colors-and-bottlesIn DSU Medical Corp. v. JMS Co., 471 F.3d 1293, 1306 (Fed. Cir. 2006) (en banc in relevant part), the Federal Circuit held that inducement of infringement under section 271(b) requires a “specific intent” to infringe. A general intent to encourage direct infringement will not establish a successful inducement claim. But the court failed to provide any guidance on establishing the requisite intent. In pharmaceutical cases, however, specific intent may be established by the wording of a drug label, particularly in Hatch-Waxman cases.

Inducement is particularly relevant in pharmaceutical litigation as method-of-use claims are infringed under section 271(b). Conventional principles of induced infringement apply in determining infringement under the Hatch-Waxman Act. See Warner- Lambert Co. v. Apotex Corp., 316 F.3d 1348, 1365 (Fed. Cir. 2003). First, the inducer must have knowledge of the asserted patent. See Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060, 2070 (2011). In Hatch-Waxman actions, this knowledge is easily proven by reference to the Orange Book. Moreover, the filing of a paragraph IV certification undoubtedly shows that a generic manufacturer had actual knowledge of any patents that claim the proposed method-of-use. See, e.g., Bone Care Int’l, L.L.C. v. Roxane Labs., Inc., 2012 WL 2126896 (D. Del. June 11, 2012). Therefore, once direct infringement is established, a plaintiff must only prove that the generic manufacturer had the specific intent to induce infringement. Such intent may be inferred from evidence of a sales force, advertisements in medical journals, direct marketing to doctors, or funded research or meetings on the claimed method. See Warner-Lambert Co. v. Apotex Corp., 2001 WL 1104618, at *3 (N.D. Ill. Sept. 14, 2001), aff’d, 316 F.3d 1348 (Fed. Cir. 2003). Continue Reading »

A slippery slope? Schlumberger v. Rutherford and implications for future abuse of the Texas Anti-SLAPP statute in trade secret litigation.

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Two-business-people-meeting-in-an-isolated-placeSometimes, the cure is as bad as (or even worse than) the disease. When it comes to Anti-SLAPP statutes, that has, at times, seemed to be the case. Such statutes are intended to quickly defeat meritless suits filed to stifle free speech and thwart legitimate filings with courts and government agencies (“SLAPP” stands for “strategic lawsuits against public participation”). Indeed, they have often proven useful in facilitating the early dismissal of litigation before the commencement of costly fact discovery. But, because they amount essentially to a pre-discovery summary judgment and may result in significant awards of fees and costs to the defendant, Anti-SLAPP statutes have also been misused as a tool to cut off legitimate claims before they can be fully and fairly litigated. Some Ninth Circuit judges have recently voiced their view that the federal courts in their circuit made a serious mistake in applying the California statute in federal cases, given how incompatible many of its more harsh procedures are with the Federal Rules of Civil Procedure.   See Makaeff v. Trump University, 715 F.3d 254 (9th Cir. 2013)  And now, in Texas, which only enacted its Anti-SLAPP statute[1] in 2011, a trial court has recently issued a ruling with troubling implications for future Anti-SLAPP counterattacks by defendants in trade secrets cases. Continue Reading »