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Fish & Richardson Litigation Blog

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Law requiring a private party to perform quasi-governmental function that results in infringement satisfies the “for the United States” prong of 28 U.S.C. 1498(a)

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IRIS Corp. v. Japan Airlines Corp., ___F.3d___ (Fed. Cir. Oct. 21, 2014) (Prost, Newman, HUGHES) (E.D. N.Y.: Amon)

Airplane-AirportFed. Cir. affirms dismissal of claims against infringing party and finds that patentee’s exclusive remedy is a suit against the United States. IRIS’s patents cover a method for making an improved security identification document with an embedded chip to store data. IRIS sued Japan Airlines (JAL) alleging that it used the technology in processing and boarding passengers at check-in points throughout the country. JAL must examine passports according to federal law, including those made using the patented method. Continue Reading »

Government Heeds Fish’s Admonition

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In an article entitled “Avoid Inducement Liability with an Early Opinion of Counsel,” published in IP360 on March 21, 2014, it was recommended that potential defendants obtain an early opinion of counsel challenging, if possible, the validity of any patents that could be asserted against them under § 271(b). This suggestion was based on the Federal Circuit’s decision in Commil USA, LLC. V. Cisco Systems, Inc., 720 F.3d 1361 (Fed. Cir. 2013), in which the court held that a good faith belief that an asserted patent is invalid could negate the intent requirement for induced infringement. The plaintiff in this controversial decision filed for certiorari. On October 16, 2014, the U.S. government filed an amicus curiae brief urging the Supreme Court to grant cert. In its brief, the government, citing the advice in the article, states: Continue Reading »

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.

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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.”