Blog

Fish & Richardson Litigation Blog

Welcome to the Fish & Richardson blog, a community site where our intellectual property, commercial, and white collar litigators share information on nationwide litigation developments and trends. Join the conversation!

Narrow Construction Was Correct Where the Claim Was Ambiguous and a Broader Construction Was Inconsistent With the Invention’s Sole Purpose

| | Leave a Comment

World Class Tech. Corp. v. Ormaco Corp., 769 F.3d 1120 (Fed. Cir. Oct. 20, 2014) (Prost, TARANTO, Hughes) (D. Or.: Acosta) (1 of 5 stars)

Federal Circuit affirms a stipulated judgment of noninfringement by affirming claim construction. The patent claimed an orthodontic bracket with a slot for holding a wire that exerts a corrective force on a tooth, a slide that moves across the slot to hold the wire in place (or release it), a “support surface” at an acute angle to the slot’s base, and a separate ledge. The parties disputed whether the “support surface” had to support the slide through its entire movement across the slot.   Continue Reading »

Conditioning Supplementation of Infringement Contentions on Payment of Sanctions is an Improper Sanction Absent a Showing of Bad Faith

and | | Leave a Comment

AntiCancer, Inc. v. Pfizer et al., __ F.3d __ (Fed. Cir. October 20, 2014) (NEWMAN, Reyna, Taranto) (S.D. CA:  Sammartino) (2 of 5 stars)

Federal Circuit vacates district court’s decision granting summary judgment of noninfringement because the grant was based on an improper sanction imposed on plaintiff.

Federal Circuit vacates district court’s decision granting summary judgment of noninfringement because the district court improperly imposed a fee-shifting sanction as a condition for permitting the plaintiff to supplement its Preliminary Infringement Contentions and thereby challenges summary judgment. Under Ninth Circuit precedent, a court has authority to issue sanctions only upon an explicit finding of bad faith.” Slip op. at 9. Although the Federal Circuit did not address the sufficiency of the plaintiff’s Preliminary Infringement Contentions, it noted that the district court failed to make an explicit finding of bad faith. Therefore, the court vacated the sanctions and the summary judgment, and remanded the case.

Exploring the limits of the Texas Anti-SLAPP law: First briefs filed in Schlumberger v. Rutherford appeal

and | | Leave a Comment

This blog post covers recent developments in the case addressed earlier this year in a previous litigation blog post, which can be read here.

In late August of this year, the 127th District Court of Harris County, Texas, granted the Anti-SLAPP[1] motion filed by Caroline Rutherford, a non-practicing entity (NPE) employee. Rutherford had been sued by her former employer, Schlumberger, for allegedly using Schlumberger’s confidential, proprietary information to assist an affiliate of her new employer in purchasing a patent it later asserted against Schlumberger. In granting the motion, the district court dismissed nearly all of Schlumberger’s claims—breach of fiduciary duty, trade secret misappropriation, conversion, and civil theft—allowing only Schlumberger’s breach of contract claim to stand. In connection with the ruling, the district court awarded Rutherford a judgment for $350,000 in attorneys’ fees and $250,000 in sanctions. Not surprisingly, both parties filed notices of appeal. Last week, the first round of appellate briefs was filed. Continue Reading »

Brian Coggio and Ron Vogel’s featured Law360 article, “Is Stockpiling Protected by Hatch-Waxman Safe Harbor?”

| | Leave a Comment

A question that may be on the forefront of many IP attorneys’ minds is whether the stockpiling of drugs, to allow commercial introduction immediately following patent expiration, is protected by the Hatch-Waxman safe harbor. Fish attorneys Brian Coggio and Ron Vogel recently addressed this very question in an article titled, “Is Stockpiling Protected by Hatch-Waxman Safe Harbor?” featured on Law60. Continue Reading »

Federal Circuit Rules Collateral Estoppel Does Not Apply to Similar but Unrelated Patent

| | Leave a Comment

e.Digital Corp. v. Futurewei Tech., Inc.,__F.3d__(Fed. Cir. Nov. 18, 2014)(MOORE, O’Malley, Reyna)(S.D. Cal.: Sabraw)(2 of 5 stars)

Fed Cir affirms-in-part and reverses-in-part a collateral estoppel decision where a prior claim construction issue did not apply to an unrelated patent for a similar but different invention.

Background: e.Digital initially brought a suit in Colorado for infringement of its ’774 patent. During that case, the court construed the “sole memory limitation” of claims 1 and 19 of the ’774 patent. The Colorado court looked to the ’774 patent’s written description and prosecution history disclaimers and decided that it required “the device use only flash memory, not RAM.” Slip. op. at 3. Following claim construction, the court granted the parties’ motion to dismiss with prejudice. Continue Reading »

Co-Plaintiff Tri-County Dismissed for Lack of Standing Where It Effectively Assigned All Substantial Rights Back To Co-Plaintiff Azure

and | | Leave a Comment

Azure Networks, LLC v. CSR PLC, ___ F.3d ___ (Fed. Cir. Nov. 6, 2014) (Reyna, Mayer (dissenting in part), CHEN) (E.D. Tex., Schneider) (3 of 5 stars)

Federal Circuit affirms dismissal of co-plaintiff for lack of standing, vacates judgment of noninfringement and remands.

STANDING:  Azure assigned the patent to a local Texas non-profit, which then licensed back essentially all rights to Azure, including the rights to practice the patent, to sublicense, and to pursue infringement without any control by the non-profit—e.g., “Azure is holding all the string.”  The Federal Circuit agreed with the district court that the non-profit should be dismissed because the agreement “constituted an effective assignment for purposes of standing.”  Slip Op. at 3.  The non-profit’s right to practice (though it is a legal aid society and the patent covers computer networking components), economic interests, limited termination rights, and unfixed reversionary interest did not demonstrate its ownership.  As an effective nonexclusive licensee, the non-profit could not sue or join the suit.  Id. at 19. Continue Reading »

Federal Circuit Reverses Denial of Stay Pending CBM Review, Focusing on Simplification and Reduction of Burdens Instead of Categorical Rules.

| | Leave a Comment

Versata Software, Inc. v. Callidus Software, Inc., __ F.3d ___ (Fed. Cir. Nov. 20, 2014) (CHEN, Linn, Mayer) (D. Del.: Robinson) (3 of 5 stars)

Federal Circuit reverses denial of stay under an abuse of discretion standard after finding that all four factors supported granting a stay.

Background:  Versata sued Callidus on three patents (the ’326, ’304, and ’024 patents) covering the management and tracking of sales information by a financial services company. Callidus counterclaimed and asserted its own patents against Versata. Callidus also petitioned for CBM review of all claims in the ‘’325 patent and every independent claim in the ‘’304 and ‘’024 patents. After the PTAB granted the first CBM review, Callidus sought to stay the litigation. Callidus also filed a second CBM petition challenging the remaining claims in the ‘’304 and ‘’024 patents. Continue Reading »

Paragraph IVs and IPRs — Never the Twain Shall Meet? A case challenges ANDA applicants’ ability to file IPRs

| | Leave a Comment

3-Rx-bottles-for-HW-blog-post-Nov-2014Last week I spoke at the Europe Life Sciences IP Summit in Amsterdam. While there were many topics discussed — I presented on the continuing controversy over 35 USC 101 and life science inventions — IPR (inter partes review) continues to be the number one topic on everyone’s minds in relation to the United States. Given this focus, interested practitioners should pay attention to a case I learned about while attending the Summit. The case is challenging whether generic drug companies that rely on paragraph IV certifications in pursuing ANDAs (abbreviated new drug applications) may also challenge a patent under the IPR provisions. The case is pending in the District of New Jersey and is captioned as Senju Pharm. Co., Ltd., et al v. Metrics Inc., et al, No. 1:14-cv-03962-JBS-KMW (D.N.J.). Continue Reading »

Patent “Troll” Reform: Take Two

| | Leave a Comment

On Tuesday, House Judiciary Chairman Bob Goodlatter (R-Va.) made official what was widely assumed: patent “troll” reform legislation is back on the menu.

With the midterm election in the rearview mirror, and the Senate back in Republican hands, legislators will renew their efforts to enact patent reform in early 2015.

“Fortunately voters earlier this month made it clear they’re more interested in results than the latest filibuster,” Goodlatte told the U.S. Chamber of Commerce’s 2014 IP Summit.

Last year, lawmakers’ attempts to rein in the excesses of “trolls” came up short in the Senate. The Innovation Act, Goodlatte’s own far-reaching bill, passed the House of Representatives by a 325-91 margin but stalled in the upper chamber, where various senators proposed alternatives. Continue Reading »

Federal Circuit Affirms Willful Infringement Judgment and Determines Patentee is the “Prevailing Party” Where It Won on One of Two Asserted Patents

and | | Leave a Comment

SSL Servs., LLC v. Citrix Sys., Inc., __ F.3d ___ (Fed. Cir. Oct. 14, 2014) (Lourie, Linn, O’MALLEY) (E.D. Tex.: Gilstrap) (2 of 5 stars)

Fed Cir affirms a non-infringement judgment on one patent, affirms a judgment of willful infringement on a second patent, affirms other damages and evidentiary rulings, and determines the patentee is a “prevailing party.”

Claim Construction/Non-infringement:  Addressing the first patent, the Fed Cir held the term “destination address” was properly limited to a “network address” based on the surrounding claim language and the specification’s reference to protocols involving a network address format.  Given this construction, the non-infringement verdict was proper because there was no evidence the accused products met it, and the patentee waived any contrary argument by not raising it until the reply brief.  Moreover, the patentee was not entitled to a new trial because of alleged claim construction errors on other terms.  Although “the general verdict rule applies with the same force in patent cases as it does in all other cases,” it was inapplicable here because “even if the district court erred in its construction of the other challenged limitations, the result the jury reached—the finding of non-infringement—would not change.”  Slip op. at 16.  The patentee thus failed to show prejudice from any other errors, and it was not entitled to any presumption of prejudice. Continue Reading »