On Feb. 27, 2015, ALJ Lord issued a notice regarding Initial Determination on violation of Section 337 in Certain Television Sets, Television Receivers, Television Tuners and Components Thereof (Inv. No. 337-TA-910) finding no violation with respect to asserted patents. In this case, Complainant Cresta Technology filed a complaint alleging that respondents violated Section 337 by importing, selling for importation, and selling within the U.S. after importation of certain television sets, television receivers, television tuners and components thereof by allegedly infringing certain claims of USP7,075,585 and USP7,265,792. ALJ Lord found that there was no violation of Section 337 with respect to the asserted patents and issued a notice regarding initial determination.
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Federal Circuit affirmed district court's grant of motion for summary judgment on PTO's calculation of Patent Term Adjustment as proper. Gilead Sciences, Inc. v. Lee, No. 2014-1159 (Fed. Cir. Feb. 26, 2015). Gilead owns USP 8,148,374 relating to compounds and pharma compositions which improve the pharmacokinetics of a co-administered drug. Gilead filed its application for the '374 patent on Feb. 22, 2008 and the examiner issued a restriction requirement on Nov. 18, 2009. On Feb. 18, 2010, Gilead responded to the restriction requirement and while waiting for the PTO to issue a first office action, Gilead filed a supplemental information disclosure statement on April 16, 2010, disclosing two co-pending Gilead patent applications. PTO issued a notice of allowance on July 29, 2011 and calculated the PTA as 651 days, from which 57 days were reduced due to applicant delay for the period between Gilead's reply to restriction and filing of supplemental IDS. Gilead argued that its filing of supplemental IDS didn't cause actual delay but PTO rejected the argument under 35 USC 132 and 37 CFR1.704(c)(8). On appeal to the district court, the court granted PTO's motion for summary judgment on the grounds that Gilead failed to show PTO's interpretation of 35 USC 154(b) was unreasonable. In affirming the district court's judgment, the Federal Circuit concluded, applying the two-step framework of Chevron, that 35 USC 154(b)(2)(C)(iii) expressly delegated authority to the PTO to "prescribe regulations establishing the circumstances that constitute a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application." Full text of the opinion is available here.
On February 5, 2015, the Federal Circuit sitting en banc heard oral arguments in Suprema, Inc. v. Int’l Trade Comm’n, Fed. Cir., No. 2012‐1170, regarding the ability of the USITC to issue exclusion orders under Section 337 based on a theory of induced patent infringement of method claims under 35 U.S.C. §271(b). In this case, complainant Cross Match Technologies filed a complaint alleging that respondent Suprema's importation into the U.S. and the subsequent sale of its fingerprint scanners infringes its patent under the theory of inducement. Here, Suprema manufactures the scanners in Korea that are imported into the U.S. and these scanners are then sold to Mentalix, who adds a software to the scanner which is then sold to the customers. USITC found that scanner/software combination sold by Mentalix directly infringed the asserted method claims and that Suprema induced this infringement, and issued an exclusion order prohibiting the importation of the scanners. On appeal, the Federal Circuit held that ITC cannot issue an exclusion order on a theory of induced infringement where direct infringement does not occur until after the importation of the product into the U.S.
On Feb. 18, 2015, the Federal Circuit once again highlighted the importance of preamble in claim construction in Pacing Tech., LLC v. Garmin Int'l, Inc., No. 2014-1396 (Fed. Cir. Feb. 18, 2015). In this case, Pacing Technologies appealed the district court's grant of summary judgment that Garmin's accused products did not infringe the asserted claims of the '843 patent. Particularly, the parties disputed whether the asserted claims require the claimed devices to play back the pace information using a tempo, and whether the preamble to claim 25 is limiting. In affirming the grant of summary judgment of non-infringement, the Federal Circuit concluded that the term "playback device" in claim 25 should be interpreted as "a device capable of playing audio, video, or a visible signal" and based on the preamble required "a system for providing a sensible output for setting the pace or rate of movement of a user in performing a repetitive motion activity." According to the court, the term "user" in the preamble provided antecedent basis for that term in the body of the claim and with respect to the term "playback device," the specification compelled departure from the plain meaning of the term since the "Summary and Objects of the Invention" contained a clear and unmistakeable disavowal or disclaimer. Full text of the opinion is available here.
In Tandus Flooring, Inc. v. Interface, Inc., IPR2013-00527, PTAB denied a patent owner's motion to amend a claim because the patent owner failed to propose constructions for new claim terms. In this case, the patent owner, Interface Inc., tried to amend a reviewed claim likely invalidated by cited prior art and to add new claim terms to overcome the prior art. In its motion to amend the claim, Interface failed to propose constructions for the new claim terms. Denying the motion to amend, PTAB determined that "without a reasonable construction of [] alleged new claim term feature in proposed claim [], patent owner does not provide adequate information for us to determine whether patent owner's proposed substitute claim is patentable over the prior art generally."
On Feb. 12, 2015, an expanded panel of the PTAB granted a rehearing request and effectively overturned an earlier panel's decision to deny a joinder motion. Target Corp. v. Destination Maternity Corp., IPR2014-00508, Paper No. 28 (PTAB Feb. 12, 2015). In March 2014, petitioner Target filed a petition for IPR with a joinder motion to join the petition to one of its instituted IPR trials on the same patent. The newly filed petition was outside the one-year window for filing IPRs, and therefore the grant of the new petition was contingent on both the substantive merits of the petition and the grant of the joinder motion. On Sept. 25, 2014, a divided panel denied Target's joinder motion, and the petition itself. The majority concluded that the joinder provision of Section 315(c) applies to joining petitions filed by other parties and not to joining petitions brought by the same party to avoid the one-year bar date. Subsequently, Target filed a request for rehearing. In granting the rehearing request, the majority of an expanded panel concluded that the joinder provision does not forbid a party from joining itself across two petitions and found the phrase "any person" of the statute to be ambiguous. The majority then looked at legislative history and policy considerations to reach the conclusion that a single party may join two proceedings and that the Board's earlier decision based on a narrow interpretation of Section 315(c) was erroneous.
In Helferich Patent Licensing, LLC v. New York Times, No. 2014-1196 (Fed. Cir. Feb. 10, 2015), the Federal Circuit held that the defense of patent exhaustion must be specific to particular claims alleged to be infringed. In this case, Helferich sued New York Times and others for allegedly infringing claims on systems and methods on providing hyperlinked information to mobile phones. The district court granted summary judgment of non-infringement under the patent exhaustion doctrine holding that patentee's grant of broad licenses to handset manufacturers exhausted its enforcement rights not only against manufacturers but also against content providers. In reversing the district court's judgment, Judge Taranto wrote that the lower court did not focus on the particulars of the asserted claims, but instead relied on the premise that the patents "require the use of a handset device." Rejecting the "reciprocal enhancement of utility" argument, the panel reasoned that patent exhaustion has never been applied to terminate enforcement rights with respect to activities or goods that are merely "complimentary." Full text of the opinion is available here.
On Feb. 10, 2015, PTAB in a post-conference call order addressed the issue of inappropriate deposition witness coaching during an expert's deposition and provided guidance on the issue. FLIR Sys., Inc. v. Leak Surveys, Inc., IPR2014-00434, Paper 12 (PTAB Feb. 10, 2015). During the expert's deposition, the expert gave certain unexpected testimony during cross-exam. Prior to redirect, the petitioner's counsel took a half-hour recess and allegedly had off-the-record discussions with the expert deponent. On redirect, the deponent made an attempt to overcome the unexpected testimony. Suspecting improper witness coaching during the recess, the patent owner's counsel questioned the witness about the nature of the off-the-record conversations but the witness refused to answer and claimed privilege. Instead of calling the Board for assistance, the patent owner went ahead with the deposition and raised the issue during a conference call with PTAB a few days later and requested additional discovery of the off-the-record conversations and moved for sanctions. Denying the patent owner's request, the Board found that the patent owner waived its right for further discovery when it failed to contact PTAB at the time of deposition. In providing guidance on this issue, the PTAB gave the following tips: (1) hold the redirect immediately following cross-exam; (2) call the Board if a recess is requested after a cross and if a party believes the recess is inappropriate; (3) call the Board for assistance if deponent refuses to answer questions about off-the-record conversations during recess and a party suspects witness coaching; (4) file a motion to exclude all or portion of testimony arguing as to the weight to be given to the coached witness' testimony.
On Feb. 4, 2015, in Garmin Int'l v. Cuozzo Speed Tech., LLC, No. 2014-1301 (Fed. Cir. Feb. 4, 2015), the Federal Circuit issued its first decision on an appeal of a final written decision of an inter partes review (IPR). The Federal Circuit held that the "broadest reasonable interpretation" standard for claim construction is the appropriate standard in IPRs and that the decisions of the PTAB to institute an IPR is not reviewable on appeal. Garmin filed a petition requesting the PTAB to institute an IPR, which the PTAB granted on grounds not specifically stated in the petition. At the conclusion of the IPR, the PTAB issued a final written decision finding all challenged claims obvious and denied Cuozzo's motion to amend the claims. Cuozzo appealed to the Federal Circuit on the grant of the petition and PTAB's use of the "broadest reasonable interpretation" standard for claim construction. On appeal, the Federal Circuit in a 2-1 decision affirmed the PTAB's obviousness determination and upheld the Board's use of the broadest reasonable interpretation ("BRI") standard for claim construction. Full text of the opinion is available here.
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