On March 27, 2015, PTO announced a 3-part plan to PTAB AIA rule changes. The first "quick-fix" to go into effect immediately will increase the page limit for motion to amend to up to 25 pages along with the addition of a claims appendix and increase the number of pages for petitioner's reply brief to 25 pages. In summer, PTO will issue a second proposed-rule package for changes to the following: motion to amend process; evidence in patent owner preliminary response; claim construction standard as it applies to expired patents in AIA proceedings; scope of additional discovery; multiple proceedings involving same patent; use of live testimony at oral hearings; certifications with filings similar to district court's Rule 11 certification; and substitutionary amendment. The third part of the plan involves modifications to the Trial Practice Guide. Full release is available here.
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On March 17, 2015, the Federal Trade Commission issued a final settlement order barring patent assertion entity MPHJ Technology Investments, LLC and its law firm Farney Daniels, PC from making deceptive representations when asserting patent rights. Under the settlement, MPHJ, its law firm and MPHJ's owner are refrained from making deceptive representations when asserting patent rights, such as false or unsubstantiated representations that a patent has been licensed in substantial numbers or has been licensed at particular prices. The order also prohibits misrepresentations that a lawsuit will be initiated and about the imminence of such suit. Future violations of the order may result in a civil penalty of up to $16,000 per violation.
On March 2, 2015, the Federal Circuit affirmed the district court's decision on invalidity and infringement of '973, '933 and '236 patents but remanded the case for a new trial on damages. Warsaw Orthopedic, Inc. v. Nuvasive, Inc., No. 2013-1576; and -1577 (Fed. Cir. Mar. 2, 2015). Warsaw Orthopedic sued NuVasive for infringement of the '973 and '933 patents and NuVasive couterclaimed for infringement of the '236 patent. The '973 and '933 patents relate to spinal implants and spinal surgery respectively while the '236 patent relates to neuromonitoring during surgery. A jury found '973 patent valid and infringed, the '933 patent infringed under the doctrine of equivalents, and the '236 as infringed. After trial, the district court denied motions for JMOL or new trial, denied Warsaw's request for supplemental damages and set an ongoing royalty rate at 13.75% of sales of infringing implants.
On appeal, the Federal Circuit upheld the validity of the '973 patent rejecting NuVasive's arguments of indefiniteness reasoning that the average dimensions of human vertebrae are "well-known, easily ascertainable, and well-documented in the literature" and therefore, the relative nature of the claim does not make it indefinite. On infringement, the court found that there was substantial evidence to support a finding of infringement of the '933 and '236 patents. At trial, the jury awarded Warsaw $101 million in total damages but the verdict form indicated it as "Lost Profit Damages", although the form failed to provide how much of the award was for lost profits, how much for reasonable royalty and how the lost profits were attributable to each of Warsaw's revenue streams (convoyed sales, royalty payments, payments from transfer pricing agreement). In finding that the district court erred in denying the JMOL, the court ruled that Warsaw failed to provide the necessary functional relationship to support convoyed sales, failed to provide proof of lost sales of its product due to infringing sales, and made no efforts to identify what percentage of true-ups was attributable to sales of patented products. Without resolving the issue of supplemental damages, the court stated that at the new trial, Warsaw may assert a claim for supplemental damages limited to reasonable royalty which the court may award. Full text of the opinion is available here. On March 2, 2015, the Federal Circuit affirmed the Trademark Trial and Appeal Board's decision granting a petition to cancel PLAYDOM service mark holding that use of a mark in commerce requires rendering of services. David Couture filed an application to register the service mark PLAYDOM pursuant to Lanham Act Section 1(a) and submitted a screenshot of a website offering Entertainment Services in commerce. PLAYDOM was registered by the PTO on Jan. 13, 2009 and on Feb. 9, 2009, Playdom, Inc. filed an application to register the identical mark PLAYDOM. PTO cited the registered mark as grounds for rejection and Playdom filed a petition to cancel the registration arguing that the service mark was not used in commerce as of the date of the application. Board granted the petition stating that the registrant "had not rendered his services as of the filing date of the application" and had "merely posted a website advertising his readiness, willingness and ability to render [the] services." On appeal, the Federal Circuit affirmed the board's decision concluding that the term "use in commerce" means the bona fide use of a mark and "advertising or publicizing a service that the applicant intends to perform in the future will not support registration" and that "rendering services requires actual provision of services." Full text of the opinion is available here.
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Disclaimer: The content in this blog is solely for informational purposes and does not constitute legal advice.
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