On Aug. 31, 2017, the Federal Circuit issued a sua sponte order to consider en banc whether the USPTO is entitled to an award of attorneys’ fees, irrespective of a win-or-lose, under 35 USC 145. Nantkwest, Inc. v. Matal, Fed. Cir., No. 2016-1794, 8/31/2017. In a 2-1 decision, a panel had earlier held that the USPTO is entitled to attorneys’ fees from plaintiffs in district court proceedings reviewing the patent office rejections under 35 USC 145. According to the court, the American Rule that each party pay its own attorneys’ fees does not apply where the statutory language explicitly authorizes an award of fees. The panel reasoned that the statutory language “[a]ll the expenses of the proceedings shall be paid by the applicant” entitled an award and noted that the dictionary definition of “expenses” includes attorneys’ fees. In her dissent, Judge Stoll argued that the American Rule erects a strong presumption against fee shifting and Section 145 fails to mention “attorneys’ fees” or provide the necessary congressional directive to make such an award.
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The Federal Circuit vacated a PTAB decision invalidating eight Ultratec’s closed-captioned phone patents for the Board’s failure to hear evidence of inconsistencies in expert testimony. Ultratec, Inc. v. CaptionCall, LLC, Nos. 2016-1706, -1707, -1710, -1712 (Fed. Cir. Aug. 28, 2017)
Full text of the opinion is available here. The Federal Circuit in a per curiam opinion affirmed the PTAB’s final written decision of invalidity in an IPR. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., No. 2016-2321 (Fed. Cir. Aug. 22, 2017). In a concurring opinion by Judges Dyk and Wallach, they expressed their concerns regarding joinder and PTAB’s expanded panels. In the PTAB proceeding, Broad Ocean filed an IPR petition challenging the validity of some of the claims on grounds of obviousness and anticipation. Board instituted review on obviousness but declined on anticipation as it failed to provide an affidavit for prior art translation. Broad Ocean filed a second IPR, this time after the one-year bar date, asserting anticipation and requested joinder with the first petition. A PTAB panel found the second petition was time barred, interpreting the 315(c) as not permitting a party to join issues to a proceeding to which it is already a party. Broad Ocean requested a rehearing and an expanded panel set aside the non-institution decision finding that 315(c) “encompasses both party and issue joinder…including new grounds of unpatentability.” The Federal Circuit affirmed the PTAB decision but Judges Dyk and Wallach noted that they have “serious questions as to the Board’s [] interpretation of the relevant statutes and current practices.” They noted that allowing petitioners to circumvent the time bar by adding new issues is contrary to Congressional intent and that the practice of expanded panels where the PTO is dissatisfied with a panel’s earlier decision may not be the appropriate mechanism for achieving uniformity in PTO decisions.
On August 18, 2017, the Office of the U.S. Trade Representative (USTR) formally announced a Section 301 investigation into China's IP practices. USTR will determine within a year "whether any act, policy, or practice described in section 301 of the Trade Acts exists and, if that determination is affirmative, what action, if any, to take." The investigation will seek to determine whether any Chinese government practices may be harming American IP rights, innovation or technology development.
The U.S. Copyright Office is proposing a rule change to deposit requirements for certain types of literary works and musical compositions. Under the proposed rule, copyright owners will be able to satisfy the deposit requirements by submitting one copy of literary monographs or musical compositions that are published in the U.S. in print formats. Full text of the proposed rule is available at www.gpo.gov/fdsys/pkg/FR-2017-08-16/pdf/2017-17194.pdf.
On Aug. 15, 2017, the Federal Circuit, in a 2-1 decision, reversed the lower court’s decision finding the claims of the asserted patent an improvement to computer memory systems and hence, patent-eligible under Alice framework. Visual Memory, LLC v. Nvidia Corp., No. 2016, 2254 (Fed. Cir. Aug. 15, 2017). Visual Memory sued Nvidia for infringement of the '740 patent and Nvidia filed a 12(b)(6) motion on the grounds that the claims were directed to patent-ineligible subject matter. The district court granted the motion concluding that the claims were directed to the abstract idea of categorical data storage and found that the patent's programmable operational characteristics failed to provide the inventive concept. On appeal, the Federal Circuit relied on the Enfish and Thales decisions as guideposts and concluded that the claims are directed to an "improved" computer memory system. Writing for the majority, Judge Stoll reasoned that as with Enfish's self-referential table and the motion tracking system in Thales, the asserted claims were directed to a technological improvement. In his dissent, Judge Wallach argued that the fundamental concept behind the asserted claims cannot be described at a lower level of abstraction than categorical data storage and therefore, failed Alice step one analysis.
The takeaways for practitioners from the court's decision are: (a) including details relating to specific technological improvements; (b) describing the advantages of the improvements over the prior art; and (c) including language in the claims that ties to the technological improvements described in the specification. Full text of the opinion is available here. The PTAB designated its decision in Athena Automation Ltd. v. Husky Injection Moldings Systems Ltd., IPR2013-00290, Paper No. 18 (Oct. 25, 2013) as precedential. Announcing the designation, the PTO states that the "decision determines that the doctrine of assignor estoppel is not an exception to 35 USC 311(a), which allows 'a person who is not the owner of a patent' to file a petition for inter partes review."
Other IPR or CBM decisions that have been designated precedential thus far are: Garmin Int'l, Inc. v. Cuozzo Speed Techs LLC, IPR2012-00001 (Mar. 5, 2013) Oracle Corp. v. Click-to-Call Techs LP, IPR2013-00312 (Oct. 30, 2013) MasterImage 3D, Inc. v. RealD Inc., IPR2015-00040 (July 15, 2015) Lumentum Holdings, Inc. v. Capella Photonics, Inc., IPR2015-00739 (Mar. 4, 2016) LG Electronics, Inc. v. Mondis Tech Ltd., IPR2015-00937 (Sept. 17, 2015) Westlake Services, LLC v. Credit Acceptance Corp., IPR2014-00176 (May 14, 2015) Bloomberg Inc. v. Markets-Alert Pty Ltd., CBM2013-00005 (May 29, 2013) SecureBuy LLC v. CardinalCommerce Corp., CBM2014-00035 (Apr. 25, 2014) The Federal Circuit held that there is no right to a jury trial for attorney's fees under 35 USC 285. AIA Am., Inc. v. Avid Radiopharmaceuticals, No. 2016-2647 (Fed. Cir. Aug. 10, 2017). In this case, AIA sued Avid and UPenn alleging infringement of patents directed to Swedish mutation. Avid alleged that AIA lacked standing because Dr. Mullan wasn't the sole inventor and engaged in a scheme to appropriate the inventions from USF. Jury determined that USF didn't waive its ownership rights and based on the jury's verdict, the district court found AIA lacked standing which was affirmed by the Federal Circuit. Later, Avid moved for attorney's fees which the district court awarded. AIA appealed the award arguing that the Seventh Amendment requires a jury trial to decide the facts forming the basis for award of attorney's fees under Section 285. The panel explained that right to a jury trial is reserved for suits at common law, i.e., suits in which legal rights and remedies were at issue. A two-step inquiry set out in Tull v. United States is applied to determine whether a grant of attorney's fees implicates "legal rights and remedies." Because English courts traditionally allowed judges and not juries to determine attorney's fees and attorney's fees under Section 285 is an equitable remedy, the Court found that both steps of the Tull inquiry weren't satisfied. Accordingly, the Court held that requests for attorney's fees do not invoke the Seventh Amendment right to a jury trial.
Full text of the opinion is available here. On Aug. 10, 2017, the Federal Circuit dismissed an interlocutory appeal of a denied discovery order for lack of jurisdiction and denied the writ of mandamus seeking to compel discovery in a patent infringement case under Biologics Price Competition and Innovation Act of 2009 (BPCIA). Amgen Inc. v. Hospira, Inc., No. 2016-2179 (Fed. Cir. Aug. 10, 2017). Amgen alleged that Hospira, which filed a subsection (k) application for a biosimilar of EPOGEN, failed to comply with paragraph (l)(2)(A) for failing to provide information concerning the process used to manufacture the biological product. Despite this disagreement over Hospira’s compliance, Amgen listed the patents relating to the biological product but didn’t identify any cell-culture patent as part of its own BPCIA disclosures. Amgen filed suit against Hospira and sought discovery on the composition of Hospira’s cell-culture medium. Amgen filed a motion to compel after Hospira rejected Amgen’s discovery requests. In denying Amgen’s motion, the district court reasoned that the cell-culture information had no relevance to the asserted patents. In dismissing the appeal, the Federal Circuit stated rulings on discovery do not qualify for the collateral order doctrine’s exception to the final judgment rule and the lack of immediate appeal over such discovery orders does not render them effectively unreviewable.
Full text of the opinion is available here. The Federal Circuit held that inherent properties are not always obvious and that routine testing does not preclude patentability. Honeywell Int'l Inc. v. Mexichem Amanco Holding S.A., No. 2016-1996 (Fed. Cir. Aug. 1, 2017). Honeywell owns USP 7,534,366 directed to the use of an unsaturated hydrofluorcarbon compound. Mexichem and Daikin filed an inter partes reexam. During the reexam, the examiner rejected several claims as obvious over three prior art references. On appeal to the Board, Honeywell (a) argued that one the references did not teach the use of HFO-1234f with any particular lubricant; (b) submitted evidence that HFO refrigerants were disfavored at the time of invention; (c) secondary references referred to use of PAG lubricant with saturated refrigerants rather than unsaturated refrigerants; (d) submitted evidence of secondary considerations. The Board affirmed the examiner's rejections finding that (a) known disadvantages of using HFO-1234f wouldn't have deterred one of ordinary skill from choosing it; (b) HFO-1234f's stability with PAG lubricants was its inherent property; (c) even though how various refrigerants react with various lubricants is unpredictable, one of ordinary skill in the art would've found the combination by routine testing. Honeywell appealed.
The Federal Circuit reversed the Board's decision finding that the Board erred by (1) improperly relying on inherency to find obviousness because the proper analysis is not whether a property is inherent but whether unknown properties are unexpected; (2) requiring Honeywell to establish that one of ordinary skill in the art would've expected failure; instead in a reexam, the burden is on the examiner to show that one of ordinary skill would've had a motivation to combine the references with a reasonable expectation of success; (3) concluding that unpredictability indicates obviousness; and (4) in rejecting Honeywell's objective evidence of nonobviousness. Full text of the opinion is available here. |
Disclaimer: The content in this blog is solely for informational purposes and does not constitute legal advice.
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