PTAB designated the following decisions as informational, the board denying institution of an IPR under 35 USC 325(d). Medtronic, Inc. v. NuVasive, Inc., IPR2014-00487 (PTAB Sept. 11, 2014) (Paper 8); Unified Patents, Inc. v. PersonalWeb Techs., LLC, IPR2014-00702 (PTAB July 24, 2014) (Paper 13); Prism Pharma Co., Ltd. v. Choongwae Pharma Corp., IPR2014-00315 (PTAB July 8, 2014) (Paper 14); Unilever, Inc. v. Procter & Gamble Co., IPR2014-00506 (PTAB July 7, 2014) (Paper 17); Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc., IPR2014-00436 (PTAB June 19, 2014) (Paper 17); Intelligent Bio-Systems, Inc. v. Illumina Cambridge Limited, IPR2013-00324 (PTAB Nov. 21, 2013) (Paper 19); ZTE Corp. v. ContentGuard Holdings, Inc., IPR2013-00454 (PTAB Sept. 25, 2013) (Paper 12). In each of these decisions, the PTAB denied the follow-on petitions under 35 USC 325(d) because the same or substantially the same prior art or arguments were previously presented to the Office.
An expanded panel of PTAB denied a motion for joinder under 35 USC 315(c) as a matter of law where second petition was filed outside the 12-month window to attack a claim that was excluded from the trial order of earlier, timely filed petition. Target Corp. v. Destination Maternity Corp., IPR2014-00508 (PTAB Sept. 25, 2014) (Paper 18). Petitioner Target filed a corrected petition for IPR of the '563 patent, having previously filed two other petitions of different, yet overlapping, subsets of claims of the '563 patent. PTAB instituted trial on all but one of the claims of the '563 patent. Petitioner also concurrently filed a motion for joinder pursuant to 35 USC 315(c) seeking to be joined with the instituted IPR review. In denying the motion, the PTAB concluded that the statute 315(c) refers to the joining of a "any person" i.e., a petitioner, and not to the joining of a petition and because Target was already a party to the proceeding, it cannot be joined.
Apple breathed a momentary sigh of relief after the Federal Circuit vacated damages of about $368 million awarded to VirnetX. VirnetX, Inc. v. Cisco Sys., Inc., No. 2013-1489 (Fed. Cir. Sept. 16, 2014). The court affirmed the validity of the asserted claims and infringement of VirnetX's patents by Apple's VPN On Demand product, reversed infringement of an asserted claim based on the doctrine of equivalents, reversed claim construction of a claim term, and vacated the jury's damages award.
VirnetX is the owner of the asserted patents that are directed to a domain name service (DNS) system that resolves domain names and helps establish secure communication links. VirnetX sued Apple alleging that Apple's VPN On Demand feature in iPhone, iPad and iPod infringe VirentX's patents. At trial, VirnetX's damages expert gave three reasonable royalty theories: (1) 1% royalty rate based on comparable licenses applied to lowest sale price of each accused product yielding $708 million; (2) Nash bargaining theory for FaceTime, modifying the 50/50 split of profits by 10% due to VirnetX's poor bargaining position, yielding $588 million; and (3) Nash bargaining theory for FaceTime, using customer surveys to assert 18% of sales of iOS devices attributable to FaceTime and apportioning 45% of profits to VirnetX thereby yielding $606 million. The jury found the asserted patents valid and awarded $368 million to VirnetX.
In her opinion, Chief Judge Prost reasoned that the jury's damages award cannot stand for the following reasons: (1) the district court's jury instruction regarding the entire market value (EMV) rule was erroneous as it allowed the patentee to rely on EMV of a multi-component product as the smallest saleable unit without apportioning the value attributable to the patented feature; (2) in calculating the royalty base, the expert failed to link the demand for the accused device to the patented feature, and to apportion the value of the patented feature in the accused products; and (3) the invocation of a 50/50 split of incremental profits as a starting point based on the Nash Bargaining Solution is an inappropriate "rule of thumb" that is insufficiently tied to the facts of the case.
Full text of the opinion is available here.
In an IPR review, Petitioner has the burden of proving by a preponderance of evidence the earlier effective date of a prior art reference. Dynamic Drinkware LLC v. National Graphics, Inc., IPR2013-00131, Paper 42 (PTAB Sept. 12, 2014). In this proceeding, a corrected petition challenging claims 1, 8, 12 and 14 of the '196 patent was filed but the board instituted trial only for claims 1 and 12 based on anticipation by Raymond reference. Raymond has a filing date of May 5, 2000 and claims benefit of a provisional application filed Feb. 15, 2000. In relying on the reference under 102e, the corrected petition merely stated that Raymond's effective date was Feb. 15, 2000. In its response, the Patent Owner argued that Petitioner failed to meet its burden of proof and that the effective date was the filing date of the nonprovisional. In its reply, the Petitioner provided a claim chart comparing claim 1 of the '196 patent to the provisional application. PTAB found that the Petitioner failed to meet its burden of proving by a preponderance of evidence that the Raymond reference was entitled to the benefit of the provisional filing date. PTAB reasoned that to be entitled to the earlier priority date, Petitioner had to establish that it relies on subject matter from Raymond that is present in and supported by the provisional. However, the Petitioner failed to compare the portion of Raymond relied on by the Petitioner to the claimed provisional application to demonstrate that those portions were carried over from the provisional and as a result failed to meet its burden. Even otherwise, the PTAB determined that Raymond was not a 102e reference because the Patent Owner provided declaration testimony asserting that it had reduced to practice claims 1 and 12 of the '196 patent.
In its first post-Actavis action against pharmaceutical companies, the FTC sued AbbVie, Abbott Labs, Unimed Pharmaceuticals, Besins Healthcare and Teva Pharmaceuticals under Section 5(a) of the FTC Act alleging that the defendants engaged in unfair methods of competition regarding the prescription drug AndroGel. FTC v. AbbVie, Inc., No. 2:14-cv-05151 (E.D. Penn. Sept. 8, 2014) The complaint alleges that defendants AbbVie and Besins filed a sham litigation against Teva by suing it for patent infringement. Teva entered into a pay-for-delay agreement with AbbVie and Besins and as a result, Teva agreed not to introduce the generic version of AndroGel until a certain time period. The FTC alleges that AbbVie's filing of sham litigation against Teva and the agreement among the defendants violates Section 5(a) of the FTC Act.
Full text of the FTC's complaint is available here.
On September 4, 2014, Nvidia Corporation filed a Section 337 complaint with the U.S.I.T.C. against Samsung alleging that certain consumer electronics and display devices with graphics processing and graphics processing units infringe its patent(s).
Judges Taranto and Hughes affirmed a district court's decision holding the invalidity of asserted claims as patent ineligible under Section 101. Using the Supreme Court's Alice Corp. approach, the panel found the claims directed to creating familiar commercial arrangements by use of computers and networks as invalid. According to the court, the asserted claims were directed to an abstract idea of creating a contractual relationship ("transaction performance guaranty") and the invocation of computers added no inventive concept. The full text of the Court's decision is available here.
On August 7, 2013, a panel of the PTAB issued an order detailing the guidelines for a foreign language deposition. Ariosa Diagnostics v. Isis Innovation Ltd., IPR2012-00022, Paper 55 (PTAB Aug. 7, 2013) In providing the guidelines, the panel acknowledged that 37 CFR 42.53 and the panel's guidelines will govern the taking of a deposition in a foreign language. Per the guidelines, the party proffering the witness is responsible for providing the first interpreter and provide the first interpreter's information at least five business days before cross-examination. The party cross-examining the witness may engage a second interpreter and at least five business days before the cross-examination, provide the information on the second interpreter. A consecutive mode of interpretation shall be used and where the second interpreter disagrees with the first interpreter, the second interpreter shall inform his counsel by note. If counsel desires to raise the disagreement on the record, the second interpreter will be allowed to interpret the question or answer. An objection shall be made on the record in instances where there's a disagreement as to interpretation between the two interpreters.
Disclaimer: The content in this blog is solely for informational purposes and does not constitute legal advice.