Rajan Law Office Blog - Rajan Law Office, LLC | Intellectual Property & Litigation

ptab's time-bar determinations appealable, rules fed. cir. en banc

1/9/2018

On Jan. 8, 2018, the en banc court of the Federal Circuit held that the time-bar determinations under 35 USC 315(b) are appealable and overruled the court's 2015 ruling in Achates. Wi-Fi One, LLC v. Broadcom Corp., Nos. 2015-1944, -1945, -1946 (Fed. Cir. Jan. 8, 2018) (en banc) According to the Court, there was no clear and convincing indication of congressional intent barring judicial review of USPTO's action denying institution of inter partes review that are filed more than one year after the petitioner is served with a complaint for patent infringement.

Full text of the opinion is available here.

invalidity judgment reversed due to lack of intrinsic/extrinsic evidence to support indefiniteness

11/20/2017

On Nov. 20, 2017, the Federal Circuit reversed the lower court's judgment of invalidity for indefiniteness on the grounds that the intrinsic or extrinsic evidence failed to support indefiniteness. BASF Corp. v. Johnson Matthey Inc., No. 2016-1770 (Fed. Cir. Nov. 20, 2017). BASF, owner of patent directed to systems for performing catalytic conversion of nitrogen oxides in exhaust gas streams, sued Johnson Matthey for infringement. The district court held that the asserted patent was invalid because the "effective to catalyze" language is indefinite and accordingly, entered a judgment of invalidity of all claims.
On appeal, BASF argued that the "composition...effective to catalyze" has a plain and ordinary meaning and it is not indefinite because a person of ordinary skill in the art would understand it to be "composition capable of catalyzing" based on the specification. Johnson Matthey argued that the "effective to catalyze" is indefinite because the language is functional and there are limitless number of materials that can catalyze ammonia oxidation or SCR reactions.
In reversing the district court's judgment, the Federal Circuit reasoned that the Nautilus standard of "reasonable certainty" does not preclude defining a claim term by its function, that the specification provides exemplary material compositions that are effective to catalyze, and that objective tests to determine the effectiveness of the catalysts were available and well known at the time. Based on the intrinsic and extrinsic evidence, the Federal Circuit held that the claims of the asserted patent were not indefinite.

TC Heartland is intervening change of law

11/15/2017

On November 15, 2017, the Federal Circuit ruled that the U.S. Supreme Court's decision in TC Heartland was an intervening change in the law that excuses waiver of venue objection. In re Micron Tech., Inc., No. 2017-138 (Fed. Cir. Nov. 15, 2017). Harvard College filed a patent infringement suit against Micron and Micron filed a 12(b)(6) motion to dismiss for failure to state a claim but failed to object to venue under 12(b)(3). Subsequent to the TC Heartland decision, Micron filed a 12(b)(3) motion for improper venue. The federal district court of Massachusetts denied the motion concluding that under FRCP 12(g)(2) and (h)(1)(A), Micron had waived its venue defense and TC Heartland was not a change of law that would make the waiver rules inapplicable. Micron filed a writ of mandamus to the Federal Circuit requesting reversal of the district court's order, dismissal of the suit for improper venue or transfer to the Delaware or Idaho.
In granting Micron's petition, the Federal Circuit concluded that TC Heartland was an intervening change of law and therefore, the waiver rules were inapplicable. The Court reasoned that for FRCP 12(g)(2) to apply, and for the unmade venue defense to be waived under FRCP 12(h)(1)(A), the venue defense had to be "available" to the defendant at the time the 12(b) motion is filed, and such venue objection was unavailable until TC Heartland. Full text of the order is available here.

equitable estoppel to compel arbitration is limited

9/13/2017

On September 13, 2017, the Federal Circuit affirmed the decision of the federal district for the Northern District of California holding that equitable estoppel to compel arbitration is limited to narrow situations. Waymo LLC v. Uber Tech., Inc., et al., No. 2017-2130 (Fed. Cir. Sept. 13, 2017). Waymo alleged, among others, that defendants Uber, Ottomotto, and Otto Trucking violated trade secret laws by employing Levandowski. Defendants filed a motion to compel arbitration based on the grounds that Levandowski's employment agreements with Waymo contained arbitration clauses and that Waymo relied on these agreements to prove its claims against the defendants. Waymo denied any such reliance. In denying the motion to compel arbitration, the district court found that equitable estoppel does not apply here as Waymo didn't rely on the agreements. In affirming the district court's decision, the Federal Circuit reasoned that California precedence requires that equitable estoppel to compel arbitration be applied only when the issues of the complaint are intimately intertwined with the non-party agreement containing the arbitration clause.
Full text of the opinion is available here.

Compelling evidence of nonobviousness insufficient

9/7/2017

On September 7, 2017, the Federal Circuit, in a split decision, affirmed the district court's summary judgment of obviousness despite substantial and compelling evidence of objective indicia of non-obviousness. Intercontinental Great Brands LLC v. Kellogg N.Am. Co., No. 2015-2082, -2084 (Fed. Cir. Sept. 7, 2017). The Federal Circuit agreed with the district court's finding that significant copying, increased sales volume, customer and industry praise, and long-felt need were not enough to overcome the prima facie obviousness.
Kraft sued Kellogg claiming that Kellogg infringed its patent directed to a re-sealable food package that keeps cookies fresh. The district court determined that a person of ordinary skill in the art would have been motivated to combine the known elements of "frame" and "rigid re-sealable sushi tray" because the lack of a "convenient opening and reclosing arrangement" was a known problem for cookie packaging. The district court also acknowledged the substantial and compelling evidence of objective indicia of non-obviousness--Kraft's sales volume increase of 4% after new packaging, evidence of positive consumer feedback, survey results praising the invention, industry awards for innovative packaging technology, and Kellogg's intentional copying of its packaging. However, the district court granted summary judgment motion finding that the prima facie case of obviousness was too strong.
On appeal, the dispute was the procedure used to determine obviousness under KSR namely, that the district court considered only the first three factors when assessing the prima facie case and then moved on to the fourth factor to decide if secondary considerations would overcome the prima facie obviousness. The majority of the panel agreed with the district court's analysis stating that its analysis fulfills KSR's requirement that the approach to determining obviousness be expansive and flexible. Dissenting in part, Judge Reyna expressed his concern that if "such significant evidence does not make a difference in this case, it is hard to imagine a situation in which it would."
Full text of opinion is available here.

En Banc Federal Circuit to Review USPTO’s Attorney Fees Rule

8/31/2017

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.

divided panel finds claims as patent eligible

8/15/2017

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.

No jury trial right for attorney fees under § 285

8/10/2017

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.

lack of jurisdiction over interlocutory discovery order in bpcia, rules federal circuit

8/10/2017

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.

inherent properties are not always obvious

8/1/2017

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.