Posts

Keith Mfg. v. Butterfield (CAFC, April 7, 2020)

The CAFC, reversing the district court, held today that a party may properly move for an award of attorneys' fees and costs after the filing of a joint stipulated voluntary dismissal with prejudice.

In Re: Clarke (CAFC, March 26, 2020)

The CAFC's opinion in In re Clarke (issued yesterday) contains a useful point to keep in mind when prosecuting patent applications - that arguing prosecution history disclaimer is not an option during prosecution but rather only once the patent has issued.

Facebook v. Windy City Innovs. (CAFC, March 18, 2020)

In this precedential opinion, the CAFC held, among other things, that an IPR petitioner may not join to its IPR petition, its own, second, IPR petition directed to the same patent. In so holding, the CAFC held that the PTAB’s decision in Proppant, issued by the PTAB's POP, which held that such “same-party joinder” was permissible, was decided incorrectly. Facebook had filed its second IPR petition after the patent-holder Windy City had identified which patent claims it was asserting against Facebook in the related district court litigation. The CAFC also held that the governing statute (35 U.S.C. §315(c)) does not permit an IPR petitioner to join new issues into its own pending IPR petition, including new issues that would otherwise be time-barred.

Quest Integrity v. Cokebusters USA (CAFC, May 21, 2019)

In Quest Integrity v. Cokebusters (issued today), the Federal Circuit noted that the on-sale bar applies to the rendering of services, for compensation, using a claimed computer-readable medium or system that generates a “product.”

Endo v. Actavis, No. 2018-1054 (Fed. Cir. May 3, 2019)

In a patent-holder friendly decision today in Endo v. Actavis, the Federal Circuit, in affirming the district court’s rejection of Defendants’ obviousness argument, held that disclosure of the claimed purity level in prior art FDA correspondence did not bridge the gap where the allegedly invalidating prior art combination was not otherwise determined to provide for a reasonable expectation of success. In reaching its decision, the Court reasoned as follows: “The FDA communications introduced a market force incentivizing purification of oxymorphone to the level of the oxymorphone claimed by the Asserted Claims. However, the FDA communications recite a goal without teaching how the goal is attained.” (P. 20)(internal citations omitted).

ThermoLife Int’l v. GNC Corp. (CAFC, May 1, 2019)

In ThermoLife Int’l v. GNC Corp. handed down today, the Federal Circuit affirmed the district court’s exceptional case finding based upon Plaintiffs having conducted an inadequate pre-suit investigation and Plaintiffs having asserted the patents-in-suit in other cases against more than six dozen defendants where the evidence “strongly suggest[ed]” that Plaintiffs failed to “carefully review[]” their infringement claims prior to filing the cases. (P. 13). What is particularly interesting about this case is that it went to trial only on defendants’ invalidity and unenforceability claims; no judgment was ever rendered on infringement (against any defendant, in any of the cases). And yet Defendants prevailed on their argument that, had Plaintiffs properly investigated their infringement claims prior to bringing the case, it would have been clear based on the product labels for the accused products together with some simple testing of the accused products (which were publicly available), that Defendants’ accused products did not infringe.

Trading Techs. Int’l v. IBG, No. 2017-2323 (Fed. Cir., April 30, 2019)

In Trading Techs. Int’l v. IBG, issued by the Federal Circuit on Tuesday, the Court held that claims directed to a method for displaying profit and loss information specific to a particular trade along a value axis on a graphical user interface were patent ineligible. The Court highlighted that the technological aspect of the claims merely involved the use of a generic computer as a tool for presenting the P&L data. In arriving at its decision, the Court reasoned that “the purported advance is a process of gathering and analyzing information of a specified content, then displaying the results, and not any particular assertedly inventive technology for performing those functions.” (PP. 9-10) (internal citations and quotations omitted).

Rosetta-Wireless v. Samsung (CAFC, April 19, 2019)

Posted on LinkedIn on May 6, 2019, at 5:02 pm (CDT). In the Federal Circuit’s recent decision in Rosetta-Wireless v. Samsung, the Court held that the patent-holder failed to establish the required nexus between the alleged objective indicia of nonobviousness (industry praise and NIH funding) and the specific features of the allegedly inventive technology recited in the claims (as opposed to the technology more generally).

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