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Overcoming Heavy Burden Required to Succeed on Venue-Related Writ of Mandamus

Addressing a venue challenge, the US Court of Appeals for the Federal Circuit denied a petition for a writ of mandamus because the challenger did not demonstrate it had no adequate alternative means to obtain desired relief since meaningful review could occur after final judgment was entered. In re. Google, Case No. 20-144 (Fed. Cir. Sept. 18, 2020) (Reyna, J.). Personalized Media Communications (PMC) sued Google in the Eastern District of Texas for infringement of six patents related to adaptive video streaming. PMC initially asserted venue was proper based on the presence of several Google Global Cache (GGC) servers at facilities owned by internet service providers (ISPs) located within the district. Google moved to dismiss for improper venue. While Google’s motion was pending, the Federal Circuit issued its decision in In re. Google, rejecting a venue argument asserted by a different plaintiff against Google that was also premised on the presence of GGC...

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Full of Hot Air? PTAB Joinder Decisions Under § 315(c) Are Appealable

Addressing whether it has jurisdiction to review joinder decisions made by the Patent Trial and Appeal Board (PTAB), the US Court of Appeals for the Federal Circuit reissued a prior decision explaining that a joinder decision is reviewable because the decision occurs after the inter partes review (IPR) proceeding institutes. Facebook, Inc. v. Windy City Innovations, LLC, Case Nos. 18-1400, -1401, -1402, -1403, -1537, -1540, -1541 (Fed. Cir. Opinion Issued: Mar. 18, 2020, Opinion Reissued: Sept. 4, 2020) (Prost, C.J.) (Prost, C.J., concurring with additional views). Windy City Innovations filed a complaint accusing Facebook of infringing four patents that collectively have 830 claims. Facebook filed a motion requesting that Windy City be forced to limit the number of asserted claims to 40 by the time of Facebook’s one-year IPR filing deadline, but the district court denied the motion. One year after it was served with the complaint, Facebook filed petitions...

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Logic to Modify: Even Deceptive Intent Does Not Bar Inventorship Correction

The US Court of Appeals for the Federal Circuit vacated a district court invalidity determination finding that judicial estoppel prevented a patent owner from relisting an inventor previously removed for strategic litigation purposes. Egenera, Inc. v. Cisco Sys., Inc., Case Nos. 19-2015, -2387 (Fed. Cir. Aug. 28, 2020) (Prost, C.J.). Egenera sued Cisco for infringement of a patent directed to a reconfigurable virtual network that included a “logic to modify” and transmit received messages. In response Cisco petitioned for inter partes review (IPR). During the IPR’s pendency, Egenera realized that all claim limitations were conceived of before inventor Schulter began working at the company, and petitioned the US Patent and Trademark Office (PTO) to remove Schulter as a listed inventor. The Patent and Trial Appeal Board (PTAB) declined to institute Cisco’s IPR, and the PTO granted Egenera’s petition to remove Schulter shortly thereafter. During the litigation,...

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Structural Limitations Are Not Met by Imaginary Demarcation Lines

The US Court of Appeals for the Federal Circuit affirmed a district court’s claim construction of the term “end plate” that required a flat external surface, and its construction of the term “protrusion extending outwardly from the end plate” that required a demarcation between the protrusion and end plate. The Federal Circuit therefore prohibited an infringement theory premised on an end plate being inside the accused product and a protrusion that was not demarcated from the end plate. Neville v. Foundation Constructors, Inc., Case No. 20-1132 (Fed. Cir. Aug. 27, 2020) (Chen, J.). Neville owns patents directed to foundation piles, which are tubular structures placed into the ground to provide stability for the foundations built over them. One set of claims requires an “end plate having a substantially flat surface disposed perpendicular to the centerline of the tubular pile.” Another set of claims requires “at least one protrusion extending outwardly from...

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Federal Circuit Has Jurisdiction over Constitutional Questions in AIA Appeals

Addressing for the first time whether a district court has jurisdiction to hear constitutional challenges to the Patent Trial and Appeal Board’s (Board) final written decisions in an inter partes review (IPR) proceeding, the US Court of Appeals for the Federal Circuit found that the Federal Circuit has jurisdiction over AIA appeals, including constitutional questions. Security People, Inc. v. Iancu, Case No. 2019-2118 (Fed. Cir. Aug. 20, 2020) (Hughes, J.). Security People’s patent was challenged in an IPR, and the Board issued a final written decision invalidating all challenged claims. Security People appealed the Board’s decision to the Federal Circuit, which affirmed. The Supreme Court then denied Security People’s petition for certiorari. After the Supreme Court denied certiorari, Security People filed a lawsuit in the Northern District of California, challenging the Board’s final written decision as unconstitutional. The district court dismissed...

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Res Judicata on Procedural Grounds Precludes Similar Claims Arising After Prior Judgment

The US Court of Appeals for the Federal Circuit affirmed a district court decision that res judicata can apply to dismissals on procedural grounds and to claims arising after a prior judgment. Sowinski v. California Air Resources Board, Case No. 19-1558 (Fed. Cir. Aug. 21, 2020) (Newman, J.) Richard Sowinski is the inventor of a patent directed to an “electronic method and apparatus for validating and trading consumer pollution-control tax credits.” In a first set of lawsuits starting in 2015, Sowinski sued the California Air Resources Board (CARB) in state court, alleging infringement by CARB’s Cap-and-Trade Program. CARB removed the case to district court and filed several motions to dismiss. The district court dismissed the complaint after Sowinski failed to respond to these motions before the deadline. The dismissal was upheld on appeal. As part of a second round of lawsuits starting in 2018, Sowinski filed a complaint in federal court that was...

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Standard Essentiality Is a Question for the Fact Finder

Affirming a jury verdict of infringement, the US Court of Appeals for the Federal Circuit concluded that the question of whether patent claims are essential to all implementations of an industry standard should be resolved by the trier of fact. Godo Kaisha IP Bridge 1 v. TCL Comm. Tech. Holdings Ltd., Case No. 19-2215 (Fed. Cir. Aug. 4, 2020) (O’Malley, J.). IP Bridge owns patents that it contends are essential to the Long-Term Evolution (LTE) standard, and accused TCL of infringing the patents based on the sale of LTE-compliant mobile phones and tablets. Relying on the Federal Circuit’s 2010 decision in Fujitsu Ltd. v. Netgear Inc., IP Bridge presented evidence at trial that (1) the asserted claims are essential to mandatory sections of the LTE standard and (2) the accused products comply with the LTE standard. TCL did not present any evidence to counter that showing. The jury found that TCL was liable for infringement of the asserted claims and awarded...

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Senator Tillis Urges USPTO to Adopt Patent Reform Proposals

On August 10, 2020, Senator Thom Tillis of North Carolina urged the Director of the United States Patent and Trademark Office (USPTO), Andrei Iancu, to adopt two patent reform proposals suggested by Lisa Larrimore Ouellete and Heidi Williams. Senator Tillis is the Chairman of the Senate Judiciary Committee’s Subcommittee on Intellectual Property. Stanford University professors Lisa Larrimore Ouellete and Heidi Williams proposed the reforms in a paper, Reforming the Patent System, The Hamilton Project, Policy Proposal 2020-12 (June 2020). The first proposed reform would require patent applicants to more clearly distinguish between hypothetical experimental results and actual experimental results. The USPTO allows applicants to include so-called “prophetic examples” in a patent application. The patent applicant is supposed to distinguish between prophetic examples and actual working examples by the verb tense used to describe the example. Prophetic examples...

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Challenge to PTAB’s Finding of Non-Obviousness Fails to Pay Out

Addressing whether the Patent Trial and Appeal Board (PTAB) ran afoul of the Administrative Procedure Act (APA) in finding that a dependent claim was valid despite the patent owner’s lack of validity arguments beyond those advanced for the corresponding and invalid independent claim, the US Court of Appeals for the Federal Circuit affirmed the PTAB’s ruling and found no APA violation. FanDuel, Inc. v. Interactive Games LLC, Case No. 19-1393 (Fed. Cir. July 29, 2020) (Hughes, J.) (Dyk, J. concurring in part and dissenting in part). Interactive Games owns a patent directed to a method for allowing users to gamble remotely via a mobile device, according to certain game configurations. Specifically, the independent claim is directed to altering a user’s game outcome based on the gaming configuration associated with the location of a user’s mobile gaming device. A dependent claim adds the additional limitation of “accessing a lookup table which contains an ordered...

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Explain Yourself: “Untethered” Obviousness Determination Reversed

The US Court of Appeals for the Federal Circuit vacated in part and remanded a Patent Trial and Appeal Board (Board) determination of unpatentability because the Board did not adequately support its reasoning as to certain claims. Alacritech, Inc. v. Intel Corp., Case No. 19-1467 (Fed. Cir. July 31, 2020) (Stoll, J.). Intel petitioned for inter parties review (IPR) of a patent owned by Alacritech that is directed to performing network processes on a dedicated network card (INIC) instead of on a computer’s central processing unit (CPU). Intel asserted that the claims would have been obvious over prior art Thia in view of Tanenbaum. The Board agreed, finding claims of the patent were obvious. Alacritech appealed. Addressing the standard of review as set forth in the Administrative Procedure Act, the Federal Circuit explained that the Board is obligated to provide a record which shows the evidence on which its findings are based, as well as its reasoning in...

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