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Prior Art-Based Invalidity Analysis May Be Possible for Indefinite Claim

Addressing a decision by the US Patent and Trademark Office’s Patent Trial and Appeal Board (Board) declining to find certain claims unpatentable because they contained means-plus-function elements without any corresponding disclosed structure, the US Court of Appeals for the Federal Circuit affirmed the Board’s decision except as to one challenged claim where the means-plus-function element was recited as an alternative to a non-means-plus-function element. Cochlear Bone Anchored Solutions AB v. Oticon Medical, AB, Case Nos. 19-1105, -1106 (Fed. Cir. May 15, 2020) (Taranto, J.). Cochlear sued Oticon for infringement of four patents related to hearing devices. In response, Oticon filed two inter partes review petitions against all claims of one of the patents. The Board initially declined to institute review as to four of the challenged claims that contain means-plus-function elements without the required corresponding structure identified in the...

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Arthrex Extended to Inter Partes Re-examination

The US Court of Appeals for the Federal Circuit denied a petition for panel rehearing regarding the constitutionality of decisions issued by the United States Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB), holding that its decision in Arthrex, Inc. v. Smith & Nephew, Inc. (IP Update, Vol. 22, No. 11) also applies to final decisions issued by administrative patent judges (APJs) in inter partes re-examinations. Virnetx v. Cisco Systems, Inc., Case No. 19-1671 (Fed. Cir. May 13, 2020) (O'Malley, J.). The Court also denied (per curiam) a concurrently filed petition for rehearing en banc. Arthrex had addressed—in the context of inter partes review (IPR) proceedings—whether APJs had been appointed unconstitutionally by the director of the USPTO, where the director did not have unfettered discretion to remove an APJ. As a result, the Federal Circuit partially invalidated the statutory removal protections of the America Invents Act...

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A Party May Have Standing Even with Incorrect Patent Assignment

The US Court of Appeals for the Federal Circuit affirmed a district court’s decision that a reformation of an incorrect assignment supports Article III standing and affirmed the court’s prejudgment interest award. Schwendimann v. Arkwright Advanced Coating, Inc., Case Nos. 18-2416, 19-1012 (Fed. Cir. May 13, 2020) (Wallach, J.) (Reyna, J. dissenting). Jodi Schwendimann was an inventor on three patent applications that she assigned to American Coating Technologies (ACT) during her tenure at ACT. When ACT ceased operations in 2001, it owed unpayable debts to Schwendimann. ACT agreed to assign to her its patent applications to satisfy these debts. ACT’s attorneys executed the assignment of the applications in 2002, but incorrectly filed the assignment for one of the applications. Schwendimann sued Arkwright Advanced Coating in 2011 for patent infringement. Arkwright asserted a lack of standing because Schwendimann did not own the patents-in-suit due to the...

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Where Should This Case Go? Appeals Court Tosses Venue Motion to Dismiss

Addressing for the first time whether a court must consider the adequacy of an alternative forum in its forum non conveniens analysis, the US Court of Appeals for the Federal Circuit affirmed the denial of a defendant’s motion to dismiss under forum non conveniens. In re Fortinet, Inc., Case No. 20-120 (Fed. Cir. May 1, 2020) (Dyk, J.). British Telecommunications (BT) filed suit in the US District Court for the District of Delaware, asserting claims that Fortinet infringed several BT patents relating to computer or network security. Fortinet moved to dismiss the case under the doctrine of forum non conveniens. Fortinet argued that BT and Fortinet signed a global commercial agreement that included a forum selection clause, which stated that the parties had agreed to “submit to the exclusive jurisdiction of the English courts in relation to contractual and/or non-contractual obligations.” The Delaware court denied Fortinet’s motion, explaining that it could...

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Court’s Drug Patent Prescription: Unclaimed Disclosure is Dedicated

Addressing the disclosure-dedication doctrine, the US Court of Appeals for the Federal Circuit concluded that the disclosure-dedication doctrine barred a patent owner’s claim of infringement under the doctrine of equivalents because the asserted patents disclose, but do not claim, the alleged equivalent. Eagle Pharmaceuticals Inc. v. Slayback Pharma LLC, Case No. 19-1924 (Fed. Cir. May 8, 2020) (Reyna, J.). Eagle owns patents that cover its brand-name bendamustine product, BELRAPZO®, which is used to treat chronic lymphocytic leukemia and indolent B-cell non-Hodgkin lymphoma. Slayback filed an Abbreviated New Drug Application (ANDA) to market generic versions of BELRAPZO®. Eagle sued Slayback for patent infringement. Eagle asserted that Slayback’s product infringes the “pharmaceutically acceptable solvent” claim limitation under the doctrine of equivalents because ethanol in Slayback’s product is insubstantially different from the propylene glycol in the...

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The “Plotting” Thickens: Claims that Solve Known Problem with Known Methods Are Obvious

The US Court of Appeals for the Federal Circuit applied KSR and its obviousness progeny, finding that patent claims directed to location plotting were obvious under 35 USC § 103. Uber Techs., Inc. v. X One, Inc., Case No. 19-1164 (Fed. Cir. May 5, 2020) (Prost, CJ). X One sued Uber Technologies asserting a patent directed to exchanging location information between mobile devices, such that a user could add other mobile device users to a “Buddy List,” share her location with listed buddies or temporary “instant buddies,” and see the locations of her buddies on a map. The patent’s purported novelty lay in “two way position information sharing,” creation of location sharing “groups,” and “temporary location sharing” that “automatically expires.” Uber filed a petition for inter partes review (IPR), and the Patent Trial and Appeal Board (PTAB) instituted review. In its final written decision, the PTAB concluded that the challenged claims were not established to be...

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Bad Conduct During Litigation Means Attorneys’ Fees Against the Government, Regardless of Damage Amount

The US Court of Appeals for the Federal Circuit affirmed the US Court of Federal Claims attorneys’ fees award for patent infringement by the United States solely based on its actions during litigation. Hitkansut LLC, Acceledyne Technologies, LTD, LLC v. United States, Case No. 19-1884 (Fed. Cir. May 1, 2020) (Prost, CJ). Hitkansut had a patent application pending when it entered into a nondisclosure agreement with Oak Ridge National Laboratory (ORNL). Hitkansut provided ORNL with a copy of the then-unpublished patent application. ORNL used the patent application, without authorization, to prepare various research reports and publications and to receive funding and awards. Following issuance of the patent, Hitkansut sued the United States (acting through ORNL) under 28 USC § 1498. The Claims Court determined that certain claims of the patent were valid and infringed by the government. Although Hitkansut sought a royalty in the amount of approximately $5...

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“Waive” Goodbye to Belated Argument that Administrative Patent Judges’ Appointment is Unconstitutional

Addressing whether a party can waive a challenge to the constitutionality of Administrative Patent Judges' (APJs’) appointment, the US Court of Appeals for the Federal Circuit found that the issue is non-jurisdictional and therefore waivable. Ciena Corp. v. Oyster Optics, LLC, Case No. 19-2117 (Fed. Cir. Jan. 28, 2020) (O’Malley, J.) (reissued as precedential May 5, 2020). Oyster filed an infringement action against Ciena in district court. In response, Ciena filed an inter partes review (IPR) petition challenging the asserted claims of Oyster's patent. In May 2018, the Patent Trial and Appeal Board (PTAB) instituted review on Ciena's Petition, and Ciena moved for and received a stay of the district court action pending resolution of the IPR proceeding. Ultimately, the PTAB issued a final written decision finding that Ciena had failed to demonstrate that any of the challenged claims was unpatentable. Ciena appealed. Shortly after Ciena filed its appeal, the...

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“Non-Limiting” Prior Art Claims Support Obviousness After Standing Is Established

Addressing the issue of Article III standing and obviousness in an appeal of an inter partes review (IPR) decision, the US Court of Appeals for the Federal Circuit found that the petitioner had standing to appeal because past activities created a controversy between the parties. Grit Energy Solutions, LLC v. Oren Techs., LLC, Case No. 19-1063 (Fed. Cir. Apr. 30, 2020) (Prost, CJ) (Newman, J., concurring in part, dissenting in part). Oren owns a patent directed to a system for storing and discharging proppant. Oren filed suit against Grit Energy alleging infringement of the patent at issue. Grit Energy transferred ownership of the accused products after the litigation began, and the parties jointly stipulated to dismissal. Around the same time, Grit Energy filed an IPR petition challenging claims of the patent at issue. The Patent Trial and Appeal Board (PTAB) instituted proceedings and concluded that Grit Energy had not met its burden of showing that the...

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Focusing on Functionality, Software Claims Found Patent Eligible

The US Court of Appeals for the Federal Circuit found that patent claims directed to a communication system were patent eligible under 35 U.S.C. § 101 because the claimed invention changes the normal operation of a communication system to overcome a problem specifically arising in the realm of computer networks. Uniloc USA, Inc. v. LG Electronics USA, Inc., Case No. 19-1835 (Fed. Cir. Apr. 30, 2020) (Moore, J.). Uniloc owns a patent directed to a communication system comprising a primary station, such as a computer, and at least one secondary station, such as a wireless computer mouse or keyboard. In conventional systems, the primary stations would alternate between sending (1) inquiry messages to identify new secondary stations and (2) polling messages to determine whether inactive, but previously connected, secondary stations have information to transit. In conventional systems, the secondary stations could experience long delays in connecting to the...

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