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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 Hitkansut provided ORNL with a copy of the then-unpublished patent application.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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Federal Circuit Sinks Another Attempt to Use PTO Guidance

The US Court of Appeals for the Federal Circuit found claims directed to methods of fishing to be patent ineligible, affirming a Patent Trial and Appeal Board (PTAB) decision that the claims were directed to the abstract idea of selecting a fishing hook based on observed water conditions. In re: Christopher John Rudy, Case No. 19-2301 (Fed. Cir. Apr. 24, 2020) (Prost, CJ). The patent family in suit underwent lengthy prosecution beginning with a 1989 application titled “Eyeless, Knotless, Colorable and/or Translucent/Transparent Fishing Hooks with Associatable Apparatus and Methods.” After years of amendments, PTAB appeals and a previous visit to the Federal Circuit, Rudy’s return to the Federal Circuit provided the Court with an opportunity to both deny him patent coverage and reject US Patent and Trademark Office (PTO) guidance regarding subject matter eligibility. The PTAB analyzed the illustrative claim of application under both the Alice/Mayo two-step...

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PTAB Time Bar Application in Instituting IPR Proceedings Nonappealable

Addressing the scope of review of the Patent Trial and Appeal Board’s (PTAB’s) application of the one-year time bar of 35 USC § 315(b) in deciding whether to institute an inter partes review (IPR) proceeding, the Supreme Court of the United States held that application of the time bar by the PTAB is nonappealable. Thryv, Inc. v. Click-to-Call Techs., LP, Case No. 18-916 (Supr. Ct. Apr. 20, 2019) (Ginsburg, Justice) (Gorsuch, Justice, joined in part by Sotomayor, Justice, dissenting). The Court explained that an appeal based on the PTAB’s application of the time bar for filing an IPR petition is prohibited under 35 USC § 314(d), which states that the PTAB’s decision on institution “shall be final and nonappealable.” Click-to-Call owns a patent related to technology for anonymous telephone calls. In 2001, the patent was asserted against a predecessor in interest to Thryv, but the case ended in a voluntary dismissal. In 2013, Thryv filed an IPR petition (under...

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Article III Standing Required to Appeal Final Decisions by the PTAB

Addressing the issue of Article III standing in an appeal of an inter partes review (IPR) decision, the US Court of Appeals for the Federal Circuit dismissed the appeal because the party appealing failed to establish an injury sufficient to confer standing. Argentum Pharms. LLC v. Novartis Pharms. Corp., Case No. 18-2273 (Fed. Cir. Apr. 23, 2020) (Moore, J.). Apotex filed an IPR petition of a patent owned by Novartis. The Patent Trial and Appeal Board (PTAB) instituted proceedings and granted Sun (and related entities), Teva, Actavis and Argentum’s (collectively, Petitioners) requests for joinder under 35 U.S.C. § 315(c). After PTAB concluded that Petitioners did not demonstrate unpatentability of the patent claims, Petitioners appealed. Before opening briefs were filed, Novartis filed a motion to dismiss Argentum’s appeal for lack of standing. Argentum opposed and included declarations from the CEOs of Argentum and KVK, Argentum’s manufacturing and marketing...

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Assignor Estoppel Does Not Apply to AIA Challenges

The US Court of Appeals for the Federal Circuit reiterated that while assignor estoppel prevents a party that assigned a patent to another party from later challenging the validity of the assigned patent in district court, it does not preclude the party from challenging the validity of the assigned patent in an America Invents Act inter partes review (IPR) proceeding. Hologic, Inc. v. Minerva Surgical, Inc., Case Nos. 19-2054; -2081 (Fed. Cir. Apr. 22, 2020) (Stoll, J.) (Stoll, J., additional views). Csaba Truckai co-founded NovaCept and developed the NovaSure system. Hologic subsequently acquired NovaCept along with two patents it owned relating to endometrial ablation. Truckai later founded Minerva and developed a system to compete directly with Hologic’s NovaSure system, which led to Hologic suing Minerva for infringement of the two patents. Minerva challenged the patents, both in district court and by filing IPR petitions. The district court found that...

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Prevailing at the PTAB Can Mean Prevailing Party Attorneys’ Fees

Addressing whether attorneys’ fees may be awarded in a patent infringement lawsuit where an accused infringer successfully invalidates claims in an inter partes review (IPR) proceeding, the US Court of Appeals for the Federal Circuit found that the accused infringer is considered the “prevailing party” for purposes of 35 U.S.C. § 285, but remanded for consideration on whether fees incurred in IPR proceedings can be awarded. Dragon Intellectual Property, LLC v. DISH Network LLC, et al., Case No. 19-1283 (Fed. Cir. Apr. 22, 2020) (Moore, J.). Dragon sued DISH, Sirius and others for patent infringement. DISH responded by filing an IPR petition attacking the validity of the patent. The district court stayed the proceedings as to DISH and Sirius, who joined the IPR, but proceeded with claim construction as to the other defendants. Following claim construction, the district court entered a judgment of noninfringement as to all defendants. The Patent Trial and...

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Patent Term Extension Only Applies to Approved Product

In a case relating to a patented method for treating multiple sclerosis, the US Court of Appeals for the Federal Circuit found that patent term extension (PTE) only applies to methods of using the approved product as defined under the relevant statute, 35 U.S.C. § 156, even if the patent claim is broad enough to cover methods of using additional compounds. Biogen International GMBH v. Banner Life Sciences LLC, Case No. 20-1373 (Fed. Cir. Apr. 20, 2020) (Lourie, J.). Biogen holds the New Drug Application (NDA) for the active ingredient dimethyl fumarate (DMF) which has been approved for the treatment of multiple sclerosis. Upon administration to a patient, DMF is metabolized into a second compound, monomethyl fumarate (MMF). The compounds are virtually identical except that DMF has two methyl (CH3) groups (red in the below diagrams) and MMF has only one. The two compounds also have the same “active moiety.” Biogen owns a patent directed to a method of treating...

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