IP UPDATE
Exploring the Latest in Intellectual Property Law
IP UPDATE
Exploring the Latest in Intellectual Property Law
Results for ""
Subscribe to Results for ""'s Posts

PTAB May Reject Substitute Claims Under Any Basis of Patentability

by | Aug 5, 2020 | ,

The US Court of Appeals for the Federal Circuit considered for the first time whether a district court’s invalidity determination, when made final after all appeals are exhausted, divests the Patent Trial and Appeal Board (PTAB) of jurisdiction in a co-pending inter partes review (IPR) proceeding involving the same claims, and held that it does not. The Court also held that in an IPR proceeding, the PTAB is free to reject proposed substitute claims for failing to meet the subject matter eligibility requirements of § 101. Uniloc 2017 LLC v. Hulu, LLC, Case No. 19-1686 (Fed. Cir. July 22, 2020) (Wallach, J.) (Dyk, J., dissenting).

Hulu filed an IPR petition challenging claims of Uniloc’s patent directed to adjustable software licensing for digital products. After the PTAB instituted review, Uniloc filed a motion for substitute claims, conditional on whether the PTAB found the original claims unpatentable. Before the PTAB issued its final determination and before it ruled on the motion for substitute claims, a district court, in a related proceeding, held Uniloc’s asserted claims invalid as directed to patent-ineligible subject matter. Shortly thereafter, the PTAB issued a final written decision finding the challenged claims unpatentable over the prior art, and it found the substitute claims unpatentable under § 101. Uniloc appealed the PTAB’s use of § 101 to invalidate its substitute claims.

While Uniloc’s appeal of the Hulu IPR was pending, the Federal Circuit affirmed the district court’s invalidity finding as to the original claims. With respect to the Hulu appeal, the Federal Circuit ordered the parties to address whether the appeal was moot in view of the ultimate finality with respect to invalidity of the original claims, thereby divesting the PTAB of jurisdiction over the IPR.

The majority held that the finality of the district court’s invalidity finding did not necessarily divest the PTAB of authority to consider substitute claims. It determined that the mootness issue was waivable, and that Hulu had waived the argument because it failed to raise mootness during the pendency of the IPR at the time the district court issued its decision. Even if Hulu had not waived the argument, the majority found that the PTAB’s authority to consider substitute claims does not depend on any live dispute about the original claims, as long as the motion to amend in the IPR was timely filed.

As to the PTAB’s rejection of the claims under § 101, the majority held that although the PTAB is restrained in an IPR proceeding to invalidating a patent’s original claims only under the anticipation and obviousness grounds raised in the petition, the PTAB may use other invalidity tools as a “new ground of rejection” for substitute claims, including for lack of patentable subject matter under § 101. The majority also suggested that other grounds of patentability would be within the scope of the PTAB’s authority, including rejections under the various subsections of § 112. The majority was concerned that limiting the PTAB’s review might force it to issue substitute claims that fail to meet all the statutory [...]

Continue Reading



read more

Eighth Circuit Cools Off Antitrust Claims Based on Alleged Patent Fraud

by | Aug 5, 2020 |

The US Court of Appeals for the Eighth Circuit affirmed a grant of summary judgment dismissing antitrust and tortious interference claims based on fraudulent procurement of patents where the plaintiff failed to show a knowing and willful intent to deceive the US Patent and Trademark Office (PTO). Inline Packaging, LLC v. Graphic Packaging International, LLC, Case No. 18-3167 (8th Cir. June 18, 2020) (Smith, J.).

Inline Packaging and Graphic Packaging are manufacturers of susceptor packaging, a specialized food packaging used for microwaving frozen foods. Graphic developed the susceptor design in partnership with Nestlé in 2005. The packaging was redesigned from a prior patent obtained several years earlier. Although Graphic’s computer-aided design drafter was listed as the sole inventor of the redesigned packaging claimed in the asserted patent, Nestlé’s engineer provided feedback that was implemented into the design, including the addition and deletion of certain features of the packaging.

In 2014, Nestlé held an auction to select the next manufacturer of its susceptor packaging. Nestlé originally selected Inline as the supplier of its susceptor packaging, but later awarded 90% of the susceptor packaging business to Graphic after Graphic notified Nestlé that Inline would likely infringe on Graphic’s patents. In June 2015, Graphic initiated patent litigation against Inline. In July 2015, Inline brought an antitrust suit against Graphic alleging that Graphic monopolized the susceptor packaging market using anticompetitive practices in violation of federal and state antitrust laws. To support its antitrust claims, Inline alleged that Graphic fraudulently procured the asserted patents, made baseless litigation threats and engaged in predatory discount bundling through the use of multi-year supply agreements. At the time the lawsuit was initiated, Graphic was the dominant supplier of susceptor packaging, with an almost 95% share of the US market. The district court granted summary judgment in favor of Graphic, dismissing Inline’s claims. Inline appealed.

The Eighth Circuit reviews grants of summary judgment de novo to determine whether a genuine dispute of material fact exists and whether judgment is entitled as a matter of law. Here, all inferences were viewed in the light most favorable to Inline. Section 2 of the Sherman Act prohibits monopolizing, or attempting to monopolize, any part of the trade or commerce among the several states. To prove a violation of Section 2, a claimant must show that an entity possessed monopoly power in the relevant market and willfully acquired or maintained such monopoly power through anticompetitive conduct rather than as the result of fair competition (e.g., by means of a superior product or business acumen).

The Eighth Circuit first considered whether Graphic fraudulently procured the asserted patents. Patent fraud, also known as Walker Process fraud, can support a monopolization claim where the defendant procured the patent at issue by knowing and willful fraud on the PTO, or maintained and enforced the patent with knowledge of the fraudulent manner in which it was obtained. Knowing and willful fraud requires an intent to deceive or inequitable conduct. The Court reasoned that this standard requires clear and convincing [...]

Continue Reading



read more

The Naked Truth About Trademark Cancellation: Only Harm, No Proprietary Interest Required

by | Aug 5, 2020 |

The US Court of Appeals for the Federal Circuit determined that a contracting party that contractually abandoned any proprietary interest in a mark may still bring a cancellation action if it can “demonstrate a real interest in the proceeding and a reasonable belief of damage.” Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, Case No. 19-1567 (Fed. Cir. July 24, 2020) (Reyna, J.) (Wallach, J., dissenting).

Australian sold condoms with the marks NAKED and NAKED CONDOMS, first in Australia in early 2000, then in the United States in 2003. Two years later, Australian learned that Naked TM’s predecessor had registered a trademark NAKED for condoms in September 2003. Australian and Naked TM communicated by email regarding use of the mark for a few years. Naked TM contended that the parties reached an agreement; Australian disagreed and said no final terms were agreed upon. Australian filed a petition to cancel the NAKED trademark registration. Ultimately, and after trial, the Trademark Trial and Appeal Board (TTAB) concluded that Australian lacked standing because it had reached an informal agreement that Naked TM reasonably believed was an abandonment of any right to contest Naked TM’s registration of NAKED. Thus, the TTAB found that Australian lacked a real interest in the proceeding because it lacked a proprietary interest in the challenged mark. Australian appealed.

The Federal Circuit reversed. First, the Court clarified that the proper inquiry was a matter of proving an element of the cause of action under 15 USC § 1064 rather than standing. The Court explained that, contrary to the TTAB’s conclusion, “[n]either § 1064 nor [its] precedent requires that a petitioner have a proprietary right in its own mark in order to demonstrate a cause of action before the Board.” Assuming without deciding that the TTAB correctly determined that Australian had contracted away its rights, the Court found that fact irrelevant. Ultimately, even though an agreement might be a bar to showing actual damages, a petitioner need only show a belief that it has been harmed to bring a petition under § 1064.

The Federal Circuit found that Australian had a reasonable belief in its own damage and a real interest in the proceedings based on a history of two prior applications to register the mark, both of which the US Patent and Trademark Office rejected on the basis that they would have created confusion with Naked TM’s mark. The Court rejected Naked TM’s argument that Australian’s abandonment of those applications demonstrated there was no harm, instead concluding that Australian’s abandonment of its applications did not create an abandonment of its rights in the unregistered mark. Moreover, as a prophylactic rationale, the Court explained that Australian’s sales of products that might be found to have infringed the challenged registration also create a real interest and reasonable belief in harm.

Judge Wallach dissented. Although he agreed that the TTAB erred by imposing a proprietary-interest requirement to bring suit under § 1064, he disagreed that Australian properly demonstrated an alternative, legitimate interest—i.e., a belief [...]

Continue Reading



read more

Without Personal Jurisdiction or Causal Relationship, Wheels Come Off Misappropriation Claim

by | Jul 30, 2020 |

Without addressing the merits of the claim, the US Court of Appeals for the Seventh Circuit affirmed a district court’s dismissal of a trade secret misappropriation action based on lack of personal jurisdiction, finding no causal relationship between the competitors’ dealings in Illinois and the asserted claims. J.S.T. Corporation v. Foxconn Interconnect Technology Ltd., et al., Case No.19-2465 (7th Cir. July 13, 2020) (Barrett, J.).

In 2005, General Motors (GM) retained Robert Bosch LLC to build a part for some of GM’s cars. To build the part, Bosch required a connector. Bosch turned to JST to design and build the part, which it did for years, becoming the sole supplier of the product to Bosch. After buying 15 million connectors, Bosch allegedly tricked JST into handing over its proprietary technical schematics and designs under the guise that GM required the materials and Bosch would keep them confidential. Instead, Bosch allegedly gave the materials to JST’s competitors, Foxconn and TEC. According to JST, Foxconn and TEC accepted the designs, used them to produce a knockoff connector and displaced JST.

JST filed a lawsuit against TEC and Foxconn affiliates in Illinois for trade secret misappropriation under the Illinois Trade Secrets Act and for unjust enrichment. TEC and Foxconn moved to dismiss the case for lack of personal jurisdiction because none of the defendants were headquartered in Illinois or had a primary place of business there. Further, none of the defendants manufactured or sold the connector in Illinois. JST alleged that TEC and Foxconn sold the connectors to Bosch in Texas and in China, where Bosch installed them into the parts it sold to GM. The only connection to Illinois was the fact that GM sells cars with those parts to dealers in Illinois. Foxconn and TEC argued that this connection was too attenuated to support personal jurisdiction. The district court agreed and dismissed the action. JST appealed.

On appeal, JST asserted that Foxconn and TEC were subject to personal jurisdiction in Illinois because the cars containing the knockoff parts were sold in the state. Relying on the Supreme Court of the United States’ decision in World-Wide Volkswagen, JST argued that personal jurisdiction may be appropriate over “a corporation that delivers its products into the stream of commerce with the expectation that they will be purchased by consumers in the forum State.” The Seventh Circuit observed that its circuit is among those that apply the stream of commerce theory in products liability cases. The Court explained that in the context of a product liability case, the defendant takes steps to reach consumers in a forum state, and the underlying litigation alleges the development of a product that harms consumers.

The Seventh Circuit noted the differences between products liability claims and those involving trade secret misappropriation. The latter is not intrinsically linked to interactions with a consumer and can occur long before an offending product ever reaches a consumer in the forum. Based on the complaint, the Court found that even if Foxconn and [...]

Continue Reading



read more

“Salacious” Content Doesn’t Bar Discovery in Copyright Infringement Suit

by | Jul 30, 2020 |

The US Court of Appeals for the District of Columbia Circuit preserved discovery options for copyright owners fighting online piracy when it reversed the district court’s refusal to allow a subpoena of an alleged online infringer’s internet service provider. The DC Circuit found that the district court abused its discretion by relying heavily on the copyright owner’s litigation history and the nature of its films rather than the relevant legal standards under the Federal Rules of Civil Procedure. Strike 3 Holdings, LLC v. John Doe, Subscriber Assigned IP Address 73.180.154.14 (DC Cir. July 14, 2020) (Rao, J.).

Strike 3 is a producer and online distributor of adult films. Like most of its industry peers, the company faces significant online piracy that is often facilitated by peer-to-peer file sharing. To combat this infringement, Strike 3 regularly files copyright infringement lawsuits against “John Doe” defendants based on the internet protocol (IP) address (and the associated physical address) tied to an online infringer’s illegal file sharing and downloads.

In 2018, Strike 3 filed a copyright infringement lawsuit against the IP address 73.180.154.14 John Doe subscriber located in the District of Columbia after the IP address was associated with 22 instances of infringement in the course of one year. To properly identify the defendant and serve the complaint, Strike 3 also filed a Rule 26(d)(1) motion seeking leave to subpoena Comcast, the subscriber’s internet service provider, for records identifying the John Doe IP address subscriber. But, in applying a multifactor balancing test adopted by the US Court of Appeals for the Second Circuit in Arista Records v. Doe, the district court denied Strike 3’s discovery motion on grounds that Strike 3’s need for the subpoenaed information was outweighed by defendant’s right to be anonymous, which the court found to be notably relevant given the risk of defendant misidentification and the “particularly prurient pornography” at issue.

On appeal, the DC Circuit acknowledged the district court’s broad discretion over the structure, timing and scope of discovery. In Strike 3’s case, however, the DC Circuit found that three aspects of the lower court’s analysis were an abuse of this broad discretion.

First, it was improper and “not supported by the relevant legal standards” for the district court to treat the pornographic content of Strike 3’s copyrighted works as relevant to its entitlement to early discovery. None of the supporting case law suggests that a potentially non-infringing defendant’s privacy interests vary depending on the content of the copyrighted work at issue. The Court warned that a plaintiff’s ability to defend its copyrights cannot turn on a court’s subjective view of the copyrighted material, and held that the content of a copyrighted work is per se irrelevant to a Rule 26(d)(1) motion seeking discovery to identify an anonymous infringer.

The district court’s second abuse of discretion was in its conclusion that, even if the discovery request was granted, Strike 3 could not “identify a copyright infringer who can be sued” for purposes of stating a plausible claim against the [...]

Continue Reading



read more

Unnamed Respondent Has Standing to Seek Rescission of ITC General Exclusion Order

by | Jul 30, 2020 |

The US Court of Appeals for the Federal Circuit affirmed a US International Trade Commission (ITC) decision denying a petition for rescission of a general exclusion order (GEO) prohibiting importation of products accused of patent infringement, because a post-investigation invalidity attack is not a changed condition warranting rescission. Mayborn Grp., Ltd. v. Int’l Trade Comm’n, Case No. 19-2077 (Fed. Cir. July 16, 2020) (Lourie, J.).

Several parties filed a complaint at the ITC against several respondents, not including Mayborn Group, Ltd., and Mayborn USA, Inc. The complaint alleged infringement of a patent disclosing a self-anchoring beverage container that prevents spills. The complainants sought a GEO barring importation of infringing goods by any party, including unnamed respondents such as Mayborn. In contrast to GEOs, limited exclusion orders only prohibit infringing goods imported by named respondents in an investigation. The ITC instituted an investigation, and the administrative law judge determined that two respondents were in default and liable for unfair acts (patent infringement) in connection with importation. The defaulting respondents did not raise any invalidity challenge during the investigation. On the administrative law judge’s recommendation, the ITC issued a GEO.

Following issuance of the GEO, Mayborn continued to import potentially infringing products. The complainants notified Mayborn that they were working with US Customs and Border Protection (CBP) to enforce the GEO against Mayborn’s importations. In response, Mayborn petitioned the ITC to rescind the GEO pursuant to its power to rescind or modify an order if there is a change in the conditions that led to the GEO. Mayborn argued that the “changed condition” requirement was satisfied because it contends the asserted claims are invalid.. The ITC denied Mayborn’s petition, holding that a petitioner’s asserted discovery of invalidating prior art after the issuance of a GEO was not a changed condition. Mayborn appealed, arguing that the ITC erred in rejecting its request for rescission. The ITC alleged that Mayborn lacked standing to appeal because Mayborn’s alleged injury stemmed from the complainants’ threat to enforce the GEO rather than any act by the ITC.

The Federal Circuit affirmed, finding that Mayborn’s post-investigation invalidity challenge was not a basis for rescission of the GEO. The Court first addressed the ITC’s standing argument, and determined that Mayborn had standing because it was injured by the GEO and the GEO was enforced by the ITC. The ITC or CBP could act to enforce the GEO at any time. Mayborn had also lost sales and incurred other harm stemming from the complainants’ threats to assert the GEO, including reputational injury, market share loss and damaged business relationships. Standing did not require the ITC to have already barred importation of Mayborn’s products.

After finding that Mayborn had standing, the Federal Circuit determined that Mayborn’s invalidity challenge was not a permissible basis to seek rescission of the GEO for two reasons. First, although patent invalidity is an affirmative defense to patent infringement, the ITC is constrained to adjudicating patent validity only when a respondent raises an invalidity defense during an [...]

Continue Reading



read more

Independently Performed, Publicly Disclosed Prior Work Can Lead to Joint Inventorship

by | Jul 23, 2020 |

Addressing an inventorship decision that added two co-inventors to patents covering cancer treatments, the US Court of Appeals for the Federal Circuit agreed that the co-inventors’ work constituted joint inventorship even though it was performed independently and publicly disclosed prior to conception of the claimed invention. Dana-Farber Cancer Institute v. Ono Pharma. Co., Ltd., Case No. 19-2050 (Fed. Cir. July 14, 2020) (Lourie, J.).

In 2015, Dana-Farber filed an inventorship correction claim seeking to add two of its researchers as inventors to six patents covering cancer treatments that named inventors who had assigned the patents to Ono Pharmaceutical. After an eight-day bench trial, the district court judge issued a 111-page decision agreeing that Dana-Farber’s researchers were joint inventors for all six patents. Ono appealed.

Ono first argued that, as a matter of law, the contributions from Dana-Farber’s researchers were too far removed from the claimed invention because their contributions had been independently performed and publicly disclosed prior to conception, and thus constituted prior art to the patents. The Federal Circuit acknowledged that simply informing another inventor about the state of the prior art does not make one a joint inventor. However, the Court contrasted that situation with a genuine contribution by a participant in a collaborative enterprise that lasted over a year, where the contribution happened to be published shortly before conception. The Court stated that such a situation may be sufficient to lead to joint inventorship.

Ono also contested the district court’s factual determination that Dana-Farber’s researchers contributed to the invention as claimed. Specifically, Ono argued that the contributions from Dana-Farber’s researchers did not relate to the claimed subject matter of an antibody for a particular receptor. Dana-Farber responded that, as found by the district court, all six patents had the same core invention of blocking a particular ligand-receptor interaction and thus the identification of the relevant ligand by Dana-Farber’s researchers was properly considered part of the conception of all claims. The Federal Circuit agreed and affirmed the district court.



read more

Delicate Balance: Details of Parallel Proceeding Tip Scales for Discretionary Denial

by | Jul 22, 2020 | ,

The Patent Trial and Appeal Board (Board) designated two decisions informative as they relate to weighing factors for determining how a parallel district court proceeding may impact the Board’s determination of whether to discretionarily deny institution under § 314(a).

In Apple Inc. v. Fintiv, Inc., Case No. IPR2020-00019, Paper 15 (USPTO May 13, 2020) (Horner, APJ) (designated informative on July 13, 2020), the Board had previously requested supplemental briefing in a pre-institution order in this case (itself now designated by the Board as precedential) regarding six factors for weighing the impact of the parallel district court proceeding on whether to discretionarily deny institution.

As to factor (1), whether the district court action is stayed or evidence exists that a stay may be issued, the Board weighed this factor as neutral because neither party had requested a stay and the district court had given no indication as to whether it would entertain a stay. Absent definitive statements by the district court as to the specific case, the Board declined to infer how a judge might rule if a motion were to be filed.

Under factor (2), the proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision, the Board found this factor weighed slightly in favor of a discretionary denial. Even though the district court’s initial trial date had been pushed back, the new date was still two months earlier than the Board’s one-year deadline for issuing a final written decision. In addition, the new date appeared to be relatively certain, and mere speculation about the further delays being typical was not enough to weigh this factor in favor of a discretionary denial.

As to factor (3), the court’s and parties’ investment in the parallel proceeding, the Board found this weighed somewhat in favor of discretionary denial. Even though expert reports had not been served, the district court had already issued a detailed Markman order construing seven claim terms, and the parties had already served their final invalidity contentions.

Under factor (4), the extent of overlap of the issues raised in the petition compared to those raised in the parallel proceeding, the Board found this factor favored discretionary denial because the Petitioner was pursuing the same prior art on the same claims in district court.

Under factor (5), the parties in the district court action were the same as the IPR, so this factor weighed in favor of discretionary denial.

As to the catch-all factor (6), including considering the merits of the challenge, the Board found that there were key weaknesses in the petition that helped tip the scales toward discretionary denial. In sum, the Board found that the weight of the factors tipped toward exercising its discretion to deny institution.

In Sand Revolution II, LLC v. Continental Intermodal Group–Trucking LLC, Case No. IPR2019-01393, Paper 24 (USPTO June 16, 2020) (Flax, APJ) (designated informative on July 13, 2020), the Board came to slightly different conclusions for some of the factors, ultimately granting the Petitioner’s request [...]

Continue Reading



read more

Joined Parties Have Rights Too

by | Jul 22, 2020 | ,

In vacating an unpatentability decision by the Patent Trial and Appeal Board (Board), the US Court of Appeals for the Federal Circuit found that the rights of a joined party to an inter partes review (IPR) proceeding applies to the entirety of the proceedings and includes the right of appeal. Fitbit, Inc. v. Valencell, Inc., Case No. 19-1048 (Fed. Cir. July 8, 2020) (Newman, J.).

Apple petitioned the Board for IPR of certain claims of a patent owned by Valencell. The Board granted the petition in part, instituting review of certain claims and denying review of other claims. After institution of the Apple IPR, Fitbit filed an IPR petition for the instituted claims and moved for joinder with Apple’s IPR. The Board granted Fitbit’s petition, granted the motion for joinder and terminated Fitbit’s separate proceeding.

After the Apple/Fitbit IPR hearing, but before any Final Written Decision was issued, the Supreme Court decided SAS Institute v. Iancu (IP Update, Vol. 21, No. 5), holding that the America Invents Act requires that all patent claims challenged in an IPR petition must be reviewed by the Board if the petition is granted. Accordingly, the Board re-instituted the Apple/Fitbit IPR to add the previously denied patent claims. The Board’s Final Written Decision found the originally instituted claims unpatentable, but the newly instituted claims not unpatentable. After the decision, Apple withdrew from the proceeding. Fitbit appealed the decision as to newly instituted claims that had been found not unpatentable.

On appeal, Valencell challenged Fitbit’s right to appeal as to the newly instituted claims. 35 U.S.C. § 319 provides that “[a]ny party to the inter partes review shall have the right to be a party to the appeal.” Valencell argued that Fitbit does not have the status of “party” for purposes of appeal because Fitbit did not request review of the newly instituted claims in its initial IPR petition, did not request leave to amend its initial petition after the Supreme Court’s decision in SAS Institute and did not submit a separate brief with respect to the non-instituted claims after the joined IPR was re-instituted. Valencell also argued that because the Board stated that Fitbit would have “limited participation, if at all, and required Fitbit to seek authorization from the Board before filing any papers,” Fitbit was not a full participant in the joined IPR.

Fitbit responded that Valencell did not object to Fitbit’s joinder and did not object to or seek to qualify Fitbit’s continued participation after the Board re-instituted the joined IPR to include the new claims, so there was only one IPR. Fitbit also cited the Board’s statement in granting its joinder motion that the “[d]ecision addressing the status of each challenged claim in this proceeding applies to all parties.” Fitbit acknowledged that it did not seek to file a separate brief after the new claims were added to the IPR, but claimed no separate brief was needed to present the issues.

The Federal Circuit agreed with Fitbit, finding that the circumstances [...]

Continue Reading



read more

Third Parties Not Responsible for Defective Motion to Seal

by | Jul 22, 2020 |

The US Court of Appeals for the Federal Circuit held that a district court did not abuse its discretion in denying reconsideration of a previous order denying a litigant’s defective motion to seal  with regard to the litigant’s own information, but vacated and remanded for further consideration with regard to third-party information. Uniloc 2017 LLC v. Apple, Inc., Case Nos. 19-1922, -1923, -1925, ‑1926 (Fed. Cir. July 9, 2020) (Mayer, J.).

Uniloc sued Apple for patent infringement in the Northern District of California. Apple moved to dismiss. The briefing on the motion included material that Uniloc had designated as highly confidential. Both parties filed motions to seal. Uniloc’s motions to seal covered quotations from published opinions and matters of public record, among other things. Uniloc’s supporting declarations included only boilerplate assertions of harm from disclosure. Non-party Electronic Frontier Foundation asked Uniloc to narrow its redactions, and when Uniloc declined, Electronic Frontier moved to intervene for the purpose of opposing Uniloc’s sealing motions. The district court denied the motions to seal as overbroad under the local rules, which require such motions to be narrowly tailored.

Uniloc sought an extension of time and ultimately filed a motion for leave to seek reconsideration. In that motion, it agreed to make public more than 90% of the material it had originally sought to seal. It also filed a new motion to seal the remainder. In support, it attached a much more specific declaration supporting sealing the more limited set of materials, as well as several declarations of third-party licensees, who stated that disclosure of their confidential information would be harmful to them. The court denied the motion seeking leave as not meeting the local rules’ requirements for reconsideration. The court also denied the narrower motion to seal, reasoning that Uniloc should have filed a proper motion to seal in the first instance. Uniloc appealed.

Uniloc argued that the district court had abused its discretion in denying the narrower motion to seal. In considering Uniloc’s argument, the Federal Circuit distinguished between Uniloc’s information and third-party information. Applying Ninth Circuit law, the Court held that the district court had not abused its discretion by strictly enforcing its local rules with regard to Uniloc’s information. Uniloc had violated the local rules in its motion to seal and subsequent motion for reconsideration. Moreover, the Court explained that notwithstanding the submission of a narrowly tailored motion, the burden is always on the moving party to provide compelling reasons for sealing, which Uniloc had failed to do.

Next, the Federal Circuit explained that third-party information “calls for an analysis not dependent on the overbreadth rationale” because third parties should not be harmed by a litigant’s failure to follow the local rules. Because the district court’s analysis had been based on overbreadth, the Court found that the district court “failed to make findings sufficient to allow us to adequately assess whether it properly balanced the public’s right of access against the interests of the third parties in shielding their . . [...]

Continue Reading



read more

BLOG EDITORS

Paul Devinsky

Amol Parikh

STAY CONNECTED

Subscribe

TOPICS

ARCHIVES