IP UPDATE
Exploring the Latest in Intellectual Property Law
IP UPDATE
Exploring the Latest in Intellectual Property Law
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En Banc Federal Circuit Leaves ‘Consisting Essentially Of’ High and Dry

by | Mar 12, 2020 |

In an 8–4 decision, the en banc US Court of Appeals for the Federal Circuit issued a per curiam order upholding its earlier panel decision finding a claim using the transitional phrase “consisting essentially of” to be indefinite because of inconsistences in the manner in which the patent specification explained the meaning of “better drying time” in connection with use of the claimed formulation. The Court denied plaintiff’s petition for panel rehearing and for rehearing en banc. HZNP Fin. Ltd. v. Actavis Labs. UT, Inc., Case No. 17-2149 (Fed. Cir. Feb. 25, 2020) (per curiam) (Lourie, J, joined by Newman, O’Malley and Stoll, JJ, dissenting). Judge Newman also dissented in the original panel decision. (more…)



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Failure to Mark Can Put Damages Underwater

by | Mar 12, 2020 |

The US Court of Appeals for the Federal Circuit affirmed that patented articles must be marked in order for the patentee to recover pre-notification or pre-complaint damages. Arctic Cat Inc. v. Bombardier Recreational Products Inc., Case No. 19-1080 (Fed. Cir. Feb. 19, 2020) (Lourie, J).

In 2002, Arctic Cat entered into a licensing agreement with Honda for patents related to personal watercraft. The license agreement contained no provisions requiring Honda, as a licensee, to mark all licensed products with the applicable patent numbers. Honda began selling unmarked watercraft, and Arctic Cat made no attempt to ensure that the products were marked. Approximately a decade later, Honda stopped selling the unmarked products.

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Knowledge and Control of Importation Can Lead to § 337 Violation

by | Mar 12, 2020 |

The US Court of Appeals for the Federal Circuit affirmed a US International Trade Commission (ITC) decision that a respondent qualified as an importer under § 337 despite not being the actual importer of record, based on the respondent’s involvement in the importation. Comcast Corp. et al. v. ITC, Case Nos. 18-1450, -1653, -1667 (Fed. Cir. Mar. 2, 2020) (Newman, J).

In 2016, Rovi filed a complaint with the ITC against Comcast and its suppliers based on infringement allegations of seven patents related to digital video guide technologies. Rovi dropped one asserted patent prior to trial, and the ITC’s administrative law judge ultimately found a § 337 violation based on two of the remaining patents. In late 2017, the ITC commissioners affirmed the administrative law judge’s determination and entered an exclusion order against Comcast.

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Federal Circuit Confirms Time Bar Under § 315(b) Is Waivable

by | Feb 27, 2020 | ,

Notwithstanding the jurisdictional nature of the time bar under § 315(b), the US Court of Appeals for the Federal Circuit determined that a party may waive a time bar argument if it failed to raise the issue with the Patent Trial and Appeal Board (PTAB) during the inter partes review (IPR) proceeding. Acoustic Tech. Inc. v. Itron Networked Solutions, Inc., Case No. 19-1061 (Fed. Cir. Feb. 13, 2020) (Reyna, J.).

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Petitioner’s Reply Argument in IPR Is Not an Impermissible New Theory

by | Feb 27, 2020 | ,

Addressing whether the Patent Trial and Appeal Board (PTAB or Board) too narrowly read its rules limiting reply briefs in an inter partes review (IPR) to preclude a petitioner’s argument as a “new theory of unpatentability,” the US Court of Appeals for the Federal Circuit concluded that the Board abused its discretion by not considering petitioner’s arguments. Apple Inc. v. Andrea Electronics Corp., Case Nos. 18-2382, -2383 (Fed. Cir. Feb. 7, 2020) (Plager, J.).

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All in the Family: Prior Patent License Implicitly Grants License to Asserted Patent

by | Feb 20, 2020 |

The US Court of Appeals for the Federal Circuit affirmed a district court dismissal, finding that a patent license implicitly licensed all parents and continuations that disclosed the same invention as the explicitly licensed patent. Cheetah Omni LLC v. AT&T Services, Inc., Case No. 19-1264 (Fed. Cir. Feb. 6, 2020) (Lourie, J).

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IPR Institution Limited By the Petition, But Not Limited as to the Express Teachings of the Prior Art

by | Feb 13, 2020 | ,

In an appeal from the Patent Trial and Appeal Board (PTAB), the US Court of Appeals for the Federal Circuit held that although the PTAB erred by instituting review based on a ground not advanced in the petition, the PTAB correctly found the patent at issue was invalid and affirmed the final written decision. Koninklijke Philips N.V. v. Google LLC, Case No. 19-1177 (Fed. Cir., Jan. 30, 2020) (Prost, C.J.).

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PTAB May Not Cancel Indefinite Claims in IPR, No Matter What

by | Feb 13, 2020 | ,

The US Court of Appeals for the Federal Circuit imposed limits on what the Patent Trial and Appeal Board (PTAB) is authorized to do by statute when dealing with challenged claims in an inter partes review (IPR) that it finds to be too indefinite to apply prior art. Samsung Elecs. Am., Inc. v. Prisua Eng’g Corp., Case Nos. 19-1169, -1260 (Fed. Cir. Feb. 4, 2020) (Bryson, J).

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No En Banc Review of Non-Institution Decision After Remand of Partial Institution

by | Jan 29, 2020 |

Addressing a panel decision that affirmed a Patent Trial and Appeal Board (PTAB) holding denying institution of an inter partes review (IPR) after an earlier partial institution decision, the US Court of Appeals for the Federal Circuit denied both a panel rehearing and a rehearing en banc over a dissent from Judge Newman. BioDelivery Sciences International, Inc. v. Aquestive Therapeutics, Inc., Case Nos. 19-1643, -1644, -1645 (Fed. Cir. January 13, 2020) (Newman, J, dissenting).

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