Federal Circuit Archives - Page 5 of 74

Federal Circuit

Standing Ovation…Denied!

by Keval Amin | May 9, 2024 | Patents

The US Court of Appeals for the Federal Circuit reversed a district court’s decision in a patent dispute for a lack of subject matter jurisdiction because the plaintiff lacked constitutional and statutory standing. Intellectual Tech LLC v. Zebra Technologies Corporation, Case No. 22-2207 (Fed. Cir. May 1, 2024) (Prost, Taranto, Hughes, JJ.)

In 2011, OnAsset granted Main Street Capital a security interest in a patent owned by OnAsset. In 2013, Main Street notified OnAsset that it was in default and, in 2017, OnAsset and Main Street entered into a forbearance agreement. Around the same time, Intellectual Tech was formed as a subsidiary of OnAsset and was assigned the patent in which Main Street had security interest. Intellectual Tech entered into its own patent security interest agreement with Main Street. Later, like OnAssett, Intellectual Tech defaulted.

Intellectual Tech sued Zebra Technologies for patent infringement, asserting the patent that was the subject to the security interest. Zebra moved to dismiss for lack of standing since Intellectual Tech had defaulted with respect to the Main Street security interest agreement. The district court denied Zebra’s motion, affirming Intellectual Tech’s ownership over the patent and its right to enforce it against Zebra. Zebra argued that Main Street gained exclusive rights over the patent when OnAsset defaulted back in 2013. The district court disagreed but nevertheless granted Zebra’s motion regarding constitutional standing, concluding that Main Street still had a right to grant a license to the patent to Zebra. Despite Intellectual Tech’s efforts to cure the standing defect by joining Main Street to the lawsuit, the district court deemed it incurable and dismissed Intellectual Tech’s claims without prejudice. Intellectual Tech appealed.

The Federal Circuit reversed, determining that Intellectual Tech had an exclusionary right in the patent when it filed a complaint against Zebra. Zebra contended that Main Street’s authority to license the patent, as per the forbearance agreement, stripped Intellectual Tech of all exclusionary rights. Zebra presented two licensing-related arguments: Main Street’s exclusive licensing ability upon default nullified Intellectual Tech’s exclusionary rights, and even if both Main Street and Intellectual Tech could license upon default, Main Street’s nonexclusive capability still deprived Intellectual Tech of its rights.

The Federal Circuit disagreed, finding that the forbearance agreement did not suggest that, without further action from Main Street, the mere activation of Main Street’s options automatically divested Intellectual Tech of its rights. By rejecting this exclusive-rights contention, the Court did not evaluate whether Intellectual Tech would maintain constitutional standing under the interpretation.

The Federal Circuit distinguished exclusive and nonexclusive licensing contexts in explaining why the jurisprudence cited by Zebra (the Federal Circuit’s 2010 decision in WiAV Sols. LLC v. Motorola, Inc.) did not control. According to the Court, this differentiation underscored the importance of distinguishing between patent owners and licensees, as ownership typically entails baseline exclusionary rights, contrasting with a licensee’s limited freedom from suit.

Moreover, the Federal Circuit’s analysis also underscored the necessity to assess patent agreements thoroughly, particularly regarding assignment clauses. Zebra argued that Main Street’s option [...]

Continue Reading

It May Be a Hairy Situation, but Detailed Declaration Sufficient Evidence of Prior Use

by Karen Gover | May 9, 2024 | Trademarks

The US Court of Appeals for the Federal Circuit affirmed the Patent Trial & Appeal Board’s refusal to register a mark, finding that an unchallenged, detailed declaration by the opposing company’s director sufficed as substantial evidence of prior use. Jalmar Araujo v. Framboise Holdings, Inc., Case No. 23-1142 (Fed. Cir. Apr. 30, 2024) (Lourie, Linn, Stoll, JJ.)

On December 3, 2019, Jalmar Araujo filed an application to register #TODECACHO as a standard character mark for hair combs. Framboise Holdings filed an opposition on the grounds that Araujo’s mark would likely cause confusion with its #TODECACHO design mark (below).

Framboise Holdings alleged that it owned the mark based on its prior use of it in connection with various hair products since March 24, 2017. Framboise also filed its own application for registration of its design mark on April 14, 2020, claiming the same date of first use.

On October 18, 2021, the final day on which Framboise could submit its case in chief to the Board, it moved for a seven-day extension. Four days after filing the motion, it served Araujo with the declaration of Framboise Director Adrian Extrakt. Although it was the testimony of a single interested party, the Board found Extrakt’s declaration alone to be convincing evidence of prior use. His declaration provided a list of products and dates of first use, as well as examples of the mark displayed on products in stores. After the Board sustained the opposition, Araujo appealed.

Araujo argued that the Board abused its discretion in granting Framboise an extension of the trial period, and that the Board’s finding that Framboise established prior use of the #TODECACHO design mark was not supported by substantial evidence. The Federal Circuit disagreed.

The Federal Circuit concluded that the Board had not abused its discretion in granting Framboise an extension because it identified and applied the correct good cause standard and “reasonably found good cause to grant the extension.” The Court also found that the Board was correct in finding that Extrakt’s declaration alone was sufficient evidence to support a priority date of March 24, 2017, based on evidence of the design mark’s use in connection with various hair products. The Court noted that the declaration did not simply consist of “naked general assertions of prior use,” but contained evidence. Araujo neither deposed Extrakt nor offered any evidence to dispute his claims. Hence, Extrakt’s declaration sufficed to meet the applicable preponderance of the evidence standard.

Practice Note: Oral or written testimony, even when offered by an interested party, can establish priority of use in a trademark proceeding if it is sufficiently detailed, is supported by exhibits and is convincing.

Cross-Appeals Fail to Strike a Chord

by Tessa Kroll | May 2, 2024 | Patents

In the latest development in the ongoing litigation saga between competitors Sonos and Google, the US Court of Appeals for the Federal Circuit affirmed the US International Trade Commission’s determination that the original accused audio players and controllers infringed the asserted patents while redesigned products did not. Sonos, Inc. v. Int’l Trade Comm’n, Case No. 22-1421 (Fed. Cir. Apr. 8, 2024) (Stark, Dyk, Reyna, JJ.) (nonprecedential).

Sonos filed a complaint against Google at the Commission, asserting that Google’s importation of certain audio players and controllers infringed Sonos’s patents generally directed to connecting and controlling wireless speakers. The chief administrative law judge made an initial determination that Google’s originally accused products infringed each of the asserted patents but also found that Google’s redesigned products were noninfringing alternatives. After declining the parties’ petitions for review, the Commission issued a final determination adopting the chief administrative law judge’s initial determination and entered a limited exclusion order. Sonos appealed the Commission’s determination concerning the redesigned products, and Google cross-appealed the Commission’s determination concerning the original products.

Sonos argued that the Commission misconstrued disputed claim terms and lacked substantial evidence for its noninfringement findings. First, Sonos argued that the Commission misconstrued claim language reciting “at least a second message containing network configuration parameters,” which “comprise an identifier of the secure WLAN . . . and a security key.” The Commission construed this language as requiring a single second message with both the claimed identifier and security key while Sonos contended that the claim language contemplated multiple second messages that collectively contain the identifier and security key. The Federal Circuit disagreed with Sonos, noting that the specification provided strong support for the Commission’s construction. Because Google’s redesigned product transmitted the identifier and the key in separate messages, the Federal Circuit affirmed the Commission’s conclusion that Google did not infringe.

Sonos next took issue with the Commission’s determination that Google’s redesigned product, which included an incrementing integer counter for synchronizing playback among devices, did not infringe a claim requiring synchronization through “time clock information.” While Sonos framed the issue as one of claim construction, the Federal Circuit reasoned that it was actually a factual issue (whether the accused redesign infringed), which is reviewed for substantial evidence. Because Google’s experts explained that an incrementing counter does not represent a time value, the Court concluded that the Commission’s determination was supported by substantial evidence.

Finally, Sonos contested the Commission’s construction of “equalization” as requiring “alteration of the relative strength of certain frequency ranges in the audio data” by adjusting certain properties of a speaker driver, adjusting amplifier gain in a playback device or using a filter. Finding this construction too narrow, Sonos argued that “equalization” should include any modification to output audio data, including the changing of a channel output without altering strengths of a frequency range. The Federal Circuit agreed with the Commission’s construction, which was based on expert testimony and dictionaries demonstrating that “equalization” is a well-known audio technique used to enhance or diminish specific frequency ranges. [...]

Continue Reading

Unclean Hands Aren’t Just for Toddlers

by Jacob Michael Bass | Apr 25, 2024 | Patents

In an action involving manufacturers of a self-sealing dining mat for toddlers, the US Court of Appeals for the Federal Circuit affirmed a district court’s finding that the defendants were barred from obtaining relief on their counterclaims under the unclean hands doctrine, thereby vacating the district court’s other findings on inequitable conduct, obviousness, attorneys’ fees and costs. Luv N’ Care, Ltd. et al. v. Laurain et al., Case No. 22-1905 (Fed. Cir. Apr. 12, 2024) (Reyna, Hughes, Stark, JJ.)

Luv N’ Care and Nouri E. Hakim (collectively, LNC) filed suit against Lindsey Laurain and Eazy-PZ (EZPZ), asserting various claims for unfair competition under the Lanham Act and Louisiana law. LNC also sought declaratory judgment that EZPZ’s design patent was invalid, unenforceable and not infringed. After the suit was filed, the US Patent & Trademark Office (PTO) issued Laurain a utility patent directed toward self-sealing dining mats. Laurain subsequently assigned her rights to EZPZ, which then asserted counterclaims for utility patent, design patent and trademark infringement.

Following discovery, the district court granted LNC’s motion for summary judgment, finding all claims of EZPZ’s utility patent as obvious in view of three prior art references. EZPZ moved for reconsideration, which the district court denied, indicating that a “ruling providing further reasoning will follow in due course.” Before any such ruling issued, the PTO issued an ex parte reexamination certificate confirming the patentability of the utility patent claims two days before the district court’s bench trial began.

EZPZ did not provide this reexam certificate to the district court prior to the bench trial. During the bench trial, the district court found that EZPZ had not committed inequitable conduct but that EZPZ’s litigation conduct constituted unclean hands. After the district court entered judgment, EZPZ moved for reconsideration of summary judgment based on the ex parte reexamination certificate. The district court denied this motion and found that the evidence did not compel alteration of the prior ruling that the utility patent was invalid. It also denied LNC’s motion for attorneys’ fees and costs. EZPZ appealed.

The Federal Circuit affirmed the unclean hands determination but vacated the district court’s rulings on inequitable conduct, invalidity, attorneys’ fees and costs. As to unclean hands, the Court reasoned that EZPZ failed to disclose patent applications related to the utility patent until well after the close of discovery and dispositive motion practice. EZPZ also blocked LNC’s efforts to discover Laurain’s prior art searches by falsely claiming that she had conducted no such searches and that all responsive documents had been produced. It further found that EZPZ witnesses, including Laurain and EZPZ’s former outside counsel, repeatedly gave evasive testimony during depositions and at trial. The Court affirmed the district court’s determination that EZPZ’s misconduct bore an immediate and necessary connection to EZPZ’s claims for infringement because the undisclosed material was directly relevant to the development of LNC’s litigation strategy and undermined LNC’s ability to press its invalidity and unenforceability challenges. The Court found no clear error in the district court’s reasoning that [...]

Continue Reading

Virtually Done: Computer Visualization Patents Are Ineligible for Protection

by Courtney Seams | Apr 18, 2024 | Patents

Addressing subject matter eligibility under 35 U.S.C. § 101, the US Court of Appeals for the Federal Circuit upheld the district court’s finding that patents related to computer visualizations of medical scans were patent ineligible. AI Visualize, Inc. v. Nuance Communications, Inc., Case No. 22-2019 (Fed. Cir. Apr. 4, 2024) (Moore, Reyna, Hughes, JJ.)

AI Visualize asserted four related patents, each having a substantially similar specification and the same title, against Nuance Communications. The patents are generally directed at systems and methods for users to virtually view a volume visualization dataset (a three-dimensional collection of data representing the scanned area of an MRI) on a computer without having to transmit or locally store the entirety of the dataset.

Nuance moved to dismiss the case, asserting that the claims were directed to patent-ineligible subject matter and invalid under § 101. The district court applied the two-step Alice inquiry to the claims, which the parties had grouped into three representative claims:

Claims where a web application directs the server to check what frames of a virtual view are stored locally and creates any additional frames necessary to create and display the virtual view of the medical image.
Claims with the further requirement that any previously requested virtual view be given a unique key, which the server checks for (and displays if the key exists) prior to completing the steps of the independent claim.
Claims without the requirement of checking to see if any images are stored locally.

In applying part one of Alice, the district court concluded that the asserted claims were directed to the abstract idea of “retrieving user-requested, remotely stored information” and not, as AI Visualize argued, to improvements in computer functionality. The district court then applied Alice step two and considered each of the three representative claims. The district court concluded that none of the claim limitations transformed the claims into patent-eligible applications of an abstract idea. Ultimately, the district court determined that all asserted claims were patent ineligible under § 101. AI Visualize appealed.

The Federal Circuit also applied the Alice analytical framework. Applying Alice step one, the Court considered whether the focus of the claimed advance was on an improvement in computer technologies, rather than the use of computers, and whether the claim limitations described a claimed advance over the prior art. The Court upheld the district court’s finding under Alice step one (i.e., that all three types of asserted claims were directed to an abstract idea) because the steps of obtaining, manipulating and displaying data, when claimed at a high level of generality, constitute an abstract concept. The Court did not agree with AI Visualize’s arguments that the creation of the virtual views is a technical solution to a technical problem because it requires the creation of “on the fly” virtual views at the client computer. In doing so, the Court refused to import details from the specification into the claims.

Applying Alice step two, the Federal Circuit upheld the district court’s finding that [...]

Continue Reading

Reasonable Royalty Available for Foreign Activities (But Not This Time)

by Amol Parikh | Apr 11, 2024 | Patents

The US Court of Appeals for the Federal Circuit affirmed a district court’s decision to preclude a patent owner from seeking damages based on method claims infringed outside of the United States but confirmed that reasonable royalties are available based on foreign activities. Harris Brumfield v. IBG LLC, Case No. 22-1630 (Fed. Cir. Mar. 27, 2024) (Prost, Taranto, Hughes, JJ.)

Trading Technologies International (TT), whose successor is Harris Brumfield, filed a lawsuit against IBG in 2010 alleging infringement of four patents directed to graphical user interfaces for commodity trading and methods for placing trade orders using those interfaces. During the underlying proceeding, the district court issued several orders. The district court granted IBG’s motion for summary judgment that the claims of two of the patents were invalid. The district court also excluded one of TT’s damages theories concerning foreign activities. Prior to trial, the district court found that two of the patents were invalid as patent ineligible and that the other two patents contained patent eligible subject matter. The district court also excluded one of TT’s damages theories concerning foreign activities.

The case proceeded to trial on the two remaining patents, and the jury found the asserted claims of those two patents infringed. IBG proposed $6.6 million in damages, which corresponds to the total demanded by IBG using IBG’s proposed royalty rate measured against domestic usage, rather than global users. By contrast, TT proposed damages of $962 million, which included all worldwide users of the accused product, regardless of whether they performed the claimed method. The jury agreed with IGB and awarded TT $6.6 million. the district court denied TT’s post-verdict motion for a new trial on damages, a motion in which TT alleged that IBG had misrepresented how it calculated the damages figures it presented to the jury. TT appealed.

Under the Supreme Court’s 2018 decision in WesternGeco v. Ion Geophysical, a patent owner can recover damages in the form of foreign lost profits when infringement is found under 35 U.S.C. § 271(f)(2) of the Patent Act. TT argued that under WesternGeco, it can seek damages in the form of a reasonable royalty based on IBG “making” the accused product in the US, even though the products were used overseas. The Federal Circuit engaged in a detailed description of WesternGeco, concluding that the Court must examine the particular acts alleged to constitute infringement under particular statutory provisions to determine if the allegations focus on domestic conduct. The Court explained that under § 271(a), the making, using, offering to sell and selling provisions are limited to domestic acts. The Court acknowledged that the WesternGeco framework applies to reasonably royalty awards (not just lost profits) and that a reasonable royalty would be the amount a hypothetical infringer would pay to engage in the domestic acts constituting the infringement.

Despite finding that reasonable royalties are permitted under WesternGeco, the Federal Circuit affirmed the district court’s exclusion of TT’s damages theory because TT’s infringement theory about making the accused product [...]

Continue Reading

Faulty Jury Instruction Tampered With Tamper-Proof Trial

by Keval Amin | Apr 4, 2024 | Patents

The US Court of Appeals for the Federal Circuit affirmed in part, vacated in part and remanded a district court decision after concluding that a jury instruction on the objective indicia of nonobviousness that failed to specify all indicia on which evidence had been received constituted prejudicial legal error. Inline Plastics Corp. v. Lacerta Group, LLC, Case Nos. 22-1954; -2295 (Fed. Cir. Mar. 27, 2024) (Taranto, Chen, Hughes, JJ.)

Inline Plastics owns a patent family pertaining to containers with specific tamper-proof features and methods of producing these containers using thermoformed plastic. The invention is intended to deter unauthorized tampering with products in the containers. These tamper-proof features serve to prevent theft and product loss and maintain consumer confidence in product integrity.

Inline sued Lacerta Group for patent infringement over its tamper-proof technology. The district court made several significant pretrial rulings, including a claim construction order, and granted Inline’s motion for partial summary judgment of infringement on some of the asserted claims. During trial, Inline voluntarily withdrew certain claims, and the jury returned a verdict declaring all remaining claims (even those on which summary judgment had been granted) invalid and not infringed. After trial, Inline sought partial final judgment, which was granted, but also motioned for judgment as a matter of law and a new trial on invalidity. The district court denied Inline’s motions. Both Inline and Lacerta appealed.

Inline argued that it was entitled to judgment as a matter of law of no invalidity and that an error in the jury instructions requires a new trial on invalidity. Lacerta cross-appealed, challenging the denial of attorneys’ fees and the “without prejudice” dismissal of certain patent claims that Inline voluntarily dropped from its asserted-claims list near the end of trial.

The Federal Circuit rejected Inline’s argument for judgment as a matter of law of no invalidity but agreed with Inline that the jury instruction on the objective indicia of nonobviousness constituted prejudicial legal error. The Court determined that the jury could have reasonably found obviousness and rejected Inline’s three arguments against it. First, Inline argued deficiencies in Lacerta’s prior art references and expert testimony, but the Court found these arguments unpersuasive. Second, Inline challenged Lacerta’s evidence of motivation to combine references, but the Court found enough support to prove a motivation to combine. Third, Inline argued that Lacerta’s challenge failed because there was no rebuttal or opinion on objective-indicia evidence. The Court dismissed this argument, explaining that the absence of such testimony did not necessarily discredit the patentee’s evidence on nonobviousness. According to the Court, Inline failed to explain why the jury could not reasonably assign little weight to its objective-indicia evidence, which led the Court to reject Inline’s categorical argument based on the absence of expert testimony from Lacerta’s side.

However, the Federal Circuit agreed with Inline’s argument for a new trial on invalidity. The Court explained that jury instructions must be legally correct and sufficiently comprehensive to address disputed evidence. The Federal Circuit concluded that the district court’s objective-indicia instruction [...]

Continue Reading

Who Solved the Problem? Joint Inventors, That’s Who

by James M. Oehler | Apr 4, 2024 | Patents

The US Court of Appeals for the Federal Circuit affirmed a district court’s decision to correct inventorship in a post-issuance inventorship dispute, finding that the alleged joint inventors’ contributions were significant even though they were mostly unclaimed. Tube-Mac Indus., Inc. v. Campbell, Case No. 22-2170 (Fed. Cir. Mar. 15, 2024) (Lourie, Hughes, Stark, JJ.) (nonprecedential).

Steve Campbell was the original sole inventor named on a utility patent application directed to a container for transporting gaseous fluids. Before Campbell filed the patent application, Campbell’s prototypes had a “major problem” with the container’s liner. Campbell enlisted the help of Tube-Mac Industries’ Gary Mackay and Dan Hewson to solve the problem. Campbell, Mackay and Hewson exchanged plans regarding the problem over the course of several months. Campbell’s patent issued, naming himself as the sole inventor. Mackay, Hewson and Tube-Mac filed suit seeking to be named as co-inventors. The district court agreed and ordered correction of the patent under 35 U.S.C. § 256. Campbell appealed.

A court may order a correction of inventorship when it determines that an inventor has been erroneously omitted from a patent. In any inventorship challenge, the inventors listed in an issued patent are presumed to be the correct inventor(s). Thus, a party challenging inventorship must prove incorrect inventorship by clear and convincing evidence. A joint inventor must contribute significantly to the invention’s conception or reduction to practice when that contribution is measured against the scope of the full invention.

The Federal Circuit found that prior to the involvement of Mackay and Hewson, Campbell did not have a viable invention that could be reduced to practice without extensive experimentation. The Court also found that Mackay’s and Hewson’s contributions solved the problem that precluded the prototype from being successful, even though their contributions were “mostly unclaimed.” The Court noted, however, that their contributions were included in the application’s figures, specifications and dependent claims. Accordingly, the Court found that Mackay and Hewson contributed significantly to the conception of the invention and should be included as co-inventors.

The Federal Circuit also dismissed Campbell’s arguments that the district court did not properly construe the claims to determine their scope and erred by misidentifying the subject matter of the claims.

What Use Does § 271(e)(1) Safe Harbor “Solely” Protect?

by Christopher M. Bruno | Apr 4, 2024 | Patents

The US Court of Appeals for the Federal Circuit affirmed that the 35 U.S.C. § 271(e)(1) safe harbor protecting certain infringing acts undertaken for regulatory approval applied to an alleged infringer’s importation of transcatheter heart systems while attending a trade conference, finding the importation reasonably related to submitting information to the US Food & Drug Administration (FDA) for medical device approval. Edwards Lifesciences Corp. v. Meril Life Sciences Pvt. Ltd., Case No. 22-1877 (Fed. Cir. Mar. 25, 2024) (Stoll, Cunningham, JJ.) (Lourie, J., dissenting).

The fact pattern in this case is unusual. Meril, a manufacturer of a transcatheter heart system approved for sale in Europe but not in the United States, brought two demonstration samples to San Francisco with lawyer-generated instructions that the samples could not be used, sold or offered for sale in the US. Meril presented at a trade booth during a cardiovascular medical device conference. It was undisputed that the samples never left a bag that was first kept at a hotel and later brought to the conference and placed in a storage room.

Edwards Lifesciences nevertheless sued for infringement based on importation. The district court found that Meril’s importation was reasonably related to its attempts to secure regulatory approval because they were for the purposes of recruiting investigators for a clinical trial Meril had made initial efforts to commence (as required to market this type of device in the US). Accordingly, the district court granted summary judgment of noninfringement on grounds that the safe harbor under § 271(e)(1) applied. Edwards appealed.

Edwards argued that the district court erred by not finding a genuine material dispute of fact relating to Meril’s subjective intent (i.e., whether, notwithstanding some evidence, Meril actually intended the importation to relate to FDA approval). Edwards also challenged whether the importation was solely related to FDA approval and argued that the non-use of the devices to recruit investigators rendered the safe harbor inapplicable.

The Federal Circuit rejected all three challenges. Canvassing the Federal Circuit’s decades of prior case law, the Court concluded that a putative infringer’s intent is irrelevant when determining whether the safe harbor applies. Thus, even if Edwards were correct in challenging Meril’s intent, there would still be no material factual dispute. On the issue of whether the importation activity was solely related to FDA approval, the Court, discussing the use of “solely” in terms of the safe harbor provision, reiterated prior cases’ determination that the uses need not be solely related to FDA approval, but rather, that the only uses that would be protected were those within the safe harbor. Finally, the Court again deemed the non-use of the devices irrelevant, as nothing in the statute required actual use.

Judge Lourie dissented, not because he necessarily viewed the district court’s or the majority’s application as squarely incorrect under existing precedent, but because he believed that existing precedent did not expressly give proper weight to the statute’s use of the word “solely.” Applying a plain text analysis, Judge Lourie argued that the safe harbor [...]

Continue Reading

Mandamus Denied but Jurisdictional Door Left Open a Crack

by Thomas DaMario | Apr 4, 2024 | Patents

The US Court of Appeals for the Federal Circuit denied a patent owner’s writ of mandamus seeking to prevent a defendant from amending its answer to add an affirmative licensing defense, but also noted that the defense was added only after the district court found that there were no remaining claims. In re VLSI Technology LLC, Case No. 24-116 (Fed. Cir. Mar. 18, 2024) (Moore, Taranto, Chen, JJ.)

VLSI asserted four patents against Intel in the Northern District of California. In December 2023, the district court granted summary judgment that two of the patents were not infringed and denied summary judgment of noninfringement on the remaining two patents. The parties additionally submitted cross motions for summary judgment on a licensing defense that turned on a forum selection clause, but the court denied both motions. To deprive the court of jurisdiction, VLSI granted Intel a covenant not to sue for infringement of the remaining two patents in the case. Two days later, Intel moved to amend its answer to add a counterclaim for a declaratory judgment that Intel was licensed to VLSI’s entire patent portfolio. The district court granted Intel’s motion, and VLSI filed a mandamus petition to block Intel’s amendment.

The Federal Circuit denied VLSI’s petition for two primary reasons. First, the Court determined that VLSI had not shown that it had no other available means of obtaining relief. The district court expressly invited the parties to brief issues pertaining to Intel’s licensing defense in subsequent briefing, and VLSI had since filed a motion to dismiss pertaining to this very issue. The Court also noted that VLSI could raise this issue on appeal after a final judgment. Second, the Court determined that VLSI failed to show that the district court abused its discretion in allowing Intel to amend its answer, finding that Intel acted diligently in seeking to amend its answer and that VLSI had long since known about the potential defense.

With respect to the substantive issue of whether the district court had subject matter jurisdiction, the Federal Circuit declined to offer an opinion at this stage. Nevertheless, in an apparent message to the court below, the final sentence of the Court’s opinion reads, “[w]e only note that Intel’s motion to amend its answer was filed after the court determined there were no remaining claims, such that no case or controversy remained before the court.”

Older Posts »

« Newer Posts

BLOG EDITORS

Paul Devinsky

Amol Parikh

BLOG EDITORS

STAY CONNECTED

TOPICS

ARCHIVES

RECENT POSTS