Fed. Cir. 2014 - Schwabe, Williamson & Wyatt

www.schwabe.com
Recent Developments in Patent Law
Peter E. Heuser and Laura A. Zager, Ph.D.
Schwabe, Williamson & Wyatt
February 13, 2015
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AMERICAN INVENTS ACT (AIA) DEVELOPMENTS
Post Grant Review (PGR)
Inter Partes Review (IPR)
• Permitted only within first nine
months of issuance
• Permitted more than nine months
after issuance
• Permitted for patents filed after
March 16, 2013
• Allowed for any patent
• Can be based on § § 102 and
103; printed publications only
• Can be based on any invalidity
ground
• 1700 IPRs filed through August
31, 2014
• Just starting to be filed
• IPR challenges have been
overwhelmingly successful
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Concerns regarding PGR and IPR
Advantages of PGR and IPR
• Needs to be timely
• Expedited resolution (within one
year of initiation)
• PGR within 9 months
• Lower standard of proof (“more
likely than not”)
• Prior to DJ action being filed
• Within one year of being sued
• Claim construction amenable to
validity challenges (“broadest
reasonable construction”)
• Need to move for stay before
litigation is too far along
• Higher likelihood of success than
if decided by court or jury
• PTO fees are substantial
• Action can be terminated with
settlement
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• $12,000 + $18,000 for PGR
• $9,000 + $14,000 for IPR
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Covered Business Method (CBM)
Review
• Only allowed for business method
patents
• Similar to PGR for those charged
with infringement of business
method patents
• Applies to all patents that fall
within definition (“method or
apparatus for performing data
processing or other operations
used in the practice,
administration, or management of
a financial product or service…”)
Preissuance Submissions
• Printed publications may be
submitted by those not under a
duty of disclosure
• Must be submitted in a timely
fashion (prior to notice of
allowance and normally within 6
months of publication)
• Needs to include explanation of
relevance
• 1896 preissuance submissions
filed through August 31, 2014
• Only 211 CBM Reviews filed
through August 31, 2014
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Supplemental Examination
Track I Prioritized Examination
• Increasingly used (855→5024 →
6872 → 9054 filed for FYs 20112014)
• Designed to eliminate duty of
disclosure issues
• Filed by patent owner
• $4000/$2000 filing fee for
large/small entities ($5600/$2800
including search fees)
• Only 81 supplemental
examinations have been filed
• Final disposition within 12 months
of prioritized status being granted
• Significantly higher odds of getting
allowance (but not clear why)
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PATENT LEGISLATION BEING CONSIDERED IN 2015
• Patent Reform
– Legislation to Curb NPEs
• Expanded fee shifting to the prevailing party, but is it
necessary in view of Octane and states’ efforts to curb
abuses?
– Raising Pleading Standards
• The issue of whether Twombly and Iqbal pleading
standards should apply in patent litigation continues to
be a troubling one, especially as to indirect
infringement.
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• Patent Eligibility
• Some have suggested the way to clarify patent-eligible
subject matter is through legislation, but the present
thinking is that the courts and the PTO are doing what
they can to clarify this important issue.
• Drug Patent Terms
• Drug manufacturers spend many years trying to get
FDA approval and have been lobbying for an increased
patent term when FDA approval has been delayed.
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• Federal Trade Secrets Act
•
•
•
•
Adding federal question for trade secrets
Five year statute of limitations
Possibility of ex parte seizures
Otherwise based largely on Uniform Trade Secrets Act
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PATENT CASES TO BE DECIDED IN 2015
Supreme Court
•
Commil USA LLC v. Cisco Systems Inc.
– Is defendant’s good faith belief in invalidity a defense to induced
patent infringement?
•
Kimble v. Marvel Enterprises Inc.
– The Court will review its 50 year old Brulotte decision barring the
recovery of royalties beyond the expiration of a licensed patent.
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Federal Circuit
• SCA Hygiene Prods. Aktiebolag v. First Quality Baby
Products, LLC, en banc Federal Circuit
– The “Raging Bull” case (Petrella v. Metro-Goldwyn-Mayer, 134
S.Ct. 1962 (2014)) held that laches does not apply to copyright
infringement occurring within the window of the statute of
limitations. The en banc Circuit will decide (1) whether the same
should apply to patent cases and (2) whether laches should in
some cases constitute an entire bar to enforcement.
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•
In re Cuozzo Speed Technologies LLC
– Likely to be the first case decided under the AIA, and is expected
to resolve two significant issues:
– (1) For claims being examined as part of an IPR, should claim
construction be based on the broadest reasonable interpretation
or on a proper construction?
– (2) Does the PTO have the authority to institute an IPR for claims
not identified in the petition for IPR?
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• Carnegie Mellon University v. Marvell Semiconductor, Inc.
– The Circuit will review a $1.5 billion award to Carnegie for willful
infringement of a patent to methods for improving the accuracy of
data read from hard-disk drives.
• Ariosa Diagnostics, Inc. v. Sequenom, Inc.
– The “next case up” involving patentable subject matter will decide
the patentability of a non-invasive method of detecting birth
defects by testing cell-free fetal DNA in a mother’s blood.
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Supreme Court patent cases
decided in 2014, and subsequent Federal
Circuit decisions attempting to interpret those
decisions
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• Teva Pharmaceuticals USA, Inc, v. Sandoz, 134 S.Ct. 1761
(2014)
– The Supreme Court decided what had been a troubling issue for
a long time - what should the standard be for the Federal Circuit’s
review of claim construction rulings by the district courts? The
Court decided on a hybrid approach, using a "clear error"
standard of review for factual matters, but noting that the ultimate
question of construction remains a legal question to which de
novo review applies.
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• Alice Corporation Pty. Ltd. v. CLS Bank International et al.,
134 S.Ct. 2347 (2014)
– The Supreme Court unanimously ruled that the claimed invention
is no more than an abstract concept for managing risk in
computerized trading, and using an unspecified, generic
computer is not enough to transform the abstract idea into a
patent-eligible invention.
– It first must be asked if the claims at issue are directed to a
patent-ineligible concept, and if so, whether the claims’ elements
transform the nature of the claim into a patent-eligible application.
Simply stating an abstract idea and adding that it is applied with a
computer is deficient under § 101; that is, wholly generic
computer implementation is not the sort of additional feature that
provides any practical assurance that the process is more than a
drafting effort designed to monopolize the abstract idea itself.
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December 16, 2014 USPTO Guidelines
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• Digitech Image Technologies, LLC v. Electronics for
Imaging, Inc., et al., 758 F.3d 1344 (Fed. Cir. 2014)
– In this first patentable subject matter case decided by the Circuit
since Alice, the panel affirmed a decision by the district court and
ruled that claims defining a “device profile” and a method for
creating a device profile within a digital image processing system
are not patent eligible under § 101.
• Planet Bingo LLC v. VKGS LLC., 576 Fed. Appx. 1005 (Fed.
Cir. 2014)
– In a non-precedential decision, the Circuit refers to this as a
straight-forward application of Alice, affirming the district court’s
finding that patents claiming computer-aided management of
bingo games do not recite patentable subject matter.
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• buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir.
2014)
– Claims directed to a system for ensuring security for online sales
are no different than Alice’s computerized method of managing
risk in financial trading, so the patent is invalid under § 101.
• DDR Holdings, LLC v. Hotels.com, et al., 2014 U.S. App.
LEXIS 22902 (Fed. Cir. Dec. 5, 2014)
– The most in-depth discussion of Alice, upholding patentability and
providing some guidance as to the drafting of patent-eligible
claims.
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• Content Extraction and Transmission LLC v. Wells Fargo
Bank, Nat’l. Assoc. et al., 2014 U.S. App. LEXIS 24258 (Fed.
Cir. Dec. 23, 2014); Diebold, Inc. v. Content Extraction and
Transmission LLC, et al., 2014 U.S. App. LEXIS 24258 (Fed.
Cir. Dec. 23, 2014)
– The Circuit affirms dismissal under Rule 12(b)(6) of patentee’s
infringement suit due to the asserted patents being patent
ineligible under § 101.
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• Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120
(2014)
– The Supreme Court reverses the Federal Circuit’s holding that a claim meets
the dictates of § 112 as long as it is “amenable to construction” or not
“insolubly ambiguous,” rejecting the Circuit’s standard, which “tolerates
some ambiguous claims but not others.” While § 112’s definiteness
requirement must take into account the inherent limitations of language, a
patent must be precise enough to afford clear notice of what is claimed,
thereby apprising the public of what is still open to them.
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• Triton Tech of Texas, LLC v. Nintendo of America, Inc., 753
F.3d 1375 (Fed. Cir. 2014)
– In an infringement case directed against Nintendo’s Wii product,
the asserted claims are determined to be indefinite because
structure for the claimed “integrator means” is not adequately
disclosed in the specification.
• Interval Licensing, LLC v. AOL, Inc. et al., 766 F.3d 1364
(Fed. Cir. 2014)
– In its first application of Nautilus, the phrase “unobtrusive manner
that does not distract a user,” in reference to the manner in which
an attention manager displays images, fails to inform those
skilled in the art about the scope of the invention with
reasonable certainty; invalid under § 112, ¶ 2.
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• Limelight Networks, Inc. v. Akamai Technologies, Inc., 134
S.Ct. 2111 (2014)
– The Supreme Court reverses the Circuit’s en banc ruling that a
defendant who performed some steps of a method patent and
encouraged others to perform the rest could be liable for
inducement of infringement, even if no one was liable for direct
infringement.
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• Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134
S.Ct. 1749 (2014)
– The Court holds that district courts should determine whether a
case is “exceptional” in a case-by-case exercise
of their discretion, considering the totality of the circumstances.
The Court thereby eliminates the requirement of Brooks Furniture
that defined an exceptional case as one that either involves
“material inappropriate conduct” or is both “objectively baseless”
and “brought in subjective bad faith.”
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• Kilopass Technology, Inc. v. Sidense Corp., 2014 U.S. Dist.
LEXIS 112321, 112 U.S.P.Q.2D (BNA) 1376, 2014 WL
3956703 (N.D. Cal. Aug. 12, 2014)
− On remand, the Northern District of California reversed its prior
ruling denying attorney fees, in which the strict Brooks Furniture
test was applied, and granted attorney fees, ruling that (1)
Kilopass failed to conduct an adequate pre-filing investigation, (2)
its theories of infringement were objectively baseless, and (3)
Kilopass litigated the case in an unreasonable manner by shifting
its theories of infringement and engaging in litigation
“gamesmanship.”
• Highmark, Inc. v. AllCare Health Management System, Inc.,
134 S.Ct. 1744 (2014)
− The Supreme Court ruled that the district court’s decision on
whether a case is exceptional should be reviewed on appeal for
abuse of discretion and not de novo.
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• Medtronic, Inc. v. Mirowski Family Ventures, LLC, 134
S.Ct. 843 (2014)
− Even though the patentee was barred from filing an infringement
suit due to a license agreement, the Court ruled that the public
interest in maintaining a well-functioning patent system should
not favor changing the “ordinary burden of proof” rule in patent
cases. There was no convincing reason why burden of proof
case law should favor the patentee and force a declaratory
judgment plaintiff to prove non-infringement.
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Significant Federal Circuit Patent Cases
Decided in 2014
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Obviousness
Bristol-Myers Squibb Company v. Teva Pharmaceuticals USA, Inc., 769 F.3d 1339
(Fed. Cir. 2014)
A party seeking to invalidate a patent as obvious must demonstrate that a skilled artisan would have
been motivated to combine the teachings of the prior art references to achieve the claimed invention,
and that the skilled artisan would have had a reasonable expectation of success from doing so.
Leo Pharmaceutical Products, Ltd. v. Teresa Stanek Rea, 726 F.3d 1346
(Fed. Cir. 2013)
Hoffman-La Roche Inc. and Genentech, Inc. v. Apotex Inc., 748 F.3d 1326
(Fed. Cir. 2014)
Sanofi-Aventis Deutschland GmbH et al. v. Glenmark Pharmaceuticals Inc., USA et
al., 748 F.3d 1354 (Fed. Cir. 2014)
In order to invalidate claims as being invalid as “obvious to try”, there must be a limited number of
specific alternatives offering a likelihood of success in light of the prior art and common sense.
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Obviousness
Par Pharmaceutical, Inc. and Alkermes Pharma Ireland Ltd. v. TWI Pharmaceuticals,
Inc., 2014 U.S. App. LEXIS 22737, 112 U.S.P.Q.2D (BNA) 1945 (Fed. Cir. Dec. 3,
2014)
A bench trial determination of invalidity is reversed, with the Circuit ruling that the district court failed to
apply a sufficiently high standard in order to rely on inherency. The limitation at issue necessarily must
be present, or must be the natural result of the combination of elements explicitly disclosed by the prior
art in order for a claimed invention to be rendered obvious.
Tyco Healthcare Group LP and United States Surgical Corp. v. Ethicon EndoSurgery, Inc., 2014 U.S. App. LEXIS 22777, 112 U.S.P.Q.2D (BNA) 1979 (Fed. Cir.
Dec. 4, 2014)
The district court improperly excluded § 102(g) prior art in its obviousness determinations, even though
that art was considered in its anticipation analysis.
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Prior Art
Suffolk Technologies, LLC v. AOL Inc. and Google Inc., 752 F.3d 1358
(Fed. Cir. 2014)
Summary judgment of anticipation is affirmed based on a 1995 newsgroup post by a college student,
despite the patentee’s argument that the post would not have been accessible to those with ordinary
skill in the art.
In Re Rambus, 753 F.3d 1253 (Fed. Cir. 2014)
Tobinick v. Olmarker and Rydevik, 753 F.3d 1220 (Fed. Cir. 2014)
Rambus reverses a determination of anticipation by the PTAB in an inter partes reexamination, and
Tobinick reverses an interference determination based on inadequate disclosure in the specification to
support copied claims. The cases show that the Circuit is not reluctant to reverse determinations by the
PTAB.
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Public Use
Delano Farms Company, et al. v. The California Table Grape Commission, et al.,
2015 U.S. App. LEXIS 346 (Fed. Cir. Jan. 9, 2015)
The Circuit affirms a judgment that two plant patents are not invalid based on the plants being in “public
use” more than one year prior to the filing date. Two individuals obtained samples of patented plant
varieties in an unauthorized manner and planted them in their fields. The district court found, and the
panel agreed, that there were sufficient confidentiality assurances that the uses could not be
considered “public” under §102(b).
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On Sale
Halo Electronics, Inc. v. Pulse Electronics, Inc., 769 F.3d 1371 (Fed. Cir. 2014)
Actions taking place entirely outside of the U.S. do not subject the defendant to liability for infringement.
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Inequitable Conduct
Apotex, Inc. v. UCB, Inc., 763 F.3d 1354 (Fed. Cir. 2014)
American Calcar, Inc. v. American Honda Motor Co., Inc., 768 F.3d 1185
(Fed. Cir. 2014)
The Circuit affirms judgments of unenforceability that properly followed the requirements of Therasense
(“clear and convincing evidence that the patent applicant (1) misrepresented or omitted information
material to patentability, and (2) did so with specific intent to mislead or deceive the PTO.” Intent and
materiality must be separately established”).
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Claim Construction
Golden Bridge Technology, Inc. v. Apple, Inc., 758 F.3d 1362 (Fed. Cir. 2014);
X2Y Attenuators, Inc. v. ITC and Intel Corp., 757 F.3d 1358 (Fed. Cir. 2014);
Hill-Rom Services, Inc. et al. v. Stryker Corporation, 755 F.3d 1367 (Fed. Cir. 2014);
GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304 (Fed. Cir. 2014)
There must be a clear and unambiguous disavowal of a broad definition in the specification (or the
prosecution history) for the patentee to be bound.
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Claim Construction
In re Gianelli, 739 F.3d 1375 (Fed. Cir. 2014)
The claim at issue recites: “A row exercise machine comprising an input assembly including a first
handle portion adapted to be moved from a first position to a second position by a pulling force….”
The Circuit reversed a determination of obviousness by the PTAB, holding that “adapted to” is not
synonymous with “capable of” when considering the operation of prior art exercise machines.
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Means-Plus-Function Claiming
Use or non-use of “means” creates a rebuttable presumption to apply a construction under § 112, ¶ 6,
depending on the presence of structure descriptions in the claims and the specification.
Williamson v. Citrix Online, LLC, Microsoft Corp., et al., 770 F.3d 1371
(Fed. Cir. 2014)
To rebut the strong presumption that § 112, ¶ 6 does not apply, it must be demonstrated that skilled
artisans, after reading the patent, would conclude that the claim limitation is so devoid of structure that
the drafter constructively engaged in means plus function claiming. A claimed expression cannot be
said to be devoid of structure if it is used in common parlance or by those skilled in the art to designate
structure even if the terms covers a broad class of structures and even if the term identifies the
structures by their functions. Here the district court failed to consider the phrase “distributed learning
control module” as a whole. One of ordinary skill would understand the expression to connote structure.
Robert Bosch, LLC v. Snap-On Inc., 769 F.3d 1094 (Fed. Cir. 2014)
The presumption against § 112, ¶ 6 construction is overcome as to the terms “program recognition
device” and “program loading device” because the claim terms, construed in light of the specification,
fail to provide sufficiently definite structure to one of skill in the art.
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Means-Plus-Function Claiming
EnOcean GmbH v. Face Int’l. Corp., 742 F.3d 955 (Fed. Cir. 2014)
The Board held that the word "receiver" was defined in the claims solely in terms of functional
language, thus creating no difference between a "receiver" and "signal receiving means." The Circuit
reverses, holding that the presumption had not been overcome, noting that the term "receiver" (i.e.,
without the term "means") sufficiently defines the structure to those in the art and therefore should not
invoke § 112, ¶ 6.
The panel refers to similar terms that do not overcome the presumption against applying § 112, ¶ 6:
"height adjustment mechanism," "computing unit . . . for . . . evaluating," the term "circuit" in the phrase
"circuit for monitoring a signal from the output terminal to generate a first feedback signal," "digital
detector," and "detent mechanism."
Elcommerce.com, Inc. v. SAP AG and SAP America, Inc., 745 F.3d 490
(Fed. Cir. 2014)
Expert witness testimony is usually necessary to decide whether there is adequate structure in the
patent specification to support means-plus-function claims.
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INDIRECT INFRINGEMENT
Promega Corp. v. Life Tech. Corp., 2014 U.S. App. LEXIS 23482
(Fed. Cir. Dec. 15, 2014)
A majority of the panel ruled that under 35 U.S.C. section 271(f)(1):
“induce” means a specific intent to cause; that is, it does not require a second entity or
person to be induced; and
“a substantial portion of the components” includes “a single important or essential
component
Chief Judge Prost, in dissent, reads section 271(f)(1) and its requirement of active inducement to
necessarily mean inducement of another. She cites to Global-Tech Appliances, Inc. v. SEB SA, 131 S.
Ct. 2060 (2011) as holding that the phrase “induces infringement” in § 271(b) requires that the inducer
“lead another” or “persuade another.”
This may be a case that the Supreme Court will accept for cert.
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Willful Infringement
SSL Services, LLC v. Citrix Systems, Inc. and Citrix Online, LLC, 769 F.3d 1073
(Fed. Cir. 2014)
The Circuit agreed with the district court’s determination as to the objective prong of intent, and found
substantial evidence to support the verdict as to the subjective prong, thereby affirming the denial of JMOL as
to willful infringement by Citrix’s “GoTo” products .
Aqua Shield v. Inter Pool Cover Team, et. al., 2014 U.S. App. LEXIS 24132
(Fed. Cir. Dec. 22, 2014)
The panel vacated a ruling of no willful infringement since that determination was improperly based on the
denial of a motion for preliminary injunction and the court failed to consider all of the factors relevant to
recklessness under Seagate.
Halo Electronics, Inc. v. Pulse Electronics, Inc., 769 F.3d 1371 (Fed. Cir. 2014)
Infringement of patents is not willful here because the defendant had an engineer perform a “cursory
examination” of the patents and conclude that the patents were invalid.
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Injunctive Relief
Trebro Manufacturing, Inc. v. FireFly Equipment, LLC, 748 F.3d 1159 (Fed. Cir. 2014)
The Circuit reverses a denial of a motion for preliminary injunction, even though the patentee did not
practice the patented invention.
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Damages
VirnetX v. Cisco Systems, 767 F.3d 1308 (Fed. Cir. 2014)
Apple successfully appealed a $368 million judgment that its Face Time feature infringes. The panel
vacated and remanded, based on faulty claim construction, the improper denial of a motion for JMOL based
on non-infringement under the doctrine of equivalents, and the admission of improper expert witness
testimony as to damages. The panel’s comments on the expert testimony could make it significantly more
difficult for patentees to argue for big damage awards.
Ericsson, Inc. v. D-Link Systems, Inc., et al., 2014 U.S. App. LEXIS 22778 (Fed. Cir.
Dec. 4, 2014)
The Circuit reversed denial of JMOL following a $10 million verdict, and remanded based on improper
jury instructions relating to application of the “entire market value rule” to standard essential patents.
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Damages
Aqua Shield v. Inter Pool Cover Team, et. al., 2014 U.S. App. LEXIS 24132 (Fed. Cir.
Dec. 22, 2014)
The panel vacated a decision granting patentee damages of only $10,800 since the award was
inappropriately limited to the defendants’ profits.
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Patent Reissue
In re Dinsmore and Caruso, 757 F.3d 1343 (Fed. Cir. 2014)
Applicants’ filing of a terminal disclaimer is not an error that can be remedied by a reissue application,
even though applicants mistakenly thought their application and a cited patent were commonly owned
at the time of the disclaimer.
Fleming v. Escort Inc. and Beltronics USA, Inc., 2014 U.S. App. LEXIS 24419
(Fed. Cir. Dec. 24, 2014)
The panel affirmed a ruling that reissuance was appropriate, rejecting the argument that the reason for
seeking reissue did not meet the “error” precondition for reissuance, as this was a classic case of the
patentee claiming less than it had the right to claim.
Antares Pharma, Inc. v. Medac Pharma Inc. and Medac GmbH, 771 F.3d 1354
(Fed. Cir. 2014)
The panel affirmed the denial of Antares’ motion for preliminary injunction based on the finding that the
patent in suit, a reissue patent, is invalid due to the failure of Antares to comply with the "original patent"
requirement of § 251.
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Civil Procedure
STC.UNM v. Intel Corp. 754 F.3d 940 (Fed. Cir. 2014)
Rejecting the argument that the involuntary joinder provisions of Rule 19(a) should be applied, a
divided panel of the Circuit affirmed the dismissal for lack of standing because a co-owner of the patent
elected not to join the suit.
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Standing
Azure Networks, LLC and Tri-County Excelsior Foundation v. CSR PLC, et al.,
771 F.3d 1336 (Fed. Cir. 2014)
The panel affirmed the district court ruling dismissing Tri-County, an exclusive licensor, for lack of
standing.
Consumer Watchdog v. Wisconsin Alumni Research Foundation, 753 F.3d 1258
(Fed. Cir. 2014)
A consumer advocacy group does not have standing to appeal the loss of a patent reexamination,
even though it was able to file a reexamination request under the patent statute.
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Pleading
Videx, Inc. v. Triteq Lock and Security, LLC, 2014 U.S. Dist. LEXIS 63653
(D. Or. May 8, 2014)
In a ruling dealing with patent pleading requirements under Iqbal and Twombly, the Oregon District
granted defendants’ motion to dismiss where the plaintiff failed to set forth sufficient details regarding
infringement following inter partes reexamination of the patent in suit.
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Transfer of Cases
In re Apple Inc., 743 F.3d 1377 (Fed. Cir. 2014)
In re Toyota Motor Corporation and Gulf States Toyota, Inc., 747 F.3d 1338
(Fed. Cir. 2014)
In re Nintendo of America, Inc., 756 F.3d 1363 (Fed. Cir. 2014)
When moving to transfer or resisting such a motion, care must be taken to submit specific evidence of
witnesses and evidence that would be easier or more difficult to present if the case is transferred.
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Subject Matter Jurisdiction in DJ Actions
Sandoz Inc. v. Amgen Inc. and Hoffmann-La Roche Inc., 2014 U.S. App. LEXIS
22903, 112 U.S.P.Q.2D (BNA) 2004 (Fed. Cir. Dec. 5, 2014)
The Circuit affirmed dismissal of a declaratory judgment action because the complaint did not allege
an injury of sufficient immediacy to create jurisdiction; the complaint was filed even before plaintiff
Sandoz filed an application for approval with the FDA, and had just begun to test the drug accused of
infringement.
Microsoft Corporation and SAP America, Inc. v. Datatern, Inc., 755 F.3d 899
(Fed. Cir. 2014)
A divided panel ruled there is a lack of sufficient controversy to support subject matter jurisdiction where
a declaratory judgment action is based on an infringement action against a customer.
Danisco US Inc. v. Novozymes A/S , 744 F.3d 1325 (Fed. Cir. 2014)
The Circuit reversed the dismissal of a declaratory judgment action filed the day a patent issued based
upon pre-patent-issuance conduct by the patentee.
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Stay Pending PTO Proceedings
Versata Software, Inc., et al. v. Callidus Software, Inc., 771 F.3d 1368
(Fed. Cir. 2014)
VirtualAgility, Inc. v. Salesforce.com, 759 F.3d 1307 (Fed. Cir. 2014)
The Circuit reversed refusals to grant stays pending Covered Business Method (CBM) reviews, even
when some of the asserted patents are not part of the CBM review.
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Claim and Issue Preclusion, and Collateral
Estoppel
Brain Life, LLC v Elekta Inc., 746 F.3d 1045 (Fed. Cir. 2014)
The Circuit affirmed the dismissal of a subsequent case brought against the same defendant for the
same imaging system found not to infringe in a prior action, relying on Kessler Doctrine.
e.Digital Corporation v. Futurewei Technologies, Inc., et al., 772 F.3d 723
(Fed. Cir. 2014)
The Circuit affirmed a judgment of non-infringement based on a determination that e.Digital
was collaterally estopped from seeking construction of a limitation presented in a claim added during
reexamination of a first patent, but held that the doctrine was improperly applied to a second, unrelated
patent.
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Sanctions
Source Vagabond Systems Ltd. and Pearl Cohen Zedek Latzer LLP v. Hydrapak,
Inc., 753 F.3d 1291 (Fed. Cir. 2014)
The district court did not abuse its discretion in sanctioning a law firm $200,000 under Rule 11
where arguments submitted in support of claim construction violated all of the applicable canons of
construction.
AntiCancer, Inc. v. Pfizer, Inc., et al., 769 F.3d 1323 (Fed. Cir. 2014)
The district court ordered that AntiCancer would be permitted to supplement Preliminary
Infringement Contentions on the condition that it concurrently pay the attorney fees incurred by
defendants in connection with their motion for summary judgment. The Circuit ruled that the fee-shifting
condition was improperly imposed, so the judgment was vacated.
Intellect Wireless Inc. v. HTC Corp. et al., N.D. Ill. Case 1:09-cv-02945
(January 9, 2015)
The Niro Haller law firm is ordered to pay attorney fees of between $2.4 and $4.8 million based on the
district court holding that the attorneys were aware of the inventor’s false statements when they filed
the lawsuit.
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Antitrust
Content Extraction and Transmission LLC v. Wells Fargo Bank, Nat’l. Assoc. et al.,
2014 U.S. App. LEXIS 24258 (Fed. Cir. Dec. 23, 2014); Diebold, Inc. v. Content
Extraction and Transmission LLC, et al., 2014 U.S. App. LEXIS 24258 (Fed. Cir.
Dec. 23, 2014);
The Circuit affirmed dismissal of patentee’s infringement suit due to the asserted patents being patent
ineligible under § 101, and the dismissal of counterclaims for tortious interference and RICO violations.
Tyco Healthcare Group LP v. Mutual Pharmaceutical Company, Inc., 762 F.3d 1338
(Fed. Cir. 2014)
In a split decision, the Circuit vacated summary judgment that Tyco’s infringement claims are not a
sham, remanding the case for a determination of whether the sham exception to Noerr-Pennington
immunity is applicable.
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