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Ignore Broader Claim Constructions at Your Own Risk

Ignore Broader Claim Constructions at Your Own Risk

In Owens Corning v. Fast Felt Corp., No. 2016-2613, 2017 U.S. App. LEXIS 19827 (Fed. Cir. October 11, 2017), the Federal Circuit reversed the Patent Trial and Appeal Board’s (PTAB) final written decision in IPR2015-00650.  While the PTAB found that the petitioner had failed to show obviousness of any challenged claim, the Federal Circuit disagreed, finding that under a proper broadest reasonable interpretation of the claims, the “record conclusively establishe[d] obviousness.” Owens Corning, 2017 U.S. App. LEXIS 19827 at *2.  The Federal Circuit therefore reversed the PTAB’s final written decision without remand, finding the challenged claims unpatentable as obvious. Background Owens Corning petitioned for inter partes review of Fast Felt’s U.S. Patent No. 8,137,757, which claims and describes methods of “applying nail tabs to roofing and building cover materials” which cover wood roof decks and stud walls. ’757 Patent, Abstract. For example, during the construction of a roof, an underlayment… Continue Reading

Infringement under Doctrine of Equivalents Remains Difficult to Win

Infringement under Doctrine of Equivalents Remains Difficult to Win

A recent Federal Circuit case reminds us how difficult it is for a patent holder to win an infringement case based on a doctrine of equivalents (DOE) infringement theory. In Jang v. Bos. Sci. Corp. & Scimed Life Sys., Inc., No. 16-1275 (Fed. Cir. Sep. 29, 2017), the Fed. Cir. affirmed the district court’s vacatur of the jury’s infringement verdict, finding that Boston Scientific Corporation’s (BSC) product did not infringe the asserted claims of Dr. Jang’s patent under the DOE because Dr. Jang did not meet his burden of proving that his DOE theory did not ensnare the prior art. The DOE allows a patent holder to prove infringement by an accused device if the accused device performs substantially the same function as claimed in substantially the same way to obtain substantially the same result, even if it does not literally infringe the claims of the patent. Graver Tank &… Continue Reading

Even Under Iqbal/Twombly Framework, Patentees Face Low Bar for Alleging Infringement

Even Under Iqbal/Twombly Framework, Patentees Face Low Bar for Alleging Infringement

In Lifetime Industries, Inc. v. Trim-Lok, Inc., No. 2017-1096, 2017 U.S. App. LEXIS 17257 (Fed. Cir. Sept. 7, 2017), the Federal Circuit reviewed a district court’s dismissal of a patent infringement suit under Rule 12(b)(6) for failing to adequately plead direct or indirect infringement. Applying the Iqbal/Twombly standard to the claims, the Federal Circuit reversed the dismissal, concluding that the allegations—largely based on one assembly of an infringing combination and the defendant’s knowledge of the patent—supported claims of both direct and indirect infringement. The decision shows that even without the benefit of form pleading, sufficiently alleging infringement under Iqbal/Twombly remains a relatively low hurdle that most patentees will be able to satisfy. The plaintiff’s infringement allegations Lifetime Industries owns U.S. Patent 6,966,590 (“the ’590 patent”), which issued in 2005 and “generally describe[d] a two-part seal for use in a mobile living quarters (also referred to as a ‘recreational vehicle’ or ‘RV’)… Continue Reading

The Federal Circuit Declares Upon Further Review – it’s Very Obvious

On July 26, 2017, in Soft Gel Technologies, Inc., v. Jarrow Formulas, Inc. (Appeal No. 17-1051, Fed. Cir. July 26, 2017), the Court of Appeals for the Federal Circuit (“the CAFC”) affirmed the Patent and Trial Appeal Board’s (PTAB) rulings from three inter partes reexaminations invalidating numerous claims of three patents assigned to Soft Gel Technologies, Inc. (“Soft Gel”) on obviousness grounds. The CAFC, in affirming the PTAB, applied various canons of obviousness law to refute Soft Gel’s position, specifically emphasizing that an obviousness rejection cannot be overcome by attacking references individually, and that only a reasonable expectation of success, rather than absolute predictability of success, is required as a basis of motivation to combine references. Soft Gel Patents Each specification of the Soft Gel patents (“U.S. Patent Nos. 8,124,072 (“’072 patent”), 8,105,583 (“’583 patent”), and 8,147,826 (“’826 patent”)) describes a method for dissolving a substance commonly referred to as… Continue Reading

TC Heartland: What’s the Big Deal?

If you haven’t yet heard about the Supreme Court’s decision in TC Heartland v. Kraft Food Groups Brands LLC, you’re probably not a patent litigator.  The case has been dominating legal industry headlines for months, and now that a decision has been issued, it is being hailed as the single most important case for patent litigators this side of Markman v. Westview Instruments, Inc. But is TC Heartland really a sea change for patent litigation?  A review of Federal Circuit cases applying the portion of the patent venue statute not addressed by TC Heartland – what constitutes “a regular and established place of business” – indicates that the change may not be as sweeping as some have suggested. Briefly, the TC Heartland decision addressed the test for proper venue in patent infringement suits for corporations.  Until 1990, courts held 35 U.S.C. § 1400(b) to be the sole statute governing venue for… Continue Reading

Anything You Say May Be Used Against You In A Court Of Law

For patent practitioners, prosecution disclaimer is an often forgotten patent law principle that can find its way back into the formalistic claim construction adhered to in many Federal Circuit decisions. In some cases, patentees may disclaim more than is necessary to overcome cited art during prosecution. That was exactly the case in Technology Properties Ltd. v. Huawei Tech, et al. (Case Numbers 2016-1306, 2016-1307, 2016-1309, 2016-1310, and 2016-1311, Fed. Cir. March 3, 2017) (“Tech. Prop. Ltd.”), where a patentee’s remarks during prosecution ultimately led to narrowing limitations being read into the issued claims. In Tech. Prop. Ltd., Technology Properties Limited LLC, Phoenix Digital Solutions LLC, and Patriot Scientific Corp. (“Technology Properties”) asserting U.S. Patent No. 5,809,336 (“‘336 patent”) against several defendants, including Huawei Technologies Co., Samsung Electronics Co., Nintendo Co., and LG Electronics, Inc. (“Appellees”). The ‘336 patent is directed to decoupling a variable frequency system clock connected to a CPU… Continue Reading

The IP Beacon, March 2017

View the PDF version of the March 2017 IP Beacon. Subject Matter Eligibility Guidance from the Federal Circuit: Thales Visionix v. United States By Kelvin Varghese Both the courts and the Patent and Trademark Office (PTO) have struggled to define the metes and bounds of the subject matter eligibility analysis under 35 U.S.C. § 101. The Court of Appeals for the Federal Circuit’s recent decision on March 8, 2017 in Thales Visionix Inc. v. United States further clarifies the first step of the eligibility analysis, while confirming the significance of that step. Read more. No Respite On The Horizon For CBM Patents By Andrew Cohn The Patent Trials and Appeals Board and the Federal Circuit have continued their hostility to payment and financial technology patents, recently invalidating three patents and reversing a large damage award in Smartflash LLC v. Apple Inc, see Smartflash LLC v. Apple Inc., Case No. 2016-1059… Continue Reading

Differing burdens of proof in the PTAB and district courts can allow patent challengers a second bite at the apple

The different burdens of proof in the Patent Trial and Appeal Board (PTAB) and in district court means that the PTAB may find patent claims unpatentable even after the claims were held valid over the same evidence in litigation. Novartis AG v. Noven Pharm. Inc., No. 2016-1678, 2016-1679 (April 4, 2017).

In two separate Inter Partes Review (IPR) proceedings, the PTAB found the asserted claims of Novartis’s U.S. Patent Nos. 6,316,023 and 6,335,031 unpatentable for obviousness over various combinations of prior art references. Novartis, No. 2016-1678, 2016-1679 at 2, 4. However, those same claims had previously been litigated in the U.S. District Court for the District of Delaware. Id. at 6. Based on the “same” arguments and the “same” evidence considered by the PTAB, the Delaware District Court held the claims not obvious, and the Federal Circuit affirmed the court. Id.; Novartis Pharm. Corp. v. Watson Labs., Inc., 611 F. App’x 988 (Fed. Cir. 2015); Novartis Pharm. Corp. v. Noven Pharm., Inc., 125 F. Supp. 3d 474 (D. Del. 2015).

Federal Circuit clarifies limited exception to the presumption that ‘consisting of’ is a closed term

Federal Circuit clarifies limited exception to the presumption that ‘consisting of’ is a closed term

In the case of a claim directed to a composition “consisting of” substances selected from a Markush group, when is the presence of an unclaimed ingredient sufficiently unrelated to the invention to preclude infringement?  The Federal Circuit recently addressed this question in Shire Dev., LLC v. Watson Pharm., Inc., No. 2016-1785 (Fed. Cir. February 10, 2017).  The Federal Circuit reversed the district court’s finding of infringement because the accused product did not satisfy the claimed Markush group requirements.  Shire, No. 2016-1785 at 2.  Specifically, the Court found that the accused product containing an ingredient not listed in the claimed Markush group did not infringe where that additional ingredient structurally and functionally related to the invention.  Id. at 7-9. The asserted claims of U.S. Patent No. 6,773,720 require a controlled-release oral pharmaceutical composition including a specific active ingredient; an inner, lipophilic matrix; an outer, hydrophilic matrix; and other excipients.  Id. at… Continue Reading

Subject Matter Eligibility Guidance from the Federal Circuit: Thales Visionix v. United States

Subject Matter Eligibility Guidance from the Federal Circuit: Thales Visionix v. United States

Both the courts and the Patent & Trademark Office (PTO) have struggled to define the metes and bounds of the subject matter eligibility analysis under 35 U.S.C. § 101.  The Court of Appeals for the Federal Circuit’s recent decision on March 8, 2017 in Thales Visionix Inc. v. United States1 further clarifies the first step of the eligibility analysis, while confirming the significance of that step. Under § 101, patent protection is available to “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.”  Patent claims directed to laws of nature, natural phenomena, and abstract ideas, however, are not patent-eligible subject matter.2  Courts and the PTO evaluate the subject matter eligibility of claims under a two-step framework set forth by the Supreme Court in Mayo Collaborative Servs. v. Prometheus Labs., Inc.3 and Alice Corp. Pty. Ltd. v. CLS Bank Int’l. … Continue Reading

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