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SimpleAir v. Google: Consider the Scope of the Claims in a Claim Preclusion Analysis

On May 12, 2018, the Federal Circuit held in SimpleAir, Inc. v. Google LLC, No. 2016-2738, that a terminal disclaimer does not raise a presumption that a continuation patent is patentably indistinct from its parent patent.  In SimpleAir, the issue was whether an action asserting infringement of two patents was barred by claim preclusion or the Kessler doctrine when the same activity had been judged not infringing in earlier litigations involving other patents in the same family, all of which were related as continuations, and all of which included terminal disclaimers to the ultimate parent patent.  The Federal Circuit held that notwithstanding the terminal disclaimers, the district court could not simply rely on a presumption that the claims were patentably indistinct, and instead must compare the scope of the claims to determine whether claim preclusion or the Kessler doctrine applies.  Id. at *2. SimpleAir filed a series of patent infringement actions against… Continue Reading

PTAB Goes Off-Roading With Commercial Success and Teaching Away Analysis

Recently, in Polaris Industries, Inc., v. Arctic Cat, Inc., No. 2016-1807, 2016-2280 (Fed. Cir. February 9, 2018), the Court of Appeals for the Federal Circuit (“CAFC”) overturned a Patent Trial and Appeal Board (“Board”) decision that all claims of a patent directed to a side-by-side all-terrain vehicle (ATV) were unpatentable as obvious in a first inter partes review (IPR), while affirming the Board’s decision that the claims of the same patent were not unpatentable in view of a different combination of references in a second IPR. Specifically, the CFAC found that the Board failed to conduct a proper teaching away analysis and failed to weigh Polaris’s argument of commercial success when determining certain claims were obvious. This appeal stems from two IPR petitions filed by Arctic Cat challenging the patentability of U.S. Patent No. 8,596,405 (“the ‘405 patent”) after Arctic Cat was sued by Polaris for infringing claims of that… Continue Reading

Collateral Estoppel Springs From Final IPR Decisions and Applies to Proceedings Involving the Same Claims and Claims Not “Patentably Distinct”

Collateral Estoppel Springs From Final IPR Decisions and Applies to Proceedings Involving the Same Claims and Claims Not “Patentably Distinct”

In MaxLinear, Inc. v. CF CRESPE LLC., No. 2017-1039, 2018 U.S. App. LEXIS 1930 (Fed. Cir. Jan. 25, 2018), the Federal Circuit vacated and remanded the Patent Trial and Appeal Board’s (PTAB) final written decision in IPR2015-00592 (the ‘592 IPR).  The PTAB had found that all instituted claims were not shown to be unpatentable, but during the pendency of the appeal, the Federal Circuit affirmed a decision in another IPR finding the same patent’s independent claims unpatentable. The Federal Circuit then held that collateral estoppel applied and vacated the Board’s decision.  Because the PTAB focused solely on the now-invalid independent claims in its decision, the Court ordered the PTAB to consider on remand whether the dependent claims were “patentably distinct.” However, the Federal Circuit’s guidance on this point presents logical and procedural uncertainties for the PTAB, as it has been directed to consider prior art not of record in the… Continue Reading

Prior Art Combinations Cannot Substantially Reconstruct the Primary Reference – But POSITAs Are Not Limited to Physically Combinable References

Prior Art Combinations Cannot Substantially Reconstruct the Primary Reference – But POSITAs Are Not Limited to Physically Combinable References

In University of Maryland Biotech Institute v. Presens Precision Sensing, Nos. 2016-2745, 2017-1057 (Nov. 3, 2017) (nonprecedential) (“UMBI”), the Federal Circuit affirmed the USPTO Patent Trial and Appeal Board’s (“PTAB”) inter partes reexamination decision that found U.S. Patent No. 6,673,532 (“the ’532 patent”) invalid as obvious over two prior art references. The Federal Circuit’s decision highlighted that, while “a person of ordinary skill generally would not be motivated to modify a reference by contradicting its basic teachings [or] by making it inoperable for its intended purpose,” portions or elements of a secondary reference may be combined with and adapted to the particular physical arrangement of a primary reference even if the secondary reference discloses a different or incompatible physical arrangement.  Id. at 6 (citations omitted). Background The University of Maryland Biotechnology Institute (“UMBI”) owns the ’532 patent, which is directed to methods for measuring and optimizing the parameters of in… Continue Reading

Mastermine v. Microsoft: Following Precedent or Pivoting Away?

At the end of October, in Mastermine Software, Inc. v. Microsoft Corp., No. 2016-2465 (Fed. Cir. Oct. 30, 2017), the Federal Circuit reversed a district court’s determination that a system claim was invalid for indefiniteness. The Federal Circuit disagreed with the district court’s conclusion that certain claims were indefinite for improperly claiming two different classes of subject matter.[1] The court found that the claims informed those skilled in the art with “reasonable certainty”[2] in conformity with the Nautilus guidance, specifically on the basis that one can determine when infringement occurs.[3] Overview of the District Court’s decision Mastermine asserted U.S. Patent Nos. 7,945,850 and 8,429,518 against Microsoft in the U.S. District Court for the District of Minnesota. In its claim construction order, the District Court held that claims in both patents were invalid for indefiniteness for claiming two different classes – apparatus and method.[4] Claim 8 of the ’850 Patent recites,… Continue Reading

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

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