Federal Circuit Issues Contentious Order Not to Review En Banc PTAB’s Claim Construction Standard For IPR Proceedings 0

Federal Circuit Issues Contentious Order Not to Review En Banc PTAB’s Claim Construction Standard For IPR Proceedings

On Wednesday, July 8, 2015, the Federal Circuit in a contentious 6-5 vote denied en banc review of its first opinion in connection with PTAB decision in an IPR proceeding, In re Cuozzo Speed Technologies, LLC. As previously discussed, Cuozzo appealed the PTAB’s invalidation of three claims of U.S. Patent No. 6,778,074 on the grounds that the PTAB in its IPR decision improperly applied the “broadest reasonable interpretation” standard on claim construction, a standard that is traditionally applied to patent prosecution. A 2-1 panel for the Federal Circuit affirmed the application of this standard in view of the fact that the USPTO has been using this standard for more than a century and the majority’s conclusion “that Congress implicitly adopted the broadest reasonable interpretation standard in enacting the AIA.” The court also found that this was further supported by the statute giving the PTO Director the ability to establish the standards for establishing and governing inter partes review.

Senate Introduces STRONG Patents Act and Focused Patent Reform 0

Senate Introduces STRONG Patents Act and Focused Patent Reform

Recently, Senators Chris Coons, Dick Durbin, and Mazie Hirono introduced an alternative patent reform legislation to the Innovation Act of 2015. This bill, known as the as Support Technology and Research for Our Nations Grown Patents Act (“STRONG Patents Act”), aims to strengthen the rights of patent holders. According to Sen. Coons, “[t]he STRONG Patents Act includes targeted thoughtful reforms to combat abuse where it’s prevalent while ensuring our rich innovation ecosystem remains vibrant.” The goal is to “move past the false premise that the only way to deter ‘patent troll’ abuses is to enact sweeping reforms that weaken patent protections for everyone . . . . and [instead we aim] to narrowly target and deter abusive troll behavior while preserving the ability of legitimate patent holders to protect their innovation,” said Senator Durbin.

An Issue of First Impression: Federal Circuit Limits Review of Stay Motions in Connection With Covered Business Method Reviews 0

An Issue of First Impression: Federal Circuit Limits Review of Stay Motions in Connection With Covered Business Method Reviews

On April 1, 2015, The Federal Circuit dismissed JPMorgan Chase & Co.’s (“JPMC”) interlocutory appeal of a district court ruling denying a motion to stay pending a covered business method review (“CBMR”). Addressing an issue of first impression, the Court concluded that it lacked jurisdiction under §18(b)(2) of the America Invents Act (“AIA”) to review the district court’s order because JPMC moved for a stay while JPMC’s CBM petition was under review by the USPTO Director and a CBM proceeding had yet to be instituted. In Intellectual Ventures v. JPMorgan Chase & Co., Intellectual Ventures (“IV”) sued JPMC alleging infringement of five patents. JPMC responded by filing a motion to stay pending the results of four CBMR petitions that it was planning to file. Immediately after, JPMC filed two CBM petitions covering only two of the asserted patents.

Federal Circuit Limits Patent Exhaustion 0

Federal Circuit Limits Patent Exhaustion

A recent decision by the Federal Circuit, Helferich Patent Licensing LLC v. The New York Times Co., has held that the applicability of the patent exhaustion defense may be limited to a claim-by-claim determination depending on the nature of the licensed rights granted. In Helferich, the patent owner held rights to a portfolio of patents with claims relating to providing content to wireless handsets and relating to methods for updating content stored on the wireless handsets. Prior to bringing the present litigation, Helferich had licensed handset manufacturers under the patents with the license grants being directed specifically to the handset claims. Subsequently, the patent owner brought suit against The New York Times Company and others asserting infringement of the content claims.

Depending on the Circumstances, Claim Construction May Be Subject to Clear Error Review on Appeal 0

Depending on the Circumstances, Claim Construction May Be Subject to Clear Error Review on Appeal

Traditionally, claim construction, which can be an important phase in patent litigation for setting the metes and bounds of a patent, has been viewed as a pure question of law and subject to de novo review by the Federal Circuit on appeal. This was considered problematic by some because the district court’s findings on claim construction, which the parties had been relying on throughout the litigation, were not given any deference on appeal.

A Contested Order By The Federal Circuit Denies Request For En Banc Review Of Its Decision That Patent Co-Owners May Not Be Involuntarily Joined In A Patent Dispute 0

A Contested Order By The Federal Circuit Denies Request For En Banc Review Of Its Decision That Patent Co-Owners May Not Be Involuntarily Joined In A Patent Dispute

Recently, the Federal Circuit issued an order denying a request for en banc review of a panel decision that held that a patent co-owner may not be involuntarily joined as a plaintiff in a patent dispute. It is generally recognized that all owners to a patent in suit must be a party to the action, otherwise the suit is dismissed for lack of standing. The reason is that a defendant should not be subjected to multiple suits by different parties regarding the same patent. The Federal Circuit in STC.UNM v. Intel Corporation considered the situation in which Sandia Corp (a co-owner of the patent in suit) refused to join STC.UNM’s (the licensing arm of the University of New Mexico) patent infringement suit against Intel.

Washington Redskins Seek Reversal of TTAB Decision Canceling its Trademark Registrations 0

Washington Redskins Seek Reversal of TTAB Decision Canceling its Trademark Registrations

On August 14, 2014, Pro-Football, Inc. (“Pro-Football”) appealed the Trademark Trial and Appeal Board’s (“TTAB”) June 18, 2014 decision to cancel its registrations for six REDSKIN-formative trademarks. As we previously reported, the TTAB’s 2-1 decision found that those trademarks were not entitled to be registered on the basis that a “substantial composite of Native Americans found the term REDSKINS to be disparaging in connection with [the football team’s] services” during the time period when registration was sought.

Be Careful Identifying Your Licensed Patents and Products 0

Be Careful Identifying Your Licensed Patents and Products

On Friday, the Federal Circuit issued an opinion in Wi-LAN USA, Inc. v. Ericsson, Inc., which highlights the importance of using care when granting rights to or under patents. The interesting facts in this case resulted in two contradictory opinions from two district courts regarding the scope of an agreement pertaining to rights under certain patents. These opinions illustrate the potential dangers of unintended consequences that may arise from imprecise drafting in patent agreements.

Two Wrongs Don’t Make a Right: Supreme Court Declines to Expand the Scope of Indirect Infringement Liability in View of Federal Circuit’s Muniauction Ruling 0

Two Wrongs Don’t Make a Right: Supreme Court Declines to Expand the Scope of Indirect Infringement Liability in View of Federal Circuit’s Muniauction Ruling

The United Supreme Court has been a “hot bench” for patent cases. On the same day, it issued two unanimous decisions reversing the Federal Circuit relating to claim definiteness and inducement infringement, the former of which we previously discussed. In the latter, Limelight Networks v. Akamai Tech. No. 12-786, 572 U.S. ___ (2014), the U.S. Supreme Court held that a party cannot be liable for inducing infringement under 35 U.S.C. §271(b) unless there is direct infringement in 35 U.S.C. §271(a). The Court in dicta also suggested that the Federal Circuit may wish to reconsider its prior decision, Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (2008), which held that a party–who does not perform all the method steps–cannot be liable for direct infringement in §271(a) unless it controls or directs another party to complete the other steps.

Supreme Court Reestablishes Standard for Attorneys’ Fees Under §285 0

Supreme Court Reestablishes Standard for Attorneys’ Fees Under §285

On Tuesday, April 29, 2014, the Supreme Court in Octane Fitness v. ICON Health and Fitness issued a ruling that reestablishes the previous standard for awarding attorneys’ fees in the event of an exceptional case under 35 U.S.C. §285. In its opinion, the Court held that a case should be considered “exceptional” when it “is simply one that stands out from others with respect to the substantive strength of a party’s litigating position … or the unreasonable manner in which the case was litigated.” The Court instructed that this determination should be made on a “case-by-case” basis “considering the totality of the circumstances.”