Fed. Cir.

And the Survey Says: Nothing?

Order Vacating ITC Invalidity and Infringement Determinations and Remanding for Further Proceedings, Converse, Inc. v. Int’l Trade Commission, (Fed. Cir.) (Oct. 30, 2018) (Judges Dyk, O’Malley, and Hughes)

We’ve previously discussed some of the challenges of obtaining quality consumer survey evidence in trademark litigation in past posts, such as here and here. The persuasiveness and wisdom of a consumer survey was once again called into question, this time by the Federal Circuit in its October 30 opinion in Converse’s long-running trademark litigation against Skechers, New Balance, and others. The appeals court identified a “series of errors” requiring remand, including that the International Trade Commission applied incorrect standards to both invalidity and infringement and erred in its secondary meaning analysis. READ MORE

IPR Reply Briefs: Drawing the Line Between “Responsive” and “New”

Ericsson Inc. v. Intellectual Ventures I LLC, Fed. Cir. (Aug. 27, 2018)

37 C.F.R. § 42.23(b) limits a petitioner’s inter partes review (“IPR”) reply papers to arguments raised by the patent owner in its opposition. Under this rule, a petitioner cannot assert new invalidity arguments, cite previously unidentified parts of a prior art reference, or introduce new evidence such as a new prior art reference. The line between this and what is merely responsive, however, can be blurry. The Federal Circuit’s recent decision in Ericsson sheds some light on this line. READ MORE

How to Shoot for the Stars: Federal Circuit Clarifies EMVR Requirements

Power Integrations, Inc. v. Fairchild Semiconductor International, Fed. Cir. (July 3, 2018)

Patent damages law can be fairly complex—so much so that Daubert motions against damages experts are filed in nearly every case.  These motions often accuse damages experts of overreaching by failing to properly apportion damages or misapplying the entire market value rule (“EMVR”).  On Tuesday, the Federal Circuit’s opinion in Power Integrations, Inc. v. Fairchild Semiconductor International attempted to clarify these aspects of the patent damages analysis, vacating the jury’s $139.8 million damages award in the form of a reasonable royalty.

A patentee seeking damages for the sale of a multicomponent (or multifunction) product must typically take several steps to ensure that any alleged damages have been properly apportioned to exclude the value provided by the product’s noninfringing aspects.  First, the royalty base has to be determined on the smallest saleable patent practicing unit.  Second, that reduced royalty base needs to be apportioned to reflect only the value attributable to the patented technology.  A royalty based on the value of the entire multicomponent product will likely yield much higher damages, but such a royalty can be recovered only if the plaintiff satisfies the very strict requirements of the EMVR.

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Federal Circuit Law Governs Venues in Patent-Infringement Suits, and Plaintiffs Bear the Burden to Establish Proper Venue

Order Granting Mandamus, In re: ZTE (USA) Inc., Fed. Cir. (May 14, 2018) (Judge Richard Linn)

In a rare grant of a mandamus petition, the Federal Circuit made two key holdings related to venue in patent cases in the wake of TC Heartland: (1) Federal Circuit law, not regional circuit law, governs patent-litigation venue; and (2) plaintiffs bear the burden to show proper venue. The court called these “basic” and “undecided” issues and found “exceptional circumstances” to grant the petition, vacating the district court’s denial of a motion to dismiss and remanding the case for application of the proper standard. This precedential order sets a nationwide rule in patent cases on which courts had been divided. READ MORE

Federal Circuit Reverses Patent-Ineligibility Ruling on Motion to Dismiss Due to Factual Disputes

Berkheimer v. HP Inc., Fed. Cir. (February 8, 2018)

On Thursday, February 8, the Federal Circuit decided Berkheimer v. HP Inc.  It ruled, for the first time, that a district court had engaged in improper fact finding when deciding a patent claimed ineligible subject matter under the Supreme Court’s Alice Corp. v. CLS Bank decision a motion for summary judgment.  This case has the potential to impact on the common strategy of seeking early dismissals under 35 U.S.C. § 101 and Alice. READ MORE

Out of Time? Federal Circuit Reverses Course on Review of PTAB Time-Bar Determinations

En Banc Decision Remanding to Panel for Consideration of Merits of Petitioner’s Time-Bar Appeal, Fed. Cir. (January 8, 2018)

The Federal Circuit, sitting en banc, found that the decision of the Patent Trial and Appeal Board (“PTAB”) as to whether a petition for inter partes review (“IPR”) is barred as untimely may indeed be appealed.  Wi-Fi One, LLC v. Broadcom Corp., No. 2015-1944 (Fed. Cir. Jan. 8, 2018) (en banc).  This overrules the panel in Achates Reference Publishing Inc. v. Apple Inc., 803 F. 3d 652 (Fed. Cir. 2015). READ MORE

Federal Circuit Clarifies Burden For Proving Failure to Mark

Arctic Cat Inc. v. Bombardier Recreational Products, Inc. et al., Fed. Cir. (December 7, 2017)

On Friday, the Federal Circuit decided Arctic Cat Inc. v. Bombardier Recreational Products, Inc. and clarified the burden of proof for the failure to mark defense. Under 35 U.S.C. § 287, a patentee’s pre-suit damages can be limited if the patentee (or its licensee) didn’t mark previously sold “patented articles.” Parties often dispute whether an unmarked product is a “patented article” that actually practices the claim limitations of a patent. The Arctic Cat decision holds that once the alleged infringer identifies the unmarked products, it becomes the patentee’s burden to prove that those unmarked products aren’t “patented articles.” READ MORE

All-or-Nothing Damages Strategy Leads to No Damages Despite Admission of Patent Infringement

Promega Corp. v. Life Technologies Corp., Fed. Cir. (November 13, 2017)

The Federal Circuit affirmed a Wisconsin district court’s decision to overturn the $52 million award a jury awarded to Promega Corporation (“Promega”) in its patent suit against Life Technologies Corp. (“Life”).  The Federal Circuit also upheld the district court’s decision denying Promega’s request for a new trial on damages.  For the Federal Circuit, there was to be no second bite at the apple:  at trial, Promega pursued an all-or-nothing damages calculation strategy that improperly assessed damages based on worldwide infringement, and accordingly it had waived its right to prove damages based on infringement that occurred only in the United States.

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Reversed! Failure to Assert Robust Nonobviousness Arguments During IPR Led to Reversal By The Federal Circuit

Owens Corning v. Fast Felt Corporation, Fed. Cir. (October 11, 2017)

During inter partes review proceedings, the Patent Trial and Appeal Board (“PTAB”) is required to give claims their broadest reasonable construction in light of the specification.  See 37 C.F.R. § 42.100(b).  Thus, when the PTAB imports claim limitations based on the invention’s preferred embodiments, its decision upholding patent validity may be subject to reversal.  In situations where a broader construction is argued by the petitioner and adopted in the Institution Decision, and the patent owner does not provide suitable arguments for nonobviousness in light of that broader construction, the Federal Circuit may choose to reverse rather than remand. READ MORE

Federal Circuit Rules that TC Heartland is a Change of Law Preventing a Waiver of Venue, But Rules That a Forfeiture of Venue May Still Exist

Granting Petition for Writ of Mandamus, In re: Micron Technology,
Fed. Cir. (November 15, 2017)

In the wake of the Supreme Court’s decision in TC Heartland, courts had been struggling with the question of whether defendants who had already answered waived their right to challenge the propriety of the plaintiff’s choice of venue.  This often turned on the question of whether TC Heartland was in fact a change of law.  If it was a change of law, then the post-TC Heartland venue challenge did not exist under Rule 12(g)(2), and therefore could not be considered waived under Rule 12(h)(1)(A).  If it was not a change of law, then there could be a waiver.  Today the Federal Circuit has settled this debate, but has also set forth that the district courts retain other bases to “reject a venue defense for non-merit reasons, such as by determining that the defense was not timely presented.”  Accordingly, the Federal Circuit opinion states that this ruling provides a “less bright-line, more discretionary framework[.]” READ MORE