NEXLEARN, LLC V. ALLEN INTERACTIONS, INC.

NEXLEARN, LLC V. ALLEN INTERACTIONS, INC., Appeal Nos. 2016-2170, 2221 (Fed. Cir. June 19, 2017).  Before Moore, Schall, and Hughes.  Appealed from D. Kan. (Judge Melgren).  (Personal Jurisdiction)

Background:

In this case, NexLearn sued Allen for patent infringement in the district of Kansas, but Allen moved to dismiss NexLearn’s complaint for lack of personal jurisdiction in Kansas.

In addition, NexLearn attempted to establish personal jurisdiction under specific jurisdiction based on Allen’s activities both prior to and after NexLearn’s patent issued.

Thus, the district court granted Allen’s motion to dismiss due to the district court not having personal jurisdiction over Allen in Kansas.  In summary, the district court determined that Allen did not have sufficient “minimum contacts” with Kansas.  Finally, NexLearn appealed.

Issue/Holding:

Did the district court err in holding that Allen did not have sufficient “minimum contacts” to establish personal jurisdiction in Kansas?  (continue reading)

Summary by:  Jacob Beers

IPCOM GMBH & CO. v. HTC CORPORATION

IPCOM GMBH & CO. v. HTC CORPORATION, Appeal No. 2016-1474 (Fed. Cir. July 7, 2017).  Before Prost, Clevenger, and Chen.  Appealed from Patent Trial and Appeal Board.  (Inter Partes Reexamination; Claim Construction)

Background:

In this case, IPCom sued HTC for patent infringement.  HTC requested inter partes reexamination of IPCom’s patent.  In a first round of review, the Examiner found IPCom’s claims patentable, but the PTAB issued a new ground of rejection upon appeal.  In a second round of review, IPCom amended its claims, including claims that were not part of the first PTAB appeal.  The Examiner found the amended claims to be patentable.  However, the PTAB determined that the amended claims would have been obvious under §103.  IPCom appealed.

Issues/Holdings:

Did the PTAB have the authority to consider the patentability of claims that were amended by IPCom during the second round of reexamination, even if those claims were not part of the first PTAB appeal?  Did the PTAB conduct a proper claim construction of the “arrangement for activating the link” claim limitation?  (continue reading)

Summary by:  Jay Stelacone

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STANFORD v. CHINESE UNIVERSITY OF HONG KONG

STANFORD v. CHINESE UNIVERSITY OF HONG KONG, Appeal No. 2015-2011 (Fed. Cir. June 27, 2017). Before O’Malley, Reyna and Chen.  Appealed from N.D. Cal. (Judge Illston).  (Written Description)

Background:

In this case, in February 2007, Stanford patented a method for detecting genetic abnormalities in fetuses by analysis of the mother’s serum.  The claims recited detection of “targeted sequences” by obtaining maternal tissue containing both maternal and fetal genetic material and measuring the presence of different target sequences.

Then, in 2008, CUHK filed an application for a random sequencing method that does not require the detection of specific target sequences.  In response to CUHK’s application, Stanford amended claims of a pending continuation application, which later became a patent, to cover random sequencing methods.  This caused an issue as to whether there was support for these claims.

As a result, both parties filed requests for interferences to determine who invented the random sequencing method.  CUHK argued that the Stanford patent was invalid because it lacked written description for the random sequencing.  Stanford countered that the random sequencing is disclosed in the specification.  The PTAB agreed with CUHK’s argument, primarily on the basis of expert testimony.  Stanford appealed to the Northern District of California, who had to pass the appeal to the Federal Circuit due to a jurisdictional issue.

Issue/Holding:

Did the PTAB err in relying on the expert testimony to hold that the Stanford patent lacked sufficient written description for random sequencing?  (continue reading)

Summary by:  Nat McQueen

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THE PTAB MAY ADOPT PETITIONER’S MOTIVATION TO COMBINE AS LONG AS THE BOARD PROVIDES A REASONED EXPLANATION SUPPORTED BY EVIDENCE

OUTDRY TECHNOLOGIES CORP. v. GEOX S.P.A., Appeal No. 2016-1769 (Fed. Cir. June 16, 2017).  Before Dyk, Moore, and Reyna.  Appealed from Patent Trial and Appeal Board.  (Obviousness)

Background:

In this case, Outdry Technologies Corp. (“Outdry”) held a patent claiming methods of waterproofing leather that claimed “directly pressing on an internal surface of the leather at least one semi-permeable membrane whose surface… is provided with a discontinuous glue pattern… formed of a multiplicity of dots.”   As a result, Geox S.P.A. (“Geox”) brought an Inter Partes Review (“IPR”) against Outdry’s patent arguing that Outdry’s patent is rendered obvious by three prior art references (Thornton, Scott, and Hayton).

Furthermore, the Board found that the combination of prior art references rendered obvious the claims of Outdry’s patent because Thornton discloses every element of Outdry’s independent claims apart from the density and size of the multiplicity of glue dots in the glue pattern, which are taught by Scott and Hayton.  The Board interpreted the claimed “directly pressing” to mean “applying pressure without any intervening materials or layers other than the recited adhesive.”  Outdry appealed.

Issues/Holdings:

Did the Board err in the interpretation of the claimed “directly pressing” in light of the specification?

Did the Board fail to sufficiently articulate a motivation to combine the prior art references?  (continue reading)

Summary by:  Daniel Mooney

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PTAB MUST PROVIDE IPR PATENTEE APA NOTICE AND OPPORTUNITY TO RESPOND TO PTAB’S FINDINGS

EMERACHEM HOLDINGS, LLC v. VOLKSWAGEN GROUP OF AMERICA, INC., Appeal No. 2016-1984 (Fed. Cir. June 15, 2017).  Before Moore, Clevenger, and Chen.  On appeal from Patent Trial and Appeal Board.  (Notice And Opportunity To Respond In IPR Reviews)

Background:

In this case, after EmeraChem sued Volkswagen in U.S. district court for patent infringement, Volkswagen filed an Inter Partes Review (IPR) petition challenging the validity of claims of the patent on four grounds.  The PTAB (Board) instituted review on all four grounds but limited its final decision to the fourth ground.

In the fourth ground of its petition, Volkswagen broadly alleged that Claims 1-14 and 16-20 were invalid for obviousness based on the combination of references to a Campbell patent (Campbell) naming four coinventors, and either references to Hirota or Saito, in view of Stiles.  Volkswagen also included a detailed claim chart to identify, claim-by-claim and element-by-element, the specific portions of these references it believed supported obviousness.  For Claims 3, 16 and 20, Volkswagen cited Saito as the only reference.

Another issue, raised by EmeraChem during the IPR review, was whether Campbell was prior art.  The subject matter of Campbell was incorporated in the patent in suit.  Of evidence was a declaration of Campbell, who declared that he and named coinventor Guth (who had since died) were the sole coinventors of the subject matter relied on as prior art against the patent, which named Campbell and Guth as sole coinventors.  As Campbell was not otherwise a statutory bar, EmeraChem argued that Campbell was, in effect, not work of another according to 35 USC §103.

In its final decision, the Board held that Claims 3, 16 and 20 were invalid over prior art including the Stiles reference.  And that the remaining claims, rejected over at least Campbell, were also invalid, finding that EmeraChem did not meet its burden of proof that coinventors Campbell and Guth were the sole inventors of the pertinent subject matter and thus, that Campbell was not prior art.

EmeraChem then appealed to the Federal Circuit.  During the appeal, the PTO Director (Intervenor) intervened to defend the Board’s decision.  In its appeal, EmeraChem argued that it was not provided sufficient notice.  And, opportunity to respond in accordance with the Administrative Procedure Act (APA) to the Board’s reliance on Stiles.

Issue/Holding:

Did the Board err in holding the patent invalid on all challenged claims?  (continue reading)

Summary by:  Harris Pitlick

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FEDERAL CIRCUIT FINDS THE TERM “VIRTUALLY FREE FROM INTERFERENCE” TO BE DEFINITE

ONE-E-WAY, INC. v. INTERNATIONAL TRADE COMMISSION, Appeal No. 16-2105 (Fed. Cir. June 12, 2017).  Before Prost, Wallach and Stoll.  Appealed from the International Trade Commission.  (Indefiniteness)

Background:

In this case, One-E-Way filed a complaint with the International Trade Commission (ITC) alleging that Sony Corporation and various other respondents infringed claims of two of its patents.  The patents are directed to a wireless digital audio system, which allows multiple users within the same space to use wireless headphones without interference.  More specifically, the use of the wireless headphones is “virtually free from interference from device transmitted signals operating in the [wireless digital audio system] spectrum,” as recited in the claims.

Respondents filed a motion for summary determination that the term “virtually free from interference” is indefinite.  The administrative law judge (ALJ) granted the motion, and upon consideration of the claims, found that the term was indefinite.  One-E-Way petitioned the ITC for review, and the ITC affirmed the ALJ’s finding of indefiniteness.  One-E-Way appealed to the Federal Circuit.

Issue/Holding:

Did the ITC err in holding that the term “virtually free from interference” rendered One-E-Way’s claims indefinite?  (continue reading)

Summary byDonna Mason

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SEPARATE FEATURES THAT ARE BROADLY CLAIMED AS A SINGLE ELEMENT LACK WRITTEN DESCRIPTION SUPPORT

RIVERA v. ITC, Appeal No. 2016-1841 (Fed. Cir. May 23, 2017) (Reyna, Chen, and Linn).  Appealed from the U.S. ITC.  (Written Description)

Background:

In this case, Adrian Rivera (“Rivera”) filed a complaint with the U.S. International Trade Commission (“ITC”) alleging infringement of Rivera’s patent by Solofill, LLC (“Solofill”).  Moreover, the complaint alleged that Solofill’s beverage capsules, which are designed to fit into a Keurig beverage brewer, infringed Rivera’s patent directed to a pod adapter for a beverage brewer.

Rivera’s patent discloses a pod adapter assembly including a cartridge/receptacle that receives a “pod.”  The “pod” is broadly defined as a water-permeable pouch containing a brewing material, such as coffee.  Rivera’s patent discloses that the pod adapter assembly allows the pod to be inserted into the cartridge/receptacle and to function similar to a K-Cup, which allows the pod to be used in a Keurig beverage brewer.

First, the ITC found that Rivera’s patent was invalid for failing to comply with the written description requirement because the claims broadly recited “a container… adapted to hold brewing material.”  Then, the ITC found that “a container… adapted to hold brewing material” was not supported by the disclosure of the specification because the specification does not define a “container,” and instead only discloses the structural elements of the pod and the cartridge.  In addition, the ITC found the specification clearly discloses that the pod and the cartridge are distinct elements, whereas the “container” recited in the claims requires the features of both the pod and the cartridge.  In conclusion, the ITC also found that the distinction between the pod and the cartridge is fundamental to the problem and solution of the specification.  As a result, Rivera appealed.

Issue/Holding:

Does substantial evidence support the ITC’s determination that Rivera’s patent is invalid for lack of written description?  (continue reading)

Summary by:  Matt Stanford

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FEDERAL CIRCUIT EMPHASIZES DIFFERENCES IN DOCTRINE OF EQUIVALENTS ANALYSIS FOR CHEMICAL CASES

MYLAN INSTITUTIONAL LLC. V. AUROBINDO PHARMA LTD., Appeal No. 2017-1645 (Fed. Cir. May 19, 2017).  Before Lourie, Moore, and Reyna.  Appealed from E.D. Tex. (Judge Schroeder).  (Doctrine of Equivalents in Chemical Cases)

Background:

In this case, Mylan manufactures a generic version of the 1% ISB drug product Lymphazurin.  Moreover, following Lymphazurin’s withdrawal from the market in 2012, Mylan became the sole supplier of that type of drug product.  Then, in 2016, Aurobindo sought FDA approval for another generic version of Lymphazurin.  As a result, Mylan accordingly sued, alleging that Aurobindo infringed three patents of which Mylan was the exclusive licensee.  In conclusion, the district court granted Mylan a preliminary injunction against Aurobindo.  Hence, Aurobindo appealed.

Issue/Holding:

Did the district court err by granting Mylan a preliminary injunction?  (continue reading)

 Summary by:   Scott Strickland

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JOSEPH PHELPS VINEYARDS, LLC v. FAIRMONT HOLDINGS, LLC.

JOSEPH PHELPS VINEYARDS, LLC v. FAIRMONT HOLDINGS, LLC.Appeal No. 2016-1089 (Fed. Cir. May 24, 2017) (per curiam)  Appealed from TTAB.  (Likelihood of Confusion Fame)

Background:

Joseph Phelps Vineyards has been selling its INSIGNIA wine since 1978 and owned a federal registration for the mark INSIGNIA.  In 2012, Fairmont received a federal registration for the mark ALEC BRADLEY STAR INSIGNIA for cigars.  Phelps Vineyard petitioned for cancellation of Fairmont’s mark before the TTAB arguing that the fame of its mark increased the likelihood of confusion of the marks.  However, the TTAB rejected that argument – finding among other things that “Petitioner’s mark is not famous,” accorded the likelihood of confusion factor no weight and concluded that Respondent’s mark was not likely to cause confusion with Petitioner’s mark. Petitioner appealed.

Issue/Holding:

Did the TTAB err in applying an “all or nothing” measure of fame that is more akin to a dilution analysis than a likelihood of confusion analysis?  (continue reading)

Summary by:  Holly Ford Lewis

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AYLUS NETWORKS, INC. v. APPLE INC.

AYLUS NETWORKS, INC. v. APPLE INC., Appeal No. 2016-1599 (Fed. Cir. May 11, 2017).  Before Moore, Linn, and Stoll.  Appealed from N.D. Cal. (Judge Chen).  (IPR Prosecution History Estoppel)

Background:

In this case, Aylus owned U.S. Patent No. RE 44,412 (“the ‘412 patent”), directed to systems and methods for implementing digital home networks having a control point located on a wide area network.  Further, Aylus filed suit against Apple in the District Court, alleging that Apple’s AirPlay feature infringed the ‘412 patent.  In response, Apple filed two Inter-Partes Review (“IPR”) petitions challenging all of the claims of the ‘412 patent.  However, the Patent Trial and Appeal Board denied institution of the IPRs as to claims 2 and 21.

Furthermore, Apple filed a summary judgment motion in the District Court for non-infringement of claims 2 and 21.  The District Court granted the motion based on a narrow construction of the claim language.  This construction was partially based on statements Aylus had made in its preliminary responses to Apple’s petitions to initiate the IPR proceedings, which were deemed to create prosecution history estoppel.  Then, Aylus appealed.

Issues/Holdings:

Did the District Court err in holding that statements made in an IPR proceeding created prosecution history estoppel?  (continue reading)

Summary by:  Brian Repper

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