Patent

In an ongoing dispute between VirnetX Inc. vs. Apple Inc., Apple Inc. had challenged the validity of two asserted VirnetX patents (US Patent Nos. 6,502,135 and 7,490,151).  Apple was initially unsuccessful in its IPR institution requests, because it was time barred under the IPR statute of limitations, which requires a PTAB IPR challenge to be brought within 1-year from the date that the complaint is served on the defendant.  After several failed attempts, Apple Inc. recently circumvented the IPR statute of limitations, via 35 U.S.C. 315(c) joinder to another petitioner, The Mangrove Partners Master Fund, Ltd.

In the perpetual Apple v. Samsung (and Samsung v. Apple) battles for patent dominance, the Federal Circuit's most recent decision invalidated two of Apple's asserted patents, notwithstanding a jury verdict finding the opposite.  The two claims were directed to Apple's mobile device patents, including automated spell corection, slide-to-unlock (found in the lower court to have been infringed by Samsung devices, and resulting in $119 million in damages).  The claimed features were invalidated on appeal to the Federal Circuit based on 35 U.S.C. 103, in that each of the "slide-to-unlock" and "spell correction" claims were obvious in view of the prior art.  In support of the patents, Apple presented evidence of copying, industry praise, long-felt but unsolved need, and commercial success all being secondary considerations of nonobvious.  The Federal Circuit reviewed Apple's presented evidence, and collectively found the secondary evidence to be too weak to overcome the evidence of obviousness based on the prior art, and reversed the lower court's jury verdict.

In a recent decision in Lumen View v. FindTheBest.Com, the Federal Circuit held that Section 285 of U.S. patent laws does not support the deterrence based award of fees or sanctions, instead the Federal Circuit suggested that sanctions under Rule 11 of the FRCP to be the more appropriate vehicle.  The Federal Circuit in this case did affirm the lower court's "exceptional case" finding under 35 U.S.C. 285 as well as the award of "reasonable attorney fees", but has vacated the doubling of the award to "deter baseless litigation" as unjustifiable.

The Supreme Court has granted writ of certiorari in a pending Inter Partes Review (IPR) challenge in Cuozzo Speed Tech v. Lee.  The questions on review relate to whether the court of appeals erred in holding that in IPR proceedings, the PTAB may construe claims in an issued patent according to their broadest reasonable interpretation, rather than their plain and ordinary meaning, as well as on whether the PTAB's decision to institute an IPR proceeding is itself unreviewable.

The new Federal Rules of Civil Procedure (FRCP) will take effect on December 1, 2015, and shall govern all proceedings in civil cases commenced thereafter.  Specific to patent litigation, the 2015 FRCP eliminated the previous form patent complaints (i.e. Civil Form 18) that allowed patentees to file a complaint without specifically setting forth its theory of infringement.  After taking effect, the new FRCP will require a patentee's initial complaint to comply with the Supreme Court rulings in Twombly and Iqbal, under which the patentee must set forth sufficient facts to make a claim for relief plausible.  In patent cases, courts may therefore begin requiring a showing of which patent claims are being infringed and possibly the inclusion of at least one claim chart comparing the accused product with at least one claim.

The standard for willful patent infringement will be reviewed this term by the Supreme Court of the United States, as reported by SCOTUSblog. The Court agreed to accept two cases that involve the issue of enchanced damages in patent infringement litigation, Halo Electronics v. Pulse Electronics, and Stryker Corp v. Zimmer. Under the Patent Act, the owner of a patent may seek triple damages where willful infringement has been proven. The Supreme Court is expected to consider the proper framework for determining whether infringement in a particular case is willful. A decision in these consolidated cases will be rendered by June 2016. 

The United States District Court for the Eastern District of Texas recently granted a Motion for Summary Judgment seeking to dismiss a patent infringement suit on the basis that the asserted claims are directed to ineligible subject matter under the two-step test recently reaffirmed by the United States Supreme Court in Alice Corporation Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014). Reportedly, one effect of the ruling was to dispose of 168 patent cases pursued by the same Plaintiff, asserting the same claims against separate Defendants. The Court has also requested briefing on an award of attorney's fees.

Monday, 21 September 2015 21:36

Federal Circuit Rules Laches Can Limit Patent Damages

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The equitable defense of laches can apply to claims of patent infringement damages suits, even when they are filed within the six year statutory period as defined by 35 U.S.C. §286, ruled the en banc Federal Circuit in SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC., Fed Cir., No. 2013-1564 (Sept. 18 2015).  In this narrow 6-5 decision, the court sitting en banc affirmed its earlier summary judgment, which dismissed SCA's patent infringement suit for laches, from September of last year.

In an unanimous decision on remand from the Supreme Court, the Federal Circuit issued its opinion in Akamai Technologies, Inc. v. Limelight Networks, Inc. (2015), which effectively broadened the category of divided patent infringement of a method claim under 35 U.S.C § 271(a), holding that when all steps of a method claim are not actually being performed by one party, but by multiple actors, all of the steps can be attributed to a single actor even where the parties are acting purely in an arms-length relationship with each other.

Nine states, including Florida, have recently enacted "anti-patent troll" legislation in 2015, joining the seventeen states that passed similar legislation last year in 2014.  Florida's HB 439 ch. 501 part VII ("Patent Troll Prevention Act"), enacted in the 2015 session, prohibits bad faith assertions of patent infringement from being made, and provides a number of factors that allow a court to consider whether an allegation was made in bad faith.  A determination of bad faith includes damages and reasonable attorney fees.

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