Conference & CLE Calendar

September 22, 2015 – “The Evolving World of Biosimilars Litigation” (McDonnell Boehnen Hulbert & Berghoff LLP) – 10:00 am to 11:15 am (CT) September 22, 2015 – “Advanced Conflict Waivers: How to Avoid Unpleasant Surprises” (Intellectual Property Ow…

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  • Webinar on PTAB Rules Changes

    Strafford will be offering a webinar/teleconference entitled “USPTO Rule Changes for PTAB Trial Proceedings — Navigating Changes to New Testimonial Evidence, Rule 11-Like Requirement, Claim Construction Standard, Motions to Amend, and More” on October…

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  • Denying Institution Where Petitioner had not Established a Reasonable Likelihood of Prevailing on at Least One Claim IPR2015-00873

    Takeaway: Grounds raised during a preliminary proceeding, but not made part of the instituted trial, are not raised “during” an inter partes review and thus cannot be the basis for estoppel under 35 U.S.C. § 315(e)(1). In its Decision, the … Continue reading

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  • Carla Hills weighs in against patent reform

    From TheHill –>

    We must not erode this incentive to develop novel ideas or restrict the opportunity for inventors to license their know-how. Unfortunately, there is legitimate concern that patent legislation currently pending before the U.S. Congress — H.R. 9 (the Innovation Act) and S. 1137 (the PATENT Act) — would do just that.

    A stated aim of the pending legislation is to stop abusive patent litigation. Without question those who seek to abuse the patent system should be rooted out for the same reasons that our courts guard against abusive litigation involving physical property. But as currently drafted, the bills would fundamentally weaken basic patent rights by protecting infringers at the expense of patent holders. This would be devastating to small and large entities that invent or seek licenses to use inventions of others.

    A particularly problematic component of the House and Senate bills is the so-called “customer stay” provision, which like other parts of the legislation is much broader than necessary to achieve its stated goals. The provision seeks to ensure that a business that buys and uses a patent-infringing off-the-shelf product may avoid litigation that is more appropriately brought against the manufacturer of the product. The provision would “stay” or stop litigation against such “customers” and force patent holders to first go after “upstream” manufacturers. The problem is that the definition of “customer” is so broad that the right to stay litigation would also apply to large manufacturers, assemblers, and retailers that may reap millions or even billions in profits from using and selling the infringing product or component.

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  • CAFC on laches in SCA Hygiene Products v. First Quality

    We convene en banc to resolve whether, in light of the
    Supreme Court’s recent decision in Petrella v. MetroGoldwyn-Mayer, Inc., 134 S. Ct. 1962 (2014), laches
    remains a defense to legal relief in a patent infringement
    suit. We conclude that Congress codified a laches defense
    in 35 U.S.C. § 282(b)(1) that may bar legal remedies.
    Accordingly, we have no judicial authority to question the
    law’s propriety. Whether Congress considered the quandary in Petrella is irrelevant—in the 1952 Patent Act,
    Congress settled that laches and a time limitation on the
    recovery of damages can coexist in patent law. We must
    respect that statutory law.
    Nevertheless, we must adjust the laches defense in
    one respect to harmonize it with Petrella and other Supreme Court precedent. We emphasize that equitable
    principles apply whenever an accused infringer seeks to
    use laches to bar ongoing relief. Specifically, as to injunc-
    tions, considerations of laches fit naturally within the
    eBay framework. In contrast, Menendez v. Holt, 128 U.S.
    514 (1888), and Petrella counsel that laches will only
    foreclose an ongoing royalty in extraordinary circumstances.

    As to reasoning:

    Four different portions of Aukerman’s reasoning are
    especially relevant to this case. First, we determined in
    Aukerman that laches was codified in 35 U.S.C. § 282.
    Aukerman explained that, “[a]s a defense to a claim of
    patent infringement, laches was well established at the
    time of recodification of the patent laws in 1952.” Id. at
    1029. We also credited P.J. Federico’s Commentary on the
    New Patent Act for its observation that the second paragraph
    of § 282 includes “equitable defenses such as laches,
    estoppel and unclean hands.” Id. (quoting P.J.
    Federico, Commentary on the New Patent Act, 35 U.S.C.A.
    1, 55 (West 1954) (hereinafter Federico Commentary)).

    Second, Aukerman addressed the argument that laches
    conflicts with 35 U.S.C. § 286, which limits recovery of
    damages to the six years prior to the complaint. We
    explained that “[i]n other areas of our jurisdiction, laches
    is routinely applied within the prescribed statute of
    limitations period for bringing the claim.” Id. at 1030
    (citing Cornetta v. United States, 851 F.2d 1372 (Fed. Cir.
    1988) (en banc) (military pay); Reconstruction Finance
    Corp. v. Harrisons & Crosfield Ltd., 204 F.2d 366 (2d
    Cir.), cert. denied, 346 U.S. 854 (1953) (breach of contract)).
    Moreover, we observed that § 286 (or a virtually
    identical analogue) “has been in the patent statute since
    1897,” and that, “[w]ithout exception, all circuits recognized
    laches as a defense to a charge of patent infringement
    despite the reenactment of the damages limitation
    in the 1952 statute.” Id. Aukerman also noted that
    “section 286 is not a statute of limitations in the sense of
    barring a suit for infringement.” Id. Rather, “the effect of
    section 286 is to limit recovery to damages for infringing
    acts committed within six years of the date of the filing of
    the infringement action.” Id. Finally, we reasoned that
    laches and a statute of limitations are not inherently
    incompatible. “By section 286, Congress imposed an
    arbitrary limitation on the period for which damages may
    be awarded on any claim for patent infringement. Laches,
    on the other hand, invokes the discretionary power of
    the district court to limit the defendant’s liability for
    infringement by reason of the equities between the particular
    parties.” Id. (emphasis in original).
    Third, we rejected the argument “that laches, by reason
    of being an equitable defense, may be applied only to
    monetary awards resulting from an equitable accounting,
    not to legal claims for damages.” Aukerman, 960 F.2d at
    1031. According to the Aukerman court, the merger of
    law and equity courts allowed laches to bar legal relief.
    When in 1915 Congress enacted 28 U.S.C. § 398—which
    authorized parties to plead equitable defenses at law
    without having to file a separate bill in equity—“laches
    became available to bar legal relief, including patent
    damage actions.” Id. We also found persuasive the fact
    that Federal Rule of Civil Procedure 8(c) recognizes laches
    as a defense in civil actions. Id.
    Fourth, Aukerman considered whether laches bars recovery
    of pre-filing damages only, or whether it precludes
    the entire suit. In ruling that laches prohibits recovery of
    pre-filing damages only, Aukerman relied on the Supreme
    Court’s Menendez decision. Aukerman quoted the following
    portion of Menendez:


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  • Granting Institution of Inter Partes Review Over Objection that All Real Parties-in-Interest Were Not Identified IPR2015-00864

    Takeaway: Petition was not dismissed where Patent Owner was able to show some blurring of the corporate separation between parent and subsidiaries, because Petitioner was able to declare that the parent company was not paying or making any decisions related … Continue reading

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  • Final Written Decision Turning on Claim Construction IPR2014-00639

    Takeaway: A request for reconsideration of the Board’s previous claim construction, without a cogent explanation of how the Board’s claim construction is in error, may not be persuasive. In its Final Written Decision, the Board concluded that Petitioner has shown … Continue reading

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  • Cutting-Edge Energy Tech Presented At Swiss Energy And Climate Summit

    BERN – Everybody knows how annoying it is to run out of battery power for mobile devices. In the same way, storing energy is a continuing issue for renewable energy due to its non-continuous nature. A number of innovations presented at this week’s Swiss Energy and Climate Summit in Bern sought to address that problem.The yearly event invites Swiss and international speakers to put forward the latest in technology. And according to some participants from start-ups, intellectual property is key, but their IP strategy relies more and more on both patents and trade secrets.

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  • Irreparable Harm For Permanent Injunction Does Not Require Proof That Infringing Features Were The Sole Cause Of Lost Sales

    Authored by Paul Qualey, Dervis Magistre, and Vivian Cheng Digest of Apple Inc. v. Samsung Electronics Co., Ltd., No. 2014-1802 (Fed. Cir. Sept. 17, 2015) (precedential). On appeal from N.D. Cal. Before Prost, Moore, and Reyna. Procedural Posture: Plaintiff Apple … Continue reading

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  • Well, that didn’t last long…

    By: Stuart P. Meyer Last week, I reported on a September 4 decision from the District of Massachusetts in which the court emphasized that the presumption of validity applies to subject matter eligibility. This week, another judge in the same district invalidated all asserted claims of a patent on a fever thermometer based on subject matter ineligibility. Exergen Corp. v. Thermomedics, Inc., 13-11243-DJC (D. MA. September 15, 2015). The case is noteworthy because, among other reasons, it makes no mention whatsoever of the presumption of validity or what burden of persuasion the defendants had with respect to their § 101…

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  • R & L Carriers v. Qualcomm

    R+L Carriers, Inc. (“R+L”) brought suit against, inter
    alia, Qualcomm, Inc. (“Qualcomm”), asserting infringement
    of the claims of U.S. Patent No. 6,401,078 (“the ’078
    patent”). While the case was pending, R+L filed for ex
    parte reexamination of the ’078 patent. Although the
    patent survived, R+L added language to all of the claims
    at issue. Because the district court determined that the
    new claims were not substantially identical to the initial
    claims of the ’078 patent, and because there was no dispute
    that Qualcomm ceased its allegedly infringing activity
    before the reexamination certificate issued, R+L
    stipulated to final judgment, dismissing its infringement
    claim against Qualcomm. R+L appeals the district court’s
    determination that the amendments made during reexamination
    resulted in a substantive change in claim
    scope. For the reasons set forth below, we affirm, albeit
    on slightly different grounds than those relied upon by the
    district court.

    As to intervening rights

    As an initial matter, we disagree with both Qualcomm
    and R+L on the primary premises of their arguments. As
    for Qualcomm, we do not agree that claim 1 was substantively
    narrowed in reexamination because insertion of the
    term “advance” into the claims limited claim 1 to only
    computer-generated loading manifests. Qualcomm reads
    too much into the term “advance,” which, as discussed
    below, was added to the claim for reasons unrelated to the
    format for preparing the loading manifests. Speculation
    about what R+L was attempting to accomplish vis-à-vis
    the N&M reference does not change our view.
    Under the statute and our prior case law, it is irrelevant
    why an amended claim is narrowed during reexamination,
    or even whether the patentee intended to narrow
    the claim in a particular way. If the scope of the amended
    claim is not “substantially identical” to the scope of the
    original claim—based on a normal claim construction
    analysis—per § 252, that fact affects intervening rights.
    See 35 U.S.C. § 307(b).

    The bottom line

    Accordingly, we conclude that amended claim 1 is not
    “substantially identical” to original claim 1. 35 U.S.C.
    § 252. R+L is, thus, not entitled to infringement damages
    prior to issuance of the reexamination certificate for the
    ’078 patent. Since R+L concedes that Qualcomm did not
    perform any allegedly infringing conduct after the PTO
    issued the reexamination certificate, the district court
    properly entered judgment dismissing the case against
    For the foregoing reasons, we affirm the judgment of
    the district court dismissing R+L’s infringement claims
    against Qualcomm.


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  • En Banc Federal Circuit: Supreme Court Petrella Decision Curtailing Laches In Copyright Law Does Not Curtail Laches In Patent Law

    Authored by Paul Qualey, Dervis Magistre, and Vivian Cheng Digest of SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, No. 2013-1564 (Fed. Cir. Sept. 18, 2015) (precedential). On appeal from W.D. Ky. Before Prost, Newman, Lourie, Dyk, Moore, … Continue reading

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  • Apple wins against Samsung at CAFC

    Injunction win for Apple in smart phone wars.

    From the decision:

    Despite the narrowness of Apple’s proposed injunction,
    the district court denied Apple’s motion, finding that
    Apple had not shown that it would suffer irreparable
    harm without an injunction. Id. at *23. Predicated
    entirely on this finding, the district court reasoned that
    Apple could not establish that monetary damages were
    inadequate. Id. at *19. Although the district court found
    that the public interest favored Apple’s request and that
    the narrowness of Apple’s proposed injunction tilted the
    balance of hardships in Apple’s favor, it determined that
    these factors did not overcome Apple’s lack of irreparable
    harm. Id. at *23. Apple appealed. We have jurisdiction
    under 28 U.S.C. § 1295(a)(1).


    The district court erred when it found the first two
    eBay factors weighed against an injunction. Although the
    evidence may not make a strong case of irreparable harm,
    Apple has satisfied the causal nexus requirement and
    therefore established irreparable harm.2 Apple has also
    established that the harm it will suffer is not easily
    compensable at law. Moreover, as the district court
    found, the balance of hardships and public interest weigh
    strongly in favor of an injunction. Given this, the district
    court abused its discretion when it did not enjoin Samsung’s
    infringement. If an injunction were not to issue in
    this case, such a decision would virtually foreclose the
    possibility of injunctive relief in any multifaceted, multifunction
    technology. We vacate the district court’s order
    denying Apple’s proposed injunction and remand for
    further proceedings consistent with this opinion.

    See Wall Street Journal article.

    link to case:

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