Last week, Acting USPTO Director Coke Morgan Stewart granted Director Review and vacated the PTAB’s decision instituting several inter partes reviews (IPRs) in Motorola Solutions, Inc. v. Stellar, LLC. [IPR2024-01205, -01206, -01207, -01208 Director Review Decision] Stewart’s March 28 decision applies the Fintiv factors more aggressively than the Board, signaling a shift toward increased discretionary denials under 35 U.S.C. § 314(a). This is a situation where denial seems appropriate in my opinion. The Stellar’s infringement lawsuit was filed in August 2024, with Motorola waiting 11 months to file IPR petitions. District Court Judge Sam Jordan (E.D.Tx) has has already issued Markman orders and parties have filed their summary judgment. A jury trial is set for July 2025. (more…)
The Federal Circuit’s March 2025 decision in Wash World v. Belanger, attempts to clarify an important distinction between apportionment and convoyed sales in patent damages jurisprudence, dissolving nearly $2.6 million from a jury’s $9.8 million lost profits award. Wash World Inc. v. Belanger Inc., No. 2023-1841, slip op. at 26 (Fed. Cir. Mar. 24, 2025). A jury found that Wash World’s “Razor EDGE” car wash system infringed Belanger’s U.S. Patent No. 8,602,041, which claimed a vehicle spray washer with lighted spray arms. Adding lights is a simple transformation, but apparently the particular arrangement of flashing lights running down the length of each during vehicle entry to create a “goalpost effect” that guides drivers to position their vehicles.
The infringed claim covers a “a spray-type car wash system” that expressly recites a carriage and spray arms with their lighting system. Although other components such as dryers are traditionally part of the wash system and sold together, the claims themselves do not recite anything about the dryers or additional components.
In denying JMOL, the district court analyzed the damage award under the apportionment standards of Panduit Corp. v. Stahlin Bros. Fibre Works, Inc., 575 F.2d 1152 (6th Cir. 1978). The judge concluded that the patentee Belanger sufficiently accounted for apportionment of lost profits between patented and unpatented features by satisfying the Panduit factors. I.e., the jury had enough evidence to reach its decision. On appeal though, the Federal Circuit shifted focus — holding that the non-patented features required a convoy analysis under Rite-Hite Corp. v. Kelley Co., 56 F.3d 1538 (Fed. Cir. 1995). Ultimately, the court issued a remittitur — ordering the district court to shrink the ultimate award. (more…)
The Federal Circuit has ordered sua sponte en banc review in Lesko v. United States, No. 2023-1823. The case presents important questions about statutory interpretation in the wake of the Supreme Court’s decision in Loper Bright Enterprises v. Raimondo, 603 U.S. 369 (2024), and could significantly impact the ability of the Office of Personnel Management (OPM) to determine the scope of its own power. Although this is not a Department of Government Efficiency (DOGE) case, DOGE has utilized OPM as a central conduit of its RTO and RIF initiatives.
This is a very interesting situation because there are almost 70 years of cases interpreting a specific statutory provision about overtime being “officially ordered or approved” and thus subject to overtime pay. Courts initially gave their fairly broad interpretation of the statute, but OPM later implemented narrow regulations that cut-off substantial overtime pay. In subsequent cases, the Federal Circuit continued to assert that its broad interpretation was correct, but that the statute was ambiguous enough to allow for Chevron deference to the agency. Now that Chevron is gone, and the court has agreed to take the case en banc, it seems to be a likely easy win for the appellant seeking overtime pay in a class action setting. (more…)
In October 2024, the USPTO terminated proceedings in approximately 3,100 patent applications due to the fraudulent use of a U.S. practitioner’s signature. The bulk of the applications are Chinese origin filed through Dr. Yu “Mark” Wang, who operated a patent services firm called Wayne and King LLC (W&K). According to USPTO findings, Wang, who was not a registered patent practitioner, used the electronic signature of registered patent agent without her knowledge or consent. Most recently, one of the impacted patentees – Diamond Art Club LLC – filed a lawsuit challenging the the termination based upon “arbitrary and capricious” action by the agency. In particular, the patent applicant argues that it is being unfairly punished as the victim: “If the misconduct described by the Defendants did in fact occur, Plaintiff was the victim of the misconduct.” [DAC Complaint]
In a significant development affecting the legal profession and potentially patent practice, Judge Richard J. Leon of the U.S. District Court for the District of Columbia has partially granted WilmerHale’s motion for a temporary restraining order against President Trump’s recent executive order targeting the firm. Wilmer Cutler Pickering Hale and Dorr LLP v. Executive Office of the President, No. 25-cv-917 (D.D.C. Mar. 28, 2025).
The firm’s complaint, filed on March 28, 2025, names dozens of federal agencies and officials as defendants, including Coke Morgan Stewart in her official capacity as Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the United States Patent and Trademark Office. This inclusion is particularly relevant to patent practitioners, as the order threatened to severely impair WilmerHale’s ability to represent clients before the USPTO.
WilmerHale’s complaint noted that its Intellectual Property department regularly represents “patent applicants, patent holders, and patent challengers before U.S. Patent and Trademark Office in patent prosecution and post-grant proceedings.” The executive order, if fully implemented, would have restricted WilmerHale attorneys’ access to federal buildings and limited federal employees from engaging with them, potentially preventing effective advocacy before the USPTO.
Judge Leon granted temporary relief as to Sections 3 and 5 of the executive order, which would have required government contractors to disclose business relationships with WilmerHale, threatened government contracts involving the firm, restricted WilmerHale employees’ access to federal buildings, and limited government employees from engaging with firm personnel. The court found these provisions likely violate the First Amendment, with Judge Leon noting that “the retaliatory nature of the Executive Order at issue here is clear from its face.” The parties must file a joint status report by March 31, 2025, proposing an expedited schedule for further proceedings. (more…)
In a significant procedural shift, Acting USPTO Director Coke Morgan Stewart has announced a new “Interim Process for PTAB Workload Management” that fundamentally changes aspects of how America Invents Act (AIA) patent challenges are handled. The March 26, 2025 memorandum bifurcates the institution decision process by centralizing discretionary denial authority with the Director herself. This follows the Feburary 28, 2025 action rescinding former Director Vidal’s June 2022 memorandum that had significantly curtailed discretionary denials based on the Fintiv factors when parallel district court litigation is pending. I expect this change will substantially increase the percent of IPR/PRG petitions denied at the institution stage.
USPTO leadership appears to have a goal of increasing discretionary denials to protect patentees from harassment and delay in enforcing their property right. In addition, though, it appears that the Office has a genuine concern about workload management as stated in the memo. The PTAB is being stretched thin by staff shortages caused by the return-to-office (RTO) requirement coupled with reduction-in-force (RIF) efforts from President Trump and Elon Musk’s White House. A substantial number of PTAB judges have quit and further reductions are expected in the coming month. The memorandum indicates that the new procedures are “temporary in nature due, in part, to the current workload needs of the PTAB.”
One difficulty with discretionary denials in the past is that patentees had little room in their briefs to address the issue in any detail. As discussed below, the new rule provides substantial space for patentees to brief the issue. This will also alter district court proceedings, with patentees again seeking to move faster at the outset to obtain an early trial date and accused infringers seeking delay as well as preemptive stays. (more…)
The pending cert petition in Celanese v. ITC asks whether the sale of products made using a secret process triggers the on-sale bar post-AIA. In my view, the case sets up a fundamental tension between a straight reading of the statutory text and longstanding precedent. My bet is on the precedent.
Although Congress has repeatedly tinkered with U.S. patent law over the past several decades, the America Invents Act of 2011 was clearly the most dramatic rewriting of the law since 1952. The fundamental change to Section 102 was the transition from first-to-invent to first-to-file. In addition, the law was amended throughout to focus on the “claimed invention” rather than simply the “invention.” This second change is important for the Celanese case. 35 U.S.C. § 102(a)(1) now reads:
A person shall be entitled to a patent unless … (a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
The AIA also added a definition of the new term, defining “claimed invention” as “the subject matter defined by a claim in a patent or an application for a patent.” 35 U.S.C. § 100(j). This heightened specificity was largely downplayed as a clarification that courts were already following. In particular, for anticipation situations courts were already asking whether the asserted prior art disclosed the invention as claimed.
But, one key divergence from this practice involves … (more…)
In a significant decision, the Federal Circuit has established a more rigorous test for determining when a published patent application claiming priority to a provisional application can be considered prior art as of its provisional filing date. In re Riggs, Case No. 2022-1945 (Fed. Cir. Mar. 24, 2025). The case is decided under pre-AIA 102(e), and so it is not entirely clear whether the same law applies post-AIA.
The basic idea behind 102(e)/102(a)(2) is intuitive — the earlier-filed application should be given priority over the later-filed application. But, the actual doctrine has always been controversial because it creates what I call “secret springing prior art.” When an application is filed but not yet published, it exists as a confidential document at the USPTO that no competitor can access. When that application eventually publishes (typically 18 months after filing), it suddenly becomes prior art — backdated to its original filing date. This creates a situation where inventors might develop what they believe is novel technology, only to have an earlier-filed but later-published application “spring forth” as invalidating prior art.
Riggs focuses on reaching back even further – to the provisional application filing date. The key holding (more…)
There is an almost ritualistic moment anytime I teach property and estates law. The hand shoots up and a student asks what happens when those listed in a will – murder their benefactors to accelerate inheritance. There tends to be some nervous laughter as well as genuine curiosity. Virtually all jurisdictions have created some “slayer rule” stemming from the common law principle that “no one shall profit from their own wrong,” preventing killers from inheriting from their victims.
I wonder if this same principle—that wrongdoers should not profit from their misconduct—resurfaces in the context of Purdue Pharma’s recent Supreme Court filing. After playing a central role in fueling the devastating opioid OxyContin epidemic, Purdue now seeks to extend and defend patents on abuse-deterrent formulations designed to mitigate the very crisis they helped create. But, this ethical dilemma may be somewhat resolved with Purdue Pharma’s March 2025 reorganization plan that proposes transforming into a “public benefit company” dedicated to addressing the opioid crisis. The best analogy here may be to biblical Saul who through spiritual revelation was transformed from a persecutor of Christians to their most fervent apostle. The plan for Purdue is a similar death and rebirth — albeit part of a negotiated legal remedy rather than a moral or spiritual conversion. The company is being dissolved and reorganized with a new mission, but this is happening through court-supervised bankruptcy proceedings with specific financial and structural requirements.
Lets dig into this pending case: Purdue Pharma was recently granted a 30-day extension to submit its petition for certiorari, seeking review of a Federal Circuit decision that invalidated several OxyContin-related patents. As is usual, the extension application includes strong foreshadowing that the eventual petition will focus on the core question of obviousness — and particularly the role of objective indicia of non-obviousness.
The copyright dispute over Ed Sheeran’s song “Thinking Out Loud” has made its way to the Supreme Court’s doorstep. The petition raises questions about judicial deference to administrative interpretations and the scope of copyright protection for musical compositions under the 1909 Copyright Act. In the case, the Second Circuit had sided with Sheeran — affirming dismissal of the infringement claim based largely on a technical limitation of pre-1976 copyright law. Structured Asset Sales, LLC v. Sheeran.
The underlying dispute centers on allegations that Sheeran’s Grammy-winning “Thinking Out Loud” (2014) infringes the copyright of Marvin Gaye and Ed Townsend’s “Let’s Get It On” (1973). Structured Asset Sales (SAS) owns a partial interest in Townsend’s share and contends that Sheeran copied protected elements from the iconic soul classic.
The Second Circuit’s decision hinged on the fact that the copyright was pre-1976. Under the 1909 Copyright Act, the scope of copyright protection extends only to the elements contained in the “deposit copy” submitted to the Copyright Office at registration. In this case, that meant only the elements in the handwritten sheet music deposited in 1973, not the additional musical elements found in Gaye’s sound recording. (more…)
This new decision is a good read for patent prosecutors and litigators. The decision somewhat limits use of prosecution history for claim construction across patent families — and ultimately vacates the district court judgment of non-infringement. The case offers something of a roadmap for patent prosecutors to avoid prosecution disclaimer spreading across family members.
Maquet Cardiovascular owns U.S. Patent No. 10,238,783 claims an integrated guide mechanism for deploying blood pumps to specific locations in a patient’s circulatory system. The integrated guide eliminates the need for supplemental guiding mechanisms. Maquet sued Abiomed for infringement of several claims of both the ‘783 patent and its parent, U.S. Patent No. 9,789,238.
The district court claim construction turned heavily on prosecution history from family member patents. Specifically, the district court added two key negative limitations to the disputed claim terms based on prosecution disclaimer: (1) the “guide wire lumen is not distal to the cannula,” derived from prosecution of the parent ’238 patent, and (2) the “guide wire does not extend through the free space in between the rotor blades,” based on prosecution history from the great-great-grandparent ’728 patent. (more…)
In a significant win for the generic pharmaceutical industry, the Federal Circuit recently affirmed that legal expenses incurred defending Hatch-Waxman patent litigation can be deducted immediately as ordinary business expenses rather than capitalized. The decision in Actavis Laboratories FL, Inc. v. United States, No. 2023-1320 (Fed. Cir. Mar. 21, 2025), affirms the earlier ruling by Court of Federal Claims Judge Ryan Holte in favor of Actavis. The U.S. Government will now need to issue a tax refund of about $12 million just for 2008-2009. (more…)
In a decision newly designated as “informative” by the USPTO, the Patent Trial and Appeal Board (PTAB) provided important guidance on the procedural requirements for inter partes review (IPR) petitions, particularly consistency between IPR proceedings and parallel litigation.
In its decision, the Board exercised discretion to deny the petition because the petitioner failed to properly address claim construction, particularly whether the claim terms were means-plus-function under 35 U.S.C. §112(f). The petitioner had argued in related district court litigation that certain “component” terms (e.g., “mode-determining component,” “first detecting component”) were means-plus-function terms and thus indefinite due to lack of corresponding structure. However, in the IPR petition, the petitioner adopted a contradictory position—arguing that no explicit construction was needed and applying plain and ordinary meaning.
The PTAB found this contradictory position problematic because the petitioner had emphasized in district court proceedings that the classification as means-plus-function terms was “case-dispositive.” The Board concluded the petitioner violated 37 C.F.R. §42.104(b)(3) by failing either to provide constructions explicitly, identify structure, or adequately justify its contradictory positions. Thus, the majority denied institution under 35 U.S.C. §314(a) due to procedural deficiencies in the petition.
The press bulletin release from the USPTO states:
In this decision denying institution, the Board addresses circumstances in which a petitioner argues in district court that a claim limitation should be construed as means-plus-function and argues in a petition for inter partes review that the PTAB should construe the same limitation using the plain and ordinary meaning. The majority opinion determines that the petition should, at a minimum, explain why the different positions are warranted or, alternatively, set forth a means-plus-function construction for the limitation.
Here, the denial was based on dual issues of (1) failure to discuss the MPF interpretation; and (2) clear contradiction with statements in the district court. Without the contradiction, I expect the panel would likely have been more lenient – especially in a situation like this where the claims do not use the word “means.” Likewise, had Cambridge Mobile acknowledged their district court position and provided some explanation for using plain meaning in the IPR context, the outcome might have been different, as the Board seems more concerned with the unexplained strategic inconsistency rather than the mere absence of MPF analysis. (more…)
The Federal Circuit’s short precedential decision in Realtek v. ITC & DivX addresses ITC sanctions proceedings. The alleged bad act here involves patentee DivX who arguably altered its infringement theory against Realtek midstream and then ultimately dismissed its complaint against the Taiwanese semiconductor company after that pathway was also cut off. Realtek thought that the ITC should sanction the patentee, but the ITC refused. The Federal Circuit recently dismissed the appeal — holding that the court had no power to review this abuse of discretion claim.
Although the court’s ultimate conclusion may be correct here, I explain below how the court’s approach to the analysis is wrong. (more…)
In an unprecedented move, the Secretary of Commerce is terminating all current appointments to the Patent Public Advisory Committee (PPAC) and Trademark Public Advisory Committee (TPAC), effectively removing the entire membership of both committees. New members will apparently be appointed shortly, with the USPTO planning to proceed with previously scheduled public committee meetings in May 2025. The statute requires that “any vacancy on an Advisory Committee shall be filled within 90 days after it occurs.”
Although my memory is sometimes faulty, I believe that this is the first time in the committees’ 25 year history that an incoming presidential administration has dismissed all members. The dismissed PPAC includes Loletta Darde, Earl Bright, Henry Hadad, Lateef Mtima, Marvin J. Slepian, Olivia Tsai, Maria Anderson, Idris McKelvey, and Jennifer Yokoyama. The last three of these were appointed in January 2025 — making them immediately suspect to the new administration seeking to make dramatic departures from approaches taken by President Biden’s administration. In general, this group was all put in place under President Biden and would have likely been a contentious group to deal with — potentially authoring negative reports and asking difficult questions.
The new committees will be more friendly to the new administration, but my hope is that they will still be able to provide independent guidance and counsel to the USPTO Director. The effectiveness of these advisory committees has always depended on their ability to bring diverse perspectives and constructive criticism to USPTO operations, rather than simply rubber-stamping agency decisions. While political alignment with the administration may facilitate communication, the value here is really derived from member expertise, connection to practice, and willingness to challenge assumptions when necessary. (more…)
I’m delivering a U.S. patent law year-in-review for the past year or so. Here are Nine of the topics that deserve some focus.
1. The New USPTO under President Trump: The greatest ongoing issue is the about-face from President Trump to President Biden. The ultimate direction and outcome will become more clear as we move through 2025, but there have already been dramatic shifts, especially focused on workforce RTO and RIF and elimination of non-core USPTO activities. Meanwhile backlog is growing again.
2. The Only Federal Circuit En Banc Decision – LKQ v. GM: Shifts in design patent obviousness analysis moving away from the Rosen-Durling test toward the more flexible KSR standard. We’ll talk through how the USPTO is responding; global expansion of design rights; and the 20% rise in design patents in 2024 (while also having a growing backlog).
The Supreme Court has denied BMC Software’s petition for writ of certiorari — formalizing the Fifth Circuit decision that nullified a $1.6 billion judgment against IBM. The appellate court had overturned the district court’s breach of contract finding and its subsequent large damages award.
This case involves two large companies, each with billions of dollars in annual revenues. But, the setup will be familiar to so many innovative companies across the nation that are forced by market realities to do business with the very competitors that are likely to be their undoing. Small businesses frequently find themselves in Faustian bargains — one example being selling products on Amazon while knowing the tech giant is carefully analyzing customer interactions to identify profitable markets for directly competing products. (more…)
The Federal Circuit has affirmed the denial of a preliminary injunction against Amgen’s biosimilar version of Regeneron’s blockbuster drug EYLEA (aflibercept). Regeneron Pharms., Inc. v. Mylan Pharms. Inc., No. 2024-2351 (Fed. Cir. Mar. 14, 2025) (Lourie, J.). This latest ruling stands in contrast to the court’s January 2025 decisions upholding preliminary injunctions against Samsung Bioepis and Formycon, effectively blocking their biosimilar launches. All three cases are part of consolidated multi-district litigation in the Northern District of West Virginia.
Each appeal involves the same U.S. Patent No. 11,084,865, which covers formulations of Regeneron’s aflibercept, an ophthalmic drug used to treat angiogenic eye disorders by inhibiting vascular endothelial growth factor (VEGF). EYLEA generates approximately $6 billion in annual sales, making the stakes exceptionally high for Regeneron, the biosimilar manufacturers, and patients as well.
The critical distinction in Amgen’s case is its distinctive formulation approach. While Samsung Bioepis and Formycon developed biosimilars that, like EYLEA, contain a separate buffer component, Amgen developed a “self-buffering” formulation where the aflibercept protein itself provides sufficient buffering capacity to stabilize the formulation without requiring a separate buffer. (more…)
The Federal Circuit’s recent decision in In re Xencor, Inc. (Fed. Cir. March 13, 2025) confirms what patent practitioners have long suspected – Jepson claim formats carry significant drawbacks that outweigh their potential benefits. In a decision issued March 13, 2025, the court held that the limiting preamble of a Jepson claim must be supported by sufficient written description, adding yet another reason to avoid this increasingly rare claim format.
Background on Jepson Claims
Jepson claims, named after Ex parte Jepson (1917), follow a specific format that begins with a preamble describing known prior art elements, followed by a transition phrase like “wherein the improvement comprises,” and concluding with the new elements that constitute the claimed improvement.
Although 37 CFR § 1.75(e) states that improvement inventions “should” use this format, practitioners have almost universally abandoned it. As the chart shows, the percentage of U.S. patents using Jepson claims has plummeted from around 8% in the early 1980s to nearly 0% today.
As I’d discuss below, Xencor offers another significant risk reason to avoid using Jepson claims. However, practitioners had already largely abandoned them for multiple compelling reasons. The central problem is that Jepson claims create at least an implied admissions about what constitutes prior art, potentially making inventions appear as minor improvements rather than significant advances. Irving Kayton and Gene Quinn – folks who have both trained thousands of patent attorneys – have long warned that Jepson claims should be avoided. Gene wrote: “No patent attorney in their right mind would follow this suggestion” when referring to the §1.75(e) recommendation to use Jepson format.
The Xencor decision now adds an additional major drawback: the need to provide written description support for both the improvement and the preamble, creating a “worst of both worlds” scenario where applicants must describe the prior art with the same level of detail as their improvement, even though they’ve implicitly admitted the preamble content isn’t novel.
The Xencor Decision
USPTO’s Appeals Review Panel (ARP) (part of the PTAB) had rejected Xencor’s patent application for anti-C5 antibodies. The application included claim 8, written in Jepson format:
In a method of treating a patient by administering an anti-C5 antibody with an Fc domain, the improvement comprising:
said Fc domain comprising amino acid substitutions M428L/N434S as compared to a human Fc polypeptide,
wherein numbering is according to the EU index of Kabat,
wherein said anti-C5 antibody with said amino acid substitutions has increased in vivo half-life as compared to said antibody without said substitutions.
Xencor argued that only the improvement portion of its Jepson claim (after the “improvement comprising” transition) required written description support. The company contended that because the preamble was admittedly prior art, it shouldn’t need to demonstrate possession of what was already known.
The Federal Circuit firmly rejected this argument, holding that “the limiting preamble of a Jepson claim must be supported with sufficient written description.” Judge Schroeder, sitting by designation on the court wrote the opinion and explained:
[T]he Jepson claim invention is the totality of what is set out in the claim. . . . The invention is not only the claimed improvement, but the claimed improvement as applied to the prior art, so the inventor must provide written description sufficient to show possession of the claimed improvement to what was known in the prior art.
The court reasoned that allowing patentees to avoid written description requirements for Jepson preambles would enable abuse:
A patentee cannot be permitted to use a Jepson claim to avoid the requirement that she be in possession of the claimed invention simply by asserting something is well-known in the art.
As an example, the court noted that “a patentee cannot obtain a Jepson claim with a preamble that says that a time machine is well-known in the art without describing a time machine.”
On the facts, the court affirmed that Xencor failed to provide adequate written description for both the genus of anti-C5 antibodies and the method of “treating a patient” mentioned in the preamble. Despite Xencor’s arguments to the contrary, the Appeals Review Panel had correctly determined that the company hadn’t established that anti-C5 antibodies were well-known in the art.
Claim 9 in the Xencor case, though not drafted in Jepson format, faced similar scrutiny regarding its preamble. The claim began with “[a] method of treating a patient by administering an anti-C5 antibody comprising,” and Xencor argued that only the “administering” portion was limiting, while “treating a patient” was merely contextual. The Federal Circuit disagreed, finding that “treating a patient” was indeed limiting because it gave “life, meaning, and vitality” to the claim, particularly to the “increased in vivo half-life” limitation. This determination proved fatal to the claim, as the court found the application lacked adequate written description for this limitation – the specification failed to describe treating any patients with any diseases using anti-C5 antibodies, and merely mentioned three general classes of diseases as possible treatment targets. The court’s ruling established that when preamble language is deemed limiting, it requires proper written description support, just as any other claim limitation would.
In prior posts, I have written about Xencor’s Claim 9 and its means-plus-function language, including “means for binding human C5 protein.” Although the claim as a whole was found invalid, the panel held that the specification doesn’t need to describe equivalents of the corresponding structure to satisfy written description and definiteness requirements. The Panel explained that § 112, ¶ 6 distinguishes between what must be “described in the specification” and what constitutes “equivalents thereof.” The Panel noted: “If Congress had intended the statute to require a description of equivalents, it could have placed ‘and equivalents thereof’ before ‘described in the specification,’ which it did not do.” Despite this favorable ruling on the means-plus-function aspect, claim 9 still failed the written description requirement for the same reason as claim 8 – the broad “treating a patient” limitation wasn’t adequately described.
= = =
In addition to Judge Schroeder sitting by designation, the panel also included Circuit Judges Hughes and Stark. The appellant, Xencor, Inc., was represented by attorneys Julie Goldemberg who argued the case along with, Michael Abernathy, Christopher Betti, Maria Doukas, Amanda Williamson, and William Peterson, all from Morgan, Lewis & Bockius LLP. Peter Sawert argued for the USPTO and was joined on the briefs by Mary Kelly, Amy Nelson, and Farheena Rasheed from the Office of the Solicitor.
Note that recently Rasheed has shifted her this week and is now acting Vice Chief Administrative Patent Judge at the Patent Trial and Appeal Board. Amy Nelson is now “Acting Deputy General Counsel for Intellectual Property Law and Solicitor.” Nelson has been with the USPTO for 30 years. Her first 15 were as an an examiner and SPE. She then took 5-years “off” to clerk at the Federal Circuit and litigate for WilmerHale. In 2010 she rejoined and has been with the Solicitor’s office since then arguing CAFC cases.
The Federal Circuit recently heard oral arguments in the much-anticipated en banc review of EcoFactor, Inc. v. Google LLC, a case focusing on how courts evaluate expert testimony on patent damages. And, in particular, when a court should step-in to bar expert testimony that does not have sufficient factual basis for its conclusions. The arguments focused on whether EcoFactor’s damages expert improperly derived royalty rates from license agreements that contained performative non-binding “whereas” clauses stating EcoFactor’s belief about rates, while the operative provisions specified lump-sum payments. It seems clear to me that these provisions were added as elements of the patentee’s smaller license agreements in order to later be used in larger cases, such as the one against Google.
Judge Alan Albright (W.D.Tex.) admitted testimony from EcoFactor’s damages expert, David Kennedy, who derived a per-unit royalty rate from three prior EcoFactor settlement agreements to calculate a $20 million damages award against Google for infringing EcoFactor’s smart thermostat patent, U.S. Patent 8,738,327.
