SPEX v. Western Digital: $316 Million Verdict for Means Plus Function Claim

Patent

A Central District of California jury has awarded SPEX Technologies nearly $316 million in damages against Western Digital for infringement of a patent related to hardware encryption technology. The verdict, handed down on October 18, 2024, comes after an eight-year legal battle and raises interesting questions about infringement of means-plus-function claims and the calculation of reasonable royalty damages.

SPEX Verdict

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Pleading Stage Claim Construction

Patent

by Dennis Crouch

UTTO Inc. v. Metrotech Corp., No. 2023-1435 (Fed. Cir. Oct. 18, 2024).  This new claim construction decision has two important focal points:

  1. Is it proper at the motion-to-dismiss stage? (Answer: Yes, but with major caveats)
  2. Is a plural also singular? (Answer: Sometimes, because in patent law, even basic grammar isn't safe from interpretation)

The case involves technology for detecting and identifying underground utility lines, with the dispute centered on the interpretation of the phrase "group of buried asset data points" in UTTO's US9086441.  The accused device uses one data point at a time and argues no infringement.

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Federal Circuit’s Rule 36 Affirmances: A Concerning Trend in Light of Loper Bright

Patent

by Dennis Crouch

Starting with my 2017 article chastising the Federal Circuit for its R.36 practice, dozens of parties have challenged the Federal Circuit's ongoing habit of regularly issuing a large number of no-opinion judgments.  So far, the Federal Circuit has refused to address any of the legal process complaints - favoring silent efficiency over transparency.

A new en banc petition in Converter Manufacturing, LLC v. Tekni-Plex, Inc., raises  the issue in a new way, particularly focusing on dicta from the Supreme Court's landmark ruling in Loper Bright Enterprises v. Raimondo, 144 S. Ct. 2244 (2024). The petition highlights the tension between judicial efficiency and the court's constitutional duty to independently review agency actions.

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Recent Patent Law Scholarship

Patent

by Dennis Crouch

This post offers some insight into four patent-focused academic articles that I've been reading lately.

1. A textualist approach to patent eligibility under § 101;
2. Reflections on the Myriad, ten years later
3. Message to Competition Regulators: Patents are not simply a necessary evil
4. Philosophical critique of AI inventorship

These pieces offer insights into ongoing debates within patent law and policy. Although I don't necessarily agree with the conclusions made by the various authors, each article provides fodder for continued discussion on these important topics.

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Allergan: En Banc Support for Stronger ODP Rules

Patent

We continue to see lots of action focusing on obviousness-type double patenting (ODP) in the U.S. patent law context.  In Allergan v. MSN, the Federal Circuit created a major loophole for patentees and undermined the 2023 Cellect decision by holding that extended PTA in one family-member patent does not create an ODP problem so long as the extended term is in a first-filed, first-issued patent. Allergan USA, Inc. v. MSN Laboratories Priv. Ltd., 111 F.4th 1358 (Fed. Cir. 2024).  Sun Pharma has petitioned for en banc rehearing - hoping to invalidate Allergan's protected patent.

Prior posts:

Two amicus briefs were recently filed supporting the petition - One by the Association for Accessible Medicines (AAM) and the other by a corporate group led by Alvogen PB.

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USPTO Tweaks PTAB AIA-Trial Counsel Rules; NO Major Overhaul

Patent

by Dennis Crouch

The USPTO has issued final rules aimed at expanding opportunities for practitioners to appear before the Patent Trial and Appeal Board (PTAB). The rules, which go into effect on November 12, 2024, make several changes to the requirements for counsel in AIA-trial proceedings. However, the final rules do not go as far as some had proposed in allowing non-registered practitioners to take lead roles.  In other words, lead counsel must be a registered patent practitioner.

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The Substance of OpenAI’s Patent Pledge?

Patent

by Dennis Crouch

OpenAI’s new patent pledge promises to use their patents only for defensive purposes, as long as other parties do not assert claims against them or engage in harmful activities. The move echoes Tesla CEO Elon Musk’s 2014 declaration that “all our patent … belong to you” – a pledge that garnered significant attention but left many questions unanswered. OpenAI’s pledge suffers from similar ambiguities and limitations that may ultimately render it more of a PR move than a meaningful commitment to open innovation.

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FedEx wins Mandamus: EDTX is too Inconvenient for the Multinational

Patent

by Dennis Crouch

In a non-precedential decision, the Federal Circuit today granted FedEx's mandamus petition and ordered E.D.Tex. Judge Mazzant to reconsider his denial transfer.  In re FedEx Corp. Svcs., Inc., 22-156 (Fed. Cir. Oct 19, 2022). The decision here relates directly to the recent Patently-O guest post from Prof. Gugliuzza. Nonprecedential Precedent in Patent Venue Disputes.

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