Tag Archives: en banc

EcoFactor Responds: Defending the Federal Circuit’s Damages Ruling Allowing Qualitative Apportionment

August 19, 2024PatentAmicus Briefs, apportionment, comparable licenses, Damages, Daubert, en banc, Expert Testimony, Federal Circuit, judicial review, paid, patent litigation, Patent Valuation, Reasonable RoyaltyDennis Crouch

by Dennis Crouch

This is my third post focusing on Google's en banc challenge to 'loose' damages testimony. The patentee, EcoFactor, has now filed a responsive brief in the ongoing smart thermostat patent dispute which resulted in a $20 million jury verdict against Google. A 2-1 Federal Circuit panel affirmed the verdict and, as you might expect, EcoFactor's en banc response defends the decision, arguing that the case presents a straightforward application of established precedent. At core, EcoFactor argues that Google and amici are seeking to impose new, rigid rules that go beyond existing Federal Circuit precedent. Although some say that hindsight is 20/20, anyone who has undergone a hypothetical damages analysis will understand that the process always involves some degree of guestimation and uncertainty -- adding additional precision and calculation is unlikely to provide any true certainty or predictability.

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Defense Side Amici Support for Tighter Reins on Damages Expert Testimony

August 16, 2024PatentAmicus Briefs, apportionment, comparable licenses, Damages, Daubert, en banc, Expert Testimony, Federal Circuit, paid, patent litigation, Patent Valuation, Reasonable Royalty, Rule 702Dennis Crouch

by Dennis Crouch

Google's pending en banc petition in EcoFactor v. Google has drawn significant support from some tech giants, focusing on the application of Daubert standards to patent damages expert testimony. Five amicus briefs supporting Google's position have been filed with the Federal Circuit, each arguing for stricter scrutiny of damages calculations and expert reliability in patent cases. This post discusses the case and the issues presented by the amici army.

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Obtaining vs. Maintaining: How SoftView v. Apple Reshapes Patentee Estoppel

July 26, 2024PatentAdministrative Law, AIA Trials, Claim Construction, double patenting, en banc, Estoppel, Federal Circuit, IPR, obviousness, paid, patent litigation, Reexamination, Regulatory Authority, USPTODennis Crouch

by Dennis Crouch

This is our second discussion of collateral estoppel in as many days. Yesterday I wrote about Koss v. Bose, a case where the Federal Circuit concluded that a district court's final judgment of invalidity had a preclusive effect on USPTO IPR analysis -- rendering the patentee Koss's appeal moot. Today's focus is on SoftView v. Apple, and a focus on the USPTO's estoppel regulations as they apply between an IPR and reexamination proceeding. Case No 23-1005 (Fed. Cir. July 26, 2024).

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Pending En Banc Petitions at the Federal Circuit

June 12, 2024PatentDamages, en banc, obviousness, paid, patent law, reasonable expectation of success, Section 101, Section 271(e)(1)Dennis Crouch

by Dennis Crouch

The Federal Circuit recently decided the en banc design patent case of LKQ v. GM, but the court has not issued an en banc decision in a utility patent case since 2018. There are currently four interesting petitions pending before the court.

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Mishandled Disclosures: A Greek Tragedy in IP Law

June 6, 2024Patentconfidentiality, Copyright, copyright infringement, en banc, legal malpractice, paid, patent law, Trade SecretsDennis Crouch

by Dennis Crouch

Neuropublic S.A., a Greek technology company, has filed a federal lawsuit against the law firm Ladas & Parry LLP, with several claims stemming from the firm's alleged mishandling of Neuropublic's confidential invention disclosure -- sending it out to a third party ("PatentManiac") for a preliminary novelty search which then (again allegedly) further leaked the disclosure. Although the case does not involve submission to AI algorithms, some of the questions here are similar to those many IP attorneys are considering when onboarding new AI tools.

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1 minute design patent survey

June 4, 2024Patentdesign patent, design patents, en banc, obviousness, paid, Section 103, surveyDennis Crouch

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Goodbye Rosen references, hello Jennings references?

June 2, 2024Patentdesign patents, en banc, guest post, Jennings, obviousness, paid, primary reference, Rosen, Section 103Dennis Crouch

Guest Post by Sarah Burstein, Professor of Law at Suffolk University Law School

LKQ Corp. v. GM Global Tech., 21-2348 (Fed. Cir. 2024) (en banc).

In its decision in LKQ v. GM, the en banc Federal Circuit may have raised as many questions as it answered. For now, I’d like to focus on one: What counts as a proper primary reference under LKQ?

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Speck v. Bates: Federal Circuit’s Two-Way Test for Pre-Critical Date Claims Limits Belated Interferences and Derivation Proceedings

May 23, 2024Patentcritical date, derivation, en banc, interference, materially different, obviousness, paid, patent law, Section 135(b)(1), two-way testDennis Crouch

by Dennis Crouch

Speck v. Bates, No. 23-1147 (Fed. Cir. May 23, 2024)

In likely one of the last interference proceeding appeals, the Federal Circuit has applied a "two-way test" to determine whether pre-critical date claims and post-critical date claims are "materially different" under pre-AIA 35 U.S.C. § 135(b)(1). The court found that Bates' post-critical date claims in its U.S. Patent Application No. 14/013,591 were time-barred because they were materially different from Bates' pre-critical date claims.

Although the decision is based upon an interference proceeding, the same provision is found within the new version of 135(b) that covers

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Decoding Patent Ownership beginning with Core Principles

May 22, 2024Patentautomatic assignment, employment agreement, en banc, inventorship, obviousness, paid, patent law, reasonable expectation of successDennis Crouch

by Dennis Crouch

In a recent decision, the Federal Circuit vacated a district court's grant of summary judgment that an inventor, Dr. Mark Core, had automatically assigned a patent associated with his PhD thesis to his then-employer and education funder TRW. Core Optical Techs., LLC v. Nokia Corp., Nos. 23-1001 (Fed. Cir. May 21, 2024). The key issue was whether Dr. Core developed the patented invention "entirely on [his] own time" under his employment agreement. The majority opinion written by Judge Taranto and joined by Judge Dyk held the contract language was ambiguous on this point and remanded for further factual development to determine the parties' intent. Judge Mayer dissented.

Although not discussed in the court's decision, the appellant brief includes a suggestion that the Federal Circuit should "narrow or overrule" the automatic assignment law seen in FilmTec Corp. v. Allied Signal, Inc., 939 F.2d 1568 (Fed. Cir. 1991), and its progeny

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Federal Circuit Overrules Rosen-Durling Test for Design Patent Obviousness

May 21, 2024Patentanalogous art, design patent, en banc, Graham v. John Deere Co., Historical Cases, KSR, obviousness, paid, Whitman SaddleDennis Crouch

by Dennis Crouch

In a highly anticipated en banc decision, the Federal Circuit has overruled the longstanding Rosen-Durling test for assessing obviousness of design patents. LKQ Corp. v. GM Global Tech. Operations LLC, No. 21-2348, slip op. at 15 (Fed. Cir. May 21, 2024) (en banc). The court held that the two-part test's requirements that 1) the primary reference must be "basically the same" as the claimed design, and 2) any secondary references must be "so related" to the primary reference that features from one would suggest application to the other, "impose[] limitations absent from § 103's broad and flexible standard" and are "inconsistent with Supreme Court precedent" of both KSR (2007) and Whitman Saddle (1893). Rejecting the argument that KSR did not implicate design patent obviousness, the court reasoned that 35 U.S.C. § 103 "applies to all types of patents" and the text does not "differentiate" between design and utility patents. Therefore, the same obviousness principles should govern. This decision will generally make design patents harder

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Cellect or Reject? SCOTUS Asked to Consider Fate of ODP Doctrine

May 20, 2024PatentCellect v. Vidal, double patenting, en banc, obviousness, obviousness-type double patenting, paid, patent law, patent term adjustment, patent term extensionDennis Crouch

by Dennis Crouch

In its new petition for certiorari in Cellect LLC v. Vidal, No. __ (U.S. May 20, 2024), Cellect argues that the Federal Circuit erred in upholding the PTAB's (PTAB) invalidation of Cellect's four patents based on the judicially-created doctrine of obviousness-type double patenting (ODP). The key issue is whether ODP can cut short the patent term extension provided by the Patent Term Adjustment (PTA) statute, 35 U.S.C. § 154(b). Meanwhile, Dir. Vidal is looking to extend the power of ODP via rulemaking. This is an important case coming at an important time.

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Eolas Seeks Supreme Court Review of Federal Circuit’s Patent Eligibility Decision

May 8, 2024Patenten banc, Eolas, paid, patent eligibility, patent law, Section 101, Supreme CourtDennis Crouch

Eolas is seeking a writ of certiorari from the Supreme Court -- hoping that the court will overturn the Federal Circuit's decision invalidating its distributed computing (WWW) claims as ineligible under Alice Corp. and Mayo and ostensibly under 35 U.S.C. § 101. The petition presents three key questions:

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Cycling Towards Confusion: Is there room for iFIT Fitness Services and iFIT Safety Glasses?

May 5, 2024Patentcustomer overlap, en banc, fame, likelihood of confusion, obviousness, paid, relatedness of goods, TrademarkDennis Crouch

by Dennis Crouch

In its initial decision, the TTAB dismissed iFIT's opposition to ERB's I-FIT FLEX registration -- finding no likelihood of confusion because the goods were in separate markets. iFIT is a major manufacturer of exercise equipment like treadmills and stationary bikes and holds several trademark registrations for IFIT marks covering fitness machines, online fitness training services and content, software, and some ancillary products like apparel. ERB Industries applied to register I-FIT FLEX for protective and safety eyewear sold at hardware stores such as Home Depot. Although the two brands are at-times sold in the same online store (Amazon.com and Walmart.com) this type of overlap was not sufficient for the TTAB. In its decision, the TTAB rejected iFIT's relatedness argument using an analogy to racecar drivers and chemists. The TTAB reasoned that while some racecar drivers and chemists may use safety glasses, that doesn't mean safety glasses are related to racecars or to chemicals like ammonia.

iFIT appealed the Federal Circuit, and most recently Federal Circuit granted

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Post-Default Creditor’s Right to Assign, License and Enforce Patent does not Disturb Patentee’s Separate Right to Sue Infringers

May 1, 2024Patenten banc, exclusionary rights, Oil States, paid, patent assignment, patent law, patent licensing, standingDennis Crouch

by Dennis Crouch

The Federal Circuit's new decision in Intellectual Tech LLC v. Zebra Techs. Corp., No. 2022-2207 (Fed. Cir. May 1, 2024) offers some interesting insight into leveraged patent transactions, and the effect of a lender's ability to license or assign a patent on the patent owner's standing to sue for infringement, especially after default.

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Codifying Discretionary Denial of IPR Petitions

April 19, 2024Patentdiscretionary denial, en banc, IPR, paid, patent law, PTABDennis Crouch

by Dennis Crouch

The USPTO recently released yet another Notice of Proposed Rulemaking (NPRM) -- this one focusing on codification of IPR/PGR rules associated with non-merits based "discretionary denials" of institution as well as termination due to settlement. This is a controversial area because of that word 'discretion.' Unrestricted discretion by government officials is concerning because of the potential for arbitrary or biased decisions, lacking transparency and accountability. In that frame, these rules are beneficial because they structure and limit discretion - hopefully making the outcomes more predictable and justifiable. A key note - the rules here focus primarily on procedure (separate briefing for discretionary denials) and substantive issues relating to parallel, serial, and cumulative petitions. Although this is an important step, they do not address discretionary denials associated with parallel litigation (or other outside factors) under Fintiv and subsequent director guidance. This is likely the most controversial area of discretionary denials that is being left out for now.

Congress clearly intended the USPTO to have substantial discretion

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The Use of Mandated Public Disclosures of Clinical Trials as Prior Art Against Study Sponsors

April 16, 2024Patentclinical trials, en banc, obviousness, paid, patent law, prior art, reasonable expectation of success, Salix Pharmaceuticals, Section 101, Section 271(e)(1), Vanda PharmaceuticalsHolman

By Chris Holman

Salix Pharms., Ltd. v. Norwich Pharms. Inc., 2024 WL 1561195 (Fed. Cir. Apr. 11, 2024)

Human clinical trials play an essential role in the discovery, development, and regulatory approval of innovative drugs, and federal law mandates the public disclosure of these trials. Pharmaceutical innovators are voicing concern that these disclosures are increasingly being used as prior art to invalidate patents arising out of, or otherwise relating to, these trials, in a manner that threatens to disincentivize investment in pharmaceutical innovation. A recent Federal Circuit decision, Salix Pharms., Ltd. v. Norwich Pharms. Inc., illustrates the concern. In Salix, a divided panel upheld a district court decision to invalidate pharmaceutical method of treatment claims for obviousness based on a clinical study protocol published on the ClinicalTrials.gov. website. The case garnered amicus curiae briefs filed by several innovative pharmaceutical companies in support of the patent owner, Salix Pharmaceuticals.

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Guest post by Prof. Holbrook: Extraterritoriality and Patent Damages Under § 271(a)

April 11, 2024PatentDamages, en banc, paid, patent lawJason Rantanen

Guest post by Tim Holbrook. Robert B. Yegge Endowed Distinguished Professor of Law and Provost's Professor, University of Denver Sturm College of Law.

United States patents are generally territorial. Their exclusive rights only operate within the United States and its territories. Or so one may think reading the Patent Act. Moreover, in a global marketplace, the territorial nature of intellectual property rights can create challenges. It would be simpler for a patent holder to just use the U.S. patent to cover foreign activity. This is especially true if a domestic act of infringement has spillover effects into other countries.

So, when – if ever – can a patent owner receive damages for foreign activity that may flow from acts of domestic infringement?

The Supreme Court answered that question

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Using AI in your Patent Practice

April 10, 2024Patentai, en banc, paid, patent law, USPTO-guidanceDennis Crouch

By Dennis Crouch

Over the past year I've been investigating various generative Artificial Intelligence (GenAI) tools for assisting patent attorneys in their practice. I have a strong belief that these tools and their progeny are now fixtures in our legal environment and are being used to both improve efficient delivery of legal services and to also improve the quality of those services. Of course the generative creativity of our LLMs go hand in hand with hidden false narratives or hallucinations. Vendors are stepping up to thread the needle here: providing valuable GenAI tools while limiting false story telling. As we move forward some of the struggle will be a focus on how much the attorney needs to know about how the GenAI works in order to use it responsibly.

Enter the USPTO and its Wet Blanket: The USPTO has released new guidance on the use of AI tools in practice before the USPTO.

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Federal Circuit Affirms ITC Divided Opinion in Sonos v. ITC

April 9, 2024Patenten banc, paid, patent law, Section 337Dennis Crouch

by Dennis Crouch

In a non-precedential opinion, the Federal Circuit has affirmed the US International Trade Commission's (ITC) final determination in the patent infringement dispute between Sonos and Google involving smart speaker technology. Sonos, Inc. v. Int'l Trade Comm'n, Nos. 2022-1421, 2022-1573 (Fed. Cir. Apr. 8, 2024). The ITC had issued a split opinion - finding that Google infringed a number of Sonos speaker patents, but concluded that Google's proposed work-around was non-infringing. Both sides appealed and the Federal Circuit's deferential standard of review resulted in a full affirmance. The outcome then

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De Forest Radio v. GE: A Landmark Supreme Court Decision on the Invention Requirement

April 8, 2024Patenten banc, obviousness, paid, patent law, reasonable expectation of success, Section 101, Section 103Dennis Crouch

By Dennis Crouch

In 1931, the United States Supreme Court decided a landmark case on the patentability of inventions, De Forest Radio Co. v. General Electric Co., 283 U.S. 664 (1931), amended, 284 U.S. 571 (1931). The case involved a patent infringement suit over an improved vacuum tube used in radio communications. While the case predated the codification of the nonobviousness requirement in 35 U.S.C. § 103 as part of the Patent Act of 1952, it nonetheless applied a similar requirement for "invention."

I wanted to review the case because it is one relied upon in the recent Vanda v. Teva petition, with the patentee arguing that the court's standard from 1931 has been relaxed by the Federal Circuit's "reasonable expectation of success" standard. The decision also provides an interesting case study in the way that the court seems to blend considerations of obviousness and

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