Tag Archives: patent litigation

Hindsight 20/20: Federal Circuit Okays Retroactive Expertise

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by Dennis Crouch

In patent litigation, we continue to see enhanced focus on qualifying (i.e., disqualifying) expert witnesses. Skilled expert testimony can be so convincing for a jury while also laying the foundation to win on appeal.  And, expert testimony is a legal necessity in most patent cases both for damages calculations (damages expert) as well as for validity and infringement (technical expert).  Having your expert knocked-out just before or in the midst of trial is a nightmare situation.

In its 2022 Kyocera decision, the Federal Circuit explained that a technical expert must - at minimum - be a person of skill in the art to which the invention pertains.  Someone who purports to be an expert but lacks that 'ordinary' knowledge will be disqualified under patent law's Daubert nuance.  In patent law, PHOSITA's knowledge is temporally tied to the patent application filing date (or invention date pre-AIA).  What we're typically looking for is the level of skill at the time that the application was filed (or perhaps when issued / amended).

This temporal frame is the focus of the Federal Circuit's recent decision in Osseo Imaging v. Planmeca, where the court was asked to disqualify the patentee's expert witness because he was not skilled in the art back when the invention was made -- rather, became skilled almost a decade later.

The case has some parallels to EcoFactor v. Google, that is currently pending before the Federal Circuit on an en banc petition regarding admissibility of damages expert testimony.

Defense Side Amici Support for Tighter Reins on Damages Expert Testimony

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Eye-Opening Verdict: Lashify’s Patent Win Curls Industry Expectations

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by Dennis Crouch

This week a unanimous jury in Judge Albright's W.D.Tex. courtroom filled out a very simple verdict form that favored the patentee Lashify over the accused infringer Worldbeauty, who sells drugstore lashes:

Q: Did Lashify prove, by a preponderance of the evidence, that Worldbeauty has directly infringed the asserted claims of the asserted patents?

A: Yes, Yes, Yes (all 3 claims).

Q: Did Lashify prove, by a preponderance of the evidence, that Worldbeauty's infringement was willful?

A: Yes

Q: Did Worldbeauty prove, by clear and convincing evidence that the asserted claims are invalid as obvious in light of the prior art?

A: No, No, No.

Q: What amount did Lashify prove, by a preponderance of the evidence, it is entitled to as damages for Worldbeauty's infringement?

A: $30.5 million in lost profits.

There will certainly be some post-verdict motions, including the adjudged infringer's motion for JMOL as well as the patentee's request for treble damages and attorney fees.  The $90 million potential is certainly enough to blink your eyes at. 

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ITC Patent Jurisdiction: Roku’s Petition and Contreras’ Critique

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by Dennis Crouch

Roku, Inc. has asked the Supreme Court to review 2024 Federal Circuit decision affirming the US International Trade Commission's (ITC) finding of a Section 337 violation based on infringement of a TV-remote patent owned by Universal Electronics, Inc. (UEI). US10593196 (method of configuring user interfaces on home theater devices to control other appliances).

The petition focuses on the ITC's "domestic industry" requirement, and the level of nexus required between substantial domestic investment, the scope of the asserted patent, and any articles that embody the patented invention.  The case invites a broader reconsideration of the ITC's role in patent disputes, including its near-automatic issuance of exclusion orders against adjudged infringers.

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Deference to District Courts: Federal Circuit’s New Approach to Venue Transfer Petitions

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by Dennis Crouch

In a recent order, the Federal Circuit denied Apple's petition for a writ of mandamus seeking yet again to transfer a patent infringement case from the Western District of Texas (Judge Albright) to the Northern District of California. In re Apple Inc., 24-129 (Fed. Cir. 2024).

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Emphasizing Context in Claim Construction

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by Dennis Crouch

In Neonode Smartphone LLC v. Samsung Electronics Co., Ltd., the Federal Circuit has reversed Judge Albright's holding that claims of Neonode's US8095879 are invalid as indefinite.  No. 2023-2304 (Fed. Cir. Aug. 20, 2024) (non-precedential). The appellate panel concluded that Albright failed to properly consider the full context of the intrinsic record, particularly the prosecution history.

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Apple v. Vidal: APA Compliance in IPR Discretionary Denial Rules

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by Dennis Crouch

I have written several times about the Chestek case regarding notice-and-comment requirements under the APA.  A second notice-and-comment case is also pending before the Federal Circuit, potentially having a much greater impact on patent practice.  The case, Apple v. Vidal, focuses on IPR discretionary denials, which the USPTO implemented as policy without any formal rulemaking notice-and-comment.

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

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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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No Concrete Plans, No Standing: Federal Circuit’s Latest on IPR Appeals

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by Dennis Crouch

The recent Federal Circuit decision in Platinum Optics v. Viavi Solutions focuses attention once again on the case-and-controversy requirement derived from Article III of the U.S. Constitution, which extends federal judicial power to "Cases" and "Controversies."

The seemingly simple phrase has been the subject of extensive judicial jockeying in the development of the doctrine we know as "standing."

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Defense Side Amici Support for Tighter Reins on Damages Expert Testimony

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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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Policy Considerations: The On-Sale Bar for Secret Processes

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by Dennis Crouch

In light of the Federal Circuit's recent decision in Celanese v. ITC, it's worth examining the policy implications of maintaining a strong on-sale bar that extends even to invalidate patents on secret processes when the resulting products have been commercialized. This rule is rooted in pre-AIA jurisprudence and is now affirmed under the AIA.

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Family Planning Patent Style: Allergan, Cellect, and the ODP Maze

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by Dennis Crouch

Most U.S. utility patents are (or will eventually be) part of a patent family with at least one other U.S. patent. The recent rise in focus on obviousness type double patenting (ODP) has been unnerving to some, especially with the Cellect decision from 2023 that seemed to greatly expand the risk of family members colliding based upon differing expiration dates due to Patent Term Adjustment (PTA).

The Federal Circuit's new ODP opinion in Allergan USA v. MSN Labs, 24-1061 (Fed. Cir. August 13, 2014), provides some major relief to patent portfolio holders, holding that "a first-filed, first-issued, later-expiring claim cannot be invalidated by a later-filed, later-issued, earlier-expiring reference claim having a common priority date." This ruling provides a measure of protection for first-filed patents that receive substantial PTA, shielding them from ODP challenges based on their own continuations sharing the same priority date.

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No Sugar-Coating: Post-AIA Patent on Secret Process Barred by Pre-Filing Sale of Product

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by Dennis Crouch

Although the result could have been guessed, the Federal Circuit has issued an important decision interpreting the scope of post-AIA 35 U.S.C. 102 -- and the meaning of the "claimed invention." Celanese Intl. Corp. v. Intl. Trade Comm'n,  22-01827 (Fed. Cir. August 12, 2024).   In particular, the court affirmed the precedent of D.L. Auld -- i.e., the on-sale bar continues to block patenting of an otherwise secret process when the patentee makes pre-filing sales of product made using that process. The ITC had invalidated Celanese' artificial sweetener manufacturing process patent based upon these pre-filing sales. That judgment was thus affirmed on appeal.

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Zebra’s Stripes: Just So Stories about Patent Standing

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by Dennis Crouch

The newest patent-focused petition for writ of certiorari to the Supreme Court was recently filed by Zebra Technologies, challenging the Federal Circuit's determination that the a patentee had standing to sue for infringement even though  a third party separately held rights to assign, license, and enforce patent rights.

The case offers an increasingly common situation in patent litigation finance where the litigation funder is seeking legal assurances and collateral rights, but where those rights potentially risk stripping the patent owner from the exclusionary rights necessary to establish standing. 

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Federal Circuit Slices the Bologna Thin with IPR Rehearing Waiver Decision

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by Dennis Crouch

Voice Tech Corp. v. Unified Patents, LLC, No. 2022-2163 (Fed. Cir. Aug. 1, 2024)

Unified Patents is paid by its members to fight against non-practicing entity (NPE) patent assertions -- often by challenge patent validity via inter partes review.  In this case, Unified challenged Voice Tech's U.S. Patent No. 10,491,679 which covers technology for controlling a computer via a mobile device using voice commands. At the conclusion of the IPR, the Patent Trial and Appeal Board (PTAB) sided with Unified - finding all challenged claims (1-8) of the '679 patent unpatentable as obvious over the combination of two prior art references, Wong and Beauregard.  The PTAB also denied Voice Tech's request for rehearing. On appeal, the patentee won a minor battle on waiver, but ultimately lost on the merits.

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Presumption of Injunction: How the RESTORE Act Aims to Re-Empower Patent Holders

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by Dennis Crouch

For the vast majority of American history, a judgment of patent infringement (by a court sitting in equity) led almost directly to injunctive relief barring ongoing infringement.  This construct was flipped by the Supreme Court's 2006 decision in eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006), a case which served as the first major step of weakening patentee rights over the past two decades.  Now, a new bipartisan bill aims to restore the pre-eBay status quo. The Realizing Engineering, Science, and Technology Opportunities by Restoring Exclusive (RESTORE) Patent Rights Act of 2024, introduced by Senators Coons (D-Del.) and Cotton (R-Ark.), with a House companion bill from Representatives Moran (R-Texas) and Dean (D-Pa.), seeks to reshape and repair the availability of injunctive relief for patent holders.  As you'll see, one nice element of the Bill is that it simply adds 1 sentence - creating a rebuttable presumption

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

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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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Texas Startup Must Litigate Apple in California because of Convenience to the Tech Giant

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by Dennis Crouch

The Federal Circuit recently denied a petition for mandamus seeking to overturn a district court order transferring a patent case from the Western District of Texas to the Northern District of California. In re Haptic, Inc., No. 2024-121 (Fed. Cir. June 25, 2024). This case was filed in Austin and assigned to Judge Robert Pittman with Haptic alleging that Apple's "Back Tap" feature on iPhones infringes U.S. Patent No. 9,996,738 relating to gesture detection systems. Haptic is headquartered in Austin at the home of its longtime CEO and listed inventor Jake Boshernitzan.  The company was part of Techstars Austin Accelerator as it developed its product known as Knocki that allows users to tap on ordinary surfaces to control various actions on phones and other devices. Knock on wood. The patent and Knocki product are designed to expand touch interfaces beyond traditional touchscreens, potentially opening up new modes of interaction with smart devices and appliances. The '738 patent particularly issue covers systems and methods for detecting tapping or knocking gestures on surfaces to control electronic devices.

Apple also has a major presence in Austin, with about 10,000 Austin employees and a billion-dollar second headquarters campus in the city. Nevertheless, Judge Pitman

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Amarin v. Hikma: Federal Circuit reverses Inducement Dismissal in Skinny-Label Case

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by Dennis Crouch

Amarin Pharma, Inc. v. Hikma Pharmaceuticals USA Inc., No. 2023-1169 (Fed. Cir. June 25, 2024).

This is another "skinny label" generic pharmaceutical patent case.  The basic setup involves a drug that has several different approved uses; with the branded manufacturer holding patents covering only some of the uses.  The generic company is then permitted to sell the drug, but is labelled only for non-patented uses. These labels are known as  carve-out or "skinny" labels under 21 U.S.C. § 355(j)(2)(A)(viii).

It is inevitable that people will purchase and use the generic drugs for the patented uses, and that the generic distributer will be accused accused of inducing  those infringing acts.  Although the generic typically makes a profit on these sales, it those profits pale in comparison to the profits lost by the branded company.

Amarin v. Hickma highlights some of the challenges that generics are facing when marketing drugs with these carved-out labels.  One difficulty is that the FDA severely limits what the generic can say about the drug and its uses, and the carve-out is generally based upon statements made by the patentee.  Here, the court follows a label-plus approach. The skinny label itself will not be enough to show inducement, but that evidence can be combined with other evidence (such as marketing) to prove liability.

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SCT: False Claims Act Actions Based Upon Fraudulently Obtained Patent Rights

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by Dennis Crouch

This post walks through a new petition for writ of certiorari involving claims that Valeant Pharma defrauded the U.S. government by using fraudulently obtained patent rights prop up its drug prices. [Read the Petition]

The False Claims Act (FCA), originally enacted in 1863 to combat contractor fraud during the Civil War, imposes civil liability on anyone who "knowingly presents" a "fraudulent claim for payment" to the federal government. 31 U.S.C. § 3729(a)(1)(A). The Act allows private citizens, known as "relators," to bring qui tam actions on the government's behalf against those who have defrauded the government. If successful, relators can recover up to 30 percent of the damages. 31 U.S.C. §§ 3730(b)(4), (d)(2).

To prevent opportunistic lawsuits, however, Congress has sought to strike a "balance between encouraging private persons to root out fraud and stifling parasitic lawsuits"

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