Before O’Malley, Moore, and Chen. Appeal from the Patent Trial and Appeal Board.

VIRNETX INC. v. CISCO SYSTEMS, INC. (Denying Panel Rehearing)
VIRNETX INC. v. CISCO SYSTEMS, INC. (Denying Rehearing En Banc)

Summary: When administrative patent judges are unconstitutionally appointed, their decisions in appeals from inter partes reexamination must be vacated, just like their decisions in inter partes review.

SCHWENDIMANN V. ARKWRIGHT ADVANCED COATING, INC.

Before Wallach, Reyna, and O’Malley. Appeal from the United States District Court for the District of Minnesota.

Summary: Exclusionary rights in a patent are a prerequisite to obtaining relief for patent infringement, but need not be proven to establish constitutional standing and subject matter jurisdiction.

EAGLE PHARMACEUTICALS INC. V. SLAYBACK PHARMA LLC.

Before O’Malley, Reyna, and Chen. Appeal from the United States District Court for the District of Delaware.

Summary: The disclosure-dedication doctrine precludes infringement under doctrine of equivalents where the patent discloses, but does not claim, an alternative to a claim limitation even when the disclosure relates to a different embodiment than the claimed embodiment.

CATERPILLAR PAVING PRODUCTS v. WIRTGEN AMERICA, INC.
Before Lourie, Dyk, and Reyna. Appeal from the Patent Trial and Appeal Board.

Summary: Remand of an IPR based on Arthrex is not justified where the final written decision issued after the decision in Arthrex.

CIENA CORPORATION v. OYSTER OPTICS, LLC

Before Moore, O’Malley, and Stoll. Appeal from the Patent Trial and Appeal Board.

Summary: Affirmatively petitioning for IPR waives the petitioner’s Appointments Clause challenge, such that the petitioner may not request remand and a new panel under Arthrex.

UBER TECHNOLOGIES, INC. v. X ONE, INC.
Before Prost, Dyk, and Wallach. Appeal from the U.S. Patent and Trademark Office, Patent Trial and Appeal Board.

Summary: Because a mapping technique must be performed on either a server or a terminal, using a server-side technique disclosed in one piece of prior art was a “predictable variation” of the terminal-side technique disclosed in another piece of prior art.

Shutdown orders due to the COVID-19 virus pandemic have created economic disruption, causing companies to scale back on intellectual property (IP) expense. This creates an opportunity to move ahead of the competition. This is especially true because the U.S. patent system, and many others around the world, reward the first inventor to file.
Below are some suggestions for protecting your IP on a reduced budget. This is not an exhaustive list. It is also not right for everyone. You should consult with legal counsel about your IP and what is right for your company.

GRIT ENERGY SOLUTIONS, LLC v. OREN TECHNOLOGIES, LLC

Before Prost, Newman, Wallach. On appeal from The Patent Trial and Appeal Board.

Summary: IPR petitioner has standing to appeal an adverse Board decision even after divesting the products previously accused of infringement.

UNILOC USA, INC. v. LG ELECTRONICS USA, INC.
Before Moore, Reyna, and Taranto. On appeal from the District Court for the Northern District of California.

Summary: A claim is not abstract where it is directed to an improved communication system that changes the normal operation of a system.

HITKANSUT LLC V. UNITED STATES

Before Prost, Clevenger, and Moore. Appeal from the Court of Federal Claims.

Summary: Fee-shifting under 28 U.S.C. § 1498(a), turns on whether “the position of the United States was substantially justified.” The relevant inquiry is the government’s position during litigation, not pre-litigation conduct.