ELECTRONIC COMMUNICATION TECHNOLOGIES, LLC v. SHOPPERSCHOICE.COM, LLC

Before Prost, Dyk, and Wallach. Appeal from the United States District Court for the Southern District of Florida.

Electronic Communication Technologies, LLC (“ECT”) sued ShoppersChoice.com, LLC (“SC”) for patent infringement of U.S. Patent No. 9,373,261 (“the ’261 patent”). SC moved for judgment on the pleadings that claim 11 of the ’261 patent was invalid under 35 U.S.C. § 101. The district court granted the motion. ECT appealed to the Federal Circuit, which affirmed the invalidity of claim 11.

Traditionally, it has been fairly uncommon to see new legislation in intellectual property (IP) law, compared to other areas of law. Instead, courts have generally been the avenue through which changes in IP law have been brought about and, for some, the Leahy-Smith America Invents Act of 2012 is the most recent IP legislation of particular relevance. This can provide a certain confidence to companies exploring or entering the IP field. However, developments associated with the coronavirus pandemic have, for some, highlighted issues with balancing the rights of a patent owner with a protection of the national interest.

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.