Knobbe/Martens: Intellectual Property Law

Benjamin Anger

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USPTO Provides New Guidance on Motions to Amend During IPR

June 15, 2018 Mark E. Davis and Benjamin Anger

On June 1, 2018 the U.S. Patent and Trademark Office designated a Board order in Western Digital Corporation v. SPEX Technologies, Inc. as informative on the issue of Motions to Amend during an IPR.  At the same time, the USPTO de-designated two previously designated orders concerning Motions to Amend.  The Western Digital order provides eight separate areas of guidance for the parties in the event the patent owner elects to file a Motion to Amend.  Some of the information may be familiar to IPR practitioners because of overlap with the de-designated orders, but the Western Digital order importantly incorporates new guidance from recent cases and Board practice.  Thus, IPR litigants should be aware of several important practice changes reflected in the order.

 

SAP AMERICA, INC. v. INVESTPIC LLC

Before Lourie, O’Malley, and Taranto.  Appeal from the United States District Court for the Northern District of Texas.

Summary:  Claims may be determined patent ineligible on the pleadings where no facts are asserted from which a non-abstract improvement may be plausibly inferred.  Advances within the realm of abstract ideas, no matter how ground-breaking, are insufficient to render a claim patent eligible.

IN RE: BIGCOMMERCE, INC.

May 15, 2018 David J. Grant and Benjamin Anger

Before Reyna, Linn, and Hughes. Petition for Writ of Mandamus from the District Court for the Eastern District of Texas.

Summary: A corporation incorporated in a state having multiple judicial districts “resides” for purposes of the patent venue statute only in the single judicial district within that state where it maintains a principal place of business, or failing that, the judicial district in which its registered office is located.

TEXAS ADVANCED OPTOELECTRONIC (“TAO”) v. RENESAS ELECTRONICS AMERICA (“Intersil”)

May 1, 2018 David M. Cohen and Benjamin Anger

Before Dyk, Bryson, and Taranto. Appeal from the United States District Court for the Eastern District of Texas.

Summary: A plaintiff has no 7th Amendment right to a jury trial for a claim for disgorgement of profits for trade secret misappropriation. 

DISC DISEASE SOLUTIONS INC. v. VGH SOLUTIONS, INC.

May 1, 2018 Hans L. Mayer and Benjamin Anger

Before Reyna, Wallach, and Stoll. Appeal from the United States District Court for the Middle District of Georgia.

Summary: A complaint that attaches the asserted patents, specifically identifies the accused products by name and with photos, and alleges that the accused products meet each and every element of at least one claim of the asserted patents, is sufficient, for at least simple technologies, to survive a motion to dismiss under Iqbal/Twombly.

 

SUMITOMO DAINIPPON PHARMA CO. v. EMCURE PHARMACEUTICALS

April 17, 2018 Aaron S. Johnson and Benjamin Anger

Before Moore, Mayer, and Stoll.  Appeal from the United States District Court for the District of New Jersey.

Summary: Plain claim language will not be narrowed based on a patent’s specification unless the patentee clearly and explicitly disclaims claim scope.

 

Defendant Is Not Estopped from Relying on a Prior Art Reference in District Court that Is Related to a Reference Used in a CBM So Long as the Reference Includes New Disclosure

April 12, 2018 Clayton R. Henson and Benjamin Anger

In Solutran, Inc. v. U.S. Bancorp & Elavon, Inc., No. 13:cv-02637, 2018 WL 1276999 (D. Minn. Mar. 12, 2018), the court denied the plaintiff’s Motion in Limine and held that CBM estoppel does not apply to related applications where the reference provides new disclosures or features that could not have been argued from the parent.

 

Massachusetts Court Finds Shaw Decision Forecloses Any Estoppel Beyond the Grounds That Were Instituted in an IPR, Despite Policy Reasons for Broader Estoppel

April 12, 2018 Clayton R. Henson and Benjamin Anger

The court in Koninklijke Philips N.V. v. Wangs All. Corp., No. 14:cv-12298, 2018 WL 283893 (D. Mass. Jan. 2, 2018) denied summary judgement of no invalidity, finding that the Federal Circuit’s holding in Shaw forecloses a broad reading of the estoppel provisions under 35 U.S.C. §315(e)(1) & (2).

 

Hologic, Inc., v. Smith & Nephew, Inc.

March 15, 2018 Joel L. Broussard and Benjamin Anger

Before Newman, Wallach, and Stoll.  Appeal from the Patent Trial and Appeal Board.

Summary:  Disclosure of a species may provide written description support for a claimed genus when the field of invention is a predictable art.

 

NALCO COMPANY v. CHEM-MOD, LLC

February 28, 2018 Sabrina Wang and Benjamin Anger

Before Moore, Schall, and O’Malley.  Appeal from the Northern District of Illinois.

Summary: A plaintiff need not prove its case of patent infringement at the pleading stage.  To the extent a defendant disputes the pleaded allegations or claim scope, these inquiries are not suitable for resolution on a motion to dismiss.

 

THE MEDICINES COMPANY v. HOSPIRA, INC.

February 6, 2018 Jacob R. Rosenbaum and Benjamin Anger

Before Dyk, Wallach, and Hughes.  Appeal from the United States District Court for the District of Delaware.

Summary:  A distribution agreement qualifies as an invalidating “offer for sale” under 35 U.S.C. § 102(b) when the terms of the agreement demonstrate the commercial character of an offer to sell the patented product.

 

PTAB Designates as Precedential the General Plastics Decision on Follow-On Petitions

October 19, 2017 Benjamin Anger

On October 18, 2017, the PTAB designated as “precedential” a major portion of its prior decision in General Plastic Industrial Co., Ltd. v. Canon Kabushki Kaisha. The decision was previously designated “informative,” but now, as a “precedential” decision, binds all members of the Board.

The Eastern District of Texas Again Broadly Applies IPR Estoppel and Finds a Joined Party in the IPR Is Also Subject to Estoppel

A magistrate judge in the Eastern District of Texas recommended in Network-1 Technologies, Inc. v. Alcatel-Lucent USA, Inc. Case No. 6:11-cv-492 (E.D.Tex. September 25, 2017) that Hewlett-Packard (“HP”) should be estopped from asserting invalidity grounds that HP did not raise, but reasonably could have raised, during IPR proceedings.

PTAB Designates as “Informative” Expanded PTAB Panel Decision Adopting the Seven NVIDIA Factors For Evaluating Follow-On Petitions

September 20, 2017 Benjamin Anger and David T. Kim

The PTAB’s Chief Administrative Patent Judge and Deputy Chief Administrative Patent Judge joined an expanded PTAB panel that adopted the seven NVIDIA factors and denied institution of the Petitioner’s follow-on petitions in General Plastic Industrial Co., Ltd., v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (P.T.A.B. September 6, 2017). The PTAB designated the decision as “Informative” on September 18, 2017.

How to Lose an IPR but Amend Your Claims in Reexam and Keep Your Patent

September 13, 2017 Daniel A. Kamkar and Benjamin Anger

On August 30, 2017, the PTAB issued a Final Written Decision in M & P Golf, LLC (d/b/a Cool Clubs) v. Max Out Golf, LLC, IPR2016-00784, Paper 43 (P.T.A.B August 30, 2017), entering adverse judgement on the original patent claims because those claims no longer existed in light of patentably distinct claims obtained by the Patent Owner in a concurrent ex parte reexamination.

 

PTAB Grants Rare Supplemental Motion to Amend on Remand from Federal Circuit

July 27, 2017 Mark E. Davis and Benjamin Anger

On remand from the Federal Circuit, the PTAB granted Veritas’s Supplemental Motion to Amend for one substitute claim and denied the motion with respect to a second claim in Veeam Software Corporation v. Veritas Technologies LLC, IPR2014-00090, Paper 48 (P.T.A.B. Jul. 17, 2017).

PTAB Grants-in-Part Rare Motion to Amend Based on Unexpected Results

The PTAB granted-in-part a patent owner’s motion to substitute claims based on evidence of secondary considerations of nonobviousness in Valeo North America, Inc. v. Schaeffler Technologies, AG & CO. KG, IPR2016-00502, Paper 37, (P.T.A.B. June 20, 2017). 

PTAB Not Barred from Using Patent Owner Submissions as a Basis for Holding Claims Unpatentable

The Federal Circuit vacated and remanded the PTAB’s final written decision holding that claims directed to steel making methods were obvious in Rovalma, S.A. v. Bohler-Edelstahl GmbH & Co. KG, No. 2016-2233 (Fed. Cir. May 11, 2017).

Magistrate Judge Recommends IPR Estoppel Bar of Prior Art References

A magistrate judge in the Eastern District of Texas recommended in Biscotti, Inc. v. Microsoft Corp., No. 2:13-CV-01015, DI 191 (E.D. Tex. May 11, 2017) that Microsoft should be estopped from asserting invalidity grounds that Microsoft raised or reasonably could have raised during IPR proceedings.

PTAB: No Estoppel Because A Skilled Searcher Could Not Have Found Company Brochures

In a Final Written Decision in Johns Manville Corp. v. Knauf Insulation, Inc., IPR2016-00130, Paper 35 (P.T.A.B. May 8, 2017), the PTAB found that petitioner Johns Manville (JM) was not estopped from raising its own company brochures as prior art in a follow-on IPR petition.  The PTAB held that at the time of JM’s earlier IPR petition, the brochures would not have been found by a reasonably skilled searcher conducting a diligent search.

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