Knobbe/Martens: Intellectual Property Law

Mark Kachner

Nexus Analysis May Be Based on Novel Combination of Known Elements Considered as a Whole

September 13, 2019 Sean S. Kim and Mark Kachner

HENNY PENNY CORPORATION v. FRYMASTER LLC

Before Lourie, Chen, and Stoll.  Appeal from the United States Patent and Trademark Office.

Summary: With respect to secondary considerations of nonobviousness, nexus may be satisfied by showing that objective evidence is tied to a novel combination of known elements.

 

Design Patent Figures Are Not the Only Source of Claim Limitations

September 13, 2019 Aaron S. Johnson and Mark Kachner

CURVER LUXEMBOURG, SARL v. HOME EXPRESSIONS INC.

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

Summary: Claim language specifying the article of manufacture can limit the scope of a design patent where the article is not shown in the figures.

 

Court Upholds Patent Damages Award, Giving Patent Owner More Than It Requested

September 10, 2019 Mark Kachner

A Chicago jury previously awarded Kolcraft Enterprises more than $3 million in damages based on Artsana’s infringement of U.S. Patent No. 7,376,993, related to infant play equipment.  Because the jury awarded Kolcraft almost half-a-million dollars more that Kolcraft requested, Artsana asked that Court overturn the jury verdict or order a new trial.  

Court Denies Baxalta's Challenge to $155 Million Patent Infringement Verdict

August 27, 2019 Mark Kachner

Bayer sued Baxalta for infringing U.S. Patent No. 9,364,520.  This patent covers a protein necessary for blood clotting that is used in Baxalta’s hemophilia A medication – Adynovate.  Earlier this year, a jury found Baxalta liable and awarded Bayer more than $155 million in damages.  This case just moved a few steps closer to final judgment.

 

Patent Claims Directed To Wireless Transmission of Content Are Abstract and Patent Ineligible

August 21, 2019 Mark Kachner and James Smith

THE CHAMBERLAIN GROUP, INC. v. TECHTRONIC INDUSTRIES CO.

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

Summary: A system or method for communicating status information wirelessly is not patent eligible subject matter. A PTAB decision not to institute an IPR may be admissible at trial with a limiting jury instruction.

PTAB’s Characterization Of Petitioner’s Argument Did Not Introduce New Theory Of Invalidity

August 21, 2019 Mark Kachner and Brandon G. Smith

ARTHREX, INC. V. SMITH & NEPHEW ET AL.

Before Dyk, Chen, and Stoll.  Appeal from the U.S. Patent and Trademark Office

Summary:  The Board’s invalidity decision does not need to track the exact wording in the IPR petition so long as the Board’s characterization of the invalidity theory is consistent with the theory presented in the petition.

Judgment Entered Against Westinghouse For Willful Patent Infringement

August 21, 2019 Mark Kachner

Earlier this year, a federal jury in Delaware found that Westinghouse Air Brake d/b/a Wabtec infringed eight patents owned by Siemens Mobility, including finding willful infringement as to two of the patents.  The asserted patents all relate to positive train control technology, which has been mandated by the Federal Railroad Administration.

Jury Finds Benton Energy Liable for Patent Infringement and Awards Nearly $5 Million in Damages

July 26, 2019 Mark Kachner

A jury determined that Benton Energy Service Co. infringed a patent for improved drilling in offshore oil wells owned by Cajun Services Unlimited.  The jury also determined that Benton breached its rental agreement for the patented tool, committed fraud on Cajun, and misappropriated Cajun’s trade secrets.  

Aesthetic Appeal Does Not Render Design Patent Invalid

July 24, 2019 Bryan J. Johnson and Mark Kachner

AUTOMOTIVE BODY PARTS ASS'N v. FORD GLOBAL TECHNOLOGIES, LLC

Before Hughes, Schall, and Stoll.  Appeal from the United States District Court for the Eastern District of Michigan.

Summary:  Aesthetic appeal is not an invalidating form of functionality for design patents; patent exhaustion and repair doctrines apply equally to utility patents and design patents.

 

Metadata of conception documents could help independently corroborate inventor testimony of prior conception

July 3, 2019 Mark Kachner and Ari Feinstein

KOLCRAFT ENTERPRISES, INC. V. GRACO CHILDREN’S PRODUCTS, INC.

Before Moore, Reyna, and Chen.  Appeals from the Patent Trial and Appeal Board.

Summary: Inventor testimony of prior conception must be independently corroborated.

One-Year Clock for Filing IPR Petition Applies to Litigants and Parties That Become Privies of the Litigant Prior to Institution

June 14, 2019 Clayton R. Henson and Mark Kachner

POWER INTEGRATIONS, INC v. SEMICONDUCTOR COMPONENTS

Before Prost, Reyna, and Stoll. Appeal from the Patent Trial and Appeal Board.

Summary: An IPR is time-barred under 35 U.S.C. § 315(b) if, at the time of institution, the petitioner is in privity with a party who was served with a complaint for patent infringement over a year before the petition was filed.

Ultratec Awarded more than $5.4 Million After Patent Determined Valid On Appeal

June 4, 2019 Mark Kachner

A federal court in Wisconsin recently awarded Ultratec, Inc. and Captel, Inc. more than $5.4 million in damages, based on a patent infringement claim brought against Sorenson Communications and CaptionCalls. 

Federal Circuit Explores the Sham Affidavit Doctrine

May 22, 2019 Eric R. Malmgren and Mark Kachner

QUEST INTEGRITY USA, LLC v. COKEBUSTERS USA INC.

Before Dyk, Taranto, and Hughes.  Appeal from the U.S. District Court for the District of Delaware.

Summary: An affidavit should not be dismissed as a sham where: (1) the affidavit contradicts another witness’s prior deposition testimony; or (2) where the affidavit does not simply contradict the witness’s own prior deposition testimony but instead provides a detailed explanation why the prior testimony was incorrect.

 

Hologic Awarded $4.8 Million in Patent Damages Against Minerva Surgical

May 8, 2019 Mark Kachner

A Delaware jury awarded Hologic $4.2 million in lost profit patent damages and more than half a million dollars in reasonable royalty patent damages, based on Minerva Surgical’s infringement of patents related to detecting uterine perforations during uterine ablation.  

LG Willfully Infringed Patent Covering “Plug & Play” Standard in Televisions

April 17, 2019 Mark Kachner

A New Jersey jury awarded Mondis $45 million in patent damages, based on LG’s sales of infringing televisions that support the “Plug & Play” standard.  

Florida Judge Enters Permanent Injunction After Patent Infringement Finding

April 5, 2019 Mark Kachner

A Florida judge recently entered a permanent injunction against a handful of Florida businesses and their owner, barring them from further infringing a patent covering biometric security for automobiles.  

TEK Global, S.R.L. v. Sealant Systems International

March 29, 2019 David C. Kellogg and Mark Kachner

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

Summary: When the Federal Circuit holds that a combination of references does not teach a particular limitation, that does not foreclose all other obviousness theories based on the same combination of references.

CODA DEVELOPMENT v. GOODYEAR TIRE & RUBBER

February 22, 2019 Mark Rubinshtein, Ph.D. and Mark Kachner

 

Before Prost, Wallach, and Hughes.  Appeal from the U.S. District Court for N.D. Ohio.

Summary:  On a Rule 12(b)(6) motion, a district court cannot judicially notice facts that are subject to reasonable dispute.  Also, when a Plaintiff “knew or should have known” of its claim is a fact-specific inquiry that cannot be resolved on a motion to dismiss based on the statute of limitations.

 

BARRY v. MEDTRONIC, INC.

January 25, 2019 Derk A. Westermeyer and Mark Kachner

Before Chief Judge Prost, Moore, and Taranto.  Appeal from the United States District Court for the Eastern District of Texas.

Summary:  An invention is not “ready for patenting” to trigger a public use bar until the invention has been tested in a variety of settings and is known to work for its intended purpose.

 

 

IN RE: MARCO GULDENAAR HOLDINGS B.V.

December 28, 2018 Samuel I. Cockriel and Mark Kachner

Before Chen, Mayer, and Bryson.  Appeal from the Patent Trial and Appeal Board.

Summary: Claims directed to the abstract idea of rules for playing a dice game are not transformed into patent eligible subject matter by the addition of printed matter.

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