Gibbons Law Alert
In Mintz v. Dietz & Watson, an opinion penned by Chief Judge Rader, a three judge panel that also included Circuit Judges Newman and Dky strongly admonished against the use of impermissible hindsight towards a finding of obviousness. Despite finding that the accused products did not infringe and following a comprehensive analysis of hindsight, the CAFC further held that U.S. Patent No. 5,413,148 (the “‘148 Patent”) was not invalid under § 103.
Judge Posner’s ruling in Apple v. Motorola last week may have brought an end to the patent war between the parties, but may be a harbinger for tougher standards for proving patent damages and injunctions. Apple and Motorola have accused each other of infringing patents directed to cell phone technology. Following a Daubert hearing, Judge Posner excluded the parties’ damages experts as unreliable. Because the parties cannot prove their respective damages without admissible expert opinion, the Court dismissed the case with prejudice.
Last week, in Bard Peripheral Vascular, Inc. v. W.L. Gore & Associates, Inc., the Federal Circuit issued a precedential opinion concerning the willful infringement standard articulated in In re Seagate Technology, LLC (“Seagate”). After affirming the United States District Court for the District of Arizona, appellant Gore filed a petition for rehearing and rehearing en banc, challenging the District Court’s willfulness analysis. The Federal Circuit granted Gore’s petition for rehearing en banc for the sole purpose of determining the standard of review applicable to willful infringement.
Two recent decisions highlight the importance of proper preparation during patent litigation, from the perspective of both plaintiffs and defendants. In In re Bill of Lading, No. 2010-1493, 2012 U.S. App. LEXIS 11519 (Fed. Cir. June 7, 2012), the Court held that direct infringement only needs the same level of pleading as that outlined in Form 18 (which is a sample complaint for direct infringement) of the Appendix of Forms to the Federal Rules of Civil Procedure, while in contrast, indirect infringement needs to be pled in accordance with the higher standard delineated in Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007) and Ashcroft v. Iqbal, 556 U.S. 662 (2009). In re Bill of Lading, 2012 U.S. App. LEXIS 11519, at *17-27.
In Merial Ltd. v. Cipla Ltd., the Federal Circuit recently reviewed an appeal from the Middle District of Georgia that found defendant Cipla (an Indian company) in contempt for violating an earlier injunction and finding co-defendant Velcera in contempt for acting in concert with Cipla to violate that injunction. The case arose from Cipla’s alleged infringement of Merial’s patents directed to flea and tick protection compositions, and Cipla’s underlying challenges to the District Court’s exercise of personal jurisdiction over it.
The Supreme Court on Monday denied Research & Diagnostics Systems Inc.’s petition for a writ of certiorari to consider the degree of deference that should be afforded administrative decisions of the PTO on appeal to Federal District Court when new evidence is presented. Streck Inc. sued R&D Systems, a blood test technology company, for patent infringement in Federal District Court. A Nebraska jury held R&D Systems liable for infringement following a finding that it had failed to establish a claim of priority over the disputed patents. In a parallel interference proceeding, the PTO awarded priority to R&D Systems. Streck appealed the PTO ruling in District Court under 35 U.S.C. § 146, where a patent holder may appeal a PTO determination concerning priority made pursuant to an interference proceeding.
Last month, Twitter introduced a draft of a radical employee patent assignment plan that the company hopes will play a part in a world “that fosters innovation, rather than dampening it.” The popular social media platform hopes that this initiative will affect how companies use their patents, which according to Twitter, sometimes impedes the innovation of others.
A district court’s inherent powers to control its docket and to stay proceedings are well-settled, harkening back to at least Landis v. N. Am. Co., 299 U.S. 248 (1936). Within the Eastern District of Texas, in determining whether a stay is warranted pending reexamination in a patent litigation, district courts typically consider factors such as whether a stay will unduly prejudice one party; whether a stay will simplify the issues in the case; and whether discovery is complete and a trial date has been set. E.g., Soverain Software LLC v. Amazon.com, Inc., 356 F.Supp.2d 660, 662 (E.D.Tex.2005).
Last month, in a sua sponte Memorandum Order in Technology Licensing Corp. v. Pelco, Inc., 11-cv-8544 (N.D. Ill. Mar. 5, 2012), Senior U.S. District Court Judge Milton I. Shadur recently took defendant to task for its answer and counterclaim. In paragraphs 3, 5 and 6 of its answer defendant pled the boilerplate language that it was without knowledge or information sufficient to form a belief about the truth of the allegations of paragraph [ ] and therefore denies those allegations.” Judge Shadur rebuked defendant for this latter clause, stating it was “oxymoronic” that a party could assert in good faith that it did not have enough information to form a belief about an allegation, and then proceed to deny it.
Yesterday, in a unanimous decision, Kappos v. Hyatt, the Supreme Court affirmed a ruling of the Court of Appeals for the Federal Circuit holding that in a civil action under 35 U.S.C. § 145, a patent applicant has the right to present new evidence to the District Court regardless of whether that evidence previously was or could have been presented during the proceedings before the PTO. Further, when such new evidence is presented, the District Court must review any related factual conclusions affected by the new evidence de novo, without giving deference to any prior decision or finding of the PTO.