United States: Federal Circuit Patent Updates - December 2017

December 18, 2017 1:08 PM

Reyna, J. Affirming PTAB determination of patentability in an inter partes review. "Despite no express construction ... below, Board findings establishing the scope of the patented subject matter may fall within the ambit of claim construction."

A full version of the text is available in PDF form.

December 14, 2017 11:13 AM

Lourie, J. On remand from the Supreme Court, affirming dismissal of state law unfair competition and conversion claims, because the Biologics Price Competition and Innovation Act of 2009 preempts state law remedies for an applicant's failure to comply with 42 U.S.C. § 262(l)(2)(A). "Because § 262(l)(9)(C) provides the exclusive federal remedy for failure to comply with § 262(l)(2)(A), federal law does not permit injunctive relief or damages for such failure."  

A full version of the text is available in PDF form.

Per Curiam. Precedential order denying panel rehearing and rehearing en banc in a case applying O2 Micro International Ltd. v. Beyond Innovation Technology Co., 521 F.3d 1351 (Fed. Cir. 2008). O'Malley, Newman and Reyna, JJ., dissented. 

A full version of the text is available in PDF form.

December 7, 2017 4:36 PM

Moore, J. Affirming in part, vacating in part, and remanding. Affirming denial of judgment as a matter of law of obviousness, improper reasonable royalty rate, and no willfulness, and district court orders granting an ongoing royalty and trebling damages. Vacating denial of judgment as a matter of law as to compliance with the patent marking statute. Regarding obviousness, "[e]vidence suggesting reasons to combine cannot be viewed in a vacuum apart from evidence suggesting reasons not to combine. In this case, the same reference suggests a reason to combine, but also suggests reasons that a skilled artisan would be discouraged from pursuing such a combination. Under such circumstances, the jury's fact finding regarding motivation is supported by substantial evidence." "The burden of proving compliance with marking is and at all times remains on the patentee." Resolving a split among district courts, "We hold an alleged infringer who challenges the patentee's compliance with [35 U.S.C.] § 287 bears an initial burden of production to articulate the products it believes are unmarked 'patented articles' subject to § 287. To be clear, this is a low bar. The alleged infringer need only put the patentee on notice that he or his authorized licensees sold specific unmarked products which the alleged infringer believes practice the patent. The alleged infringer's burden is a burden of production, not one of persuasion or proof. ... Once the alleged infringer meets its burden of production, however, the patentee bears the burden to prove the products identified do not practice the patented invention."

WilmerHale represented the defendants-appellants. 

A full version of the text is available in PDF form.

December 5, 2017 9:47 AM

O'Malley, J. Affirming in part and reversing in part PTAB determinations on obviousness and anticipation issues in inter partes reviews of patents directed to "user-directed transfer of an on-going software-based session from one device to another device." 

A full version of the text is available in PDF form.