To narrow issues and promote settlement in “oversized patent cases,” on July 31, 2017, Chief Judge Leonard Stark of the District of Delaware issued an order that indicates a preference for bellwether trials on all issues for a subset of representative patents, instead of “reverse bifurcation,” wherein the issue of damages is addressed first. Intel Corp. v. Future Link Sys., LLC, Case No. 1:14-cv-377 (D. Del. July 31, 2017) (J. Stark).
On January 19, 2017, Judge Susan Illston of the Northern District of California granted-in-part and denied-in-part a group of plaintiffs’ (collectively, “Plaintiffs”) motion to strike portions of defendant Ariosa Diagnostic, Inc.’s (and its parent company) (collectively, “Defendants”) invalidity contentions. Specifically, Plaintiffs argued that Defendants’ invalidity contentions were barred by (1) statutory estoppel under 35 U.S.C. § 315(e) and (2) judicial estoppel.
The Federal Circuit recently reversed a district court’s grant of summary judgment of invalidity for lack of written description under 35 U.S.C. § 112. The Federal Circuit held that the district court had incorrectly determined that one of the disclosed embodiments imposed limits on the scope of the invention. The Federal Circuit based its decision on the disclosures about the variety of problems solved by the invention and the originally filed claims.
In a unanimous decision, the Federal Circuit affirmed the district court’s ruling that four Purdue Pharma OxyContin patents are invalid for anticipation or obviousness. The Federal Circuit panel included Chief Judge Sharon Prost, Circuit Judge Jimmie Reyna and Judge Leonard Stark of the District of Delaware.
The Patent Trial and Appeal Board (PTAB) found all of the claims of the patent-at-issue invalid, notwithstanding the patent owner’s (Owner) showing of secondary considerations of nonobviousness. As an initial matter, PTAB found each limitation of the claims in the prior art. Owner then attempted to rebut Petitioner’s prima facie obviousness case by presenting evidence of secondary considerations of nonobviousness based on: (1) copying, (2) commercial success, and (3) industrial praise. PTAB addressed each argument, holding overall that Petitioner’s “strong evidence of obviousness” outweighed Owner’s secondary considerations of nonobviousness.
First, Owner alleged copying based on Petitioner possessing Owner’s patented product and on unsuccessful license negotiations with Petitioner. In response, PTAB found that Petitioner’s product (for which Petitioner received its own patent) used a different configuration than Owner’s patented product. Further, PTAB found that Petitioner could not have had access to Owner’s “patent product” for the purpose of copying because Petitioner’s allegedly copied product was sold before the Owner’s patent issued.
A federal judge in the Southern District of New York granted counterclaim-defendant TNS’s motion for summary judgment ruling that three patents related to targeted-advertising were invalid under Alice. As a preliminary matter, the court rejected Tivo’s (TRA) presumption of validity argument noting that “[t]he presumption of validity—and its concomitant clear and convincing evidence standard—does not apply to section 101 claims.” In analyzing the patents, the court found that all three patents describe the same basic invention in five basic steps: “(1) collecting household-level data from a variety of digital sources, (2) matching this data to individual households through the use of digital double-blind matching, (3) digitally storing this matched data, (4) applying a “cleansing and editing algorithm” to the data to remove extraneous and/or private information, and (5) calculating an advertising metric based on the data.” Accordingly, the court found claim 71 of the ’940 patent to be representative of all asserted claims—essentially a method for correlating the advertisements that consumers view and their purchasing behavior.
The Federal Circuit, in a 2-1 opinion, recently affirmed the Patent Trial and Appeal Board’s (PTAB) regulation that the PTAB only has to provide a written opinion on the claims actually instituted for inter partes review, not on every claim raised in the original IPR petition. Petitioner Synopsys submitted an IPR petition to invalidate a number of claims in Mentor’s patent—the same patent asserted against Synopsys in litigation. The PTAB instituted the IPR on roughly half of the submitted claims and ultimately invalidated only three claims. Synopsys appealed and argued that the AIA requires a written opinion by the PTAB on all claims submitted in the original petition, not just those claims instituted by the PTAB for review. The Federal Circuit rejected Petitioner’s argument, noting the AIA “is quite clear that the PTO can choose whether to institute inter partes review on a claim by claim basis.” After that initial decision by the PTAB, the court held the AIA only requires the PTAB to provide a written opinion on “challenged” claims—“claims for which inter partes review was instituted.” The Federal Circuit recognized “the statue would make little sense if it required the Board to issue final decisions addressing patent claims for which inter partes review had not been initiated.”
Synopsys v. Mentor Graphics, Corp., C. A. No. 14-1516, 14-1530 (Fed. Cir. Feb. 10, 2016)
A federal judge in the Northern District of California ruled that two patents asserted against Apple Inc. are invalid for failure to meet the patent-eligibility test as established in Alice. The patents are asserted by OpenTV, Inc., a subsidiary of Kudelski SA. OpenTV accuses Apple services such as Apple TV and iTunes of infringing patents generally directed to secure transmission of media content to a target device, such as a television, computer, or smartphone.