IP Newsflash

The Federal Circuit reversed a summary judgment order of infringement after interpreting an asserted claim of U.S. Patent No. 9,736,689 (the “ʼ689 Patent”) more narrowly than the district court. In short, the district court erred when, and despite claim language to the contrary, it treated certain claim elements as “optional” in an effort to cover all disclosed embodiments. Because the patentee did not offer evidence of infringement under the correct construction, the Federal Circuit ordered the district court to enter summary judgment of noninfringement.

The Northern District of California granted summary judgment of noninfringement—holding that a patent owner’s statements about a claim term during inter partes review (IPR) were binding in the litigation.

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 April 28, 2017, the District Court for the District of Delaware denied AVM Technologies’ motion for summary judgment because Intel’s non infringement defense based on the reverse doctrine of equivalents requires the Court to resolve disputes of material fact regarding the manner in which Intel’s product functioned relative to the claimed invention.

Omega Patents, LLC (“Omega”) sued CalAmp Corp. (“CalAmp”) for patent infringement in the Middle District of Florida. The jury returned a verdict for Omega, finding all of the asserted claims valid and infringed. On April 5, 2017, U.S. District Judge Paul G. Byron granted Omega’s motions for entry of final judgment, an award of attorney’s fees and enhanced damages against CalAmp. Judge Byron’s opinion highlights the importance of presenting credible evidence of an accused infringer’s reliance on opinions of counsel at a time before commencing the challenged conduct. The court did not seem to give much weight to after-the-fact opinions.

A judge has ordered that an alleged infringer’s product must be presumed to have been made using a patented process, thereby shifting the burden of proof on the issue of infringement from the patent holder to the alleged infringer. At issue was a patented process that used a catalyst within a range of quantities. Both sides moved for summary judgment on the issue of infringement, and the patentee asked for the burden to be shifted pursuant to 35 U.S.C. § 295. Under that statute, a product is presumed to have been made according to a patented process if the court finds that (i) “a substantial likelihood exists that the product was made by the patented process,” and (ii) the patentee “made a reasonable effort to determine the process actually used in the production of the product and was unable to so determine.”

On January 25, 2017, the Patent Trial and Appeal Board dismissed three petitions filed by Covidien LP challenging U.S. Patent No. 7,062,251 (the “’251 patent”) owned by the University of Florida Research Foundation Inc. (UFRF). The PTAB held that state sovereign immunity applied to inter partes reviews, shielding UFRF from liability.

On January 3, 2017, Judge Bloom of the Southern District of Florida added nearly $1 million in pre-judgment interest to the damage figure of roughly $48.2 million already owed by Bombardier to Arctic Cat due to a finding of willful infringement. Arctic Cat had sued Bombardier, the makers of Sea-Doo, over patents covering steering technology that is used to increase safety. The $48.2 million damage amount included an ongoing royalty rate of double the jury’s verdict, bringing the rate to $205.08 per Sea-Doo that was sold. This increase in royalty rate as well as pre-judgment interest and damages for infringement during trial, brought the total damage figure owed by Bombardier to about $49.2 million.