SCOTUS Declares That Time Has Expired for Laches Defense in Patent Cases

On March 21, the Supreme Court of the United States held in Hygiene Products Aktiebolag v. First Quality Baby Products that laches is not a defense to a damages claim when the Patent Act’s six-year statute of limitations has yet to expire. This decision aligns with the Court’s ruling in Petrella v. Metro-Goldwyn-Mayer Inc., 572 U.S. ___ (2014), in which the Court determined that laches cannot be invoked as a defense to bar relief in copyright disputes so long as the claim is filed within the Copyright Act’s three-year statute of limitations.

SCA Hygiene Products Aktiebolag and SCA Personal Care Inc. (SCA) first notified First Quality Baby Products LLC (First Quality) in 2003 that its adult diapers infringed SCA’s patented technology. After several years of invalidity proceedings, in 2010 SCA sued Quality First in the United States Court for the Western District of Kentucky. First Quality prevailed on summary judgment on the basis of laches and equitable estoppel, and SCA appealed to the Federal Circuit. While SCA’s appeal was pending, the Supreme Court issued the Petrella decision. However, based on precedent set before the enactment of the Patent Act, the Federal Circuit ruled that laches could still be asserted for claims involving patents when the statute of limitations had yet to expire under 35 U.S.C. § 286. Continue Reading

Availability of Reissue After an Invalidity Determination

A recent law review article discusses reissue as a potential cure for patentees who have had their claims invalidated by a court or the Patent Trial and Appeals Board (PTAB).[1]

Under 35 U.S.C. § 251, reissue is available when “any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent.”

The idea is that drafting overbroad claims may be “error” that can be afforded relief in the form of reissue under § 251 even after the patent has been held invalid. The author of the article points out that (1) nothing in § 251 suggests reissue should be unavailable following a court or PTAB decision invalidating patent claims, (2) no current law expressly forecloses the option of reissue after invalidation, and (3) some favorable – though very dated – case law remains in effect supporting reissue after invalidation. Continue Reading

Federal Circuit Appears to Narrow the Exceptions to 35 U.S.C. § 101

Unquestionably, the narrower a patent’s claims, the more likely they are to pass muster under 35 U.S.C. § 101. But if you have an invention with broad applicability, how broadly can you claim it without running into eligibility problems? The answer, both literally and figuratively: the sky’s the limit.

In Thales Visionix Inc. v. United States, Appeal No. 2015-5150 (Fed. Cir. Mar. 8, 2017), the Federal Circuit, in an opinion authored by Circuit Judge Moore joined by Circuit Judges Wallach and Stoll, held patent-eligible a claim to a one-step method to “determining” the orientation of an object relative to a moving reference frame: Continue Reading

New TTAB Rules of Practice

On Jan. 14, 2017, the Trademark Trial and Appeal Board (TTAB) Rules of Practice were amended in what the United States Patent and Trademark Office described as an effort “to benefit the public by providing for more efficiency and clarity in inter partes and ex parte proceedings.” The first such amendment in roughly nine years, the new rules reflect further alignment with the Federal Rules of Civil Procedure and, more importantly, an embrace of modern technology. Below is a summary of these changes, which apply to cases pending before the TTAB as of Jan. 14 or commencing thereafter.

Electronic Filing

While this is not a drastic change from modern practice, all filings must now be made electronically through the Electronic System for Trademark Trials and Appeals (ESTTA). As discussed below, this solidification of current practice impacts service and the timing of discovery responses. Continue Reading

The Federal Circuit Considers a New Issue on Appeal, Lectures the PTO on its Burden to Establish Obviousness, and Reveals an Internal Split on What to do When the PTO Fails to Carry That Burden

The Federal Circuit in Icon Health & Fitness, Inc. v. Strava, Inc., Appeal No. 2016-1475 (Feb. 27, 2017), made several interesting points and revealed a disagreement among four of its judges about the proper disposition when the PTO fails to carry its burden in “examination appeals.” More specifically, the court explained when an appellant might successfully raise an issue it did not raise in the lower tribunal. It also addressed the burden on the PTO to defend its rejections at the Federal Circuit. Finally, the opinion reflects a disagreement about whether the court should give the PTO a second bite at the apple when it fails to carry that burden.  Continue Reading

Requirements of § 121’s Safe Harbor: Ensuring That Divisional Applications Will Be Protected Against OTDP Rejections

In a recent decision, the Patent Trial and Appeal Board (PTAB) narrowly construed the so-called safe harbor provision of 35 U.S.C. § 121, affirming the examiner’s rejection of a patent application under the doctrine of “obviousness-type double patenting” (OTDP). Ex parte Sauerberg, Appeal 2015-007064 2017 WL 150016 *1 (PTAB Jan. 10, 2017).

The safe harbor protects later-filed divisional applications from rejection or invalidation under the doctrine of obviousness-type double patenting (OTDP). It ensures that

[a] patent issuing on an application with respect to which a requirement for restriction under this section has been made, or on an application filed as a result of such a requirement, shall not be used as a reference either in the Patent and Trademark Office or in the courts against a divisional application or against the original application or any patent issued on either of them, if the divisional application is filed before the issuance of the patent on the other application. Continue Reading

Federal Circuit Expands Personal Jurisdiction in Declaratory Judgment Suits

In Xilinx Inc. v. Papst Licensing GmbH & Co. KG, Appeal No. 2015-1919 (Fed. Cir. Feb. 15, 2017), the Federal Circuit applied the usual test for in personam jurisdiction, in an apparently new way, to reverse dismissal of a declaratory judgment suit against an alien patent owner seeking to avoid the alleged infringer’s home forum. More specifically, a panel consisting of Chief Judge Prost and Circuit Judges Newman and Dyk held that the Northern District of California had specific personal jurisdiction over a German patent owner, Papst Licensing GmbH & Co. KG, that, as a nonpracticing entity and in accordance with its usual practice, mailed notice to the alleged infringer, Xilinx, Inc., that it was infringing and should consider taking a license. After Papst mailed that notice, Papst representatives traveled to California and met with Xilinx representatives to discuss Papst’s allegations and potential licensing. When no agreement was reached, Xilinx filed a declaratory judgment suit in the Northern District seeking a declaration of invalidity and noninfringement. Papst moved to dismiss for lack of in personam jurisdiction or to transfer to the District of Delaware, where Papst had filed an infringement suit against Xilinx. Continue Reading

Federal Circuit looks to provisional patent application in determining claim scope

Differences between a provisional patent application and a nonprovisional application claiming priority to the provisional application may inform claim construction, following the Federal Circuit’s recent decision in MPHJ Tech v. Ricoh.[1] In MPHJ Tech, the Federal Circuit affirmed an inter partes review decision in which the Patent and Trademark Appeal Board (PTAB) found claims of a patent held by MPHJ invalid on grounds of anticipation and obviousness.[2] The patent at issue, U.S. Patent No. 8,488,173, describes a “virtual copier” that replicates an image into other devices, applications or the internet with the press of a “Go” button.[3]

On appeal, MPHJ argued that the PTAB erred in adopting an overly broad construction of the claims, leading to a finding of anticipation and obviousness. Specifically, MPHJ asserted that the claims should be more narrowly construed as requiring a one-step operation without human intervention, effectively distinguishing the claims from the prior art.[4] MPHJ drew support for the narrower construction from statements in its provisional application that allegedly “expressly limited the scope of the invention to a one-step copying and sending process.”[5] However, the identified statements in the provisional application were omitted from the nonprovisional application. Continue Reading

When Obvious Isn’t Obvious: Personal Web Technologies

On Valentine’s Day 2017, the Court of Appeals for the Federal Circuit vacated the Patent Trial and Appeal Board’s conclusions of obviousness in Personal Web Technologies, LLC due to insufficient analysis in the board’s decision. Judge Taranto, joined by Judge Chen and Judge Stoll, explicitly asserted the court’s role in enforcing the principles of administrative law to ensure the agency is not acting in an arbitrary or capricious manner.[1] The decision serves to sharpen the teeth of the oft-repeated requirement that analysis supporting a conclusion of obviousness be made explicit.[2]

This case arrived at the Federal Circuit following the board’s final written decision in an inter partes review (IPR) of Personal Web Technologies’ (PersonalWeb) U.S. Patent No. 7,802,310 (the ’310 Patent) finding six of its claims invalid for obviousness. PersonalWeb appealed the adequacy of the board’s conclusions, submitting that the board decision provided little detail explaining why it would have been obvious to a relevant skilled artisan to combine the two references on which the validity challenge rested. Continue Reading

Licensees Stymied by Sovereign Immunity Both in Federal Court and at PTAB


Licensees Covidien LP, Medtronic PLC, and Medtronic, Inc., failed to obtain any relief, at least so far, in federal court or at the Patent Trial and Appeal Board (PTAB) because of parallel holdings that patent owner University of Florida Research Foundation, Inc. (UFRF), is entitled to Eleventh Amendment immunity. University of Florida Research Foundation, Inc. v. Medtronic PLC, Case No. 1:16-cv-00183-MW/GRJ, 2016 WL 3869877 (N.D. Fla. Jul. 15, 2016); Covidien LP v. University of Florida Research Foundation, Inc., IPRs 2016-01274, 2016-01275, and 2016-01276 (PTAB Jan. 25, 2017).

The proceedings began when UFRF filed an action in a Florida state court for breach of a patent license contract against the licensees. The license contract required the licensees to permit UFRF to audit the licensees’ books to verify the licensees’ accounting. After the licensees refused to permit UFRF to audit records related to products that the licensees claimed fell outside the scope of the licensed patents (disputed products), UFRF filed its state action for breach of contract and breach of the implied duty of good faith and fair dealing and for a declaratory judgment on its right to an accounting. The licensees counterclaimed for declaratory judgments of noninfringement and invalidity and for a declaratory judgment that the disputed products are not “Licensed P roducts” because they do not infringe valid patents. Based on the counterclaims, the licensees removed the state action to the United States District Court for the Northern District of Florida. The licensees also filed petitions in the three IPRs identified above.

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