CAFC rules IPR petitioner bears burden to establish entitlement to provisional priority

Several weeks ago, the United States Court of Appeals for the Federal Circuit issued a decision in Dynamic Drinkware v. National Graphics, which asked the Court to determine who has the burden with respect to whether a provisional patent application sufficiently supports a later-issued patent so as to become effective prior art as of the provisional filing date in an inter partes review.

National Graphics owns U.S. Patent 6,635,196, which is directed to making molded plastic articles bearing a “lenticular” image. The ’196 patent issued on October 21, 2003, from an application filed on November 22, 2000. The ’196 patent claims the benefit of U.S. Provisional Application 60/211,112, filed on June 12, 2000.

Dynamic petitioned the PTO for inter partes review of the ’196 patent. In its petition, Dynamic argued that claims 1, 8, 12, and 14 of the ’196 patent were anticipated by U.S. Patent 7,153,555 (“Raymond”). The application for Raymond was filed on May 5, 2000, claiming the benefit of U.S. Provisional Application 60/182,490 (the “provisional application” or “Raymond provisional application”), filed on February 15, 2000. The PTO granted the petition in part, and instituted trial on claims 1 and 12.


CAFC says laches still a defense to patent infringement

Recently, the United States Court of Appeals for the Federal Circuit, sitting en banc, decided SCA Hygiene Products Aktiebolag v. First Quality Baby Products, which required the Court to determine the continued applicability of the laches defense for patent infringement actions. This issue presents itself in light of the Supreme Court’s recent decision in Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S. Ct. 1962 (2014), which determined that laches is not a defense to a copyright infringement action brought within the statute of limitation.

Petrella involved an assertion that Metro-Goldwyn-Mayer’s (“MGM”) 1980 film “Raging Bull” infringed a copyright in a 1963 screenplay authored by Frank Petrella. Frank Petrella’s daughter renewed the copyright in 1991, but did not contact MGM until seven years later. Over the next two years, Petrella and MGM exchanged letters concerning Petrella’s copyright claim. Petrella then went silent, and did not file suit until January 6, 2009, about nine years after her last correspondence with MGM. MGM moved for summary judgment based on laches, which the district court granted and the Ninth Circuit affirmed.


Will the Federal Circuit Reconsider Ariosa v. Sequenom en banc?

On June 12, 2015, the United States Court of Appeals for the Federal Circuit issued a decision in Ariosa Diagnostics, Inc. v. Sequenom, Inc. The Federal Circuit decision has been widely criticized (see here and here, for example). Sequenom has asked for reconsideration en banc, with 12 separate amici filers in support of Sequenom’s petition for reconsideration en banc.

The original panel decision dealt with whether a non-invasive method for detecting paternally inherited cell-free fetal DNA (“cffDNA”) from a blood sample of a pregnant woman was patentable. See U.S. Patent No. 6,258,540. The district court ruled that the method claims were patent ineligible and the Federal Circuit agreed. Judge Linn was uncomfortable with the decision, but wrote in a concurrence that he thought that the outcome was mandated by the “sweeping language of the test set out in Mayo.”

Sequenom has retained Tom Goldsteinco-founder of the SCOTUS blog, to handle the appeal. Goldstein has served as counsel in over 100 Supreme Court cases over the last 15 years. His presence sends a clear message that Sequenom is heading to the Supreme Court if they do not prevail in an en banc rehearing.


CAFC Issues Non-Precedential Claim Construction with a Dissent

The Federal Circuit recently issued a non-precedential opinion in Vehicle IP, LLC v. AT&T Mobility, LLC. Perhaps the most interesting aspect of this decision was that it was a non-precedential opinion with a dissent, which to some extent seems a bit contradictory.

The tale begins back on December 31, 2009, when Vehicle IP filed a patent infringement action against the Appellees in the United States District Court for the District of Delaware. The patent infringement lawsuit asserted that Appellees infringed U.S. Patent No. 5,987,377 (“the ’377 patent”). On December 12, 2011, the district court issued an order construing the disputed claim terms of the ’377 patent, including “expected time of arrival” and “way point(s).” The district court construed “expected time of arrival” as “time of day at which the vehicle is expected to arrive somewhere (and not remaining travel time).” The district court construed “way point(s)” as “intermediate point(s) on the way to the final destination (and not the final destination itself).”

After the district court construed the claims, Appellees filed two motions for summary judgment. The district court granted both motions. On April 19, 2013, the district court entered judgment in favor of Appellees. Vehicle IP appealed the entry of judgment, challenging the district court’s claim constructions and summary judgment rulings.


Collateral Estoppel Prevents Reexam Claim from being Enforced

On November 19, 2014, the United States Court of Appeals for the Federal Circuit issued a decision in e.Digital Corporation v. Futurewei Technologies, Inc. e.Digital appealed from a judgment of non-infringement made by the U.S. Federal District Court for the Southern District of California. The district court based its determination of non-infringement on the fact that e.Digital was collaterally estopped from seeking a construction of a claim limitation in e.Digital’s U.S. Patent Nos. 5,491,774 and 5,839,108 different from another court’s previous construction of the same limitation in the ’774 patent.

The Federal Circuit, with Judge Moore writing and joined by Judges O’Malley and Reyna, held that the district court correctly applied collateral estoppel to the ’774 patent, but improperly applied the doctrine to the unrelated ’108 patent.

To understand the ruling in this case one must first look at the prior case that construed the critical claim. Previously, in a litigation in the United States Federal District Court for the District of Colorado, e.Digital asserted claims 1 and 19 of the ’774 patent. The ’774 patent discloses a device with a microphone and a removable, interchangeable flash memory recording medium that allows for audio recording and playback. Asserted claims 1 and 19 recited “a flash memory module which operates as sole memory of the received processed sound electrical signals.” The district court construed the sole memory limitation to require “that the device use only flash memory, not RAM or any other memory system” to store the “received processed sound electrical signals.” The district court based its construction on the written description of the ’774 patent and its determination that the use of RAM had been disclaimed during prosecution. With this claim construction decided, the parties stipulated to a dismissal of the case with prejudice.