Federal Circuit reverses damages award against Cisco Systems

On December 28, 2015, the United States Court of Appeals for the Federal Circuit reversed a $63.7 million jury verdict against Cisco Systems. The Court, in an opinion by Chief Judge Prost (pictured), concluded that substantial evidence did not support the jury’s finding that Cisco’s devices, when used, perform the “running” step of the asserted claims.

Commil owns U.S. Patent No. 6,430,395, which relates to a method of providing faster and more reliable handoffs of mobile devices from one base station to another as a mobile device moves throughout a network area. In 2007, Commil brought a patent infringement action against Cisco, which makes and sells wireless networking equipment. In a first jury trial, Commil alleged that Cisco directly infringed the ’395 patent by making and using networking equipment, and also that Cisco induced its customers to infringe by selling them the infringing equipment. The jury concluded that Commil’s patent was valid, that Cisco was liable for direct but not induced infringement, and awarded $3.7 million in damages. Commil then filed a motion for a new trial on induced infringement and damages, which the district court granted. The second jury concluded that Cisco was liable for induced infringement and awarded $63.7 million in damages.


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.


Federal Circuit Reverses Summary Judgment in Golf Club Infringement Case

On September 16, 2010, Nassau Precision Casting Co., Inc., owner of U.S. Patent No. 5,486,000, entitled “Weighted Golf Iron Club Head,” brought a patent infringement lawsuit accusing Acushnet of infringing claims 1 and 2 of the ’000 patent by making, offering to sell, and selling its Cobra S9, Cobra S9 Second Generation, King Cobra UFi, and Cobra S2 clubs. The ’000 patent describes what it says is an improvement in the distribution of weight within the head of a golf club. The purpose of the invention is to achieve “sweet spot-enhancement, i.e. significant improvement in the ball-striking efficacy of the club head, while maintaining the same starting overall weight of the club head.”

The United States District Court for the Eastern District of New York granted summary judgment of non-infringement to Acushnet. On June 6, 2014, the Federal Circuit affirmed in part, vacated in part and remanded after determining that, based on the district court’s claim interpretation, the only element found lacking from the accused device relative to claim 2 was in fact present in the accused device. See Nassau Precision Casting v. Acushnet Company, Inc.

Claim 1 of the ‘000 patent reads:

1. In a golf iron club head of a type having a ball-striking body of weight-imparting construction material inclined at a selected angle for driving a struck golf ball a corresponding selected height during its trajectory, said body having spaced-apart top and bottom surfaces bounding a ball-striking surface therebetween, the method of improving weight distribution comprising removing construction material from said top surface, relocating said removed construction material from said top surface to clearance positions below said top surface located adjacent opposite ends of said bottom, surface whereby said removed construction material from a location not used during ball-striking service of said golf iron, is of no adverse consequence thereto and said removed construction material in said relocated positions contributes to increasing said height attained by a struck golf ball.


Hatch-Waxman: Eli Lilly Sues Actavis after ANDA Filed on Axiron®

Actavis PLC (NYSE: ACT) recently filed an Abbreviated New Drug Application (ANDA) with the U.S. Food and Drug Administration (FDA) seeking approval to market Testosterone Topical Solution, 30mg/1.5mL.  Actavis’ ANDA product is a generic version of Eli Lilly and Company’s Axiron®, which is an androgen indicated for replacement therapy in males for conditions associated with a deficiency or absence of endogenous testosterone.

Eli Lilly and Company and Acrux DDS Pty Ltd. filed suit against Actavis on November 12, 2013, in the U.S. District Court for the Southern District of Indiana seeking to prevent Actavis from commercializing its ANDA product prior to the expiration of certain of its U.S. patents.  The lawsuit was filed under the provisions of the Hatch-Waxman Act, resulting in a stay of final FDA approval of Actavis’ ANDA for up to 30 months from the date the plaintiffs received notice of Actavis’ ANDA filing or until final resolution of the matter before the court, whichever occurs sooner, subject to any other exclusivities.


Google Request for Reexamination of Walker Digital Patent, among those Filed Week of June 25, 2012

Here is our latest weekly installment of Reexamination Requests from Scott Daniels, of Reexamination Alert and Practice Center Contributor…

Last year Walker Digital sued BMW, MapQuest, TomTom, Teleman, Blusens, NDrive, Samsung and Google for infringement of U.S. Patent No. 6,199,014 claiming a vehicle navigation system (see inter partes Request No. (2)).  Last Tuesday Google requested reexamination of the ‘014 patent.  A motion to stay the litigation is likely to follow.

Reexamination was requested for Ronald Katz’ U.S. Patent No. 5,898,762 claiming a telephone interface system (see ex parte Request No. (2)).  Katz has sued Charter, Time Warner Cable, EarthLink, DIRECTV and U.S. Cellular for infringing the ‘762 patent.

Friday is the most popular day for filing reexamination requests, unless you are the Troll Buster Jeff Oster who filed two more requests on Saturday, these against two Life Technologies hybridization assay patents, on behalf of Bioresearch (see ex parte Request Nos. (9) & (10)).

The following inter partes requests were filed:

(1)         95/002,030 (electronically filed) – U.S. Patent No. 7,534,366 entitled COMPOSITIONS CONTAINING FLUORINE SUBSTITUTED OLEFINS and owned by Honeywell International.  Filed June 26, 2012, by Mexichem Amanco Holding S.A. de C.V.  The ‘366 patent is currently the subject of a declaratory judgment action styled Arkema et al. v. Honeywell International, (Case No. 10-cv-2886 (E.D. Pa.)).

(2)         95/002,031 (electronically filed) – U.S. Patent No. 6,199,014 entitled SYSTEM FOR PROVIDING DRIVING DIRECTIONS WITH VISUAL CUES and owned by Walker Digital.  Filed June 26, 2012, by Google.  The ‘014 patent is currently the subject of a litigation styled Walker Digital v. Apple et al. (Case No. 1:11-cv-309 (D. Del.))

The following ex parte requests were filed:

(1)         90/012,376 (electronically filed) – U.S. Patent No. 5,898,762 entitled TELEPHONIC-INTERFACE STATISTICAL ANALYSIS SYSTEM and owned by Ronald A. Katz Tech. Licensing LP.  Filed June 27, 2012.   The ‘762 patent is currently the subject of six infringement actions.

(2)         90/012,377 (electronically filed) – U.S. Patent No. 8,030,026 entitled ANTIBODIES TO TROPONIN I AND METHODS OF USE THEREOF and owned by Abbott Labs.  Filed June 28, 2012, by HyTest Oy.

(3)         90/012,378 (electronically filed) – U.S. Patent No. 6,779,118 entitled USER SPECIFIC AUTOMATIC DATA REDIRECTION SYSTEM and owned by Linksmart Wireless Systems.  Filed June 28, 2012, likely by T-MOBILE USA.   The ‘118 patent is currently the subject of a litigation styled Linksmart Wireless v. T-MOBILE USA (Case No. –cv-522)).

(4)         90/012,379 (electronically filed) – U.S. Patent No. 6,641,477 entitled ELECTRONIC SECOND SPIN SLOT MACHINE and owned by Rembrandt Gaming Technologies.  Filed June 29, 2012.

(5)         90/012,380 (electronically filed) – U.S. Patent No. 5,451,375 entitled APPARATUS FOR TRIMLESS SAMPLE CUP USED IN X RAY SPECTROSCOPY and owned by Chemplex Industries.  Filed June 29, 2012.

(6)         90/012,381 (electronically filed) – U.S. Patent No. D604,188 entitled MINI LIGHT BAR and owned by Filed June 29, 2012, by Wolo Mfg.   The ‘188 patent is currently the subject of a litigation styled Shin v. Wolo Mfg. et al. (Case No. 2:12-cv-2592 (C.D. Cal.)).

(7)         90/012,382 (electronically filed) – U.S. Patent No. 5,819,201 entitled NAVIGATION SYSTEM WITH VEHICLE SERVICE INFORMATION and owned by Beacon Navigation.  Filed June 29, 2012.

(8)         90/012,383 (electronically filed) – U.S. Patent No. 6,258,569 entitled HYBRIDIZATION ASSAY USING SELF-QUENCHING FLUORESCENCE PROBE and owned by Life Techs.  Filed June 30, 2012, by Biosearch Techs.   The ‘569 patent is currently the subject of a litigation styled Applied Biosystems et al. v. Midland Certified Reagents et al. (Case No. 3:12-cv-852 (N.D. Cal.)).

(9)         90/012,384 (electronically filed) – U.S. Patent No. 6,030,787 entitled HYBRIDIZATION ASSAY USING SELF-QUENCHING FLUORESCENCE PROBE and owned by Life Techs.  Filed June 30, 2012, by Bioresearch Techs.   The ‘787 patent is currently the subject of a litigation styled Applied Biosystems et al. v. Midland Certified Reagents et al. (Case No. 3:12-cv-852 (N.D. Cal.)).