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 Product, 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.


Reynolds American Patents Transparent Smokeless Tobacco, Biodegradable Adhesives 

The CDC estimates that over 42 million adults in the U.S. are smokers. Other estimates claim that there are currently 1.1 billion smokers worldwide. Still, the American tobacco market is shrinking, which has companies like Reyonlds American (owner of RJ Reynolds Tobacco Company) searching for innovative solutions for the future.

Reynolds American is not the most prolific innovator that we have covered, but it does have a leading research and development position among cigarette makers. The company holds a portfolio of 1,011 active patents, including 307 U.S. patents, according to information collected from Innography’s patent portfolio tools. A search of recently issued patents shows that the American tobacco giant is shifting its research and development focus away from traditional tobacco products and towards e-cigarettes, smokeless tobacco products and cigarettes that are more environmentally friendly, or at least that possess a greater degree of biodegradability.


On the Record with Patent Commissioner Drew Hirshfeld

On July 30, 2015, Drew Hirshfeld was sworn in as the new Commissioner for Patents. Prior to taking the helm of patent operations as Commissioner for Patents, Hirshfeld served as Deputy Commissioner for Patent Examination Policy. Even before assuming the position of Deputy Commissioner, Hirshfeld was no stranger to senior management, having served two years as the USPTO Chief of Staff for David Kappos. He also served as a Supervisory Patent Examiner as well as a Group Director of Technology Center 2100, overseeing Computer Networking and Database workgroups.

I spoke with Hirshfeld on the record on August 10, 2015. What follows are some of the highlights of the interview. For more please see the complete transcript of our interview.


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.


Aviation Innovation

We recently published an article about the pursuit of green aviation technologies on In researching for that article we found a number of interesting aviation innovations that did not squarely fit within the “green” umbrella.

For example, U.S. Patent No. 9096315, titled Apparatus for Recovering Kinetic Energy Released During Landing of an Aircraft After Contact with the Ground, and Method, issued to Airbus Operations of Hamburg, Germany. The apparatus for recovering kinetic energy during landing claimed here has an energy converter located in the nose landing gear or main landing gear; the energy converter has a compressed air container and a heat exchanger to create a thermal storage system. This technology is designed to collect some of the kinetic energy created when an aircraft lands and brakes in order to be used by the craft when it is taxied on the ground. This patent will certainly catch the attention of individual inventors who, at least based on my communications with inventors over the years, are always looking for ways to capture and use kinetic energy as a part of a vehicle, such as an automobile or truck.

According to U.S. Patents No. 9096314,the history of electric aircraft can trace its roots back to a French dirigible from 1884, which is interesting in and of itself. But the ‘314 patent, issued under the title Electric VTOL Aircraft, protects a vertical take-off and landing (VTOL) aircraft having a system of electrically powered ducted fans which have their thrust controlled by a fan-driving motor; the system of fans is comprised of two pluralities of fans, one with a diameter which is 1.5 times the size of the other. The configuration of this fan system is intended to improve upon both the flight stability and the safety of conventional VTOL craft.

A family trio of inventors has developed a better technique for supplying power to electric aircraft, detailed within U.S. Patent No. 9090170, which is titled Self-Charging Electric Vehicle and Aircraft and Wireless Energy Distribution System. This patent was issued by the U.S. Patent and Trademark Office to Alex, David and Rena Mashinsky, all of Memphis, TN. It protects an electric-vehicle charging system with a secondary resonant coil connected to an electric vehicle and tuned to the same resonant frequency as a primary coil outside the vehicle and connected to a source of electrical power as well as a power-management system with a software module configured to control the power transfer rate. This system is a wireless inductive charging system much like ones we recently profiled in a recent IPWatchdog piece on wireless charging in electric automobiles.

Another electric aircraft technology is described within U.S. Patent Application No. 20150115108, issued under the title Aircraft Electric Motor System. This patent application, assigned to the Boeing Company, would protect an apparatus comprised of a controller that identifies an electric aircraft’s state as well as a group of recharging parameters based on the state of the aircraft’s electric motors for controlling the recharging of the power source. This system is intended to better monitor the performance of batteries powering motor equipment on an electric aircraft so that they can be replaced on a more effective schedule.

Finally,  we found a patent application covering an innovation that utilizes data analysis for better fuel performance in airliners. U.S. Patent Application No. 20150134187, titled Robust Systems and Methods for Improving Passenger Jet Aircraft Fuel Economy, filed by Alaska Airlines, Inc. (NYSE:ALK), of Seattle, WA, would protect a method for improving fuel economy on a passenger jet aircraft by receiving information from the craft including an exhaust gas temperature value for an auxiliary power unit in operation. The method determines whether the exhaust gas temperature value exceeds a certain threshold, sending a communication indicating an aircraft’s status for a future flight if the threshold temperature isn’t exceeded and updating a database to reflect changes in the aircraft’s status. This innovation enables the more effective use of auxiliary power units that provide power to subsystems on passenger jet aircraft by operating that unit only when required.