Patent Law Practice Center

CAFC OKs Transfer Despite Forum Selection Clause

In a non-precedential opinion issued October 18, 2013, the Federal Circuit issued a decision that calls into question the overall utility of forum selection clauses in contractual relationships. In fact, Eli Lilly lost its bid to have its dispute with Genentech and City of Hope heard in the Northern District of California despite a forum selection clause in the governing contract that stated the parties would litigate any dispute in the Northern District of California. See In re Eli Lilly and Co. 

Prior Art Admission Burns Patentee in Reexam at CAFC

Recently, the Federal Circuit issued a non-precedential per curiam decision in an appeal from an inter partes reexamination. Chief Judge Rader, Judge Newman and Judge Dyk were on the panel.

Victor Manuel Celorio Garrido appealed from a decision of the Patent Trial and Appeal Board relative to the inter partes reexamination of U.S. Patent No. 6,213,703. The Board affirmed the Patent and Trademark Office (“PTO”) examiner’s rejection of all but six claims as anticipated or obvious over the prior art. Garrido appealed to the Federal Circuit, arguing that the Board erred by relying on prior art references that were not published or publicly accessible prior to the filing date and by failing to address alleged misconduct by the requestor.  The Federal Circuit panel concluded that the Board did not err and that the claims of misconduct were unsupported.

The ’703 patent, which claims priority to a predecessor application filed on October 3, 1997, is directed to an “Electronic Bookstore Vending Machine” for printing and binding books on demand. The ’703 patent’s specification explains that the invention is a step-by-step method and a system for formatting, printing, and binding books, magazines, or other printed material.

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Cloud Technology Manages Network Bandwidth

IBM recently issued a press release touting U.S. Patent No. 8,352,953, titled Dynamically provisioning virtual machines, which was actually issued in January 2013. That suggests that the technology at play in this patent application is making its way into the stream of commerce. This gives us an opportunity to take a look at a real world useful innovation in the cloud computing space and wonder whether the claims issued would satisfy the half of the Federal Circuit that seems opposed to software patents.

The invention at issue was developed as a method for dynamically managing network bandwidth within a cloud computing environment. IBM says this innovation could lead to significant improvements in overall system performance, efficiency and economy.

In a typical cloud computing environment, each user is given access to a virtual machine (“VM”) that delivers a host operating system and physical resources such as processor and memory to support the user’s application requirements. To accommodate numerous users, multiple VMs are assigned within the cloud and as demands for system resources increase and multiply, applications can become constrained by limits on networking bandwidth. This IBM invention allows the system to automatically and dynamically reassign work from one system node to another based on networking bandwidth requirements and availability, ensuring that the system and VMs can run efficiently.

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Contempt Proceeding Fails on Colorable Difference Prong

Last week, the United States Court of Appeals for the Federal Circuit issued a decision in ncCUBE Corporation v. SeaChange International, dealing with the failure of the district court to find SeaChange in contempt for violating a permanent injunction.

ARRIS (formerly nCUBE) commenced the present litigation on January 8, 2001, alleging the infringement of certain claims of U.S. Patent No. 5,805,804 (“’804 patent”), which discloses and claims a media server capable of transmitting multimedia information over any network configuration in real time to a client that has requested the information. The patented technology allows a user to purchase videos that are then streamed to a device such as a television.

On May 28, 2002, the jury returned a verdict in ARRIS’s favor, finding that SeaChange willfully infringed the asserted claims in the ’804 patent. The Federal Circuit later affirmed the jury verdict and the district court’s subsequent decision to enhance the damages award. Subsequent to the Federal Circuit affirmance, the district court entered a permanent injunction enjoining SeaChange from “making, using, selling, or offering to sell… the SeaChange Interactive Television System… as well as any devices not more than colorably different therefrom that clearly infringe the Adjudicated Claims of the ’804 patent.”

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St. Jude: Double Patenting at the Federal Circuit

In the recent Federal Circuit case of St. Jude Medical v. Access Closure, the defendant Access Closure, Inc. (ACI) appealed several rulings made by the United States District Court for the Western District of Arkansas in favor of St. Jude Medical, the patentee-plaintiff. The rulings relate to three patents that St. Jude asserted against ACI, namely U.S. Patent No. 7,008,439 to Janzen et al., U.S. Patent No. 5,275,616 to Fowler, and U.S. Patent No. 5,716,375, also to Fowler.

St. Jude filed its complaint in the United States District Court for the Western District of Arkansas on October 22, 2008, alleging that ACI infringed various claims of the aforementioned patents. During the litigation, the district court issued a Markman order in which it construed various claim terms found in the Janzen patent, including “means for ejecting” and “ejecting mechanism.” Unable to resolve the dispute, the parties proceeded to trial before a jury.

The jury rendered a verdict that ACI had infringed claims 7 and 8 of the Janzen patent, but that claims 7, 8, and 9 of the Janzen patent were invalid for double patenting in light of the sibling ’498 patent. Implicit in the jury’s double patenting finding was the jury’s conclusion that claims 7, 8, and 9 of the Janzen patent were not patentably distinct from claim 7 of the sibling patent.

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