Patent Law Practice Center

Apple, Samsung Settle Patent Litigation

On June 27, 2018, Apple and Samsung settled their patent dispute.

A dismissal filed in Delaware ended a small chapter of the Apple/Samsung patent war. The docket in that case included only 18 items and the case had been stayed since August 2011 after Samsung brought patent infringement claims against Apple to the U.S. International Trade Commission. The dismissal terminating the Northern California case ended the much more contentious portion of the patent battle between these two companies. The dismissal is the penultimate filing in that case which involved a total of 3,956 docket entries filed with the district court alone.

The Northern California dismissal had the result of denying as moot various motions filed by either Samsung or Apple which were still pending at the time that the parties entered into the settlement. These included a motion filed by Apple for supplemental damages, pre-judgment interest and post-judgment interest, which was filed only on June 7th. This motion followed the district court’s previous ruling that an award of supplemental damages was necessary to compensate Apple for infringing sales not considered by the jury. The calculation of the supplemental damages award took August 25th, 2012, as the date from which to begin the calculation; this date was the day after the first jury verdict was entered in the case. Apple’s entitlement to supplemental damages was reiterated by the district court after a damages retrial that occurred in 2013. Apple argued in its motion that Samsung had waived any right to challenge Apple’s entitlement to compensation for additional infringing sales and that Samsung had admitted to continuing to sell six infringing models after the August 2012 jury verdict.

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USAA Asserts Mobile Check Deposit Patents Against Wells Fargo

On June 7th, San Antonio, TX-based reciprocal inter-insurance exchange United Services Automobile Association (USAA) filed a lawsuit alleging claims of patent infringement against San Francisco, CA-based financial services multinational Wells Fargo. The complaint, filed in the Eastern District of Texas, involves the assertion of patents in the field of mobile financial services which, at first glance, appear as though they may face some rigorous validity challenges thanks to precedent set by the U.S. Supreme Court in its 2014 decision in Alice Corp. v. CLS Bank International.

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Supreme Court says IPR is constitutional

On the morning of Tuesday, April 24th, the U.S. Supreme Court issued a decision in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC  that upheld the constitutionality of inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB). The Supreme Court applied the public rights doctrine to the government’s grant of a patent, finding that patent validity trials need not take place in an Article III court nor did they violate the Seventh Amendment, which ensures a person’s right to a jury trial. The majority opinion was authored by Justice Clarence Thomas. Justice Neil Gorsuch authored a dissent to which Chief Justice John Roberts concurred.

Justice Thomas’ majority opinion starts off by noting that Congress has authorized administrative processes at the U.S. Patent and Trademark Office to reconsider and cancel patent claims decades prior to the enactment of the Leahy-Smith America Invents Act (AIA) of 2011, the law which created IPRs and other post grant proceedings at the PTAB. Notably, Congress created ex parte reexamination proceedings in 1980 and the Court noted that those proceedings continue today. Congress also created inter partes reexamination in 1999, though those proceedings were phased out with the enactment of the AIA.

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Federal Circuit Says Veterinarian’s Suggestion Covered Essential Patent Claim Element

On Thursday, May 3rd, the Court of Appeals for the Federal Circuit issued a decision in In Re VerHoef, a case stemming from a decision by the Patent Trial and Appeal Board (PTAB) to invalidate a patent during an ex parte proceeding on 35 U.S.C. § 102(f) grounds, which governs the patentability of inventions which have been derived from a person who is not listed as an inventor on the patent application. The Federal Circuit panel affirmed the PTAB’s finding that Jeff VerHoef was not the sole inventor of a mobility device for dogs because the device incorporated a suggestion made by a veterinarian working with VerHoef’s dog.

The patent application at issue in this appeal is U.S. Patent Application No. 20130152873, titled Dog Mobility Device and claiming priority to a patent application filed in December 2011; this patent application is subject to pre-America Invents Act Section 102(f). That patent application lists VerHoef as the sole inventor. In an affidavit, VerHoef stated that he had developed the mobility harness covered by the ‘873 patent application, which assists with a dog’s movement of his hind legs, after his dog Reilly had difficulty walking after a surgical operation.

VerHoef worked with a veterinarian, Dr. Alycia Lamb, to provide rehabilitative therapy for Reilly around the same time that VerHoef was working on the mobility device. VerHoef had previously acted on Dr. Lamb’s suggestion to purchase a commercially available harness to support Reilly’s hind leg, but this device caused Reilly to place the leg’s weight on his knuckles instead of his toes. VerHoef recognized that a harness connected to Reilly’s toes would solve the problem and discussing this issue with Dr. Lamb, the vet suggested a strap configured with a figure 8 structure to engage the toes might solve that problem. Incorporating the figure 8 design into the mobility device, VerHoef filed a patent application listing himself and Dr. Lamb as co-inventors. That relationship soured and VerHoef filed the ‘873 patent application on the same day that Dr. Lamb filed a substantially similar patent application listing herself as the sole inventor.

The examiner of VerHoef’s patent application issued a Section 102(f) final rejection after VerHoef submitted his affidavit because the examiner found that VerHoef did not invent the claimed subject matter. On appeal to the PTAB, the Board affirmed the examiner’s decision, finding that the figure 8 loop was an essential element of the invention and finding that VerHoef didn’t maintain “intellectual domination” over the inventive process. During oral arguments on appeal to the Federal Circuit, counsel for VerHoef argued that, while Dr. Lamb did provide the suggestion on the figure 8 loop, VerHoef maintained the work of making the invention and the mere suggestion from Dr. Lamb did not automatically raise her to the level of joint inventor.

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Supreme Court decides Oil States

The United States Supreme Court recently decided  Oil States v. Greene’s Energy, which asked whether post-grant challenges to issued patents at the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO) are constitutional under Article III and the Seventh Amendment of the U.S. Constitution. In a 7-2 decision, the Court found that inter partes review (IPR) challenges are constitutional.

The Trump Administration argued that patents are a government franchise, and that is, in fact, what the Supreme Court ruled. Indeed, Justice Thomas, writing for the majority, said that all inter partes review involves is “reconsideration of the Government’s decision to grant a public franchise.” Thus, patents are not property rights despite what the statute says to the contrary, and despite the fact that the Supreme Court themselves have ruled to the contrary previously.

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