Patent Law Practice Center

CAFC strikes down EDTX venue test

The United States Court of Appeals for the Federal Circuit has struck down a much-criticized venue test created by Judge Rodney Gilstrap of the United States Federal District Court for the Eastern District of Texas. See In re: Cray Inc.

In a unanimous panel decision authored by Judge Alan Lourie (joined by Judges Reyna and Stoll), the Federal Circuit found that Judge Gilstrap misinterpreted the scope and effect of Federal Circuit precedent in determining that Cray maintained “a regular and established place of business” in the Eastern District of Texas within the meaning of 28 U.S.C. § 1400(b). Accordingly, Judge Gilstrap’s denial of Cray’s transfer motion was an abuse of discretion. The Federal Circuit panel ordered the case transferred, but did not decide to which court the case should be transferred. While Cray would prefer transfer to the Western District of Wisconsin, Raytheon would prefer transfer to the Western District of Texas. The Federal Circuit left the decision of which district to transfer the case to for remand.

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Burden of persuasion on Petitioner for IPR amendments

On October 4, 2017, the United States Court of Appeals for the Federal Circuit issued its much-anticipated decision in Aqua Products, Inc. v. Matal, addressing en banc whether the patent owner has the burden of proving patentability with respect to submitted amended claims during an inter partes review (IPR) proceeding. Previous panels of the Federal Circuit had ruled that the burden of persuasion to demonstrate patentability was with the patent owner, not with the challenger. Sitting en banc, the Federal Circuit issued a narrow ruling saying that the burden of persuasion must remain at all times on the petitioner, including with respect to demonstration of unpatentability of amended claims.

The ruling of the court was described to be “narrow” by Judge O’Malley, who wrote for the majority in announcing the limited decision. There was no consensus among the Judges with respect to the judgment that should be reached and the rationale that should be employed, which meant very little of what was actually written in the five opinions and some 135 pages was actually precedential. This lack of consensus would explain why it took the Federal Circuit ten months after the oral arguments in this case to issue a decision.

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PTO Update from John Cabeca, Silicon Valley Director

Last week John Cabeca (left), Director of the Silicon Valley branch of the United States Patent and Trademark Office, delivered the Keynote Speech at the 2017 Annual Meeting of the Association of Intellectual Property Firms (AIPF) in San Francisco, California. What follows are several of the more interesting points Cabeca make during his 30-minute presentation.

“Typically it takes three months plus or minus a month, depending upon what Congress has on their schedule, but we look forward to having Mr. Iancu on board,” said Cabeca, when addressing the most common question he gets of late – when can we expect the new Director to be confirmed and in place.

Cabeca’s assessment on the Iancu timeframe is in keeping with everything I’ve been hearing. President Trump nominated Andrei Iancu to be the next Director of the USPTO on August 25, 2017. Perhaps Iancu will manage to find himself a part of some late-year nominee deal in the Senate, perhaps he will be held over for confirmation until early 2018. (more…)

$912M Qualcomm fine upheld by Korean court

On Monday, September 4th, a South Korean court denied a request made by San Diego, CA-based semiconductor developer Qualcomm Inc. (NASDAQ:QCOM) to rescind a fine levied last December by the Korea Fair Trade Commission (KFTC) over alleged unfair business activities in patent licensing and chip sales. According to reports, the South Korean court decision keeps in place a $912 million fine in the latest blow to Qualcomm’s corporate intellectual property strategy.

Last December, the KFTC originally fined Qualcomm a total of $853 million after a three-year study concluded and found that the chipmaker limited market access among competitors and employed unfair licensing agreements (which could stop shipments to licensees who didn’t comply with certain agreement terms). Qualcomm’s initial statement on the Korean regulatory fine indicated a great deal of disagreement and the chipmaker filed a motion for stay in Seoul Central District Court this February, citing potential commercial interests that might be seeking to influence South Korea’s regulatory action. (more…)

CAFC says the U.S. may file a CBM proceeding

The United States Court of Appeals for the Federal Circuit recently issued a decision in Return Mail, Inc. v. United States Postal Service, which upheld the invalidity of all challenged claims in a covered business method (CBM) challenge decided by the Patent Trial and Appeal Board (PTAB). In the CBM proceeding, the PTAB panel found the claims to be directed to patent ineligible subject matter under 35 U.S.C. § 101.

That patent claims were found to be directed to patent ineligible subject matter in a CBM proceeding is hardly newsworthy. No patent that has entered CBM has done anything other than fall to date. What is newsworthy, however, is that the Federal Circuit also upheld a controversial ruling of the PTAB, which determined that the United States has standing to bring a CBM challenge. Legally speaking, the United States, or in this case the United States Postal Service, is considered a person within the meaning of AIA § 18(a)(1)(B).

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