In its opinion in Aylus Networks, Inc. v. Apple Inc., the Federal Circuit expanded the scope of prosecution disclaimer to statements made by a patent owner during Inter Partes Review (IPR) proceedings. The Court explained that extending the doctrine to cover patent owner statements, made either before or after institution of an IPR, ensures that claims are not argued in one way to maintain patentability and a different way to support infringement allegations. The Court also noted that its conclusion promotes the public notice function of intrinsic evidence and protects the public’s reliance on statements made during IPR proceedings.
The New Year brings excitement and anticipation of changes for the best. Some of the pending patent cases provide us with ample opportunity to expect something new and, if not always very desirable to everybody, at least different. In this post, we highlight several cases that present interesting issues and that we anticipate may provide for new and important developments in the patent law this year.
As we have covered in detail here before, Apple sued Samsung in 2011, for infringement of design patents covering a black rectangular front face with rounded corners, a rectangular front face with rounded corners and a raised rim, and a grid of 16 colorful icons on a black screen. A jury found that several Samsung smartphones did infringe those patents and awarded $399 million in damages to Apple for Samsung’s design patent infringement. The Federal Circuit subsequently upheld the award.
Last week, the Supreme Court held that the relevant “article of manufacture” for arriving at a damages award for design patent infringement need not be the end product sold to the consumer, but may be only a component of that product. In Samsung Electronics Co., Ltd., et al. v. Apple Inc., 580 U.S. ___, No. 15-777, slip op. (Dec. 6, 2016), a unanimous 8-0 opinion authored by Justice Sotomayor reversed the Federal Circuit’s ruling that Apple was entitled to $399 million in damages, and remanded the case to the Federal Circuit.
To read more about the decision, please click here.
The Federal Circuit has again addressed which types of patents are eligible for Covered Business Method (“CBM”) review before the Patent Trial & Appeals Board. Approximately one week after issuing the recent Unwired Planet v. Google decision clarifying the proper standard to determine whether a patent is a CBM patent, the Federal Circuit issued a decision in Ameranth, Inc. v. Agilsys, Inc., which demonstrates the great deal of deference the Federal Circuit may give the Board in determining what constitutes a CBM patent.
A threshold issue for CBM review is whether the challenged patent is a CBM patent and thus eligible for CBM review. As the Federal Circuit explained last week, a CBM patent is statutorily defined as “a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.” To fall within the “technological inventions” exception to CBM patents under 37 C.F.R. §42.301(b), the claimed subjected matter as a whole must satisfy two requirements: (1) it must recite a technological feature that is novel and unobvious over the prior art; and (2) it must solve a technical problem using a technical solution.
The oft-overlooked design patent has seen somewhat of a revival recently (at least in the media) ever since a jury in California awarded Apple $399 million in damages — i.e., all Samsung profits from the sale of several of its smartphone and tablet devices — for Samsung’s infringement of three Apple design patents in Apple, Inc., v. Samsung Electronics Co., Ltd.
US Design Pat. No. 593,087
US Design Pat. No. 604,305
US Design Pat. No. 618,677
The Federal Circuit has again held that it lacks jurisdiction to review certain decisions of the U.S. Patent Trial & Appeal Board in Inter Partes Reviews, continuing the Court’s apparent “hands off” approach to reviewing PTAB decisions in IPRs. This time, the Federal Circuit determined that it lacks jurisdiction to review a PTAB Board’s determination as to whether to initiate an Inter Partes Review proceeding based on the one year time bar of 35 U.S.C. § 315(b), “even if such assessment is reconsidered during the merits phase of proceedings and restated as part of the Board’s final written decision.” Achates Reference Publishing, Inc. v. Apple, Inc., No. 2014-1767, at 13 (Fed. Cir. Sept. 30, 2015).
Section 315(b) establishes a one year time bar prohibiting PTAB from instituting an IPR challenging the validity of a U.S. patent “if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” When Apple filed petitions for Inter Partes Review of two Achates patents, Achates argued that Apple’s IPR petitions were time-barred under 35 U.S.C. § 315(b) because, according to Achates, Apple was in privity with one or more defendants who had been served with a complaint alleging infringement of those Achates patents more than a year prior to Apple’s petitions. Achates also argued that Apple’s IPR petitions were time-barred because those earlier defendants were real parties-in-interest to the petitions. Continue Reading Federal Circuit Holds That It Lacks Jurisdiction To Review PTAB’s § 315 Time-Bar Determination
The Federal Circuit’s recent en banc opinion in Williamson v. Citrix Online, LLC, 2015 U.S. App. LEXIS 10082, *2 (Fed. Cir. June 16, 2015) (Williamson II) may result in courts finding that more claims include “means-plus-function” claim elements, which could significantly affect the scope and validity of those claims. As a result of Williamson II, the Federal Circuit has weakened the “presumption” that claim elements lacking the term “means” fall outside the means-plus-function analysis. Continue Reading The Federal Circuit Alters the Means-Plus-Function Analysis