Table of Contents Federal... · in earlier-filed reference patent provisional application is...

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About the Authors ....................................................................... vii

Table of Chapters ......................................................................... ix

Table of 2015 Cases ...............................................................xxxix

Preface.............................................................................................. lxi

Chapter 1 Utility & Inventions Patentable .................... 1

§ 1:1 Ariosa Diagnostics, Inc. v. Sequenom, Inc........................... 1Method “for detecting a paternally inherited nucleic acid of fetal origin performed on a maternal serum or plasma sam-ple from a pregnant female” held to constitute patent-ineli-gible subject matter.

§ 1:1.1 The Claims at Issue in This Case.................................. 6

§ 1:2 Intellectual Ventures I LLC v. Capital One Bank (USA), NA............................................... 6Claims to budgeting and customized web page content held to be drawn to patent-ineligible abstract ideas.

§ 1:2.1 The Claims at Issue in This Case.................................. 7

§ 1:3 Internet Patents Corp. v. Active Network, Inc. ................... 8Determination of what is an inventive concept favors inqui-ries analogous to those undertaken for determination of pat-entable invention, for a known idea, or one that is routine and conventional, is not inventive in patent terms, as the Court found in Bilski, Mayo, and Alice.

§ 1:3.1 The Claims at Issue in This Case................................ 10

§ 1:4 OIP Technologies, Inc. v. Amazon.com, Inc. .................... 10Method for pricing products held at the pleading stage to constitute a patent-ineligible process.

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2016 FEDERAL CIRCUIT YEARBOOK

§ 1:5 Versata Development Group, Inc. v. SAP America, Inc.(Versata I) ............................................................................12In an appeal from the PTAB’s CBM review, the Federal Cir-cuit concludes that claims to a method and apparatus for pricing products constituted a patent-ineligible “abstract idea.”

§ 1:5.1 The Claims at Issue in This Case................................18

Chapter 2 Novelty and Statutory Bars ..........................21

§ 2:1 Delano Farms Co. v. California Table Grape Commission .........................................................................21Plant patents were not invalid for alleged pre-critical date public use where third party improperly obtained plant material, and sought to keep his possession of that plant material secret—alleged use of the plant material was not accessible to the public.

§ 2:2 Dynamic Drinkware, LLC v. National Graphics, Inc........24Challenger bears burden of showing that claims of reference patent are supported under section 112(1) by disclosure in earlier-filed provisional application. To show claims of ref-erence patent are supported under section 112(1) by disclo-sure in earlier-filed provisional application, there must be a showing that the claims in the reference patent find sec-tion 112(1) support in the earlier-filed provisional applica-tion. Showing that claims in challenged patent lack support in earlier-filed reference patent provisional application is insufficient.

§ 2:3 Ineos USA LLC v. Berry Plastics Corp. .............................28“When a patent claims a range, as in this case, that range is anticipated by a prior art reference if the reference discloses a point within the range.” “If the prior art discloses its own range, rather than a specific point, then the prior art is only anticipatory if it describes the claimed range with sufficient specificity such that a reasonable fact finder could conclude that there is no reasonable difference in how the invention operates over the ranges.” Evidence of criticality must relate to the functionality of the claimed invention.

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§ 2:4 Kennametal, Inc. v. Ingersoll Cutting Tool Co.................. 31“[A] reference can anticipate a claim even if it ‘d[oes] not expressly spell out’ all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the ref-erence, would ‘at once envisage’ the claimed arrangement or combination.” —In re Petering


§ 2:5 Medicines Co. v. Hospira, Inc. ........................................... 34Sale of “services” found to trigger “on-sale” bar—there is no “supplier” exception to the “on sale” bar.

§ 2:6 In re Morsa (Morsa II) ........................................................ 36Panel majority: Whether a prior reference is enabling may be determined in the context of what the inventor says in the specification is known in the art. Judge Newman dissent: Panel majority confuses anticipation with obviousness.

§ 2:7 In re Steed ........................................................................... 38Federal Circuit affirms PTAB decision that pro se prepared and argued evidence of prior actual reduction to practice or prior conception coupled with diligence were insufficient to antedate reference. Board was not required to call applicant if additional information was required.

Chapter 3 Nonobviousness.................................................. 41

§ 3:1 ABT Systems, LLC v. Emerson Electric Co...................... 41Federal Circuit overturns jury verdict of nonobviousness. In an HVAC system thermostat, adding a feature where fan would periodically run after end of cooling/heating cycle would have been obvious in light of prior art.

§ 3:2 Allergan, Inc. v. Sandoz Inc. ............................................... 43Where there is a range disclosed in the prior art, and the claimed invention falls within that range, a relevant inquiry is whether there would have been motivation to select the claimed composition from the prior art ranges. In that cir-cumstance, “the burden of production falls upon the paten-

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tee to come forward with evidence that (1) the prior art taught away from the claimed invention; (2) there were new and unexpected results relative to the prior art; or (3) there are other pertinent secondary considerations.” If the claimed invention falls within a prior art range, ample evi-dence of teaching away and unexpected results may support a conclusion of nonobviousness.

§ 3:3 Belden Inc. v. Berk-Tek LLC .............................................45Federal Circuit’s analysis suggests that motivation to com-bine references was treated as a question of law, despite comments to the contrary.

§ 3:4 Circuit Check Inc. v. QXQ Inc. ..........................................48Simply because something is within common knowledge does not make it analogous art.

§ 3:5 G.D. Searle LLC v. Lupin Pharmaceuticals, Inc. ..............51Patentee cannot secure “safe harbor” coverage by reissuing earlier patent that issued from a continuation-in-part appli-cation by deleting “new matter” and redesignating applica-tion as a “division.” Restriction requirement in later application involving different compounds, compositions and methods-of-use cannot be said to have “carried for-ward” earlier restriction requirement.

§ 3:6 Insite Vision Inc. v. Sandoz, Inc..........................................54District court did not err in “framing” the obviousness enquiry to the broader problem to be solved rather than the narrower condition to be treated.

§ 3:7 Ivera Medical Corp. v. Hospira, Inc. ..................................56Expert declarations showed an unresolved genuine issue of material fact, namely motivation to modify prior art, that precluded granting summary judgment of invalidity.

§ 3:8 MobileMedia Ideas LLC v. Apple Inc. ..............................62“[E]ven when a technique has been used to improve a device, and a skilled artisan would recognize that it could improve other devices in the same way, using that technique may not be obvious if its actual application is beyond his or her level of skill.”

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§ 3:9 Prometheus Laboratories, Inc. v. Roxane Laboratories, Inc. ................................................... 64A species may be nonobvious even though the prior art dis-closes a genus encompassing the species—in the field of per-sonalized medicine, a particular treatment may be effective with respect to one subset of patients and ineffective (or harmful) to another subset of patients. “Singling out a par-ticular subset of patients for treatment (for example, patients with a particular gene) may reflect a new and use-ful invention that is patent eligible despite the existence of prior art or a prior art patent disclosing the treatment method to patients generally.” Here, however, the Federal Circuit concluded it would have been obvious to treat lim-ited claimed subset with known pharmaceutical.

§ 3:10 Senju Pharmaceutical Co. v. Lupin Ltd. ............................ 67Federal Circuit panel splits on obviousness of claimed com-pound after reexamination.

§ 3:11 Spectrum Pharmaceuticals, Inc. v. Sandoz Inc.................. 68Because a physician would not likely want to administer a contaminated or less than pure material to a patient if one could use a pure material, there is always a motivation to aim for obtaining a pure material.

Chapter 4 Specification and Claims ................................ 71

§ 4:1 Biosig Instruments, Inc. v. Nautilus, Inc............................ 71After remand from the Supreme Court, Federal Circuit reaches same conclusion on indefiniteness.

§ 4:2 Dow Chemical Co. v. NOVA Chemicals Corp. (Canada) .............................................................................. 72Federal Circuit in an appeal from a supplemental damage award concluded that Nautilus provided an exception to the law of the case doctrine, and found the claims indefinite, thereby eliminating supplemental damages.

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§ 4:3 Eidos Display, LLC v. AU Optronics Corp........................77Where a district court declines to adopt any of the construc-tions proffered by the parties, that does not necessarily mean that the claim is indefinite.

§ 4:4 Ethicon Endo-Surgery, Inc. v. Covidien, Inc.....................79If one of ordinary skill in the art would understand how to measure the claimed average pressures, there is no require-ment that the specification identify a particular measure-ment technique.

§ 4:5 Inphi Corp. v. Netlist, Inc. ..................................................81Properly describing alternative features without articulat-ing advantages or disadvantages of each feature can consti-tute a “reason to exclude” and provide written description support—Santarus distinguished.

§ 4:6 Teva Pharmaceuticals USA Inc. v. Sandoz, Inc. ................82The meaning one of ordinary skill in the art would attribute to a term in light of how the term is used in the claims, spec-ification and prosecution history is not entitled to deference as a fact question. Where specification does not identify which of three possible methods for measuring molecular weight should be used, and during prosecution of later con-tinuation applications provides inconsistent responses on the issue, claims are indefinite.

Chapter 5 Interference and Priority of Invention ...............................................................87

The Federal Circuit did not issue any opinions addressing interference and priority of invention in 2015.

Chapter 6 Claim Construction ...........................................89

§ 6:1 Akamai Technologies, Inc. v. Limelight Networks, Inc.(Akamai V) ...........................................................................89Party stipulating to claim construction at Markman stage is bound by that stipulation.

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§ 6:2 Atlas IP, LLC v. Medtronic, Inc......................................... 91Federal Circuit reverses district court’s summary judgment rejecting validity challenges when district court failed to consider claim language in context.

§ 6:3 Atlas IP, LLC v. St. Jude Medical, Inc............................... 92Federal Circuit concludes district court’s claim construction was erroneous but rejected defendant’s assertion that doing so would lead to an inoperable result.

§ 6:4 Cadence Pharmaceuticals Inc. v. Exela PharmSci Inc. ..... 95Even if all of the embodiments disclosed in a patent include a specific limitation, it would be improper to import those limitations into the claims.

§ 6:5 CardSoft v. VeriFone, Inc................................................... 96“[I]t is not enough that the district court may have heard extrinsic evidence during a claim construction proceed-ing—rather, the district court must have actually made a factual finding in order to trigger Teva’s deferential review.”

§ 6:6 Commil USA, LLC v. Cisco Systems, Inc.......................... 98Plain language of the claim leads to finding of no infringe-ment.

§ 6:7 In re DiStefano.................................................................... 99“Printed matter” must be matter claimed for what it com-municates.

§ 6:8 Enzo Biochem Inc. v. Applera Corp. ............................... 101Panel majority concludes that despite district court’s find-ing that at least one specification example supported its claim construction, the meaning of “at least one” here excluded “one.” Circuit Judge Newman dissents.

§ 6:9 EON Corp. IP Holdings LLC v. AT&T Mobility LLC......................................................... 102The Katz exception to the rule that in cases involving com-puter-implemented inventions and means-plus-function claiming the structure disclosed in the specification must be more than simply a general purpose computer or micropro-

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cessor is narrow. The “special programming” language of Katz includes “off-the-shelf” software. Where no algorithms are disclosed, it is irrelevant whether one of ordinary skill in the art would be able to develop a suitable algorithm.

§ 6:10 Fenner Investments, Ltd. v. Cellco Partnership..............106First case after Teva indicates little has changed.

§ 6:11 Imaginal Systematic, LLC v. Leggett & Platt, Inc...........109Claim containing negative limitation “without the use of a vision guidance system” was properly construed as exclud-ing a “vision guidance system” rather than merely excluding a “vision guidance system” disclosed in a patent incorpo-rated by reference.

§ 6:12 In re Imes...........................................................................110PTO’s construction of “wireless” to include metal contacts inside a digital camera to connection with a memory card was unreasonably broad.

§ 6:13 Info-Hold, Inc. v. Applied Media Technologies Corp. andInfo-Hold, Inc. v. Muzak LLC..........................................113Claims are not limited to disclosed embodiments, even if only one embodiment is disclosed, unless patentee uses words that manifest a clear intention to restrict the scope of the claims to that embodiment.

§ 6:13.1 The Claims at Issue in This Case..............................115

§ 6:14 Inline Plastics Corp. v. Easypak, LLC..............................116District court erred by reading limitations for embodiment from the specification into the claims based on frequency in which that embodiment was described.

§ 6:15 Kaneka Corp. v. Xiamen Kingdomway Group Co. ..........118When the specification does not use a term that is used in the claims, that does not necessarily mean that the term must be given its dictionary definition if the meaning of the term can be ascertained from the specification. “A claim construction that excludes a preferred embodiment is ‘rarely, if ever, correct.’ . . . A construction that excludes all disclosed embodiments . . . is especially disfavored.”

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§ 6:16 Lighting Ballast Control LLC v. Philips Electronics North America Corp. ........................................................ 120Federal Circuit finds no clear error in the district court’s reliance on expert testimony to conclude that a clause con-taining the word “means” nevertheless did not subject the limitation to construction as a “means-plus-function” lim-itation governed by section 112(f).

§ 6:17 Lighting Ballast Control LLC v. Philips Electronics North America Corp. ........................................................ 122A party is not required to object to a jury instruction to pre-serve an issue of claim construction for appeal if the party’s claim construction position was made clear to the district court, and the district court rejected it.

§ 6:18 Media Rights Technologies, Inc. v. Capital One Financial Corp................................................................... 123“Compliance mechanism” found to constitute a means-plus-function limitation.

§ 6:18.1 The Claims at Issue in This Case.............................. 124

§ 6:19 Openwave Systems, Inc. v. Apple Inc. ............................. 125Although disavowal of claim scope through disparagement of the prior art in the specification is a high bar, Federal Circuit found that consistent repeated disparagement resulted in disavowal.

§ 6:20 Pacing Technologies, LLC v. Garmin International, Inc............................................................... 127When limitations in a claim body rely upon and derive antecedent basis from the preamble, then the preamble may be limiting. Although “objects of the invention” will not nec-essarily limit the claims, when the specification contains additional language to the effect that “those objects are achieved by . . .” that description may constitute a “clear disavowal” and limit the claims.


§ 6:21 Papst Licensing GmbH & Co., KG v. Fujifilm Corp. ..... 131District court construed claims too narrowly in granting summary judgment of non-infringement.

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§ 6:22 Power Integrations, Inc. v. Lee.........................................134“The fact that the board is not generally bound by a previ-ous judicial interpretation of a disputed claim term does not mean, however, that it has no obligation to acknowledge that interpretation or to assess whether it is consistent with the broadest reasonable construction of the term.”

§ 6:23 Shire Development, LLC v. Watson Pharmaceuticals, Inc. ........................................................137Although Teva requires deferential review of a district court’s factual findings, that deferential review is not trig-gered simply because the district court hears expert testi-mony during a Markman hearing.

§ 6:24 Straight Path IP Group, Inc. v. Sipnet EU S.R.O............138Panel majority: When claim language is clear, claim lan-guage, not the specification, controls. Judge Dyk, dissent-ing-in-part: Specification is always relevant to claim construction.

§ 6:25 TomTom, Inc. v. Adolph...................................................139A portion of a claim preamble may be limiting while other portions are not.

§ 6:25.1 The Claims at Issue in This Case..............................141

§ 6:26 Vasudevan Software, Inc. v. MicroStrategy, Inc. .............141Statement in prosecution history held to be definitional when the applicant used the phrase “refers to.”

§ 6:27 Williamson v. Citrix Online, LLC.....................................143District court errs in limiting claims to embodiment dis-closed in the specification. Regarding means-plus-function limitations, Federal Circuit en banc overrules heightened presumption from not using the word “means” introduced in Lighting World, and applied in Inventio, Flo Healthcareand Apple.

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Chapter 7 Infringement ..................................................... 149

§ 7:1 Advanced Steel Recovery, LLC v. X-Body Equipment, Inc. ................................................................ 149A connection approximately 35% down the length of a com-ponent avoids both literal infringement and infringement under the doctrine of equivalents where claim calls for a connection at the “proximate end.”

§ 7:2 Akamai Technologies, Inc. v. Limelight Networks, Inc. ................................................................... 151Direct infringement under section 271(a) occurs where all steps of a claimed method are performed by or attributable to a single entity. Where more than one actor is involved in practicing the steps, a court must determine whether the acts of one are attributable to the other such that a single entity is responsible for the infringement. “We will hold an entity responsible for others’ performance of method steps in two sets of circumstances: (1) where that entity directs or controls others’ performance, and (2) where the actors form a joint enterprise.”

§ 7:3 Astornet Technologies Inc. v. BAE Systems, Inc. ........... 156Suit for indirect infringement against private company, where direct infringement is by the government, must be brought in the U.S. Court of Federal Claims under sec-tion 1498—U.S. District Court properly dismissed action.

§ 7:4 Classen Immunotherapies, Inc. v. Elan Pharmaceuticals, Inc. ............................................... 159Post-NDA approval clinical studies and submissions to FDA held to fall within “safe harbor” of section 271(e)(1).

§ 7:5 Helferich Patent Licensing, LLC v. The New York Times Co. ................................................. 163Licensing distinct separately patentable claims does not exhaust patent rights in other claims where the licensees are not asserted to be direct infringers of the unlicensed claims.


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§ 7:6 JVC Kenwood Corp. v. Nero, Inc. ....................................167Theory of infringement based on “necessary infringement” by ultimate users because of certain industry standards fails when there is an extensive licensing program in conjunction with such standards, and there is not sufficient evidence of direct infringement, in this case use of unlicensed DVDs or Blu-ray discs.

§ 7:7 Lexmark International, Inc. v. Impression Products, Inc......................................................................168Federal Circuit sua sponte takes patent exhaustion issue en banc.

§ 7:8 Momenta Pharmaceuticals, Inc. v. Teva Pharmaceuticals USA Inc.........................................169Section 271(g), prohibiting sales “within the United States [of] a product which is made by a process patented in the United States,” does not cover a process for quality control.

§ 7:9 R+L Carriers, Inc. v. Qualcomm, Inc...............................171Whether claims are “substantially identical”—when a claim is broadened on reexamination—requires determining “whether any conceivable process would infringe the amended claim, but not infringe the original claim.” Whether an amended claim is narrower requires determin-ing whether there is any product or process that would infringe the original claim, but not infringe the amended claim. After Teva, a district court’s factual findings on the scope of reexamined and original claims are reviewed for clear error, but the ultimate conclusion regarding the scope of the claims is reviewed de novo.

§ 7:10 SCA Hygiene Products Aktiebolag SCA Personal Care, Inc. v. First Quality Baby Products, LLC.........................175A split Federal Circuit en banc holds that: (a) section 282 codified laches as a defense; (b) prior to 1952, courts recog-nized laches as a defense to both equitable and legal reme-dies (the “common law” of laches which was codified in section 282); (c) laches remains a defense to legal relief in patent infringement suits after Petrella; (d) laches bars legal relief; (e) courts must weigh the facts underlying laches in the eBay framework when considering an injunction; and

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(f) absent extraordinary circumstances, laches does not pre-clude an ongoing royalty.

§ 7:11 Shire LLC v. Amneal Pharmaceuticals, LLC .................. 182Company that manufactures and sells an active ingredient to ANDA filers falls within “safe harbor” of sec-tion 271(e)(1) and is not liable for induced infringement.

§ 7:12 SpeedTrack, Inc. v. Office Depot, Inc. ............................ 183Kessler doctrine remains alive and well, and bars subse-quent suit against customer when asserted patent was held non-infringed in earlier suit against manufacturer. As a matter of first impression, Kessler defense may be raised by customer.

§ 7:13 Takeda Pharmaceuticals U.S.A., Inc. v. West-WardPharmaceutical Corp......................................................... 186Label providing “[i]f you have a gout flare while taking Mitigare, tell your healthcare provider” was insufficient to show induced infringement despite some evidence that phy-sicians, if consulted, would advocate an infringing use—district court properly denied injunction finding no suffi-cient showing of likelihood of success on the merits.

Chapter 8 Prosecution History Estoppel .................... 191

The Federal Circuit did not issue any opinions addressing prosecution history estoppel in 2015.

Chapter 9 Inequitable Conduct ...................................... 193

The Federal Circuit did not issue any opinions addressing inequitable conduct in 2015.

Chapter 10 Remedies ............................................................. 195

§ 10:1 Achates Reference Publishing, Inc. v. Apple Inc. ........... 195PTAB determinations to institute IPRs are final and non-appealable under section 314(d)—Federal Circuit lacks jurisdiction to determine whether IPR was time-barred under section 315(b)—court distinguishes Versata II. That

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the PTAB addresses an issue in its final written determina-tion does not necessarily make that issue appealable.

§ 10:2 Apple Inc. v. Samsung Electronics Co., Ltd. ...................198District court erred in finding a lack of irreparable harm based on an alleged failure to show a causal nexus between infringement and alleged harm. A causal connection between the alleged harm and the infringement is required regardless of the narrowness of the proposed injunction; for example, whether the proposed injunction applies to an entire product or only infringing features.

§ 10:3 Apple Inc. v. Samsung Electronics Co., Ltd. ...................203A causal nexus linking the harm and the infringing acts must be established regardless of whether the injunction is sought for an entire product or is narrowly limited to par-ticular features.

§ 10:4 Apple Inc. v. Samsung Electronics Co., Ltd. ...................206Causal nexus only requires “some connection” between the patented features and infringing products. Narrowly tai-lored injunction shifted balance of hardships in patent owner’s favor. The public interest nearly always weighs in favor of protecting property rights in the absence of coun-tervailing factors, especially when the patentee practices his inventions.

§ 10:5 AstraZeneca AB v. Apotex Corp. ......................................208Damages under section 284 may not include post-expiration royalties even though sales were made during a period of pediatrics exclusivity granted the patentee by the FDA.

§ 10:6 Bard Peripheral Vascular, Inc. v. W.L. Gore & Associates, Inc....................................................................211Whether a defense to infringement raises a “substantial question” regarding validity or non-infringement may depend on the history of the litigation.

§ 10:7 Carnegie Mellon University v. Marvell Technology Group, Ltd. ........................................................................215When a physical product is being used to measure damages for the infringing use of patented methods, the territorial

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limitation of the patent laws requires at least one of making, or using, or selling in the United States, or importing into the United States, even though other of those activities occurs abroad.

§ 10:8 Carnegie Mellon University v. Marvell Technology Group, Ltd......................................................................... 216Objective reasonableness of a defense requires that the accused infringer have that defense in mind before the liti-gation. A defense may be reasonable even if not actually presented to the jury.

§ 10:9 Commonwealth Scientific and Industrial ResearchOrganisation v. Cisco Systems, Inc................................... 220Damages models do not necessarily have to begin with the smallest salable patent-practicing unit, especially where the parties’ prior negotiations have already taken apportion-ment into account. Reasonable royalties for SEPs gener-ally—and not only those subject to a RAND Commitment—must not include any value flowing to the patent from the standard’s adoption.

§ 10:10 DeLorme Publishing Co., Inc. v. International TradeCommission ....................................................................... 223Violation of a final non-appealable consent order may be punished by civil penalties even though claims are subse-quently held invalid by a district court—ePlus distin-guished. “To the extent ePlus left open the question of whether civil contempt sanctions survive if the underlying injunction was final at the time the sanctions were imposed, that question is hereby resolved.” Question of whether sec-tion 1337(f)(2) “Civil Penalty” is punitive because paid to the government and thus more like a criminal contempt sanction which cannot be set aside is expressly deferred.

§ 10:11 ePlus, Inc. v. Lawson Software, Inc. (ePlus III)............... 225When PTO cancels during reexamination, and the Federal Circuit affirms that cancellation, the sole claim supporting an injunction, the injunction cannot continue.

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§ 10:12 ePlus, Inc. v. Lawson Software, Inc..................................230If an injunction is not yet final, and is overturned on appeal, civil contempt remedies based on violation of that injunc-tion cannot stand. Whether an injunction is “final” or not, divides the en banc court.

§ 10:13 Gaymar Industries, Inc. v. Cincinnati Sub-Zero Products, Inc......................................................................233“Bad lawyering” does not necessarily equate to litigation misconduct.

§ 10:14 Info-Hold, Inc. v. Muzak LLC..........................................234“[A] judge may only award a zero royalty . . . if there is no genuine issue of material fact that zero is the only reason-able royalty.”

§ 10:15 Intellectual Ventures II LLC v. JPMorgan Chase & Co. .....................................................235As an issue of first impression, Federal Circuit panel major-ity concludes that Federal Circuit only has interlocutory review jurisdiction after the PTO grants a petition for CBMR.

§ 10:16 Keranos, LLC v. Silicon Storage Technology, Inc. ..........237Federal Circuit remands case to the Eastern District of Texas to reconsider denial of plaintiff’s motion to amend its infringement contentions.

§ 10:17 Oplus Technologies, Ltd. v. Vizio, Inc..............................239Federal Circuit vacated and remanded district court’s deci-sion not to award attorney’s fees despite a laundry list of alleged litigation misconduct for reconsideration in light of Supreme Court’s opinion in Octane Fitness rejecting the clear and convincing standard of proof.

§ 10:18 SFA Systems, LLC v. Newegg, Inc. .................................240Under Octane Fitness, a district court must consider whether a case was litigated in an unreasonable manner as part of its exceptional case determination, and that district courts can turn to Federal Circuit pre–Octane Fitness case law for guidance. Footnote 2 in Highmark does not require the Federal Circuit to review all issues of law decided by a

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district court—only whether the district court abused its discretion in finding that a party’s litigation position was not so meritless as to “stand out” from the norm and thus be exceptional.

§ 10:19 Soverain Software LLC v. Victoria’s Secret Direct Brand Management, LLC ................................................ 244Issue preclusion/collateral estoppel held to apply to claims held invalid by Federal Circuit in prior appeal even though Federal Circuit so held sua sponte as a matter of law—Federal Circuit rejected patentee’s argument that proce-dure in first case denied it a full and fair opportunity to lit-igate obviousness.

§ 10:20 Stryker Corp. v. Zimmer, Inc............................................ 247Federal Circuit reiterates that objective recklessness, even though “predicated on underlying mixed questions of law and fact, is best decided by the judge as a question of law subject to de novo review.” Objective recklessness will not be found where the accused infringer’s “position is suscepti-ble to a reasonable conclusion of no infringement.” District Court errs when it fails to undertake an objective assess-ment of the defendant’s defenses.

§ 10:21 Sukumar v. Nautilus, Inc. ................................................. 250“A potential competitor may suffer competitive injury if it has attempted to enter the market. An attempt is made up of two components: (1) intent to enter the market with a rea-sonable possibility of success, and (2) an action to enter the market.”

§ 10:22 Summit 6, LLC v. Samsung Electronics Co., Ltd. .......... 254District court does not err in admitting damage expert’s tes-timony even though methodology was unpublished, created specifically for the litigation, and not previously used by expert or other experts.

§ 10:23 United Access Technologies, LLC v. CenturyTel Broadband Services LLC.................................................. 256A general jury verdict gives rise to collateral estoppel only if it is clear that the jury necessarily decided a particular issue in the course of reaching its verdict: when there are several

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possible grounds on which a jury could have based its gen-eral verdict and the record does not make clear which ground the jury relied on, collateral estoppel does not attach to any of the possible theories.

§ 10:24 Warsaw Orthopedic, Inc. v. NuVasive, Inc. .....................259A patentee may not claim, as its own damages, the lost prof-its of a related company: sales of products to a related com-pany cannot be treated as convoyed sales, royalty payments from related companies cannot be treated as “lost profits,” and “true-up” payments under an inter-company transfer pricing agreement cannot be treated as “lost profits.”

§ 10:25 WesternGeco LLC v. ION Geophysical Corp. ................261Lost profits damages are not available for foreign uses of a device found to infringe under section 271(f), although rea-sonable royalty damages are available for infringements under section 271(f).

Chapter 11 PTO Practice and Procedure......................265

§ 11:1 Airbus S.A.S. v. Firepass Corp. .........................................265PTAB errs by dismissing cross-appeal on examiner’s deci-sion not to consider proposed rejections because of a lack of a substantial new question (SNQ) of patentability: once PTO director orders inter partes reexamination it is 37 C.F.R. § 1.948(a), not a determination of a substantial new question of patentability, that governs the limitation on a third-party requestor’s submission of prior art.

§ 11:2 Ariosa Diagnostics v. Verinata Health, Inc.......................267Federal Circuit remands when PTAB decision is unclear whether Board properly considered an exhibit describing background POSITA knowledge.

§ 11:3 Cubist Pharmaceuticals, Inc. v. Hospira, Inc. ..................268Certificate of correction may be used to correct diagram of chemical compound when doing so does not change the scope of the claims.

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§ 11:4 In re Cuozzo Speed Technologies, LLC.......................... 271Replacement panel opinion: PTO correctly instituted by rule that claim construction during Inter Partes Review (IPR) would use the “broadest reasonable” construction standard. Federal Circuit splits on whether broadest rea-sonable interpretation is correct standard during IPRs—and the issue is not necessarily resolved.

§ 11:5 Daiichi Sankyo Co., Ltd. v. Lee........................................ 278PTO’s adoption of regulations limiting the time period for seeking reconsideration of the PTO’s patent term adjust-ments was not arbitrary or capricious, or contrary to law.

§ 11:6 Dome Patent L.P. v. Lee .................................................. 280Standard on PTO for showing obviousness during ex parte reexamination is the “preponderance” standard—standard on D.C. district court in reviewing PTO obviousness deci-sion in section 145 action is also “preponderance” standard. Federal Circuit reviews D.C. district court factual findings, that is, motivation, in section 145 actions under “clear error” standard.

§ 11:7 Exela Pharma Sciences, LLC v. Lee ................................ 282PTO revival rulings are not subject to third-party collateral challenge.

§ 11:8 Gilead Sciences, Inc. v. Lee.............................................. 284IDS after submitting a reply to a restriction requirement constitutes a failure to engage in reasonable efforts to con-clude prosecution under section 154(b)(c)(i). Statute does not require that applicant’s action result in actual delay. PTO’s interpretation of the statute in 37 C.F.R. § 1.704(c)(8) is a reasonable interpretation of the statute.

§ 11:9 Hyatt v. Lee ....................................................................... 287Federal Circuit concludes that PTO’s determinations under section 122(a) that certain otherwise confidential informa-tion in pending applications must be disclosed because of “special circumstances” is subject to judicial review, but concludes that PTO director did not abuse her discretion.

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§ 11:10 MCM Portfolio LLC v. Hewlett-Packard Co...................289Inter partes review does not violate either Article III or the Seventh Amendment.

§ 11:11 Merck & Cie v. Gnosis S.p.A. ...........................................291Panel majority applies “substantial evidence” standard when reviewing PTAB IPR decisions finding claims invalid. Circuit Judge Newman, in dissent, urges that after AIA, the “preponderance of the evidence” standard should apply.

§ 11:12 Microsoft Corp. v. Proxyconn, Inc....................................294During inter partes review, the PTO properly uses the broadest reasonable interpretation. However, that interpre-tation must take into account the claim language, the speci-fication, and prosecution history.

§ 11:13 Mohsenzadeh v. Lee .........................................................297Plain language of 35 U.S.C. § 154(b)(1)(A) does not provide for patent term adjustments in continuing applications based on delays in the prosecution of parent applications.

§ 11:14 Redline Detection, LLC v. Star Envirotech, Inc. ............298Meeting the timeliness and relevance requirements of 37 C.F.R. § 42.123 does not necessarily mean that a motion to supplement will be granted. The rule is subject to the further requirements of 37 C.F.R. § 42.20(c): “Burden of proof. The moving party has the burden of proof to establish that it is entitled to the requested relief.”

§ 11:15 SightSound Technologies, LLC v. Apple Inc...................300The definition of a CBM patent is not limited to products and services of only the financial industry.

§ 11:16 South Alabama Medical Science Foundation v. Gnosis S.p.A.......................................................................301Companion case reaches same conclusion as Merck & Cie v. Gnosis S.p.A.

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§ 11:17 Versata Development Group, Inc. v. SAP America, Inc.(Versata I).......................................................................... 302A “covered business method patent” is not limited to prod-ucts and services of only the financial industry, or to patents owned by or directly affecting the activities of financial institutions such as banks and brokerage houses. A method for pricing product’s held to fall within scope of “covered business method patent.”

§ 11:18 Versata Development Group, Inc. v. SAP America, Inc.(Versata I).......................................................................... 305Federal Circuit reaffirms that broadest reasonable interpre-tation standard applies to PGR/CBM review.

§ 11:19 Versata Development Group, Inc. v. SAP America, Inc.(Versata I).......................................................................... 306Federal Circuit concludes that patent-eligibility under sec-tion 101 is a proper basis for CBM review, and that ques-tion was subject to judicial review.

Chapter 12 District Court Jurisdiction andProcedure ........................................................... 309

§ 12:1 Apotex Inc. v. Daiichi Sankyo, Inc. .................................. 309District court declaratory judgment jurisdiction in suit brought by generic drug manufacturer against patentee even though patent had been disclaimed because under Hatch-Waxman Act, declaratory judgment plaintiff had a concrete potentially high-stake interest in obtaining declar-atory judgment.

§ 12:2 ArcelorMittal France v. AK Steel Corp............................ 312Because of the “law of the case” doctrine and the mandate rule, adding a dependent claim that has the effect of broad-ening the scope of an independent claim beyond the scope of the Federal Circuit’s prior construction, if added or amended later than two years after the issue date results in the broadened claims being invalid under section 251. As a matter of first impression (although not so characterized by the Federal Circuit), whether claims are invalid under sec-

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tion 251 as having been improperly broadened requires a claim-by-claim analysis.

§ 12:3 Automated Merchandising Systems, Inc. v. Lee..............315PTO’s refusal to terminate four inter partes reexaminations after parties had settled infringement action in a consent judgment stipulating to the validity of the patents is not reviewable under the APA because that is not a “final agency action” under the APA, although the PTO earlier said that it was.

§ 12:4 Celgard, LLC v. SK Innovation Co., Ltd. ........................317When a district court’s personal jurisdiction determination is based on affidavits and other written materials, and no jurisdictional hearing is conducted, the plaintiff usually bears only a prima facie burden to show personal jurisdic-tion. Where parties conduct jurisdictional discovery, but no jurisdictional hearing is held because the parties indicated to the district court that jurisdictional facts were not in dis-pute, then the preponderance standard applies. Federal Circuit again declines to decide precise requirements for stream-of-commerce theory of personal jurisdiction.

§ 12:5 Keranos, LLC v. Silicon Storage Technology, Inc. ..........320Federal Circuit declines to adopt standards for standing that differentiate between expired and unexpired patents. The standard remains the same: whether all substantial rights have been transferred.

§ 12:6 Microsoft Corp. v. Proxyconn, Inc....................................321Agencies like the PTO may adopt requirements through adjudication or traditional rulemaking. The requirements for amending claims are governed by (1) 37 C.F.R. § 42.20, applicable to general motion practice before the PTAB, (2) 37 C.F.R. § 42.121, which imposes specific require-ments on the amendment process, (3) the requirements listed in section 42.121 are not exhaustive, and include at least the requirement in the board’s decision in Idle Freethat the patentee must “persuade the board that the pro-posed substitute claim is patentable over the prior art of record” (Federal Circuit limits its review to that require-ment—other requirements in Idle Free may or may not be applicable). In a motion to amend, the patentee must show

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that the substitute claims are patentable over the “art of record” even art that was not specifically relied on in grant-ing review of the original claims.

§ 12:7 NeuroRepair, Inc. v. Nath Law Group ............................ 325Federal Circuit vacates and remands legal malpractice action, that finding the district court lacked subject matter jurisdiction under Gunn v. Minton. Although Federal Cir-cuit found that the parties disputed a patent law issue, namely the plaintiff’s alleged inability to obtain patents of the same scope it would have obtained but for the defen-dants’ alleged negligence, the Federal Circuit deemed the issue not substantial enough to impart federal jurisdiction.

§ 12:8 Nordock, Inc. v. Systems, Inc. .......................................... 328Post-verdict statement that “whatever motions we made during the trial, JMOL and so forth, we would renew those motions to the extent that they are necessary” held insuffi-cient to meet Seventh Circuit’s standard for renewing JMOL motion.

§ 12:9 In re POSCO ..................................................................... 331A writ of mandamus is appropriate where the district court modifies the court’s protective order to allow foreign courts access to party’s proprietary information without consider-ing 28 U.S.C.§ 1728.

§ 12:10 Prolitec, Inc. v. ScentAir Technologies, Inc..................... 334A motion to amend must show that the amended claim is patentable over the “prior art of record” which includes “any material art in the prosecution history of the patent.”

§ 12:11 Two-Way Media LLC v. AT&T, Inc. ............................... 336A district court does not abuse its discretion in declining to reopen or extend appeal time period under Federal Rules of Appellate Procedure 4(a)(5) and (6), even though notices of electronic filings (NEFs) wrongly identified the substance of the court’s order.

§ 12:12 Versata Development Group, Inc. v. Lee (Versata II) .... 340District court properly dismissed action brought by patent owner seeking to set aside PTO’s decision to institute CBM review.

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Chapter 13 Appellate Court Jurisdiction andProcedure............................................................343

§ 13:1 Atlas IP, LLC v. Medtronic, Inc. ......................................343Federal Circuit applies its own law, rather than regional circuit law, to the question of whether it has jurisdiction under the final judgment rule.

§ 13:2 Biogen MA, Inc. v. Japanese Foundation for Cancer Research................................................................344For interferences declared after September 15, 2012, the only avenue for appeal is to the Federal Circuit.

§ 13:3 In re Cuozzo Speed Technologies, LLC ..........................346There is no right to appeal the PTO’s decision to institute an IPR (or the grounds therefore) even after a final decision by the PTO, but review through a petition for a writ of manda-mus “might” be available.

§ 13:4 GTNX, Inc. v. INTTRA, Inc.............................................351PTO’s decision to terminate CBM review because petitioner had earlier filed declaratory judgment action challenging validity of the patents-at-issue is not subject to appeal to the Federal Circuit or properly the subject of a writ of manda-mus.

§ 13:5 Personalized User Model, LLP v. Google, Inc. ...............353Federal Circuit may not give advisory opinion on meaning of a claim term that does not affect the merits of an appeal.

§ 13:6 SightSound Technologies, LLC v. Apple Inc...................355Federal Circuit lacks jurisdiction to review whether PTAB properly instituted CBM review.

§ 13:7 State of Vermont v. MPHJ Technology Investments, LLC..............................................................357Federal Circuit concludes that it has appellate jurisdiction, based on a compulsory counterclaim, of an appeal from an order remanding a case involving Vermont’s Consumer Protection Act (VCPA), as applied to letters threatening pat-ent infringement litigation, but concludes that removal

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under section 1442(a)(2) was not authorized where Vermont asserted that it was not seeking to enforce the Vermont Bad Faith Assertions of Patent Infringement Act (BFAPIA).

§ 13:8 Tesco Corp. v. National Oilwell Varco, L.P. .................... 361Attorney’s reputational injury held insufficient to meet Arti-cle III requirement for a case or controversy.

§ 13:9 Versata Development Group, Inc. v. SAP America, Inc.(Versata I).......................................................................... 365Section 324(e), “[t]he determination by the Director whether to institute a post-grant review under this section shall be final and nonappealable,” does not bar judicial review, when conducted during review of a final written PTAB decision, of PTAB compliance with any requirement that involves the ultimate authority of the PTAB to invali-date a patent. The restriction in section 18(a)(1)(E) that “[t]he Director may institute a transitional proceeding only for a patent that is a covered business method patent,” does not bar judicial review, when conducted during review of a final written PTAB decision, of whether the subject patent is a CBM patent covered by section 18.

Chapter 14 Ownership Agreements and Inventorship....................................................... 377

§ 14:1 Alps South, LLC v. Ohio Willow Wood Co. .................... 377An exclusive licensee under a license with a field of use restriction lacks “all substantial rights” to a patent, and does not have standing to pursue an infringement action without joining the patentee. “[N]unc pro tunc assignments [and licenses] are not sufficient to confer retroactive standing.”

§ 14:2 Shukh v. Seagate Technology, LLC ................................. 379As an issue of first impression, a concrete and particularized reputational injury can give rise to Article III standing to pursue a claim of joint inventorship under section 256.

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Chapter 15 Design Patents ..................................................383

§ 15:1 Apple Inc. v. Samsung Electronics Co., Ltd. ...................383District court’s jury instruction properly instructed the jury on considering the functional and non-functional aspects of the claimed designs. An award of the infringer’s entire prof-its is mandated by statute: any change should be directed to Congress.

§ 15:2 Ethicon Endo-Surgery, Inc. v. Covidien, Inc...................387Federal Circuit concludes that the district court erred in finding design patent wholly functional and invalid, but affirms finding of non-infringement.

§ 15:3 Nordock, Inc. v. Systems, Inc. ..........................................389Testimony based on a “cost saving” methodology is inconsis-tent with section 289, which provides that a design patent owner is entitled to an infringer’s total profits. Apportioning profits is not proper in the context of design patent infringe-ment. Design patent owner is entitled to recover either (a) patent owner’s lost profits or a reasonable royalty under section 284, or (b) infringer’s total profits under sec-tion 289—jury does not get to choose—and award under section 284 is only appropriate where damages under sec-tion 289 are not sought, or are less than section 284 dam-ages.

Chapter 16 Miscellaneous ....................................................393

§ 16:1 Amgen Inc. v. Sandoz Inc. ................................................393In a case of first impression, the Federal Circuit splits on a number of statutory interpretations.

§ 16:2 ClearCorrect Operating, LLC v. International TradeCommission .......................................................................398The term “articles” in section 337 means material things, and does not cover electronic transmission of digital data.

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§ 16:3 DeLorme Publishing Company, Inc. v. International Trade Commission...................................... 402Panel split over effect of district court’s invalidity decision on Commission consent order and civil penalties.

§ 16:4 Lelo Inc. v. United States International Trade Commission ....................................................................... 405“Qualitative factors alone are insufficient to show ‘signifi-cant investment in plant and equipment’ and ‘significant employment of labor or capital’ under prongs (A) and (B) of the § 337 domestic industry requirements. The purchase of so called ‘crucial’ components from third-party U.S. suppli-ers are insufficient to satisfy the ‘significant investment’ or ‘significant employment of labor or capital’ criteria of § 337 where there is an absence of evidence that connects the cost of the components to an increase of investment or employ-ment in the United States.”

§ 16:5 Suprema, Inc. v. United States International TradeCommission ....................................................................... 407Federal Circuit en banc holds that Commission’s interpre-tation of section 337 to cover importation of goods that, after importation, are used by the importer to directly infringe at the inducement of the goods’ seller is entitled to Chevron deference and is reasonable.

Comprehensive Table of Cases ........................................... 411

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