Category: Patent

by Dennis Crouch

VLSI Technology LLC v. Intel Corporation, No. 2022-1906 (Fed. Cir. Dec. 4, 2023)

In its decision here, the Federal Circuit took VLSI’s $2.2 billion judgment down to zero — but it will allow a new trial on damages.  The court particularly affirmed a finding that Intel infringed claims of U.S. Patent No. 7,523,373, but found the associated $1.5 billion damage award flawed.  With regard to the second patent at issue, U.S. Patent No. 7,725,759, the appellate panel found that insufficient particularized evidence had been presented to show infringement under the Doctrine of Equivalents. This took away the $700 million damage for infringement of that second patent.  Opinion by Judge Taranto and joined by Judges Lourie and Dyk.

VLSI originally sued Intel in the Western District of Texas in 2019, asserting the two patents relating to semiconductor chip technology. The ‘373 and ‘759 respectively cover “Minimum Memory Operating Voltage Technique” for integrated circuits and a “Method of Managing Clock Speed in an Electronic Device.”  And, Intel’s Haswell and Broadwell microprocessors were accused of practicing the claims.  A jury issued its verdict in early 2021 favoring the patentee and, the district court entered judgment that Intel literally infringed the ‘373 patent and infringed the ‘759 patent under the doctrine of equivalents with $2.2 billion in total damages.

Continue reading VLSI’s $2.2b Infringement Verdict Rejected by Federal Circuit at Patently-O.

by Dennis Crouch

I was looking forward to the oral arguments in the interesting case of Karl Storz Endoscopy v. STERIS Instrument Management  Services (IMS) focusing the threshold between permissible repair and impermissible reconstruction.  Oral arguments were scheduled for December 4, 2023, but the parties filed a joint dismissal on December 3.

Storz is a medical device manufacturer and sells its patented endoscopes throughout the united States that included a specialized optical system covered by two patents. US7530945 and RE47044.  The patents claim an endoscope with an optical relay components surrounded by transparent shrink wrap, which allows the components to be pre-assembled and optically tested before insertion in the endoscope body.  Hospitals hire IMS to repair its medical devices, including the Storz endoscopes — a process that could involve breaking open the endoscope, removing the optical relay, replacing damaged lenses/spacers with new or recycled ones, inserting the rebuilt optical relay back into the endoscope body, and resealing the device.

A manufacturer’s patents covering its product are “exhausted” as soon as the company places product in the chain of commerce.  Those particular authorized products can be resold, used, and repaired by third parties without creating any patent infringement liability. 

Continue reading Permissible Repair versus Impermissible Reconstruction at Patently-O.

by Dennis Crouch

In a recent decision, the U.S. Court of Appeals for the Federal Circuit denied a petition for a writ of mandamus filed by Cozy, Inc. seeking to set aside a district court discovery order piercing attorney-client privilege. In re: Cozy, Inc., No. 2023-145 (Fed. Cir. Dec. 4, 2023). The discovery dispute arose out of Cozy’s patent infringement lawsuit against Dorel Juvenile Group, Inc. (“Dorel”) and Dorel’s inequitable conduct counterclaims alleging that Cozy made fraudulent misrepresentations to the PTO. 21-cv-10134-JGD.

After reviewing documents in camera, the district court granted in part Dorel’s motion to compel production of certain Cozy documents listed as privileged on the basis that the crime-fraud exception to attorney-client privilege applied. The court found that Dorel had established a prima facie case that Cozy’s founder, Dr. Arjuna Rajasingham, “manipulated the PTO into recognizing priority dates to which he was not entitled” and “relied on the advice of his counsel to perpetrate a fraud on the PTO.”

The crime-fraud exception provides that attorney-client privilege does not apply to communications between a client and attorney that are made for the purpose of furthering criminal or fraudulent activity. Specifically, the ordinarily strong privilege may be pierced if the party seeking disclosure can show that (1) the client was engaged in or planning criminal or fraudulent activity when the attorney-client communications were made, and (2) the communications were intended in some way to facilitate or conceal the criminal or fraudulent activity.

Continue reading No Mandamus Relief in Privilege Ruling at Patently-O.

In the pending Federal Circuit appeal In re Xencor, the USPTO Director recently filed an opposed motion asking the Court to remand the case back to the PTAB.  The motion comes long after briefing has commenced and just days before the Director’s response brief was due, after already receiving an extension of time. Xencor has opposed the request, citing prejudice and lack of justification. This post examines the parties’ arguments.

As background, Xencor’s biotech patent application contains both Jepson and means-plus-function claims that were rejected by the PTAB on questionable written description grounds.  The examiner had initially issued written description rejections, but withdrew the rejections during the PTAB appeal briefing. The PTAB then reinstated the rejections based upon its authority to find new grounds for rejection, and then reaffirmed its position on request for rehearing.  Xencor then appealed to the Federal Circuit.

In its request for remand, the USPTO noted that it plans to “to issue a revised decision that clearly and thoroughly expresses the Agency’s view on the application of the case law to this important area of technology.”  On point, the Agency has not admitted any errors it made during the process, it has not conceded any point of law or fact, or identified anything that was not sufficiently briefed — and so Xencor has opposed the motion for remand.

Continue reading Motion for remand in Xencor at Patently-O.

by Dennis Crouch

The chart above presents the powerful trend in the use of Jepson claim language in US patents over the years. It shows a clear decline in the percentage of patents that include Jepson claim language from 1980 to the present. In the early 1980s, around 8% of patents included at least one claim in Jepson format.  That figure has steadily decreased over the decades, falling to near 0% in recent years.

The Jepson format is a way of writing patent claims where the preamble states the known prior art, and the body specifies the improvements made over this prior art. Typically, the transition phrase will be in the form “wherein the improvement comprises” or “the improvement comprising.”

The patent regulations indicate that any “improvement” invention should be drafted in Jepson format.

Where the nature of the case admits, as in the case of an improvement, any independent claim should contain in the following order: (1) A preamble comprising a general description of all the elements or steps of the claimed combination which are conventional or known, (2) A phrase such as “wherein the improvement comprises,” and (3) Those elements, steps and/or relationships which constitute that portion of the claimed combination which the applicant considers as the new or improved portion.

Continue reading Jepson Claims at Patently-O.

by Dennis Crouch

I have been following the pending Federal Circuit case of In re Xencor.  It is a quirky case involving both a Means-Plus-Function Claim and a Jepson claim.  In its decision, the PTAB went off the rails with its means-plus-function analysis.  In particular, the Board held that the MPF claim was invalid for lack of written description because the specification did not describe equivalents to the disclosed structure.

There is some logic to the decision. Let me try to explain: First, we know that written description doctrine requires a showing of possession of the full scope of the claims.   With MPF claims, we know that the statute requires a particular construction that includes both the structure described in the specification and “equivalents thereof.” 35 U.S.C. 112(f).  What we see here is that equivalents of the disclosed specification are within the literal scope of the claims — ergo, the written description must show possessions of those equivalents.

If you recall, a Jepson claim begins with a recitation something that is known or conventional, and then particularly claims the improvement — typically using a phrase such as “wherein the improvement comprises.”  The Jepson claim issue on appeal is the extent that the preamble portion of the claim must have been sufficiently supported by the original specification — even if the preamble carries no patentable weight for novelty or obviousness.

Continue reading Jepson Formats and Means Limitations Under More Fire at Patently-O.

by Dennis Crouch

The Supreme Court is set to consider several significant patent law petitions addressing a range of issues from the application of obviousness standards, challenges to PTAB procedures, interpretation of joinder time limits IPR, to the proper scope patent eligibility doctrine. Here’s a brief overview of each case, followed by more details:

1. MacNeil v. Yita (No. 23-494): This case examines the Federal Circuit’s reversal of a PTAB obviousness decision.  Petitioner argues that the appellate court substituted its own findings in the reversal rather than vacating and remanding.  This could be an important case for revitalizing the importance of secondary indicia of non-obviousness.
2. Intel v. Vidal (No 23-135): This case challenges the “Fintiv rule” that restricts the initiation of inter partes review in cases where parallel district court litigation is pending.  The PTO is changing its approach, but Intel argues that the Agency isn’t going far enough.
3. VirnetX v. Mangrove Partners Master Fund (No. 23-315): This case questions the Federal Circuit’s interpretation of time limits for joining IPR partes. Apple joined the petition long after it would have been barred from filing its own. 

Continue reading Supreme Court on Patent Law: November 2023 at Patently-O.

by Dennis Crouch

The Supreme Court is set to consider several significant patent law petitions addressing a range of issues from the application of obviousness standards, challenges to PTAB procedures, interpretation of joinder time limits IPR, to the proper scope patent eligibility doctrine. Here’s a brief overview of each case, followed by more details:

1. MacNeil v. Yita (No. 23-494): This case examines the Federal Circuit’s reversal of a PTAB obviousness decision.  Petitioner argues that the appellate court substituted its own findings in the reversal rather than vacating and remanding.  This could be an important case for revitalizing the importance of secondary indicia of non-obviousness.
2. Intel v. Vidal (No 23-135): This case challenges the “Fintiv rule” that restricts the initiation of inter partes review in cases where parallel district court litigation is pending.  The PTO is changing its approach, but Intel argues that the Agency isn’t going far enough.
3. VirnetX v. Mangrove Partners Master Fund (No. 23-315): This case questions the Federal Circuit’s interpretation of time limits for joining IPR partes. Apple joined the petition long after it would have been barred from filing its own. 

Continue reading Supreme Court on Patent Law: November 2023 at Patently-O.

Guest Post by Jordan Duenckel. Jordan is a third-year law student at the University of Missouri and a registered patent agent. He has an extensive background in chemistry, food science, and viticulture. 

Article III standing remains a hot topic at all levels of federal litigation and across many different areas of law. Inter partes review is not unique. In Allgenesis Biotherapeutics Inc. v. Cloudbreak Therapeutics, LLC, Case No. 22-1706 (Fed. Cir. Nov. 7, 2023), the Federal Circuit dismissed, in a unanimous opinion by Chief Judge Moore, an appeal of a PTAB final IPR decision before reaching the merits by finding that the IPR challenger did not allege sufficient “injury in fact” to confer standing necessary for Article III judicial review.  

Pterygium is the result of cellular expression of kinase in the cornea that expands beyond control and creates tumors. With surgery as the only viable course of treatment, Cloudbreak Therapeutics created a topical application of multikinase inhibitors to provide a non-surgical treatment to prevent recurring tumors, which is recognized in U.S. Patent No. 10,149,820 (the ‘820 patent). Specifically, nintedanib is one of the most powerful multikinase inhibitors for reducing corneal neovascularization, a principal cause of pterygium.

Continue reading Seeing Clearly: Article III Standing of IPR Judicial Review at Patently-O.

Guest Post by Jordan Duenckel. Jordan is a third-year law student at the University of Missouri and a registered patent agent. He has an extensive background in chemistry, food science, and viticulture. 

Article III standing remains a hot topic at all levels of federal litigation and across many different areas of law. Inter partes review is not unique. In Allgenesis Biotherapeutics Inc. v. Cloudbreak Therapeutics, LLC, Case No. 22-1706 (Fed. Cir. Nov. 7, 2023), the Federal Circuit dismissed, in a unanimous opinion by Chief Judge Moore, an appeal of a PTAB final IPR decision before reaching the merits by finding that the IPR challenger did not allege sufficient “injury in fact” to confer standing necessary for Article III judicial review.  

Pterygium is the result of cellular expression of kinase in the cornea that expands beyond control and creates tumors. With surgery as the only viable course of treatment, Cloudbreak Therapeutics created a topical application of multikinase inhibitors to provide a non-surgical treatment to prevent recurring tumors, which is recognized in U.S. Patent No. 10,149,820 (the ‘820 patent). Specifically, nintedanib is one of the most powerful multikinase inhibitors for reducing corneal neovascularization, a principal cause of pterygium.

Continue reading Seeing Clearly: Article III Standing of IPR Judicial Review at Patently-O.