In Douglas Dynamics LLC, v. Meyer Products LLC, [14-cv-886-jdp] (D. Wisc. Document # 68 April 18. 2017), the district court considered the scope of estoppel after an IPR. The Court identified three categories of potentially estopped grounds:

1. Grounds not petitioned.
2. Grounds petitioned but not instituted
3. Grounds instituted.

As to the instituted grounds, these are clearly estopped.  As to the grounds petitioned but not instituted, after weighing the competing policy considerations, the court concluded that these were not estopped, citing Verinata Health, Inc. v. Ariosa Diagnostics, Inc., No. 12-cv-5501, 2017 WL 235048, at *3 (N.D. Cal. Jan. 19, 2017) (collecting cases). Finally with respect to the grounds not petitioned, the court concluded that these were grounds that could have been raised, and thus were estopped.  The Court cited SAS Inst., Inc. v. ComplementSoft, LLC., 825 F.3d 1341, 1354 (Fed. Cir. 2016) (Newman, J., dissenting), as well as Precision Fabrics Grp., Inc. v. Tietex Int’l, Ltd., No. 13-cv-645, 2016 WL 6839394, at *9 (M.D.N.C. Nov. 21, 2016); Clearlamp, LLC v. LKQ Corp., No. 12-cv-2533, 2016 WL 4734389, at *8 (N.D. Ill. Mar. 18, 2016).

The impact of this decision, is that the PTAB’s decision not to institute on a particular grounds actually hurts the patent owner, because estoppel does not apply.  A patent owner would be much better off if the ground were instituted, and denied.  Then, the challenger could not re-raise the grounds in court.

While the district court’s decision that the grounds that were not included in the petition were grounds that “could have been raised” and thus estopped, this determination creates a perverse incentive for patent challengers.  A patent challenger is much better off including these grounds in the IPR petition, perhaps in a way that essentiall guarantees they won’t be instituted, thereby insulating these grounds from the application of estoppel.  The district court noted that it is not bound by a refusal to institute, and while it will consider the PTAB’s reasoning “to the extent it is persuasive”, if the reason for not instituting is that the grounds were not completely developed, a district court likely would allow the challenger not only to re-present the grounds, but to more fully develop it.

While the PTAB has the discretion not to institute an IPR, when they do so, they aren’t doing any favors for a Patent Owner.  The PTAB should liberally institute IPRs on the grounds that challengers present.  Denying the grounds in the final written decision instead of the institution decision better protects the  Patent Owner.

In Rembrandt Wireless Technologies, LP v.  Samsung Electronics CO., LTD., [2016-1729] (April 17, 2017), the Federal Circuit affirmed the district court’s claim construction and denial of JMOL, but vacated $15.7 million in damages and remanded because of a lack of patent marking.

In affirming the claim construction, the Federal Circuit found unambiguous statements in the prosecution history defined the meaning of “different types” of modulation, and Samsung’s arguments to the contrary do not diminish the unambiguous statements in
the prosecution history.  Samsung also attacked the use of the term “i.e.,” which Samsung argued introduces an exemplary item in a set, but the Federal Circuit found that the use of i.e. was “i.e., is often definitional, noting that i.e. is Latin for id est, which means “that is.”  The Federal Circuit also rejected Samsung’s reference to the broader construction in a related IPR, noting that the construction is not binding, and that IPR proceedings operates under a broader claim construction standard than the federal
courts.

In affirming the non-obviousness determination, the Federal Circuit rejected Samsung’s argument that it was a claim construction issue of the scope of “different types,” and characterizing it as a factual question of whether the reference disclosed “different types” of modulation. The Federal Circuit found that there was substantial evidence to support the jury’s presumed finding underpinning the non-obviousness determination.

On the marking issue prior to trial, Samsung moved to limit Rembrandt’s potential
damages award based on its failure to mark products covered by previously-asserted claim 40 of the ’580 patent.  Specifically, Rembrandt had licensed the ’580 patent to Zhone Technologies, Inc., and the license agreement between Rembrandt and Zhone did not require Zhone to mark its products with the patent number. Pursuant to the patent marking statute, 35 U.S.C. § 287, Samsung sought to limit Rembrandt’s damages to those incurred after Samsung received notice of Rembrandt’s patents, which, according to Samsung, occurred when Rembrandt filed its complaint. Eight days later, Rembrandt withdrew claim 40 from its infringement allegations and filed a statutory disclaimer pursuant to 35 U.S.C. § 253(a) and 37 C.F.R. § 1.321(a), disclaiming claim 40 in the U.S. Patent and Trademark Office. The court accepted
Rembrandt’s argument that any prior obligation to mark products embodying claim 40 vanished once it disclaimed claim 40.

The Federal Circuit held that Rembrandt cannot use disclaimer to avoid the marking requirement in 35 U.S.C. § 287, and vacated the judgment of the district court as it relates to marking.  While marking under 35 U.S.C. § 287 is permissive, there is a consequence if the patent owner chooses not to mark:

In the event of failure so to mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice.

The Federal Circuit said that the marking statute protects the public’s ability to exploit an unmarked product’s features without liability for damages until a patentee provides
either constructive notice through marking or actual notice.  The Federal Circuit added that allowing Rembrandt to use disclaimer to avoid the consequence of its failure to mark undermines the marking statute’s public notice function.  While a disclaimer can disclaim the rights of the patent owner, the Federal Circuit said it has never held that a patent owner’s disclaimer relinquishes the rights of the public.  Considering the rights held by the public, the Federal Circuit held that disclaimer cannot serve to retroactively dissolve the § 287(a) marking requirement for a patentee to collect pre-notice damages.

Before the district court, Rembrandt argued, consistent with its disclaimer position, that the marking requirement is determined on a claim by claim basis, rather than on a patent-by-patent basis.  The Federal Circuit left this question for the district to determine in the first instance on remand.

In Life Technologies Corp. v. Promega Corp. [14-1538] (February 22, 2017), the Supreme Court reversed a Federal Circuit decision that supplying a single component of a multi-component invention from the United States is an infringing act under Patent Act section 271(f)(1):

Whoever without authority supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.

Promega’s U.S. Patent No. RE 37,984, is directed to a toolkit for genetic testing.  Life Technology made a competing test kit in the United Kingdom.  One of the kit’s five components, an enzyme known as the Taq polymerase, was manufactured by Life Technologies in the United States and then shipped to the United Kingdom, where the four other components were made, for combination there.  A jury found for Promega.  The district court granted JMOL finding that “all or a substantial portion” did not encompass the supply of a single component of a multicomponent invention. The Federal Circuit reversed the district court, holding that a single important component could constitute a “substantial portion” of the components of an invention under §271(f)(1) and finding that in this case Taq polymerase was such a component.

The threshold determination was whether §271(f )(1)’s requirement of “a substantial portion” of the components of a patented invention refers to a quantita­tive or qualitative measurement.  The Supreme Court found that The Patent Act itself does not define the term “substantial,” and turned to its ordinary meaning, which turned out to be of little help.  Everyone agreed that the term is ambiguous and, taken in isola­tion, might refer to an important portion or to a large portion.

The Supreme Court found the context in which “substantial” appears in the stat­ute pointed to a quantitative meaning.  The neighboring terms  “all” and “portion” convey a quantitative meaning.  The Supreme Court noted that if a qualitative meaning was intended, the statute probably would have been worded differently, referring instead to the invention rather than to the components.

After determining that the term “substantial portion” refers to a quantitative measurement, the Court turned to the question of whether a single component can ever constitute a “substantial portion” so as to trigger liability under §271(f )(1), and the Court held it could not.

The Supreme Court reached this result in part by comparison with §271(f )(2), the Court noting that reading §271(f )(1) to cover any single component would not only leave little room for §271(f )(2), but would also undermine §271(f )(2)’s express reference to a single component “espe­cially made or especially adapted for use in the inven­tion.”

The Court said it was not defining how close to “all” of the compo­nents “a substantial portion” must be, and said it was only holding that one component does not constitute “all or a substantial portion” of a multicomponent invention under §271(f )(1).

The technology documented by the U.S. patent collection has information relevant to every human endeavor, and Valentine’s Day is no exception.  Consider the following patents on solutions to the vexing problems presented by Valentine’s Day:

U.S. Patent No. D85,341 protects a Love Tester.

U.S. Patent No. 5,318,327, protected a Romantic Card

U.S. Patent No. 5,213,509 Protected a Lover’s Game and Method of Play

U.S. Patent No. 6,434,805 protects a Method of Making a Heart-Shaped Diamond

U.S. Patent No. D449,147 Protected a Heart-Shaped Chocolate

U.S. Patent No. 4,194,629 Protected a Love Box

U.S. Patent No. 4,993,184 Protected a Heart-Shaped, Free-Standing, Living Horticultural Plants

U.S. Patent No. 5,727,565 Protects a Kissing Shield

U.S. Patent No. D592,393 Protects a Heart-Shaped Umbrella

U.S. Patent No. D82,863 Protects a Valentine Envelope

U.S. Patent No. D360,366 Protects a Love Clock

U.S. Patent No. D284,595 Protected Cupid Unicorn (Cupicor) the Love Unicorn

U.S. Patent No. 372,594 protects a Pizza Pan

U.S. Patent No. 286,301 Protects a Long Stem Valentine Card

U.S. Patent No. D491,338 Protects Heart-Shaped Pepperoni Slices

There are a number of design patents based upon the shape of a state.

D773,692 Arizona Paving Stone

D652,608 Glove Ornamented with a Map of the State of Alaska

D462261 Compressed Fabric Article Package Having a Simulated California Map Shape
D362645 California Medallion

D686,456 Hawaii Shaped Plate

D603,728 Scoreboard in the form of the State of New York

D704088 Tennessee Ring

D654,318 Texas Shot Glass
D623,001 Barbeque grill shaped like Texas
D610,474 Scoreboard in the form of the State of Texas
D588,027 Scoreboard in the form of the State of Texas
D543,073 Pair of Texas waffle iron molds

D497,334 Texas Grille Insert
D497,333 Texas Grille Insert
D492,625 Texas Grille Insert
D492,624 Texas Grille Insert
D488,674 Texas Mug
D418,447 T shirt compressed in the shape of the state of Texas
D282,136 Texas meat press

In Cumberland Pharmaceuticals, Inc.v. Mylan Institutioal LLC, [2016-1155, 2016-1259] (January 26, 2017) the Federal Circuit affirmed the district court holding that U.S. Patent No. 8,399,445, which describes and claims acetylcysteine compositions substantially free of chelating agents, was not derived from the FDA.

Mylan argued that the claimed invention was obvious from the FDA’s action on Cumberland’s petition to market the predecessor composition that contained a chelating agent.  The FDA asked Cumberland for data supporting the function of the chelating agent, which Mylan argued was proof that the FDA conceived of the idea of acetylcysteine free of chelating agents.

The district court found that Mylan proved neither (1) that anyone at the FDA conceived of the claimed invention before the  patent named inventor nor (2) that there was a reasonable expectation that the claimed formulations, without any chelating agents, would succeed.  The Federal Circuit agreed, noting “[a] request for justification of the inclusion of EDTA, supported by data, is not the same as a suggestion to remove it, let alone to remove it and not replace it with another chelating agent.” The Federal Circuit also rejected the argument that the FDA’s request for data to support the inclusion of EDTA required Cumberland to undertake
research that would have inevitably led it to the invention. Noting that derivation is not proved by showing conception and communication of an idea different from the claimed invention even where that idea would make the claimed idea obvious.

In Eli Lilly and Company v. Teva Parenteral Medicines, Inc., [2015-2067] (January 12, 2017), the Federal Circuit affirmed judgment of inducement of infringement of U.S. Patent No. 7,772,209, and that the the asserted claims were not invalid for indefiniteness, obviousness, or obviousness-type double patenting.

The claims in suit all required pretreatment by administration of folic acid.  The parties agreed, for purposes of appeal, that no single actor performs all steps of the asserted claims.  Rather, the steps are divided between physicians and patients. Though physicians administer vitamin B12 and
pemetrexed, patients self-administer folic acid with guidance from physicians.  Specifically, the Physician Prescribing Information and the Patient Information accompanying the product instructed the patient to self-administer folic acid.

The Federal Circuit noted that where no single actor performs all steps of a method claim, direct infringement only occurs if the acts of one are attributable to the other such that a single entity is responsible for the infringement.  The performance of method steps is attributable to a single entity in two types of circumstances: (1) when that entity directs or controls others performance, or (2) when the actors form a joint enterprise.  In  Akamai V, the Federal Circuit held that directing or controlling others’ performance includes circumstances in which an
actor: (1) conditions participation in an activity or receipt of a benefit upon others’ performance of one or more steps of a patented method, and (2) establishes the manner or timing of that performance.  However the Federal Circuit also said that other factual scenarios may arise which warrant attributing others’ performance of method steps to a single actor.

Regarding the first Akamai V prong, the district court found from the product labelling that “taking folic acid in the manner specified is a condition of the patient’s participation in [the] treatment.”  Regarding the
second prong, the district court found that physicians would “prescrib[e] an exact dose of folic acid and direct[] that it be ingested daily.” The district court concluded that the performance of all steps of the
asserted claims would be attributable to the prescribing physicians. The Federal Circuit agreed, finding the record replete with evidence that physicians delineate the step of folic acid administration that patients must perform if they wish to receive pemetrexed treatment.  The Federal Circuit further found that the evidence regarding the critical nature of folic acid pretreatment and physicians’ practices supported a finding that physicians cross the line from merely guiding or instructing patients to take folic acid to conditioning the treatment on their administration of folic
acid.  The Federal Circuit rejected the argument that an actor
can only condition the performance of a step by imposing a legal obligation to do so, by interposing that step as an unavoidable technological prerequisite to participation, or both.  Conditioning is not limited to legal obligations or technological prerequisites.

The Federal Circuit also found sufficient control over the manner and timing of performance, again relying upon the written instructions and the testimony.

Although the Federal Circuit found that the two-prong Akamai V
test was met, it did not end the inquiry because the patent owner also has the burden of further proving “specific intent and action to induce
infringement.”  Takeda argued that Lily did not show what physicians do, just what they may do.  The Federal Circuit rejected this argument, finding taht the label simply must encourage, recommend, or promote infringement, and that it is irrelevant that some users may ignore the warnings in the proposed label.

The Federal Circuit rejected arguments that “Vitamin B12” made the claims indefinite, and arguments that the claims were obvious, and that they were invalid for obviousness type double patenting.