Monthly Archives: August 2021

Defendant’s Trademark Avoids Design Patent Infringement

Posted on by

On August 6, 2021, a California federal jury decided that Seirus Innovative Accessories did not infringe Columbia Sportswear’s U.S. Patent No. D657,093. Their verdict is notable because nearly four years ago, a jury reached the opposite result and awarded Colombia Sportswear $3.4 million before the Federal Circuit vacated and remanded the case.

Colombia’s patent was on a wave design applied to the lining of sportswear:

heat reflective material

Seirus used a similar wave patter on its liners, but interspersed the design with its trademark:

Serius materials

The Federal Circuit vacated the verdict because the district court granted summary judgment of infringement, rather than allowing the jury to determine infringement, and because the district court misapplied L.A. Gear for the proposition that logos should be wholly disregarded in the design-infringement analysis.

The jury instruction was fairly standard, and did not even mention the possible effects of the presence of defendant’s trademark on the infringement determination.

Claims are No Nose of Wax; Infringement Determined Under Same Construction as Validity

Posted on by

In Data Engine Technologies LLC v.  Google LLC, [2021-1050] (August 26, 2021) the Federal Circuit affirmed summary judgment of non-infringement of U.S. Patent Nos. 5,590,259; 5,784,545; and 6,282,551 directed to systems and methods for displaying and navigating three-dimensional electronic spreadsheets.

The preamble of the claims at issue recited: “In an electronic spreadsheet system for storing and manipulating information, a computer-implemented method of representing a three-dimensional spreadsheet on a screen display.”  In defeating a prior 101 challenge, DET argued that the invention solved a problem unique to three-dimensional spreadsheets.  On remand, Google asked the district court for a determination whether the claim preamble was a limitation, and if so, what it meant.  The district court held that the preamble was limiting, and required a mathematical relation among cells on different spreadsheets, whereupon Google moved for summary judgment of non-infringement since its accused product was not a three-dimensional spreadsheet.  The district court granted summary judgment, and DET appealed.

On appeal there was no dispute that Google did not infringe under the district court’s construction of “three-dimensional spreadsheet,” the issue being whether the preamble is in fact limiting and, if so, whether the district court’s construction of three-dimensional spreadsheet was correct.  The Federal Circuit noted that DET’s assertion that the preamble term “three-dimensional spreadsheet” is not limiting effectively seeks to obtain a different claim construction for purposes of infringement than the Federal Circuit applied (at DET’s insistence) in holding the claims eligible under § 101.  Noting that a  claim is not a nose of wax, the Federal Circuit said a patentee relies on language found in the preamble to successfully argue that its claims are directed to eligible subject matter, it cannot later assert that the preamble term has no patentable weight for purposes of showing infringement. Thus the Federal Circuit concluded that the preamble term “three-dimensional spreadsheet” was limiting.

 Turning to the district court’s construction of “three-dimensional spreadsheet,” the parties agreed that a three-dimensional spreadsheet requires cells “arranged in a 3-D grid,” but not on whether it also requires “a mathematical relation among cells on different spreadsheet pages,” as required by the district court’s construction.  The Federal Circuit found that neither the claims themselves nor the prosecution history answered the question of whether a three-dimensional spreadsheet requires a mathematical relation among cells on different spreadsheets.  However, based upon the prosecution history, the Federal Circuit agreed with the district court that the preamble term “three-dimensional spreadsheet” requires a mathematical relation.  During prosecution of the application that led to the ’259 patent, the applicants provided an explicit definition of a “true” three-dimensional spreadsheet and distinguished prior art under this definition.  Giving effect to this express definition in the prosecution history, the Federal Circuit determined that the claims require a three-dimensional spreadsheet that “defines a mathematical relation among cells on the different pages.”  The Federal Circuit rejected DET’s arguments that the statements did not rise to the level or clear and unmistakable disclaimer,  noting that consistent with the public notice function of the prosecution history, the public is entitled to rely on these statements as defining the scope of the claims.

Definitions can be very helpful to the patent applicants in giving concrete meaning to the claims, but they can also be very limiting. It’s not that applicants should not use definitions, but that they should be used cautiously. A definition that seems harmless in one context, can be disasterous in another context.

Drug Labeling that Excludes Patented Use Can Still Induce Infringement

Posted on by

In Glaxosmithkline LLC v. Teva Pharmaceuticals USA, Inc., [2018-1976, 2018-2023] (August 5, 2021), the Federal Circuit vacated the grant of JMOL in favor of Teva, and reinstated the jury’s verdict and damages award for infringement of RE40,000, and remanded for appropriate further proceedings.

The ’000 patent claims a method of decreasing mortality caused by chronic heart failure by administering carvedilol with at least one other therapeutic agent.

Teva argued it could not have induced infringement prior to 2011, because it had “carved out” the indication and prescribing information for treatment of congestive heart failure in its 2007 label under section viii, and that it could not be be liable for inducement for any time period because it did not cause others to infringe the method claimed in the ’000 patent. The jury found the ’000 patent was not invalid, that Teva induced infringement of claims 1–3 during the partial label period proir to 2011, and that Teva induced infringement of claims 1–3 and 6–9 during the full label period after 2011. The jury assessed damages based on a combination of lost profits and a reasonable royalty and found Teva’s infringement willful.

The district court granted Teva’s renewed motion for JMOL, finding that substantial evidence did not support the verdict of induced infringement because GSK failed to prove that Teva’s alleged inducement, as opposed to other factors, actually caused physicians to directly infringe by prescribing generic carvedilol for the treatment of mild to severe chronic heart failure.

The Federal Circuit agreed with GSK that substantial evidence supports that Teva actively
induced by marketing a drug with a label encouraging a patented therapeutic use. The Federal Circuit said that the labeling did not omit all patented indications or merely note (without mentioning any infringing uses) that FDA had rated a product as therapeutically equivalent to a brand-name drug. Instead, the Federal Circuit said this was a case in which substantial evidence supports a jury finding that the patented use was on the generic label at all relevant times and that, therefore, Teva failed to carve out all patented indications. The Federal Circuit address the concerns of several amici, nothing that its narrow, case-specific review of substantial evidence does not upset the careful balance struck by the Hatch-Waxman Act regarding section viii carve-outs.

35 U.S.C. § 271(b) provides “Whoever actively induces infringement of a patent
shall be liable as an infringer.”The Federal Circuit explained that “[a] finding of inducement requires establishing “that the defendant possessed specific intent to encourage another’s infringement.” This requires a plaintiff to show that the alleged infringer’s actions induced infringing acts and that he knew or should have known his actions would induce actual infringements. The Federal Circuit said that when a plaintiff relies on a drug’s label accompanying the marketing of a drug to prove intent, the label must encourage,
recommend, or promote infringement.

The Federal Circuit found that despite Teva’s purporting to carve out the patented congestive heart failure indication, and its deletion of the indication from its pre-2011 partial label, substantial evidence supports the jury’s finding that Teva induced doctors to infringe the method of use claimed in the ’000 patent. GSK argues that substantial evidence supports
the jury’s verdict that Teva’s partial label encouraged an infringing use (via the post-MI LVD indication) and that Teva’s marketing materials encouraged prescribing carvedilol in a manner that would cause infringement of the ’000 patent, and the Federal Circuit agreed. GSK provided substantial evidence that Teva’s partial label instructed the method of use
claimed in the ’000 patent and thus was not a skinny label, because some of the labeled incidations overlapped the patented process.

Skimpy Proof of a Regular and Established Place of Business Bares Absence of Venue for Corporate Affiliates

Posted on by

In Andra Group, LP v. Victoria’s Secret Stores, LLC, [2020-2009] (August 3, 2021), the Federal Circuit affirmed the dismissal of three defendants for improper venue pursuant to 28 U.S.C. § 1400(b).

Andra sued for infringement of U.S. Patent No. 8,078,498 directed to displaying articles on a webpage, including applying distinctive characteristics to thumbnails and displaying those thumbnails in a “master display field.” Defendants argued that venue
was improper because Victoria’s Secret Stores did not commit acts of infringement
in the District, and the related defendants did not have regular and established places of business in the District.

The Federal Circuit noted that because each defendant is incorporated in Delaware, no defendant “resides” in Texas for the purpose of patent venue. Thus, to establish venue in this case, Andra must show that each Defendant committed acts of infringement and maintains a regular and established place of business in the Eastern District of Texas. While Victoria’s Secret Stores did have a place of business in the District, the other defenants did not. Andra argued, however, that Victoria’s Secret Stores’ locations are “a regular and established place of business” of the related entities because Victoria’s Secret Stores’ employees are agents of the related defendants, or, alternatively,
because the related defendants have ratified Victoria’s Secret Stores locations as their places of business.

The Federal Circuit examined the relationship between Victoria’s Secret Stores and the related entities, and agreed that none of the facts alleged by Andra are sufficient to
prove that Stores employees are agents of the other defendants. On Andra’s ratification theory, the Federal Circuit noted that “where related companies have maintained corporate separateness, the place of business of one corporation is not imputed
to the other for venue purposes. The Federal Circuit further noted that the fact
that the entities work together in some aspects, is insufficient to show ratification.

Giving reasoned consideration to all relevant factors or attributes of the relationship” between Victoria’s Secret Stores and the related defendants, the Federal Circuit concluded that Andra has not met its burden to related entities have ratified Victoria’s Secret Stores locations as their own places of business such that they may be said to maintain a regular and established place of business in the District.

The Federal Circuit thus affirmed the dismissal of the related entities who did not maintain employees or agents in the District and had not ratified the locations of a related entity as their own.

Following the Rules is Not Enough (Check the Statutes)

Posted on by

In Mondis Technology Ltd. v. LG Electronics Inc., [2020-1812] (August 3, 2021), the Federal Circuit dismissed LG’s appeal from a jury verdict that it infringed U.S. Patent No. 7,475,180, directed to a display unit configured to receive video signals from an external video source .

The jury found that the accused LG televisions infringed claims 14 and 15 of the ’180 patent, that the claims were not invalid, and that LG’s infringement was willful, and awarded plaintiffs $45 million in damages. Following the jury verdict, LG filed several post-trial motions including: (1) a motion for JMOL or new trial of non-infringement, (2) a motion for JMOL or new trial of invalidity, and (3) a motion for JMOL, new trial, or remittitur regarding the damages award and willfulness finding.

On September 24, 2019, the district court denied LG’s motions regarding infringement, invalidity, and willfulness but ordered further briefing on damages. On April 22, 2020, the district court granted LG’s motion for a new trial on damages. Less than 30 days later, on on May 8, 2020, LG filed notice of interlocutory ppeal challenging the district court’s decision denying LG’s post-trial motions regarding infringement, invalidity, and willfulness (all of which were decided in the September 24 Order).

The problem for LG is that its interlocutory appeal is governed by 28 U.S.C. § 1292(c)(2), which provides the Federal Circuit with exclusive jurisdiction over “an appeal from a judgment in a civil action for patent infringement which would otherwise be appealable to the United States Court of Appeals for the Federal Circuit and is final except for an accounting.” 28 U.S.C. § 2107(a) sets the time for appeal as “within thirty days after the entry of such judgment, order or decree.” Under § 1292(c)(2), a judgment is final except for an accounting when all liability issues have been resolved, and only a determination of damages remains.

The September 24 Order resolved all issues of liability, so the appeal was due by October 24, and thus the May 2020 filing was more than six months late, and thus the Federal Circuit had no jurisdiction to consider the appeal.

LG argued that FRAP 4(a)(4) instructs that, if a party timely files any of several enumerated motions, including post-trial motions for judgment under FRCP 50(b) or for a new trial under FRCP 59, “the time to file an appeal runs for all parties from the entry
of the order disposing of the last such remaining motion.”

The Federal Circuit noted that LG’s timeliness arguments focus on the Federal Rules,
rather than the statutory requirements for jurisdiction, observing that the Rules cannot override federal statute, and to the extent that there is any conflict between the Rules and federal statutes, the statutes must prevail.

However, not all is lost for LG. While its interlocutory appeal was dismissed, LG is not precluded from from challenging the liability determinations of the district court under our § 1295 jurisdiction once the damages determination is completed.

I will Gladly Assign to You Today, an Invention I will Make Tomorrow

Posted on by

In Omni Medsci, Inc. v. Apple, Inc., [2020-1715, 2020-1716] (August 2, 2021), the Federal Circuit affirmed the district court’s holding that the University of Michigan bylaws did not effectuate a present automatic assignment of Dr. Islam’s patent rights and therefore affirm the district court’s denial of Apple’s motion to dismiss on the ground that Omni, Dr. Islam’s assignee, had standing.

The University of Michigan’s by laws provide that:

Patents and copyrights issued or acquired as a result of or in connection with administration, research, or other educational activities conducted by members of the University staff and supported directly or indirectly (e.g., through the use of University resources or facilities) by funds administered by the University regardless of the source of such funds, and all royalties or other revenues derived therefrom shall be the property of the University.

Slip Op. 2-3.

If this language worked an immediate assignment of rights, then Dr. Islam’s assignment to Omni was a nullity, and Omni lacked standing, as Apple contended. The majority reviewed this language and agreed with the district court that it did not presently automatically assign
Dr. Islam’s rights to the patent but rather, at most, “reflects a future agreement to assign rather than a present assignment.” This conclusion was supported by a comparison of the language with Federal Circuit precedent; the fact tht the same language was used in other parts of the document that could not possibly be considered to be a present assignment; the fact that the language did not use “present tense words of execution;” and the fact the language was different than assignment language used by the University in other forms.

Judge Newman dissented, finding that the language in the by laws was an assignment, which meant the assignment to Omni was ineffective, and thus Omni lacked standing.

Regardless of whether you side agree the majority or with Judge Newman, both sides continue to accept without question that it is possible to make a present assignment of something that does not exist. It would foolish not to recognize that this is the law, and to use clear language of present assignment in employee agreements. However it is equally foolish not to get a confirmatory assignment once something is actually invented.