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ACCO Brands Corp. v. Fellowes, Inc.

This case arises from an inter partes reexamination that ACCO Brands Corporation (ACCO) sought—and the Patent and Trademark Office instituted—against a patent owned by Fellowes, Inc. (Fellowes). After the examiner rejected four claims on obviousness grounds, Fellowes appealed to the Patent Trial and Appeal Board (Board). The Board reversed the rejections, finding that the examiner had failed to make a prima facie showing of obviousness. We reverse this finding and hold that the examiner made this prima facie showing. We remand the Board’s decision so it may further consider two issues that it did not reach below: (1) whether Fellowes’ rebuttal evidence changes the outcome on obviousness and (2) whether the dependent claims at issue provide independent grounds of nonobviousness.

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Nuance Commc'ns, Inc. v. ABBYY USA Software House, Inc.

This case involves optical character recognition (“OCR”) technology. Nuance Communications Inc. (“Nuance”) sued ABBYY USA Software House, Inc., ABBYY Software, Ltd., ABBYY Production LLC, and Lexmark International, Inc. (collectively, “ABBYY”) in the United Stated District Court for the Northern District of California. Although Nuance asserted eight patents in its complaint, before trial Nuance narrowed its case and ultimately only tried three patents: U.S. Patent Nos. 6,038,342 (“’342 patent”), 5,381,489 (“’489 patent”), and 6,742,161 (“’161 patent”). The jury returned a verdict of non-infringement and judgment was entered against Nuance. Nuance appeals the judgment, arguing that a new trial on the ’342 patent is warranted because the district court improperly adopted a dictionary definition for disputed claim limitations in the ’342 patent. Nuance also contends that it was denied due process when the district court entered final judgment against Nuance as to all of its patents, even those that Nuance chose not to assert at trial, and thus seeks remand for a second trial on the untried patents. For the reasons stated below, we affirm the district court’s rulings.

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PPC Broadband, Inc. v. Corning Optical Commc'ns RF, LLC

PPC Broadband, Inc. appeals from the Patent Trial and Appeal Board’s (“Board”) final written decisions in inter partes reviews (“IPRs”) concluding that claims 1–32 of U.S. Patent No. 8,287,320, claims 1–9 of U.S. Patent No. 8,323,060, and claims 7–27 of U.S. Patent No. 8,313,353 would have been obvious. We vacate the Board’s determination that claims 8, 16, and 31 of the ’320 patent, claims 1–9 of the ’060 patent, and claims 7– 27 of the ’353 patent are unpatentable, affirm the Board’s determination that claims 1–7, 9–15, 17–30, and 32 of the ’320 patent are unpatentable, and remand for further proceedings.

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Zoltek Corp. v. United States

The Court of Federal Claims erred in holding the asserted claims of the ’162 patent invalid under sections 103 and 112. The judgment of invalidity is reversed. We remand for resolution of all remaining issues. REVERSED AND REMANDED

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Ohio Willow Wood Co. v. Alps S., LLC

This case marks the latest chapter in a long-running dispute between two manufacturers of prosthetic limb accessories. The appellant, The Ohio Willow Wood Company (“OWW”), owns a group of patents directed to cushioning devices that fit over the residual stumps of amputated limbs to make the use of prosthetics more comfortable. OWW has asserted its patents against defendant Alps South, LLC (“Alps”) in several actions.

The cushioning devices at issue in this case consist of stretchable pieces of synthetic fabric that are coated with a gel on only the side touching the body. That design creates a gel side that reduces irritation to the skin and a dry side that allows free interaction with the prosthesis.

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Lismont v. Alexander Binzel Corp.

This appeal arises from an inventorship dispute between Hedwig Lismont (Mr. Lismont) and Alexander Binzel Schweisstechnik GmbH & Co. KG (Binzel- Germany), Abicor Unternehmensverwaltungs GmbH (Abicor), IBG Industrie-Beteiligungs-GmbH & Co. KG (IBG), Richard Sattler (Mr. Sattler), and Alexander Binzel Corporation (Binzel-USA) (collectively, Appellees). The United States District Court for the Eastern District of Virginia granted summary judgment in favor of Appellees, concluding that Mr. Lismont’s inventorship claim, which he filed ten years after the patent issued, was barred by laches. See Lismont v. Alexander Binzel Corp., No. 2:12-cv-592, 2014 WL 4181586 (E.D. Va. Aug. 20, 2014). Because we agree with the district court’s conclusion that the presumption of laches applies against Mr. Lismont’s claim and that he failed to rebut that presumption, we affirm.

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Lexmark Int'l, Inc. v. Impression Prods., Inc.

Congress has declared: “Except as otherwise provided in [the Patent Act], whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.” 35 U.S.C. § 271(a); see id. § 154(a) (granting patentee “right to exclude others” from itemized actions). The doctrine of patent exhaustion (or “first sale” doctrine) addresses the circumstances in which a sale of a patented article (or an article sufficiently embodying a patent), when the sale is made or authorized by the patentee, confers on the buyer the “authority” to engage in acts involving the article, such as resale, that are infringing acts in the absence of such authority. There is nothing “otherwise provided” on the issue in the Patent Act. In that respect, the Patent Act differs from the Copyright Act, whose infringement, importation, and exclusive-rights provisions, 17 U.S.C. §§ 501, 602, 106, are all subject to a separate, overriding statutory provision that grants owners of certain copyrighted articles a right to sell those articles “without the authority” of the copyright holder, id. § 109(a).

In this case, all of the initial sales at issue were made by the U.S. patentee, rather than by a licensee having authorization from the patentee. Some of the initial sales were made domestically, some abroad. All of the domestic sales, and an unknown portion of the foreign sales, were accompanied by clearly communicated restrictions on the buyer’s reuse and resale. We decided to hear this case en banc to consider whether two decisions of this court concerning the uncodified doctrine of patent exhaustion—one decision from 1992, the other from 2001—remain sound in light of later decisions of the Supreme Court. Today we reaffirm the principles of our earlier decisions.

First, we adhere to the holding of Mallinckrodt, Inc. v. Medipart, Inc., 976 F.2d 700 (Fed. Cir. 1992), that a patentee, when selling a patented article subject to a single-use/no-resale restriction that is lawful and clearly communicated to the purchaser, does not by that sale give the buyer, or downstream buyers, the resale/reuse authority that has been expressly denied. Such resale or reuse, when contrary to the known, lawful limits on the authority conferred at the time of the original sale, remains unauthorized and therefore remains infringing conduct under the terms of § 271. Under Supreme Court precedent, a patentee may preserve its § 271 rights through such restrictions when licensing others to make and sell patented articles; Mallinckrodt held that there is no sound legal basis for denying the same ability to the patentee that makes and sells the articles itself. We find Mallinckrodt’s principle to remain sound after the Supreme Court’s decision in Quanta Computer, Inc. v. LG Electronics, Inc., 553 U.S. 617 (2008), in which the Court did not have before it or address a patentee sale at all, let alone one made subject to a restriction, but a sale made by a separate manufacturer under a patentee-granted license conferring unrestricted authority to sell.

Second, we adhere to the holding of Jazz Photo Corp. v. International Trade Comm’n, 264 F.3d 1094 (Fed. Cir. 2001), that a U.S. patentee, merely by selling or authorizing the sale of a U.S.-patented article abroad, does not authorize the buyer to import the article and sell and use it in the United States, which are infringing acts in the absence of patentee-conferred authority. Jazz Photo’s noexhaustion ruling recognizes that foreign markets under foreign sovereign control are not equivalent to the U.S. markets under U.S. control in which a U.S. patentee’s sale presumptively exhausts its rights in the article sold. A buyer may still rely on a foreign sale as a defense to infringement, but only by establishing an express or implied license—a defense separate from exhaustion, as Quanta holds—based on patentee communications or other circumstances of the sale. We conclude that Jazz Photo’s no-exhaustion principle remains sound after the Supreme Court’s decision in Kirtsaeng v. John Wiley & Sons, Inc., 133 S. Ct. 1351 (2013), in which the Court did not address patent law or whether a foreign sale should be viewed as conferring authority to engage in otherwiseinfringing domestic acts. Kirtsaeng is a copyright case holding that 17 U.S.C. § 109(a) entitles owners of copyrighted articles to take certain acts “without the authority” of the copyright holder. There is no counterpart to that provision in the Patent Act, under which a foreign sale is properly treated as neither conclusively nor even presumptively exhausting the U.S. patentee’s rights in the United States. 

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Nike, Inc. v. Adidas, AG

This appeal arises from the inter partes review (IPR) of U.S. Patent No. 7,347,011 (the ’011 patent) owned by Nike, Inc. (Nike). The United States Patent and Trademark Office, Patent Trial and Appeal Board (Board) granted the IPR petition filed by adidas AG (Adidas) and instituted inter partes review of claims 1–46 of the ’011 patent. Nike then filed a motion to amend in which it requested cancellation of claims 1–46 and proposed substitute claims 47–50. The Board granted Nike’s motion to cancel claims 1–46, but denied the motion as to the substitute claims because Nike failed to meet its burden of establishing patentability of substitute claims 47–50. Nike now appeals the Board’s denial of its motion to amend, and the Director of the United States Patent and Trademark Office (Director) intervened to defend the Board’s decision. For the reasons stated below, we affirm-in-part, vacate-in-part, and remand for further proceedings consistent with this opinion.

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Convolve, Inc. v. Compaq Computer Corp.

This case returns to us after a remand to the Southern District of New York. In the first appeal, we reversed the district court’s summary judgment ruling that no accused products met the patent’s “selected unwanted frequencies” limitation and remanded for further proceedings. On remand, the district court granted summary judgment on alternative grounds. Because we agree with the district court that Seagate’s disk drives do not possess a user interface, but conclude that the district court erred by importing limitations into the “command” steps and in granting summary judgment based on intervening rights, we again affirm-in-part, vacate-in-part, reverse-in-part, and remand for further proceedings.

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Transweb, LLC v. 3M Innovative Props. Co.

3M sued TransWeb for infringement of several patents. TransWeb sued for declaratory judgment of invalidity and non-infringement of the patents. A jury found the patents to be invalid based on TransWeb’s prior public use of the patented method. In accordance with an advisory verdict from the jury, the district court found the patents unenforceable due to inequitable conduct. The jury also found 3M to be liable for a Walker Process antitrust violation and that attorney fees were an appropriate antitrust remedy. The district court awarded approximately $26 million to TransWeb, including trebled attorney fees as antitrust damages. The primary issues are whether sufficient corroborating evidence exists to support the finding of prior public use by TransWeb, and whether the attorney fees are an appropriate basis for damages under the antitrust laws in this context. We hold in the affirmative on both issues. For the latter issue, we find that TransWeb’s attorney fees appropriately flow from the unlawful aspect of 3M’s antitrust violation and thus are an antitrust injury that can properly serve as the basis for antitrust damages. For these reasons, we affirm the district court’s judgment.

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