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February 2016
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Dell, Inc. v. Acceleron, LLC

Acceleron, LLC owns U.S. Patent No. 6,948,021, which discloses a computer-network appliance containing several hardware modules that can be removed and replaced while the appliance remains on. The Patent Trial and Appeal Board of the Patent and Trademark Office instituted inter partes review of the ’021 patent based on Dell Inc.’s petition under 35 U.S.C. § 311 et seq. After conducting the review, the Board confirmed the validity of claims 14–17 and 34–36. Dell appeals those rulings, primarily challenging the Board’s finding that the key prior-art reference fails to disclose a particular claim element. Acceleron, for its part, appeals the Board’s cancellation of claims 3 and 20 as anticipated. As to claim 20, Acceleron challenges the Board’s claim construction, and as to claim 3, Acceleron challenges as procedurally improper the Board’s reliance on a basis first raised during the oral argument before the Board.

We affirm the Board’s confirmation of claims 14–17 and 34–36. We vacate the Board’s cancellation of claim 20 and remand for reconsideration of anticipation under the correct claim construction. We vacate the cancellation of claim 3 and remand for reconsideration of anticipation as appropriate.

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Halo Creative & Design, Ltd. v. Comptoir des Indes Inc.

Halo Creative & Design Ltd., Halo Trademarks Ltd., and Halo Americas Ltd. (collectively, “Halo”), own two U.S. design patents, thirteen U.S. copyrights, and one U.S. common law trademark relating to twenty-five of their furniture designs. Halo is located in Hong Kong. Halo sued Comptoir Des Indes, Inc. (“Comptoir”), a Canadian company, and its CEO, David Ouaknine (collectively, “appellees”), a Canadian resident, in the Northern District of Illinois. Halo asserted that appellees infringed their intellectual property and violated Illinois consumer fraud and deceptive business practices statutes. Appellees moved to dismiss on forum non conveniens grounds, contending that the Federal Court of Canada would be a superior forum. The district court granted the motion and dismissed the case. Halo Creative & Design Ltd. v. Comptoir Des Indes, Inc., No. 14C8196, 2015 WL 426277, at *3 (N.D. Ill. Jan. 29, 2015) (“Halo”). Halo appeals. We reverse and remand for further proceedings.

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In re Varma

These two appeals involve U.S. Patent No. 6,349,291, which names Samir Varma as the inventor and is owned by InvestPic LLC (collectively, Varma). The patent describes and claims methods and systems for performing statistical analyses of investment data. The Patent Trial and Appeal Board of the Patent and Trademark Office cancelled certain claims of the ’291 patent in two related reexamination proceedings—one initiated by International Business Machines Corp. and SAS Institute Inc., the other by SAS alone. IBM v. InvestPic LLC, No. 2015- 1450, 2015 WL 1456097, at *6 (PTAB Mar. 27, 2015); Ex parte Varma, No. 2014-7760, 2014 WL 7186800, at *7 (PTAB Dec. 16, 2014). Varma’s appeals center on two claim phrases: (1) a “bias parameter” that “determines a degree of randomness in sample selection in a resampling process”; and (2) “a statistical analysis request corresponding to two or more selected investments.” We agree with Varma that the Board erred regarding both claim phrases. Correcting the first error, we reverse the cancellation of claims 1–5, 8–16, 19–21, and 24. Correcting the second error, we vacate the cancellation of claims 22, 23, 25, and 29–31 and remand for further proceedings on those claims.

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In re: Smith

Ray and Amanda Tears Smith (collectively, “Applicants”) appeal the final decision of the Patent Trial and Appeal Board (“Board”) affirming the rejection of claims 1–18 of U.S. Patent Application No. 12/912,410 (“the ’410 patent application”) for claiming patent-ineligible subject matter under 35 U.S.C. § 101. Because the claims cover only the abstract idea of rules for playing a wagering game and use conventional steps of shuffling and dealing a standard deck of cards, we affirm.

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Bamberg v. Dalvey

Ulf Bamberg, Peter Kummer, and Ilona Stiburek appeal from the Patent Trial and Appeal Board’s consolidated interference proceeding decision refusing to allow the claims of four patent applications because the specification failed to meet the written description requirement of 35 U.S.C. § 112. Because the Board properly construed the claims and substantial evidence supports the Board’s determination that Bamberg failed to meet the written description requirement, and because it was not an abuse of discretion to deny Bamberg’s motion to amend, we affirm.

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Queen's Univ. at Kingston

Petitioners Queen’s University at Kingston and PARTEQ (together, “Queen’s University”) are engaged in a patent infringement action against Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. (together, “Samsung”) in the United States District Court for the Eastern District of Texas. They seek a writ of mandamus directing the district court to withdraw its order compelling the production of Queen’s University’s communications with its non-attorney patent agents on grounds that the communications are privileged. We grant the petition.

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JBLU, Inc. v. United States

JBLU, Inc. appeals from the United States Court of International Trade (“trial court”) decision on summary judgment that U.S. Customs and Border Protection (“Customs”) correctly determined that JBLU violated section 304 of the Tariff Act of 1930, as amended, by importing jeans that were not properly marked with their country of origin. We reverse and remand.

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Dryer v. National Football League

Appellants John Frederick Dryer, Elvin Lamont Bethea, and Edward Alvin White played professional football in the National Football League (“NFL”). They participated in a putative class-action lawsuit in which twenty-three former NFL players sued the NFL on behalf of themselves and similarly situated former players. This suit claimed that films produced by NFL-affiliate NFL Films violated the players’ rights under the right-of-publicity laws of various states as well as their rights under the Lanham Act, 15 U.S.C. § 1125. Twenty of those players settled their dispute with the NFL, but the appellants elected to opt out of that settlement and pursue their individual right-of-publicity and Lanham Act claims. The district court granted the NFL’s motion for summary judgment on these claims. We affirm.

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Ultimatepointer, L.L.C. v. Nintendo Co., Ltd.

UltimatePointer, LLC (“UltimatePointer”) appeals from a final judgment in favor of Nintendo Co., Ltd. and Nintendo of America, Inc. (collectively, “Nintendo”) after the district court granted summary judgment (1) that Nintendo did not infringe claims 1, 3, 5, 6, and 12 of UltimatePointer’s U.S. Patent 8,049,729 (the “’729 patent”), UltimatePointer, LLC v. Nintendo Co, No. 2:14-cv- 00865-RSL, 2014 WL 7340604, at *1–2 (W.D. Wash. Dec. 22, 2014) (“Infringement Opinion”); and (2) that claims 1, 3, 5, and 6 of the ’729 patent are invalid as indefinite, UltimatePointer, LLC v. Nintendo Co., 73 F. Supp. 3d 1305, 1308–09 (W.D. Wash. 2014) (“Indefiniteness Opinion”). For the reasons that follow, we affirm the judgment of noninfringement and reverse the determination of indefiniteness.

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