Genband US LLC v. Metaswitch Networks Corp.

Appellant Genband US LLC sued Metaswitch Networks Corp. and Metaswitch Networks Ltd. (together, Metaswitch) for patent infringement. After a jury found that Metaswitch infringed various claims of several of Genband’s patents, and that the claims at issue had not been proven invalid, Genband sought a permanent injunction. The district court denied the request, concluding that Genband had not established irreparable harm from the infringing activities. That conclusion, however, may have relied on too stringent an interpretation of the requirement, for an injunction, that the allegedly irreparable harm is being caused by the infringement. Based on the district court’s opinion and the briefing in this court, moreover, we cannot be confident of the answer to the causation question under the standard properly governing the inquiry or whether there is any independent ground for finding no irreparable harm or otherwise denying an injunction. Accordingly, we vacate the denial of the injunction and remand for reconsideration.

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IPCom GmbH & Co. v. HTC Corp.

IPCom GmbH & Co. (IPCom) is the owner of U.S. Patent No. 6,879,830 (’830 patent), which describes and claims a method and system for handing over a mobile phone call from one base station to another base station. After IPCom sued HTC Corporation (HTC) for infringing the ’830 patent, HTC requested that the U.S. Patent and Trademark Office (PTO) conduct inter partes reexamination of claims 1, 5–26, and 28–37 of the ’830 patent, which the PTO granted. The reexamination went through two rounds of review by the Examiner and the Patent Trial and Appeal Board (Board). In the first round, the Examiner concluded that the claims were patentable, but HTC appealed to the Board, which issued a new ground of rejection for claims 1 and 5–30. In the second round, IPCom amended claims 1, 5–26, and 28–37,1 but the Board found that these amended claims were obvious under 35 U.S.C. § 103 in view of various combinations of McDonald,2 Anderson,3 GSM,4 and PACS.5

In its appeal, IPCom alleges that, even though it had amended the scope of claims 31–37 during its second round before the Examiner, the Board lacked jurisdiction to review the Examiner’s patentability determination of these amended claims in the Board decision now on appeal. IPCom also argues that the Board’s obviousness rejections were based on a flawed claim construction, because the Board never identified the structure in the patent specification that corresponds to the “arrangement for reactivating the link” means-plus-function claim limitation. IPCom also appeals the Board’s factual findings for several other claim limitations and the motivation to combine the prior art references in the manner claimed by the ’830 patent.

We conclude that, under the circumstances of this case, the Board properly had the authority to consider the patentability of claims 31–37 and thus reject IPCom’s procedural challenge to the Board’s rejection of these claims. But we agree with IPCom that the Board failed to conduct a proper claim construction of the “arrangement for reactivating the link” claim limitation, and we vacate and remand the obviousness rejections based on that limitation. We affirm the Board’s findings in all other respects.

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AdjustaCam, LLC v. Newegg, Inc.

AdjustaCam sued Newegg and dozens of other defendants for patent infringement. Although AdjustaCam voluntarily dismissed most defendants early in the litigation, it continued to litigate against Newegg, including through a Markman order and extended expert discovery. Just before summary judgment briefing, AdjustaCam voluntarily dismissed its infringement claims against Newegg with prejudice. Newegg then filed a motion for attorneys’ fees. The district court denied Newegg’s motion, and Newegg appealed to this court. We remanded to the district court in light of intervening Supreme Court precedent. On remand, the district court again denied Newegg’s motion for fees. Newegg then filed this appeal. Because the district court erred in denying Newegg’s motion, we reverse.

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AdjustaCam

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Nantkwest, Inc. v. Matal

Nantkwest, Inc. appeals from a decision of the United States District Court for the Eastern District of Virginia granting-in-part and denying-in-part the United States Patent and Trademark Office (“USPTO”) Director’s motion for fees. In its order, the district court granted the Director’s requested witness’ fees but denied the requested attorneys’ fees. The Director appeals the court’s denial of attorneys’ fees. We reverse.

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Stanford University v. Chinese University of Hong Kong

The Board of Trustees of the Leland Stanford Junior University (“Stanford”) appeals from orders of the Patent Trial and Appeal Board (“Board”) in three interference proceedings between Stanford and the Chinese University of Hong Kong (“CUHK”). In all of these proceedings, the Board found that Stanford’s claims were unpatentable for lack of written description. See Quake v. Lo, No. 105,920 (P.T.A.B. Apr. 7, 2014); Lo v. Quake, No. 105,923 (P.T.A.B. Apr. 7, 2014); Lo v. Quake, No. 105,924 (P.T.A.B. Apr. 7, 2014).1 Because we conclude that the Board relied on improper evidence to support its key findings and did not cite to other substantial evidence to support its findings, we vacate the Board’s interference decisions and remand for further proceedings.

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Storer v. Clark

This patent interference contest involves methods of treating hepatitis C by administering compounds having a specific chemical and stereochemical structure, based on the following foundation formula of a five-membered ring having the fluorine substituent in the 2´(down) position:

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Storer Br. at 8. The priority decision was based on enablement of this product. The interference was declared between an issued patent (Storer et al.) and a pending application (Clark), both of which were filed before the effective date of the America Invents Act, the statute that abolished the first-to-invent interference rule in favor of a first-to-file rule. By the terms of the Act, § 3(n)(2), the prior, first-to-invent, law applies to this interference.

To establish priority, Storer relied on the disclosure in the provisional specification from which priority was claimed for conception and constructive reduction to practice. In its joint decision on Clark’s motion to deny Storer the benefit of the provisional application and on Clark’s motion to invalidate Storer’s claims on the grounds of lack of enablement and written description,1 the Patent Trial and Appeal Board (PTAB or “Board”) held that Storer’s provisional application was not enabling for the count of the interference, and on that ground the PTAB entered judgment granting priority to Clark.2 Storer appeals that judgment and the underlying decision on Clark’s motions.

We take note that Storer initially filed in the District of Delaware, seeking review of the Board’s decision under 35 U.S.C. § 146. The district court dismissed the case, Idenix Pharmaceuticals. LLC v. Gilead Pharmasset LLC, 2016 WL 6804915, at *1 (D. Del. Nov. 16, 2016), based on this court’s ruling in Biogen MA, Inc. v. Japanese Foundation for Cancer Research, 785 F.3d 648 (Fed. Cir. 2015), that the America Invents Act eliminated the option of district court review under Section 146 for interferences declared after September 15, 2012. Although Storer says that Biogen was incorrectly decided, that decision is binding on this panel. Storer’s appeal of the district court’s dismissal has been stayed pending the outcome of this appeal. Order, Idenix Pharm. LLC v. Gilead Pharmasset LLC, No. 17-1369 (Fed. Cir. Feb. 16, 2017).

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Outdry Technologies Corp. v. Geox S.P.A.

Outdry Technologies Corp. (“Outdry”) appeals from the Patent Trial and Appeal Board’s (“Board”) inter partes review decision holding that claims 1–15 of U.S. Patent No. 6,855,171 (“the ’171 patent”) would have been obvious over a combination of prior art. For the reasons discussed below, we affirm.

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Cleveland Clinic Foundation v. True Health Diagnostics. LLC

The Cleveland Clinic Foundation and Cleveland Heartlab, Inc. accused True Health Diagnostics LLC of infringement of three patents that claim methods for testing for myeloperoxidase in a bodily sample and a fourth patent that claims a method for treating a patient that has cardiovascular disease. The United States District Court for the Northern District of Ohio found that the asserted claims of the three testing patents are not directed to patent-eligible subject matter and that Cleveland Clinic failed to state a claim of contributory or induced infringement of the fourth patent. For the reasons explained below, we affirm.

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EmeraChem Holdings, LLC v. Volkswagen Group of America, Inc.

EmeraChem Holdings, LLC (“EmeraChem”) appeals from a decision of the Patent Trial and Appeal Board (“Board”) that claims 1–14 and 16–20 of U.S. Patent No. 5,599,758 (“the ’758 patent”) would have been obvious over U.S. Patent No. 5,451,558 (“Campbell ’558”), Japanese Patent Application No. 62-106826 (“Saito”), and U.S. Patent No. 5,362,463 (“Stiles”). For the reasons set forth below, we affirm the Board’s decisions as to claims 1–2, 4– 14, and 17–19 and vacate and remand as to claims 3, 16, and 20.

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One-E-Way, Inc. v. International Trade Commission

The International Trade Commission found the claim term “virtually free from interference” indefinite and invalidated the asserted claims of One-E-Way’s patents. Because we conclude that the term “virtually free from interference,” as properly interpreted in light of the specification and prosecution history, would inform a person of ordinary skill in the art about the scope of the invention with reasonable certainty, we reverse.

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