• Fed. Circ. Asked To Keep Movie Theater IP Suit In Texas – Arguing that the case should stay in Texas, Intertrust Technologies Corp. asks the Federal Circuit to reject a petition from Regal Cinemas, AMC, and Cinemark to transfer the lawsuit to California.
  • Nike Golf Club Patent Dispute Do-Over Weighed by Fed. Cir. Panel – Saso Golf, Inc. urges a Federal Circuit panel to send its patent infringement case back down to the lower court and assign the case to a new a judge, even though the original suit was filed twelve years ago.
  • Fed. Circ. Affirms Chevron Loss In PTAB Interference – A split Federal Circuit found that the Patent Trial and Appeal Board correctly construed a key term to find that the University of Wyoming Research Corporation was entitled to a patent involving a method for analyzing crude oil in an interference proceeding against Chevron.

Here’s the latest.

Fed. Circ. Asked To Keep Movie Theater IP Suit In Texas

Reported by Adam Lidgett on Law360

Intertrust Technologies Corp. filed a patent lawsuit involving digital security against movie theater chains Regal Cinemas, AMC and Cinemark. The movie theater chains argued that U.S. District Judge Rodney Gilstrap erred in refusing to transfer the suit. According to AMC and Cinemark, the case should be transferred because of an earlier lawsuit filed in California that involved Intertrust and Dolby. Intertrust countered the argument, stating that the two cases did not have any overlapping accused infringers. Furthermore, Intertrust argues that the Dolby case focused exclusively on Dolby products while the case against Regal Cinemas, AMC, and Cinemark involve many different products. Adam Lidgett articulates the nature of the dispute.

Judge Gilstrap opted not to apply the first-to-file rule, which allows later-filed identical cases to be transferred to the district of the earlier-filed case. The [theater] owners urged the Federal Circuit in their Oct. 21 petition to step in to “make clear that such duplicative and wasteful forum shopping is impermissible.”

Nike Golf Club Patent Dispute Do-Over Weighed by Fed. Cir. Panel

Reported by Perry Cooper on BloombergLaw

Twelve years ago, Saso Golf, Inc. filed a patent infringement suit against Nike Inc. alleging Nike’s golf clubs infringed its golf head club patent. After the trial court invalidated Saso’s patent as indefinite, Saso challenged the lower court’s one-sentence opinion. According to Perry Cooper, Saso argued that Nike “failed to prove the patent was indefinite because it didn’t show that a person of skill in the art of making golf clubs wouldn’t be able to identify the parts of the club head described in the patent with reasonable certainty.” Saso urges the Federal Circuit panel to send the case back down to the lower court and have it assigned to a new judge. Because this case was filed twelve years ago, a new assignment would mean that a fifth judge would be hearing this case. Cooper highlights the exchange between Saso and the panel.

Judge Jimmie V. Reyna said the “sparseness” of the lower court’s opinion makes it hard “to find a foothold to actually review what court was thinking about.” Reyna asked if the appeals court could just review the patent for indefiniteness itself.

“Yes, the court can conclude the claim is not indefinite because Nike has not carried its burden,” Fasulo said. In response to a question from Reyna about whether the court could conclude the patent is indefinite, Fasulo said there isn’t enough evidence in the record to support that conclusion.

Fed. Circ. Affirms Chevron Loss In PTAB Interference

Reported by Britain Eakin on Law 360

In a patent interference proceeding with Chevron, a divided Federal Circuit panel concluded that the Patent Trial and Appeal Board did not err in finding that the University of Wyoming Research Corporation (Wyoming) was entitled to a patent directed at a procedure for analyzing impurities in crude oil. More specifically, the panel ruled that PTAB’s correctly construed the “gradually and continuously changing” limitation that was included in the claims. As Britain Eakin illustrates, in an interference proceeding, a party must show that it conceived of an invention first. According to the opinion, Wyoming, who does business as the Western Research Institute, copied the first claim of Chevron’s patent application into its own pending application in order to provoke the interference proceeding. In analyzing the “gradually and continuously changing” language, the panel ruled that the board’s construction precisely tracked the definition in the written description of Chevron’s patent application. Under this construction, the panel affirmed the board’s finding that the patent should go to Wyoming. However, the panel was not unanimous in this decision.

In her dissent, Judge Newman said the board erred because there is no written description support for the Western Research Institute’s invention in the claims it copied from Chevron under the board’s claim construction. While Chevron’s claimed method covers “gradual and continuous” solvent change, Newman said the Western Research Institute’s method covers an “abrupt and discontinuous solvent change.”

Judge Newman concluded that Chevron and the Wyoming Research Institute claimed different inventions. Because assigning priority “requires proof of conception and reduction to practice of the same invention,” Judge Newman believed that Chevron’s motion to dissolve the interference should have been granted.