Here is an update on activity in cases pending before panels of the Federal Circuit where the cases involve at least one amicus brief. We keep track of these cases in the “Other Cases” section of our blog. With respect to these cases, since our last update we highlight five new opinions, four in patent cases and one in a government contract case; two new argument recaps, one in a trademark case and one in a trade case; and three new cases, one a design patent case and two utility patent cases. Here are the details.
New Opinions
AliveCor, Inc. v. Apple, Inc.
In this patent case, the Federal Circuit reviewed three written decisions of the Patent Trial and Appeal Board in related inter partes review proceedings. The PTAB found all claims of three patents unpatentable over certain asserted prior art. AliveCor challenged the PTAB’s findings, including by arguing that the IPR petitioner, Apple, violated its discovery obligations. The Federal Circuit, in an opinion authored by Judge Stark and joined by Judges Hughes and Linn, affirmed the PTAB’s obviousness determination and declined to address AliveCor’s discovery challenge because it failed to raise the issue at the PTAB. For more details, check out our opinion summary.
AliveCor, Inc. v. International Trade Commission
In this case, the Federal Circuit was asked to review a judgment of the International Trade Commission in a patent infringement case that resulted in a limited exclusion order restricting importation of Apple’s watch products. In a per curium opinion issued by a panel including Judges Hughes, Linn, and Stark, however, the Federal Circuit vacated the Commission’s decision and remanded the case with instructions to dismiss the case as moot. For more details, check out our opinion summary.
Merck Sharp & Dohme B.V. v. Aurobindo Pharma USA, Inc.
The issue on appeal in this case was whether patent term extension for a reissued patent “should be calculated based on the issue date of the original patent or the reissued patent.” The Federal Circuit reviewed a district court determination that the U.S. Patent and Trademark Office correctly calculated a reissued patent term extension based on the patent’s original issue date. In an opinion authored by Judge Dyk and joined by Judges Mayer and Reyna, the Federal Circuit affirmed the lower court’s determination. For more details, check out our opinion summary.
Restem, LLC. v. Jadi Cell, LLC
In this patent case, Restem appealed a determination by the Patent Trial and Appeal Board that it failed to prove claims in Jadi Cell’s patent were unpatentable. The Federal Circuit, in an opinion authored by Chief Judge Moore and joined by Judges Schall and Taranto, affirmed the PTAB’s determination. For more details, check out our opinion summary.
Hawaiian Dredging Construction Co. v. United States
In this government contract case, the Federal Circuit reviewed a determination by the Court of Federal Claims to dismiss HDCC’s complaint for failure to state a claim upon which relief could be granted. HDCC alleged that the government owed it an “equitable adjustment for various delays and increased costs” during its contract performance, and that HDCC “experienced excusable delays due to government changes and additions to the contact work relating to the retaining wall construction.” In an opinion authored by Judge Prost and joined by Judges Dyk and Clevenger, the Federal Circuit affirmed the dismissal of HDCC’s claim regarding excusable delay related to a retaining wall; reversed the lower court’s dismissal with respect to government delays for delivery of rights of way, utility relocation, and a repayment claim; and remanded the case for further proceedings. For more details, check out our opinion summary.
Argument Recaps
Curtin v. United Trademark Holdings, Inc.
In this case, the Federal Circuit is reviewing a judgment of the Trademark Trial and Appeal Board, which concluded that Rebecca Curtin is not entitled to challenge United Trademark Holding’s application to register the mark RAPUNZEL under a test known as the “zone of interests” framework. Federal Circuit Judges Taranto and Hughes and the Chief Judge of the Court of International Trade, Mark Barnett, who sat by designation, heard the oral argument. For more information, check out our argument recap.
Stupp Corp. v. United States
In this international trade case, the Federal Circuit is reviewing a judgment of the Court of International Trade, which sustained a decision of the Department of Commerce to use a particular test in a differential pricing analysis used to calculate antidumping margins. Judges Lourie, Bryson, and Stark heard the oral argument. For more information, check out our argument recap.
New Cases
Jacki Easlick, LLC v. Accencyc US
This is a design patent case. In its opening brief, Easlick contends the district court abused its discretion when it denied Easlick’s motion for a preliminary injunction “based on its findings that [Easlick] had not established a likelihood of success on the merits or irreparable harm.” Easlick explains that the court must “apply the ‘ordinary observer’ test,” which “turns on similarities of the overall design, not of individual ornamental features considered in isolation.” In this case, however, Easlick argues the court improperly relied on “individual ornamental features” rather than “the overall appearance of the two products, as compared to the prior art.”
In its response brief, AccEncyc argues the district court “properly construed” Easlick’s patent by considering its “ornamental aspects.” Further, AccEncyc contends, the court appropriately found AccEncyc’s design was not “substantially similar” under the appropriate standard. It rejects Easlick’s contention the lower court abused its discretion when denying Easlick’s motion for a preliminary injunction because “Easlick had not made the required showing” of “irreparable harm in the absence of an injunction.”
The case attracted an amicus brief filed by Law Professors Sarah Fackrell, Eric Goldman, Elizabeth Rosenblatt, and Saurabh Vishnubhakat. They support AccEncyc and affirmance.
Netlist, Inc. v. Samsung Electronics Co.
This is a utility patent case on appeal from the Patent Trial and Appeal Board. In its opening brief, Netlist contends that, in prior reexaminations, the PTAB and the patent examiner consistently interpreted the relevant claim language to require “transmission of a command signal to only one DDR memory device at a time when there is a plurality of memory devices in a rank.” That construction, Netlist argues, is based on the claim’s text, the patent’s specification, and extensive prosecution history. Moreover, Netlist points out, the Federal Circuit affirmed the PTAB’s decision upholding the claim in the prior reexaminations. Yet, in this inter partes review, it continues, the PTAB adopted a diametrically opposed reading of the claim language, construing “rank” to include a single memory device. But, “[e]ven if sending a command to a single-device ‘rank’ could satisfy” the claim, Netlist argues, the prior art “does not teach single-device ranks.”
The case attracted an amicus brief filed by the Alliance of U.S. Startups & Inventors for Jobs. The USIJ supports the appellant and reversal.
Ollnova Technologies, Ltd. v. Ecobee Technologies ULC
In its opening brief, Ollnova presents the following question:
- “Whether prejudgment interest for a lump sum reasonable royalty damages award should be calculated from the time of the hypothetical negotiation, which coincides with the date of first infringement, or be limited to the time period allowed under 35 U.S.C. § 286.”
More specifically, Ollnova explains, “when a jury awards a lump-sum reasonable royalty as of the hypothetical negotiation date,” does 35 U.S.C. § 286 “foreclose prejudgment interest prior to six years before the complaint”? Contending the district court below “failed to fully compensate Ollnova for ecobee’s infringement,” Ollnova argues that including this prejudgment interest would “fairly compensate” it for “lost value from when ecobee should have paid the lump-sum royalty.” Ollnova contends the “date of first infringement” should apply “for purposes of calculating the district court’s award of prejudgment interest,” rather than limiting damages by imposing a “second date of ‘first infringement'” that is six years before the filing of the complaint.
In its principal brief, ecobee argues the district court erred with respect to a first patent by “presenting jury instructions and a verdict form question . . . that were incomplete, flawed, and highly prejudicial” because they failed to “inform the jury that the claims had been found to be directed to an abstract idea, identify what that abstract idea was, and instruct the jury that it must disregard that abstract idea when considering whether the claims disclose an inventive concept.” Moreover, it contends, the claims in that patent “are ineligible under Section 101 and no reasonable jury could have found otherwise.” Next, with respect to two other patents, ecobee argues the claims “are ineligible under Section 101 because they merely claim abstract ideas.” ecobee also contends its products do not infringe one patent’s claims because the “plain claim language requires repeated communication of a ‘change-of-value update’—’at regular intervals according to a schedule or until a change-of-value acknowledgment is received’—which ecobee’s products do not do.” ecobee also argues the damages award “is based on expert theories and evidence that are inadmissible.” Moreover, it contends the district court erred in ruling on its motion for failure to mark. And it contends the district court “erred by utilizing a verdict form question on infringement (Question 1) that improperly combined all claims and counterclaims concerning infringement of the four Asserted Patents into a single question.” Finally, with respect to Ollnova’s appeal, ecobee maintains the Federal Circuit “should not disturb the District Court’s calculation of prejudgment interest as beginning at the start of the damages period under the appropriate statutes, rather than beginning at a hypothetical negotiation date that occurred four years before the earliest date damages could accrue under the statute of limitations.”
The case attracted an amicus brief filed by SAP America, Inc., HP Inc., Forescout Technologies, Inc., and High Tech Inventors Alliance. They support ecobee.