Federal Circuit Update and Potential U.S. Supreme Court Cases
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Assignor Estoppel and IPRs
In Arista Networks, Inc. v. Cisco Systems, Inc. (Federal Circuit appeal no. 2017-1525, decided November 9, 2018), the Court of Appeals for the Federal Circuit held that assignor estoppel does not apply to inter partes review (IPR) proceedings before the Patent Trial and Appeal Board of the USPTO. Assignor estoppel is an equitable doctrine that prevents a party who assigns a patent to another party from later challenging the validity of the assigned patent. The doctrine also extends to parties that are in privity with the assignor. Here, Dr. Cheriton was employed by Cisco and was the named inventor of U.S. Patent No. 7,340,597 (“the ‘597 patent”). Per his employment agreement with Cisco, Dr. Cheriton assigned all right, title and interest in the ‘597 patent to Cisco. Subsequently, Dr. Cheriton left Cisco and founded Arista. Later, Arista filed an IPR petition challenging the validity of certain claims of the ‘597 patent. Cisco contended that assignor estoppel prevented Arista from challenging the validity of the claims of the ‘597 patent. However, the PTAB refused to apply the doctrine as a bar to Arista’s IPR filing, and ultimately invalidated some of the challenged claims. On appeal by Cisco, the Federal Circuit affirmed the PTAB’s holding. In its decision, the Federal Circuit found that Congress intended for assignor estoppel to not apply to IPR proceedings, because Section 311(a) of the Patent Law explicitly permits any person “who is not the owner of the patent” to file a petition to institute an IPR.
A copy of the Arista decision may be accessed at http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/17-1525.Opinion.11-9-2018.pdf.
“Offers to Sell” under 35 U.S.C. 271(a)
In Texas Advanced Optoelectronic Solutions, Inc. v. Renesas Electronics America, Inc. (Federal Circuit appeal no. 2016-2121, decided July 9, 2018; U.S. Supreme Court docket no. 18-600), the Court of Appeals for the Federal Circuit upheld the district court’s summary judgment excluding 98.8% of the unit sales of the accused product from the calculation of damages, because those units were not sold or offered for sale in the United States. Texas Advanced Optoelectronic Solutions, Inc. (TAOS) has now filed a petition for a writ of certiorari in the U.S. Supreme Court. TAOS is asking the Supreme Court to consider whether an “offer to sell” under Section 271(a) of the Patent Law occurs where the offer is actually made or where the offer contemplates that the proposed sale will take place. TAOS contends that, for direct infringement, the statutory construction of Section 271(a) merely requires that an offer to sell a patented invention occur within the United States, whereas the Federal Circuit has held that the location of the future sale contemplated by the offer must be within the United States. Therefore, TAOS submits that the Federal Circuit improperly excluded the 98.8% of sales of the accused products, because while those products were ultimately delivered to customers outside of the United States, the offer to sell the products was made domestically in California. TAOS points out that the Federal Circuit’s interpretation of Section 271(a) would allow domestic entities to avoid infringement by negotiating sales of an infringing product within the United States and arranging for the actual sales to occur abroad. TAOS also contends that the Federal Circuit’s interpretation could result in extraterritorial application of Section 271(a), because an offer made abroad would constitute infringement so long as the offer contemplated that the sale would be made in United States, even if no such sale in the United States was ultimately made.
A copy of the Texas Advanced Optoelectronic Solutions decision may be accessed at http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/16-2121.Opinion.7-9-2018.pdf, and a copy of the Supreme Court petition may be accessed at https://www.supremecourt.gov/DocketPDF/18/18-600/71045/20181105143431591_TAOS%20Cert%20Petition.pdf.
Prior Art Reference Dates under 35 U.S.C. 102(e)
In Ariosa Diagnostics, Inc. v. Illumina, Inc. (Federal Circuit appeal no. 2016-2388, decided December 11, 2017; U.S. Supreme Court docket no. 18-109), Ariosa filed a petition for inter partes review (IPR) challenging the validity of Illumina’s U.S. Patent No. 7,955,794 (“the ‘794 patent”). The earliest priority date of the ‘794 patent is September 21, 2000. The PTAB instituted the IPR based upon a published patent application (known as the “Fan reference”) which claimed priority to U.S. provisional application no. 60/180,810 (“the ‘810 application) having a filing date of February 7, 2000, predating the priority date of the ‘794 patent. The PTAB issued a final written decision in which it held that Ariosa had not met its burden to show that the Fan reference is prior art because Ariosa had not shown that the claims of the ‘794 patent were supported by the ‘810 application. The PTAB relied upon the Federal Circuit’s recent decision in Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015), in which the Federal Circuit held that in determining a prior art reference date under 35 U.S.C. 102(e)(2), a patent is only entitled to claim the benefit of its provisional application filing date if the disclosure of the provisional provides adequate support for the claims in the patent. Ariosa appealed the PTAB’s final written decision to the Federal Circuit, and the Federal Circuit affirmed the PTAB’s decision. Also, in the interim, the Federal Circuit issued its opinion in Amgen Inc. v. Sanofi, 872 F.3d 1367 (Fed. Cir. 2017), which extended the Dynamic Drinkware decision to published patent applications. Ariosa subsequently filed a petition for a writ of certiorari in the U.S. Supreme Court. Ariosa is now asking the Supreme Court to consider whether a disclosure in a published patent application and an earlier priority application become prior art as of the priority application’s filing date, regardless of whether or not the priority application provides support for the claims of the published application.
A copy of the Ariosa Supreme Court petition may be accessed at https://www.supremecourt.gov/DocketPDF/18/18-109/53024/20180711205820215_18-xxxx%20-%20Ariosa%20Diagnostics%20Inc.%20v.%20Illumina%20Inc.%20-%20cert.%20petition.pdf.
The Limiting Effect of Subject Matter Described in Background
In Cave Consulting Group, LLC v. OptumInsight, Inc. (Federal Circuit appeal no. 2017-1060, decided March 21, 2018; U.S. Supreme Court docket no. 18-590), the Federal Circuit reversed the district court’s claim construction of the term “weighted episode of care statistics.” Specifically, the Federal Circuit found that this disputed term included indirect standardization but did not include direct standardization because the disclosure of the invention only describes a method that employs indirect standardization, while the description of the prior art methods in the background section includes direct standardization. Thus, the patent’s distinguishing its method that uses indirect standardization from the prior art methods that use direct standardization affirmatively limited the scope of the “weighted” feature of the invention to indirect standardization. CCGroup subsequently filed a petition for a writ of certiorari in the U.S. Supreme Court. CCGroup is now asking the Supreme Court to consider whether a court may construe a patent claim in a way that contradicts its plain and ordinary meaning by relying on statements in the specification that do not constitute a clear disavowal of subject matter.
A copy of the CCGroup decision may be accessed at http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/17-1060.Opinion.3-20-2018.1.PDF, and a copy of the Supreme Court petition may be accessed at https://www.supremecourt.gov/DocketPDF/18/18-590/70853/20181102114930196_Cave%20Consulting%20v.%20Optuminsight%20Inc.%20Petition%20for%20Writ.pdf.
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