Recently in Federal Circuit Category

Image Processing Patent Held To Be An Abstract Idea Under Alice Corp.

July 18, 2014

Digitech Image Technologies ("Digitech") asserted U.S. Patent No. 6,128,415, directed to the generation and use of device profiles for digital image processing system against numerous defendants, including Xerox and Fujifilm Corporation. Digitech appealed the district court's finding on summary judgment that the asserted claims were invalid under 35 U.S.C. §101. Specifically, Digitech argued that the district court erred in finding (1) that the device profile claims are directed to a collection of data that lacks tangible or physical properties and (2) that the asserted method claims encompass an abstract idea not tied to a specific machine or apparatus. The Federal Circuit affirmed the decision of the district court.

The '415 patent was aimed at reducing distortion of an image's color and spatial properties caused by imaging devices (e.g. digital cameras, TVs, printers) due to the fact that such devices differ in the range of colors and spatial information that they utilize. According to the court, independent claims 1 and 26 described a device profile as "a collection of information; specifically, a description of a device dependent transformation of spatial and color information":

1. A device profile for describing properties of a device in a digital image reproduction system to capture, transform or render an image, said device profile comprising: first data for describing a device de-pendent transformation of color information content of the image to a device independent color space; and second data for describing a device de-pendent transformation of spatial in-formation content of the image in said device independent color space.

26. A device profile for describing properties of a device in a digital image reproduction system to capture, transform or render an image, said device profile comprising data for describing a device dependent transformation of spatial information content of the image to a device independent color space, wherein through use of spatial stimuli and device response for said device, said data is represented by spatial characteristic functions.

Digitech argued that the claimed "device profile" was patent eligible subject matter under section 101 because it was a tangible object that was an "integral part of the design and calibration of a processor device within a digital image processing system." In particular, Digitech argued that the device profile is "hardware or software within a digital image processing system" and exists as a tag file appended to a digital image. The court disagreed, finding that Digitech's position was unsupported by the claim language, which did not describe the device profile as a tag or any other embodiment of hardware or software ("[T]he claims encompass all embodiments of the information contained in the device profile, regardless of the physical process through which this information is obtained or the physical medium in which it is stored."). Thus, the claimed device profile was viewed as a collection of information or data in an "ethereal, non-physical form" that was ineligible subject matter under section 101.

Similarly, the patent's method claim for generating a device profile was found to be ineligible subject matter because it was directed at an abstract process of organizing information through mathematical correlations (i.e. combining two data sets into a single data set, the device profile) that was not tied to a specific structure or machine and "did not require input from a physical device." The court noted the established principle that claims falling within one of the four subject matter categories (e.g. process) may nevertheless be ineligible if they encompass laws of nature, physical phenomena, or abstract ideas and the Supreme Court's recent affirmation that fundamental concepts by themselves, are ineligible abstract ideas. Citing Diamond v. Chakrabarty, 447 U.S. at 309 and Alice Corp. v. CLS Bank Int'l, 573 U.S. ___, No. 13-298, slip op. While Alice recognized that a claim may be eligible if it includes additional inventive features beyond just the abstract idea, recitation of an abstract idea does not become patent eligible "merely by adding the words 'apply it'." Bancorp Servs., LLC v. Sun Life Assurance Co. of Can., 687 F.3d 1266, 1276 (Fed. Cir. 2012).

The court's reasoning suggests that the patent could have been in compliance with section 101 had its claims been expressly tied to an image processor and its use of the "device profile" to capture, transform or render the digital image. Instead, the claims only recited the manipulation of existing data (i.e., measured chromatic stimuli, spatial stimuli, and device response characteristic functions) into a new form (device profile). The claims' reference to a "digital image reproduction system" in the preamble was found to be insufficient for imparting such limitations. Citing Bicon, Inc. v. Strau-mann Co., 441 F.3d 945, 952 (Fed. Cir. 2006) (holding that the preamble does not limit claim scope if it "merely states the purpose or intended use of an invention.") The claims were simply too broad and lacked the requisite tangible/ physical limitations to go beyond abstract mathematical algorithms.

Federal Circuit Rules that Conduct Before Patent-Issuance Can Provide 'Case or Controversy' for Declaratory Relief

March 17, 2014

Accused infringers have long relied on the Declaratory Judgment Act ("the Act") to bring actions against patent owners to clear any cloud over their accused business activities. To that end, the Act has served as a powerful tool. Accused infringers do not even have to wait to be named as a defendant in an infringement lawsuit before bringing their own cause of action, as a plaintiff, for declaratory relief that the patent-at-issue is invalid, unenforceable, or not infringed. The Act, however, requires that the party seeking declaratory relief establish that a "case or controversy" exist from the moment it files its action. Although many courts, including the Supreme Court, have provided guidance as to where to draw the line above which a sufficient case or controversy exits, that line is still a murky one. What actions must a patent owner take--and when must it take those actions--to trigger the requisite case or controversy allowing an accused infringer to file its action first?

Well, the Federal Circuit recently added further guidance on the issue. In Danisco US, Inc., v. Novozymes A/S, a unanimous panel of the Federal Circuit reversed a district court and held that the patent holder's conduct prior to the issuance of the patent can form a sufficient case or controversy for declaratory relief.

The relationship between the parties in the case provides important background. The declaratory judgment plaintiff, Danisco, and defendant, Novozymes, compete to develop and supply Rapid Starch Liquefaction ("RSL") products. Since about 2001, Novozymes had sued Danisco for patent infringement numerous times. In one of those suits, Novozymes amended a pending patent application to claim one of Danisco's new products, then sued Danisco on the same day the patent issued.

In 2011, the PTO issued to Danisco a patent that claimed an enzyme that is the active ingredient in Danisco's RSL products. Shortly after the issuance of Danisco's patent, Novozymes again amended one of its then-pending patent applications to claim what it believed to be the same active ingredient claimed in the Danisco patent and used in Danisco's products. Because Novozymes's patent application allegedly had an earlier priority date, Novozymes requested that the PTO initiate an interference in order to rule that Novozymes was the party entitled to a patent claim covering the subject matter. The PTO examiner, however, rejected Novozymes's request on the grounds that, under his claim interpretation, Danisco's issued claim did not meet some of the limitations of Novozymes's amended claims and, therefore, no interferences was necessary or proper. In response, Novozymes disagreed and filed a request for continued examination, challenging the examiner's conclusions regarding Danisco's "interfering [] patent." For his part, the examiner rejected the request. Later, although under no regulatory obligation to do so, Novozymes submitted public comments to the PTO to, in its words, "clarify [for] the record," its belief that the parties' respective claims covered the same subject matter. Novozymes further commented that it refused to "acquiesce" to or otherwise be "estopped" by what it deemed to be the examiner's erroneous and "overly narrow" view of the amended claim in Novozymes's patent application.

On the same day the Novozymes application issued as a patent, Danisco filed declaratory judgment actions in federal district court that its products, including the active ingredient, did not infringe the Novozymes patent and that the Novozymes patent was invalid. Danisco also asserted that, to the extent the parties' respective patent claims covered the same subject matter, Danisco's patent had priority. Novozymes moved to dismiss Danisco's action for lack of the case or controversy required to bring a declaratory judgment action.

The District Court for the Northern District of California granted the motion to dismiss. Although the district court acknowledged that, based on past behavior, the Novozymes patent presented a substantial risk to Danisco, it nevertheless found that a case or controversy did not exist as of the day Danisco filed its action for declaratory relief. Significantly, the district court stated that "there is no precedent for finding jurisdiction based on such pre-patent issuance events alone . . .." The district court further found that Danisco was missing an "affirmative act of enforcement" or "implied enforcement threat" by Novozymes because "pre-issuance conduct" could not satisfy that requirement.

The Federal Circuit disagreed. It ruled that there is no bright-line requirement as to whether Novozymes had affirmatively or impliedly accused Danisco of infringing its issued patent. To the contrary, the Supreme Court has never held that a declaratory judgment defendant must be preparing to file a suit before a case or controversy exits. Rather, the Court has required only that the "dispute be 'definite and concrete, touching the legal relations of parties having adverse legal interests'; and that it be 'real and substantial' and 'admi[t] of specific relief through a decree of a conclusive character, as distinguished from an opinion advising what the law would be upon a hypothetical state of facts.'"

The proper question, instead, is whether, under the totality of the circumstances, Danisco has demonstrated a "substantial risk" that the harm will occur. That question, the Federal Circuit held, must be answered in the affirmative in light of the relevant history between the parties. Specifically, Novozymes had a history of suing Danisco for infringement of its patents. In some of those cases, the Novozymes patents included claims that were amended (in the application stage) to specifically cover Danisco products. Here, Novozymes amended a claim in an application with the intention of specifically covering the active ingredient in Danisco's products and also triggering an interference with issued Danisco patent claims. And when Novozymes's actions were met with rejection by the PTO, Novozymes made clear that it would not "acquiesce" to, or be "estopped" by, the PTO's conclusions.

At bottom, the Federal Circuit held, Novozymes's actions put Danisco in the position of either abandoning its RSL products or running the risk of again being sued for infringement by Novozymes. That is "precisely the type of situation that the Declaratory Judgment Act was intended to remedy." Thus, the district court erred by dismissing the action because "the totality of the circumstances shows that Novozymes's posturing put Danisco in a position of either pursuing arguably illegal behavior, i.e., infringement, or abandoning that which it claims a right to do, i.e., make and sell the RSL products that are the embodiments of [its] patent. . .."

Patent owners and their respective infringement targets should continue to monitor developments in the nuanced caselaw regarding declaratory judgment jurisdiction. For now, the Danisco decision provides helpful insight into the delicate balance of pre-litigation activity with the sole effect of making patent rights known, on the one hand, and activity has the effect of creating the requisite case or controversy for declaratory relief, on the other hand.

Federal Circuit Reaffirms De Novo Standard of Review for Claim Construction

February 26, 2014

In a long-awaited decision, the Federal Circuit ruled en banc to uphold the the de novo standard for appellate review of claim construction issues, which was previously established in another en banc decision, Cybor Corp. v. FAS Technologies, Inc. 138 F.3d 1448 (Fed. Cir. 1998).

The facts and procedural background of the case presented a prime opportunity for the Federal Circuit to revisit the question of what deference, if any, it should give to a district court's claim constructions. During the district court proceedings, the parties disputed the meaning of "voltage means." As per usual, the district court analyzed the patent's intrinsic evidence relating to the claim term. However, the district court also accepted testimony from expert witnesses and the inventor. After analyzing the different types of evidence, the district court sided with the patentee and ruled that the term should be given its plain meaning, as opposed to a more specific meaning as a means-plus-function term.

Applying the non-deferential Cybor standard of review, a panel from the Federal Circuit reversed the district court's claim construction. The panel held that the term is a means-plus-function term and required disclosure of sufficient corresponding structure in the patent specification. Based on that conclusion, the panel invalidated the claims for indefiniteness. The patentee requested rehearing, arguing that the interpretation of documents is a fundamentally factual exercise and, therefore, a district court's interpretation of patent claims requires some deference on appeal. In this case, the patentee argued that, on a deferential review, the district court would not, or should not, have been reversed. The Federal Circuit undertook rehearing en banc for the purpose of reconsidering the standard of appellate review of claim construction.

In a sharply divided decision, the Federal Circuit confirmed the de novo standard for review of claim construction rulings, whereby the scope of the patent grant is reviewed as a matter of law. In the decision, authored by Judge Newman, the majority held that "[a]fter fifteen years of experience with Cybor, we conclude that the court should retain plenary review of claim construction, thereby providing national uniformity, consistency, and finality to the meaning and scope of patent claims." Moreover, reversal of Cybor would require a departure from stare decisis. That, the majority held, requires Cybor to be "unworkable," or subsequent cases to "undermine its doctrinal underpinnings," or "a considerable body of new experience" that requires a change in law. According to the majority, none of these conditions were met.

In a dissenting opinion, judges O'Malley, Rader, Reyna, and Wallach stated that the majority decision refuses to acknowledge that claim construction, at times, requires a district court to resolve questions of fact. By so doing, the majority opinion puts itself at odds with Rule 52(a)(6) of the Federal Rules of Civil Procedure, which instructs that, on appeal, "findings of fact ... must not be set aside unless clearly erroneous." Moreover, legitimate criticisms and debate over Cybor have been widespread since it issued, and "no reasoned application of stare decisis" supports the majority's conclusion that the Federal Circuit cannot, or should not, reverse Cybor.

District court rulings on claim construction (and appellate review of those rulings) arguably are the most important events in patent litigation. Accordingly, courts, practitioners, and commentators should be eager to see if Lighting Ballast is heard by the Supreme Court. Until then, the Federal Circuit likely will continue to vacate or modify claim construction rulings at a relatively high rate, and the debate over the standard of review likely will continue.

Claim for Induced Infringement Survives after Akamai Where Inference of Intent to Induce Infringement Was "not only reasonable; it is almost inescapable"

March 11, 2013

Plaintiffs Transunion Intelligence LLC and Trans Union LLC (collectively, "Transunion") filed a patent infringement action against Search America over two patents that are directed to a computer-implemented method and software that is used to access a person's eligibility to receive financial assistance for healthcare services. Transunion asserted both direct infringement and inducing infringement of one of the patents-in-suit.

Search America moved to dismiss the inducing infringement claim, asserting that Transunion had failed to plead that Search America had the specific intent to infringe the patent-in-suit. The district court disagreed. "As discussed at he hearing on Search America's motion, however, the Court believes that Transunion has pleaded a plausible claim of induced infringement against Search America. In its complaint, Transunion pleads that Search America knew of the '937 patent, and Transunion pleads specific facts in support of that allegation - namely, that Search America studied the '937 patent to distinguish it from Search America's own patent application. Fourth Am. Compl. para. 11. Transunion also alleges that Search America performed all but one of the steps of the '937 patent and that either Search America or a customer working with Search America performed the remaining step - namely, the inputting of patient data. Fourth Am. Compl. Ex. B at 2. Transunion further alleges that Search America's customers performed the 'inputting' step by populating an on-line form created, controlled, and provided by Search America. Id."

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Federal Circuit's Akamai Decision Begins to Impact Current Cases as Court Grants Leave to Amend Inducing Infringement Allegations

November 23, 2012

With the Federal Circuit's recent decision in Akamai Techs., Inc. v. Limelight Networks, Inc., 2012 U.S. App. LEXIS 18532 (Fed. Cir. Aug. 31, 2012), the elements for proving inducing infringement changed significantly. As a result, we can expect that a number of plaintiffs in pending patent cases will seek to amend their complaints to take advantage of the new standard. Whether amendment will be granted or not will vary depending on the stage of the case.

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Apple v. Samsung: The Federal Circuit Frees the Galaxy Nexus from Siri's Injunctive Grip

October 12, 2012

In June 2012, the United States District Court for the Northern District of California enjoined Samsung's Galaxy Nexus smartphone because it likely infringed Apple's 8,086,604 patent (the "'604 patent") and because Apple was likely to suffer irreparable harm in the absence of an injunction. Apple prevailed at the district court level based on claim 6 of the '604 patent -- which is practiced by Siri, Apple's popular voice search companion.

Independent claim 6 is directed to an apparatus for "unified search" using heuristic modules to search multiple data storage locations. As explained by the Federal Circuit, "[u]nified search refers to the ability to access information on more than one data storage location through a single interface. For example, a device equipped with unified search allows the user to search the local memory of the device as well as the Internet by entering a single search query."

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Federal Circuit Holds That Party Seeking Declaratory Judgment of Non-Infringement Bears the Burden to Prove Non-Infringement

September 20, 2012

The U.S. Court of Appeals for the Federal Circuit vacated and remanded a Delaware court's finding that Medtronic Inc. did not infringe Boston Scientific patents relating to cardiac rhythm therapy (CRT) devices known as implantable cardioverter defibrillators (ICDs). Medtronic, Inc. v. Boston Scientific Corp., No. 2011-1313 (Fed. Cir. September 18, 2012). The Federal Circuit found that the lower court had improperly placed the burden of showing non-infringement on the patent owner instead of on the declaratory judgment plaintiff-licensee.

The patents at issue (RE38,119 and RE39,897) were owned by Mirowski Family Ventures LLC (MFV) and exclusively licensed to Guidant Corp., which was acquired by Boston Scientific Inc. Medtronic had a sublicense to the '119 patent, which allowed it to challenge its validity, enforceability and scope via a declaratory judgment action. As per the sublicense, Medtronic began paying royalties. It also challenged the patent's validity. A Litigation Tolling Agreement (LTA) was entered, which stayed litigation and called for MFV to identify Medtronic products that it believed were covered by the '119 patent. Under the LTA, if Medtronic disagreed with the list of patented products it had the right to retain the license but was required to seek declaratory relief of non-infringement in the United States District Court for the District of Delaware. The fact that Medtronic remained a licensee meant that MFV could not counterclaim for patent infringement. Medtronic did disagree with MFV's listing of patented products, thus giving rise to the lower court action.

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Apple v. Samsung: After Remand from the Federal Circuit, Apple Wins Preliminary Injunction Against Samsung

July 5, 2012

Last December, the district court in the Northern District of California denied Apple's motion for a preliminary injunction. Apple had moved for the preliminary injunction based on alleged infringement of three design patents and one utility patent. After the denial of the preliminary injunction motion, Apple appealed the order to the Federal Circuit. The Federal Circuit affirmed most of the district court's order denying the preliminary injunction but remanded to the district court for further proceedings on one of the design patents. On remand, the Federal Circuit directed that the district court consider the balance of hardships and whether the public interest favored an injunction with respect to the one design patent.

The district court had found that Apple had established that the Samsung Galaxy Tab 10.1 likely infringed the design patent and that Apple was likely to suffer irreparable harm as a result of the infringing conduct. But the district court denied the motion because it found that the design patent was likely invalid based on several prior art references. The Federal Circuit upheld the findings of infringement and irreparable harm, but reversed the district court's finding of invalidity as to one design patent.

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Thereasense Round Two: Even After "Seismic Shift" in the Law of Inequitable Conduct, District Court Applies Federal Circuit's New Standard and Still Finds Patent Invalid Due to Inequitable Conduct

April 13, 2012

On remand to the district court after the Federal Circuit's en banc decision in Therasense v. Becton, Dickinson and Co., the district court reviewed the procedural posture of the case and the landmark Therasense decision. The district court noted that "Therasense worked a seismic shift in the law of inequitable conduct," and particularly that "materiality would henceforth use a but-for definition, meaning that submission of the withheld item would have led to a rejection." The district court also analyzed the decision including the closeness of the vote on the new standard, stating that "[d]espite the closeness of the decision and the importance of the question to our patent system and national economy, no petition for certiorari was filed in the Supreme Court."

Before applying the facts to the new standard articulated by the Federal Circuit, the district court noted the Federal Circuit's instructions on remand (1) that the "district court should determine whether there is clear an convincing evidence demonstrating that Sanghera or Pope knew of the EPO brief, knew of their materiality, and made the conscious decision not to disclose them in order to deceive the PTO" and (2) the "district court should determine whether the PTO would have granted the patent but for Abbott's failure to disclose the EPO briefs. ..."

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Federal Circuit Confirms That Method of Deferring Taxes Is Not Patentable

March 8, 2012

Defendant American Master Lease LLC ("AML") appealed the decision of Judge Guilford of the Central District of California holding that all claims of U.S. Patent No. 6, 292,788 were invalid for failing to meet the subject matter eligibility requirements of Section 101 of the Patent Statute. The Federal Circuit (in a panel consisting of Circuit Judges Prost, Schall and Moore) affirmed the invalidity of the claims based on the district court's pre-In re Bilski application of the machine or transformation test.

The claims at issue relate to an investment tool to enable property owners to buy and sell property without incurring tax liability pursuant to 26 U.S.C. § 1031 ("1031 Exchange"). All claims in the '788 patent are method claims, with claim 1 being representative:

1. A method of creating a real estate investment instrument adapted for performing tax-deferred exchanges comprising:

aggregating real property to form a real estate portfolio;

encumbering the property in the real estate portfolio with a master agreement; and

creating a plurality of deedshares by dividing title in the real estate portfolio into a plurality of tenant-in-common deeds of at least one predetermined denomination, each of the plurality of deedshares subject to a provision in the master agreement for reaggregating the plurality of tenant-in-common deeds after a specified interval.

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Plaintiff's Motion for Summary Judgment of No Inequitable Conduct Granted Where Merely Failing to Provide References Insufficient to Establish Specific Intent to Deceive Patent and Trademark Office

January 2, 2012

The parties filed cross-motions for summary on the issue of inequitable conduct. The district court had previously denied summary judgment motions on the issue of inequitable conduct but that was prior to the Federal Circuit's decision in Therasense, Inc. v. Becton Dickinson and Co., 649 F.3d 1276 (Fed. Circ. 2011) (en banc). The district court granted the parties request to re-brief the issue in light of Therasense.

The plaintiff asserted on its renewed summary judgment motion that there was insufficient evidence of specific intent to deceive the Patent and Trademark Office ("PTO"). The defendant did not dispute that there was no direct evidence of specific intent in the case. Instead, the defendant relied on circumstantial evidence, arguing that the only logical inference from the evidence is one of intent to deceive the PTO. To make this argument, the defendant relied on the fact that two of the inventors knew of two significant references and failed to disclose them to the PTO. The district court noted, relying on Therasense, that "[p]roving that the applicant knew of a reference, should have known of its materiality, and decided not to submit it to the PTO does not prove specific intent to deceive." 649 F.3d at 1290. Based on this quote from Therasense, the district court concluded that the mere fact that the inventors failed to disclose these references was insufficient to defeat summary judgment in favor of the plaintiff.

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Sanctions Awarded Against Teva Pharmaceuticals for Continuing to Press Inequitable Conduct Defense and Counterclaim After Therasense

October 24, 2011

Pfizer filed a patent infringement action against Teva Pharmaceuticals ("Teva") over a patent that claims the use of certain chemical compounds claimed as a method to treat erectile dysfunction. During the case, Teva filed a motion to amend its answer and counterclaims to alleged a defense and counterclaim for inequitable conduct. The district court granted the motion, but noted that it was a close case.

Several months later, Teva moved to amend its answer and counterclaim to change its allegations supporting the inequitable conduct claim. The district court denied the requested amendment on the ground of prejudice and futility because the amendment was late and would prejudice Pfizer and the individuals named in the proposed amendment and because the amendment failed to make any plausible showing of but-for materiality.

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Methods Claims for E-Mail Processing Survive a Challenge to Patentability Under Bilski

October 5, 2011

Plaintiff, Innova Patent Licensing, LLC ("Innova") filed a patent infringement action against Alcatel-Lucent Holdings ("Alcatel") for a patent claiming methods for using a mail processing program to scan electronic messages to obtain additional information. Alcatel challenged the patent on the ground that it did not claim eligible subject matter under 35 U.S.C. § 101 and moved to dismiss.

The court stated that "[u]nder the patent laws, certain broad categories of subject matter are eligible for patent protection," and cited the language from Section 101 (" Whoever invents or discovers any new and useful process, machine, manufacture or composition of matter, or a new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title") and the United States Supreme Court's decision in Bilski v. Kappos, 130 S. Ct. 3218, 3225 (2010) ("in choosing such expansive terms modified by the comprehensive 'any,' Congress plainly contemplated that the patent laws would be given wide scope").

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Inequitable Conduct Claim Survives Motion to Dismiss Because Allegations Permitted a Plausible Inference of Intent to Deceive

September 28, 2011

Plaintiff AlmondNet, Inc. filed a patent infringement action against Microsoft Corporation based on four patents pertaining to Internet advertising. Microsoft filed several affirmative defenses and counterclaims against AlmondNet, including a defense and counterclaim that AlmondNet engaged in inequitable conduct before the PTO by failing to disclose three articles related to Internet advertising and three existing Internet advertising systems. AlmondNet moved to dismiss the inequitable conduct counterclaim and the district court granted the motion with leave to amend to plead inequitable conduct with particularity.

Microsoft subsequently amended its answer and counterclaim and AlmondNet moved to strike the inequitable conduct defense and to dismiss Microsoft's counterclaim for inequitable conduct. The district court determined that Microsoft's amended pleading was sufficient and denied the motion.

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TiVo Raises Claims of Inequitable Conduct That Survive Dismissal

September 23, 2011

TiVo filed a patent infringement action against Verizon and Verizon counterclaimed alleging that TiVo infringed six of its patents. TiVo raised inequitable conduct counterclaims against certain of the Verizon patents. Verizon filed a motion to dismiss, which the district court granted under the principles set forth in Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312 (Fed. Cir. 2009), but permitted TiVo to amend its pleading. TiVo amended its pleadings and Verizon renewed its motion to dismiss.

The district court began its analysis by noting that the Federal Circuit's decision in Therasense, Inc. v. Becton, Dickinson and Company, 2011 WL 2028255 (Fed. Cir. May 25, 2011) was decided after the parties had completed their briefing on the motion. Although Therasense changed the standard for proving inequitable conduct, the district court stated that Thereasense did not address the pleading standard because it was decided based on the review of a bench trial. Accordingly, Exergen remains the leading authority on the pleading standard for inequitable conduct. "Exergen held that for 'pleading inequitable conduct in patent cases, Rule 9(b) requires identification of the specific who, what, when, where, and how of the material misrepresentation or omission committed before the PTO.'"

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