Articles Posted in Litigation in the Patent Office

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Cisco moved to dismiss the plaintiff’s patent infringement complaint pre-lawsuit willfulness allegations. As the district court explained, the allegations in the first amended complaint asserted: “(i) that an investor of both the owner of the ‘951 Patent and of OpenDNS informed unspecified employees or agents of OpenDNS that certain OpenDNS technology infringed the ‘951Patent (ii) that defendant acquired OpenDNS in 2015 and (iii) that defendant incorporated the allegedly infringing OpenDNS technology into the Accused Security Products.”

To analyze whether the allegations were sufficient, the district court explained that “[a]t the motion to dismiss stage, courts have concluded that a plaintiff must “plead facts showing willfulness” in order to avoid dismissal of a willful infringement claim. Cont? Circuits LLC v. Intel Corp., No. CV16-2026 PHX DGC, 2017 WL 2651709, at *7 (D. Ariz. June 19, 2017) (collecting cases). In this respect, the complaint must allege, as a “prerequisite” to a willfulness claim, that the defendant had “[k]nowledge of the patent alleged to be willfully infringed.” See WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1341 (Fed. Cir. 2016). Yet, a plaintiff has not plausibly alleged willful infringement if he alleges only that “the evidence shows that the infringer knew about the patent and nothing more.” Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923, 1936 (2016) (Breyer, J., concurring). As courts have sensibly concluded, the complaint must also allege facts that support a plausible inference that the defendant’s behavior was “egregious,” such as facts showing that defendant was put on notice or was otherwise subjectively aware of the risk that its conduct constituted infringement. See, e.g., Puget Bioventures, LLC v. Biomet Orthopedics LLC, 325 F. Supp. 3d 899, 911 (N.D. Ind. 2018); Finjan, Inc. v. Cisco Systems, Inc., No. 17-CV-00072-BLF, 2018 WL 7131650, at *4-5 (N.D. Cal. Feb. 6, 2018) (collecting cases).”

After reviewing the relevant case law, the district court noted that “[i]t is a close call whether the facts alleged in the First Amended Complaint are sufficient to support a plausible inference that, prior to the initiation of the instant infringement suit, defendant (i) knew of the ‘951 Patent and (ii) was subjectively aware of the risk that its conduct infringed the ‘951 Patent. In its response to defendant’s motion, plaintiff argues that OpenDNS’s knowledge of the ‘951 Patent and awareness of the infringing nature of its technology are attributable to defendant by virtue of defendant’s acquisition of OpenDNS in 2015.”

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The plaintiff Dodocase VR, Inc. filed a motion for a temporary restraining order or preliminary injunction against Defendants MerchSource, LLC (“MerchSource”) and ThreeSixty Brands Group LLC (“ThreeSixty”) (together, “Defendants”) requesting that the court order the Defendants to withdraw certain petitions filed with the Patent Trial and Appeal Board (“PTAB Petitions”).

As explained by the district court, MerchSource designs, sources, and distributes a wide-range of consumer goods, including toys, electronics, and home decor, to large retailers. The plaintiff alleged that MerchSources sells, manufactures, designs, and/or imports certain products under the brand name “Sharper Image” that infringe the Dodocase Patents. In June 2016, MerchSource contacted the plaintiff to obtain a license to the ‘075 Patent, and in October 2016, MerchSource and the plaintiff entered into a Master License Agreement regarding the Dodocase Patents (“MLA”). In June 2017, MerchSource contacted the plaintiff to express dissatisfaction with the MLA and told the plaintiff that MerchSource would “have no choice but to impute a zero percent royalty rate under the [MLA] in order to be similarly advantaged.” MerchSource also later told the plaintiff that it reviewed the claims in the patent application for what would later become the ‘184 Patent and determined that the relevant claims were invalid, so it would not pay any royalties on the products sold under that patent. The plaintiff responded that refusal to pay royalties despite its continued manufacture, use, sale, and/or offer for sale of products using the Dodocase Patents constituted a breach of the MLA.

Defendants then filed three separate PTAB Petitions, challenging each of the three Dodocase Patents, on January 15, 2018. Shortly thereafter, the defendants answered the complaint and filed a counterclaim that sought declaratory judgment that the patents-in-suit are invalid for the reasons set forth in the PTAB Petitions.

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In Affinity Labs of Texas, LLC v. Ford Motor Co., Affinity moved in limine to exclude any reference to the decision of the PTAB regarding an inter partes reexamination filed by a defendant in an earlier case involving a related patent, i.e.., one stemming from the same application and thus sharing the same specification. In the prior decision, the PTAB found that the specification lacked written description for the term “soft button.” Affinity argued that the PTAB’s decision should be excluded because it conflicted with a prior decision of the district court on the same issue.
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In the Ariosa Diagnostics v. ISIS Innovation Limited inter partes review, the PTAB set for the guidelines for taking depositions in a foreign language as required by 37 C.F.R. § 42.53(c). In addition to the requirement of 42.53(c) that the party calling the witness must initiate a conference with the Board at least five days before the deposition, the Board directed the parties to the following guidelines:

In the guidelines below, “party” refers to the party proffering the witness, and “opponent” refers to the party cross-examining the witness.
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In Masimo Corporation v. Philips Electronic North America Corporation, et al., the Philips Defendants moved for leave to amend their answer to add a defense of inequitable conduct based on Masimo’s alleged inequitable conduct during the ex parte reexamination of the patent-in-suit. Masimo opposed the amendment on the grounds that it was futile and unduly prejudicial. As summarized below, the Court sided with Philips and allowed the amendment and related discovery.

After setting forth the good cause standard for leave to amend after a deadline in the scheduling order, the Court recited the substantive elements of inequitable conduct required to plead this defense:

“(l) an individual associated with the filing and prosecution of a patent application made an affirmative misrepresentation of a material fact, failed to disclose material information, or submitted false material information; and (2) the individual did so with a specific intent to deceive the PTO.” Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1327 n.3 (Fed. Cir. 2009). “[I]n 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.” Id. at 1327. Generally, the materiality required to establish inequitable conduct is “but-for materiality.” Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1291 (Fed. Cir. 2011). As for the intent prong, Rule 9(b) states that “[m]alice, intent, knowledge, and other conditions of mind of a person may be averred generally.” The relevant “conditions of mind” for inequitable conduct include: “(l) knowledge of the withheld material information or of the falsity of the material misrepresentation, and (2) specific intent to deceive the PTO.” Exergen, 575 F.3d at 1327.

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In IPR2014-00954, the Patent Trial and Appeals Board (“PTAB”) (A.P.J.s Petravick, Deshpande, and Clements) issued a decision regarding the proper identification of lead and backup counsel listed in the powers of attorneys in cases involving multiple parties constituting a single Petitioner. The Board explained:

According to 37 C.F.R. § 42.2, “Petitioner” means “the party filing a petition requesting that a trial be instituted.” In circumstances not involving a motion for joinder or consolidation of separate proceedings, for each “petition” there is but a single party filing the petition, no matter how many companies are listed as petitioner or petitioners and how many companies are identified as real parties-in-interest. Thus, before the Board, the separate companies constitute and stand in the shoes of a single “Petitioner.” Because the eleven companies constitute, collectively, a single party, they must speak with a single voice, both in writing and oral representation.
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Petitioner, BlackBerry Corporation and BlackBerry Limited (“Blackberry”), filed a petition on October 30, 2012, for an inter partes review (“IPR”) of claims 1-12 of US Patent No. 6,871,048 (“the ‟048 patent”). On March 18, 2013, the Board instituted trial on claims 1-12 of the ‟048 patent based on all grounds of unpatentability alleged in the petition.

After institution of trial, Patent Owner, MobileMedia Ideas LLC (“MobileMedia”), filed a patent owner response, Blackberry filed a reply, and an oral hearing was held on October 18, 2013. On December 16, 2013, the parties filed a joint motion to terminate the IPR proceeding, which the PTAB only granted in part, terminating the proceeding with respect to Blackberry, but not with respect to MobileMedia.
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In a pair of recent decisions, the Patent Trial and Appeals Board further clarified the requirements of filing a motion to amend the claims. These recent decisions supplement the Board’s recent decisions in IPR2012-00027 (Paper No. 26) and IPR2012-00005 (Paper No. 27) in which the Board provided guidance regarding the filing of motions to amend claims.

On June 26, in Oracle Corporation v. Clouding IP, LLC, IPR2013-00099, the Board (APJs Chang, Kim and Elluru) issued a decision following the patent owner’s intention to file a motion to amend the claims. In the telephone conference on the patent owner’s motion, the Board noted “that Clouding would have to account for the level of ordinary skill in the art and the basic skill set possessed by one with ordinary skill, and may not limit its consideration to just the references over which this trial was instituted.” In other words, in its motion the patent owner must demonstrate that the proposed amended claims address the grounds of rejection in light of the level of ordinary skill of a person skilled in the art as well as over the prior art, including prior art that the Board did not rely upon in granting the petition.

The Board also noted that “when indicating written description support in the specification, [the patent owner] should make reference to the disclosure in the original applications as filed, rather than to the portions of the issued patent, and provide sufficient explanation in addition to citations to the specification.”

Finally, the Board explained that “should an expert declaration be submitted in support of a motion to amend claims, the motion itself should set forth the arguments and explanations with appropriate pinpoint citations to the expert declarations, rather than just incorporating by reference the expert declarations.”

In Synopsys, Inc. v. Mentor Graphics Corporation, IPR1012-00042, the Board (APJs Blankenship, Medley and Bisk) issued a decision on the patent owner’s motion to amend in which the Board dismissed the motion without prejudice because the patent owner failed to list the proposed amended claims in the body of the motion and instead listed them in an appendix. The Board stated that “by doing so, [the patent owner] circumvented the motion page limit [of 15 pages].
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In IPR2012-0004, on January 24, 2013, the Patent Trial and Appeals Board (“PTAB”) (A.P.J.s Blankenship, Giannetti and McNamara) issued its Decision on Petitioner MacAuto USA’s (“Petitioner”) IPR petition for review of BOS GmbH & KG (“Patent Owner”) U.S. Patent No. 6,422,291. The ‘291 patent relates to a roll-up blind especially suited for mounting on the rear window of an automobile.

In its Preliminary Response, the Patent Owner asserted that the Petition should be denied based on, among other things, the fact that a complaint was served on the Petitioner’s parent company more than a year before the filing of the petition. Under 35 U.S.C. section 315(b), an inter partes review may not be instituted if the petition requesting the proceeding is filed more than one year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent. In granting the petition over the Patent Owner’s argument, the Board relied on the fact that the prior lawsuit was voluntarily dismissed without prejudice and, as such, under Federal Circuit law, the effect of such a dismissal “leaves the parties as though the action had never been brought.”
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