Fresh From the Bench: Latest Federal Circuit Court Cases
CASE OF THE WEEK
Texas Advanced Optoelectronic Solutions, Inc. v. Renesas Electronics America, Inc., Appeal Nos. 2016-2121, -2208, -2235 (Fed. Cir. 2018)
In an appeal from a jury trial, the Federal Circuit addressed numerous issues relating to both patent law and trade secret law, including constitutional questions about the roles of judges and juries. The case involved allegations of patent infringement, trade secret misappropriation, breach of contract, and tortious interference with prospective business relations under Texas state law. In particular, Texas Advanced Optoelectronic Solutions, Inc. (“TAOS”) alleged that Intersil Corporation (“Intersil”) had improperly used technical designs it had disclosed in previous failed merger negotiations.
Under Texas law, a remedy for trade secret misappropriation is disgorgement of profits. The district court allowed the jury to determine the defendant’s profits. The defendant argued that the judge should have taken the jury’s verdict as merely advisory, since there is no constitutional right to a jury trial on disgorgement.
ALSO THIS WEEK
Energy Heating LLC v. Heat on-the-Fly, LLC, Appeal Nos. 2016-1559, -1893, -1894 (Fed. Cir. 2018)
In an appeal from the judgment of inequitable conduct, the Federal Circuit affirmed. The district court found a patent unenforceable because the patentee did not disclose public use of the invention to the Patent and Trademark Office during prosecution. Applying the Allen Engineering indicia of experimental usage factors, the Federal Circuit held that the patentee’s prior commercial sales of the invention were not experimental. The Court also upheld the district court’s judgment of tortious interference and vacated the district court’s denial of attorneys’ fees under § 285.
Opinion can be found here.
The General Hospital Corporation v. Sienna Biopharmaceuticals, Inc., Appeal No. 2017-1012 (Fed. Cir. 2018)
In an appeal from an interference proceeding, the Federal Circuit vacated and remanded the PTAB’s dismissal on grounds stemming from a written description issue in a case dealing with the import of various ranges of nanoparticle concentrations in the specification and claims. The Court held that PTAB did not err in finding that a claim lacked written description support where the specification disclosed a broad range and the claims recited a narrower range, because the broader disclosure did not permit one skilled in the art to “immediately discern the limitation at issue in the claims.” However, the Court vacated the PTAB’s denial of the applicant’s motion to add a new claim, finding to be “arbitrary and capricious” the Board’s summary determination that the applicant’s certification of patentability, made pursuant to the Board’s Standing Order, was not a sufficient showing of patentability. The Court also found error in the PTAB’s determination that the applicant had not shown interference-in-fact, because the proposed new claim was directed to a concentration included in the range claimed by the later-filed patent, and would have rendered the later-filed claim obvious.
Opinion can be found here.
In re: Jeff H. VerHoef, Appeal No. 2017-1976 (Fed. Cir. 2018)
In an appeal from a Patent Trial and Appeal Board (the Board) decision to sustain an examiner’s rejection of claims under 35 U.S.C. § 112(f), the Federal Circuit affirmed. The applicant had admitted that a significant contribution to the invention had come from another person. The Federal Circuit held that a patent cannot be granted on an application that does not list all inventors. The Federal Circuit was not persuaded by VerHoef’s argument that a previous Board decision, Morse v. Porter, 155 U.S.P.Q. 280 (B.P.A.I. 1965) permitted a person to be named as a sole inventor even if that person did not conceive of each feature of the claimed invention, as long as the person maintained “intellectual domination” and control over the inventive process. The Federal Circuit explained that Porter is not binding on the court, and also mentioned that in Porter the Board could not “tell from the evidence which of [two persons] first suggested” a claimed feature. In this case, all parties agreed that another person first suggested a claimed feature of the application to VerHoef.
Opinion can be found here.
Disc Disease Solutions Inc. v. VGH Solutions, Inc., Appeal No. 2017-1483 (Fed. Cir. 2018)
In an appeal from a district court dismissal with prejudice, the Federal Circuit reversed. The Court held that the complaint alleged facts sufficient to state a claim under the Iqbal/Twombly standard, because the case involved a “simple technology,” and the complaint “specifically identified the three accused products . . . and alleged that the accused products meet each and every element of at least one claim . . .”
Opinion can be found here.
Written by: Scott D. Eads and Nika F. Aldrich, Schwabe Williamson & Wyatt
Contributors: Cristin Wagner, Jason Wrubleski, Angela Addae, and Michael A. Cofield