October 25, 2017

Federal Circuit Court Decisions For Week Ending September 15, 2017

Cablz, Inc. v. Chums, Inc. No. 2016-1823, September 12, 2017 (nonprecedential) Patent No. 8,366268

Key point(s):

  • An argument will be waived by failing to brief the specific argument before the IPR oral hearing, as a result of which the Board did not explicitly address that argument and the Federal Circuit did not have the benefit of the Board’s informed judgment.

Intellectual Ventures I LLC v. Motorola Mobility LLC No. 2016-1795, September 13, 2017 (precedential) (2-1), Patent Nos. 7,810,144 and 7,120,462

Key point(s):

  • Direct “use” infringement requires use of each element in a claimed system such that a single person must control, even indirectly, and benefit from each claimed component.
  • When the specification teaches a solution without intermediate storage, and the claim neither excludes nor includes long-term storage, the claim is construed in view of the specification to exclude long term storage and thus is not invalid under § 112.

Allied Mineral Products, Inc. v. Osmi, Inc. No. 2016-2641, September 13, 2017 (precedential) (3-0) Patent No. 7,503,974

Key point(s):

  • A letter from a U.S. company to Mexican distributors accusing them of infringing a Mexican patent corresponding to a U.S. patent, followed by suit in Mexico for infringement of the Mexican patent does not, without more, form a basis for a declaratory judgment lawsuit in the U.S. by the distributors’ supplier.

Waymo LLC v. Uber Technologies, Inc. No. 2017-2130, September 13, 2017, (precedential) (3-0)

Key point(s):

  • Under California law, reliance on a contract bearing an arbitration clause is fundamental to compulsion by a non-party to arbitrate.

Waymo LLC v. Uber Technologies, Inc. No. 2017-2253, September 13, 2017, (precedential) (3-0)

Key point(s):

  • Writ of mandamus denied despite assertions of attorney-client privilege, work-product immunity and Fifth Amendment rights against self-incrimination.

Idemitsu Kosan Co. v. SFC Co., No. 2016-2721, September 15, 2017, (precedential) (3-0) Patent No. 8,362,648

Key point:

  • Although PTAB rules prohibit raising new arguments in a reply brief, when the patent owner first raised an issue in its response, the IPR petitioner properly responded in its reply brief.

Quality Edge Inc. v. Rollex Corp. No. 2017-1005, September 15, 2017, (non-precedential) Patent No. 7,137,224

Key point:

  • While a district court should freely give leave to amend when justice so requires, the district court can deny leave due to undue delay in filing, lack of notice to the opposing party, bad faith by the moving party, repeated failure to cure deficiencies by previous amendments, undue prejudice to the opposing party, and futility of amendment.

Related Team:

Jerry R. Selinger