Owens Corning v. Fast Felt Corp.

Fast Felt Corporation owns U.S. Patent No. 8,137,757, which describes and claims methods for printing nail tabs or reinforcement strips on roofing or building cover material. Fast Felt sued Owens Corning for infringement, and Owens Corning then filed a petition with the Patent and Trademark Office (PTO) seeking an inter partes review of claims 1, 2, 4, 6, and 7 under 35 U.S.C. §§ 311–19. The Patent Trial and Appeal Board, acting as the delegate of the PTO’s Director under 37 C.F.R. § 42.4(a), instituted a review of all of the challenged claims on grounds of obviousness. Institution of Inter Partes Review at 26, Owens Corning v. Fast Felt Corp., No. IPR2015-00650 (P.T.A.B. Aug. 13, 2015), Paper No. 9 (Institution Decision). After conducting the review, the Board concluded that Owens Corning had failed to show obviousness of any of the challenged claims. Final Written Decision, Owens Corning v. Fast Felt Corp., No. IPR2015-00650, 2016 WL 8999740, at *23 (P.T.A.B. Aug. 11, 2016) (Final Decision).

Owens Corning appeals from the Board’s decision. It contends that, once the key claim term is given its broadest reasonable interpretation, the record conclusively establishes obviousness. We agree, and we reverse the Board’s decision.

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Amgen Inc. v. Sanofi

Appellants Sanofi, Aventisub LLC, Regeneron Pharmaceuticals Inc., and Sanofi-Aventis U.S., LLC (collectively, “Appellants”) appeal from a final judgment of the district court holding U.S. Patent Nos. 8,829,165 (“’165 patent”) and 8,859,741 (“’741 patent”) not invalid and granting a permanent injunction enjoining sales of Appellants’ Praluent® alirocumab (“Praluent”).1 In particular, Appellants argue that the district court improperly excluded evidence regarding written description and enablement, improperly instructed the jury on written description, improperly denied Appellants’ motion seeking JMOL of no written description and no enablement, improperly granted Appellees’ motion seeking JMOL of non-obviousness, and improperly issued the permanent injunction. Appellants’ Br. 1. Because we conclude that the district court (i) erred by excluding Appellants’ evidence regarding written description and enablement, and (ii) improperly instructed the jury on written description, we reverse-in-part and remand for a new trial on written description and enablement. We also conclude that Appellants are not entitled to JMOL of no written description and no enablement. We affirm the district court’s grant of Appellees’ JMOL of non-obviousness. Finally, we vacate the district court’s permanent injunction.

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Aqua Products, Inc. v. Matal

In this appeal, we consider the proper allocation of the burden of proof when amended claims are proffered during inter partes review proceedings (“IPRs”) under the Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, § 6(a)–(c), 125 Stat. 284–341 (2011) (provisions creating inter partes review codified in ch. 31 of Title 35, 35 U.S.C. §§ 311–19 (2012)). Specifically, we consider how the AIA’s statutory language in 35 U.S.C. § 316(e), which places “the burden of proving a proposition of unpatentability by a preponderance of the evidence” onto the petitioner in an IPR, applies to claim amendments authorized by 35 U.S.C. § 316(d), and whether the Patent Trial and Appeal Board’s (“Board”) current practices with respect to amendments accord with that application.

A panel of our court concluded that the Board did not abuse its discretion in denying Appellant Aqua Products, Inc.’s (“Aqua”) motion to amend various claims of U.S. Patent No. 8,273,183 (“the ’183 patent”) during the course of an IPR. In re Aqua Prods., Inc., 823 F.3d 1369, 1373–74 (Fed. Cir. 2016) (hereinafter “Panel Decision”). The court granted Aqua’s request for en banc rehearing and vacated the panel decision. In re Aqua Prods., Inc., 833 F.3d 1335 (Fed. Cir. 2016) (en banc) (per curiam).

Upon review of the statutory scheme, we believe that § 316(e) unambiguously requires the petitioner to prove all propositions of unpatentability, including for amended claims. This conclusion is dictated by the plain language of § 316(e), is supported by the entirety of the statutory scheme of which it is a part, and is reaffirmed by reference to relevant legislative history. Because a majority of the judges participating in this en banc proceeding believe the statute is ambiguous on this point, we conclude in the alternative that there is no interpretation of the statute by the Director of the Patent and Trademark Office (“PTO”) to which this court must defer under Chevron, U.S.A. Inc. v. Natural Resources Defense Council, Inc., 467 U.S. 837 (1984). And we believe that, in the absence of any required deference, the most reasonable reading of the AIA is one that places the burden of persuasion with respect to the patentability of amended claims on the petitioner.1 Finally, we believe that the Board must consider the entirety of the record before it when assessing the patentability of amended claims under § 318(a) and must justify any conclusions of unpatentability with respect to amended claims based on that record.

Because the participating judges have different views—both as to the judgment we should reach and as to the rationale we should employ in support of that judgment, as explained below, today’s judgment is narrow. The final written decision of the Board in this case is vacated insofar as it denied the patent owner’s motion to amend the patent. The matter is remanded for the Board to issue a final decision under § 318(a) assessing the patentability of the proposed substitute claims without placing the burden of persuasion on the patent owner.

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Savannah College of Art and Design, Inc. v. Sportswear, Inc.

“Imitation may be the sincerest form of flattery,” Charles C. Colton, Lacon, Vol. 1, No. 183 (1820–22), in Bartlett’s Familiar Quotations 393:5 (16th ed. 1992), but when the imitation consists of commercial reproduction for profit, all bets are off. So when Sportswear, Inc. began using the federally-registered service marks of the Savannah College of Art and Design without a license to sell apparel and other goods on its website, SCAD did not take kindly to the copying and sued for equitable and monetary relief. SCAD asserted a number of claims against Sportswear, including service mark infringement under 15 U.S.C. § 1114; unfair competition and false designation of origin under 15 U.S.C. § 1125; and unfair competition under O.C.G.A. § 10-1-372.

This is SCAD’s appeal from the district court’s grant of summary judgment in favor of Sportswear. The district court, relying on Crystal Entertainment & Filmworks, Inc. v. Jurado, 643 F.3d 1313, 1315–16 (11th Cir. 2011)—a case involving a dispute over common-law trademark rights to a band name— concluded that SCAD had failed to establish that it had enforceable rights in its marks that extended to apparel. SCAD, which validly registered its marks only in connection with the provision of “education services,” did not show that it had used its marks on apparel earlier than Sportswear in order to claim common-law ownership (and priority) over its marks for “goods.” See Savannah Coll. of Art & Design, Inc. v. Sportswear, Inc., 2015 WL 4626911, at *2 (N.D. Ga. 2015).

We reverse. This case, unlike Jurado, does not involve the alleged infringement of a common-law trademark, and as a result the date of SCAD’s first use of its marks on goods is not determinative. One of our older trademark cases, Boston Prof’l Hockey Ass’n, Inc. v. Dallas Cap & Emblem Mfg., Inc., 510 F.2d 1004 (5th Cir. 1975), controls, as it extends protection for federally-registered service marks to goods. Although Boston Hockey does not explain how or why this is so, it constitutes binding precedent that we are bound to follow.

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Jang v. Boston Scientific Corp.

This dispute between G. David Jang, M.D. (Dr. Jang) and Boston Scientific Corp. and Scimed Life Systems, Inc. (collectively, BSC), more than a decade old, returns to us for a fourth time. In the latest appeal of this case involving U.S. Patent No. 5,922,021 (ʼ021 Patent) and BSC’s sales of several coronary stents (collectively, Express stent), Dr. Jang challenges the district court’s denial of his motion for judgment as a matter of law (JMOL) on the ground that no reasonable jury could have found that BSC’s Express stent did not literally infringe claims 1 and 8 (the asserted claims) of the ’021 Patent. Dr. Jang also challenges the district court’s vacatur of the jury’s finding that the Express stent infringed the asserted claims under the doctrine of equivalents, as well as the entry of judgment of non-infringement in favor of BSC, on the ground that the district court incorrectly held that he failed to provide an acceptable hypothetical claim for an ensnarement analysis, and thereby failed to prove that his doctrine of equivalents theory did not ensnare the prior art. Dr. Jang’s appeal is accompanied by a purported cross-appeal from BSC, which assigns error to the district court’s holding that BSC was contractually obligated to pay royalties for past sales of the Express stent if it infringed the asserted claims, notwithstanding the U.S. Patent and Trademark Office’s (PTO) eventual cancellation of them in an ex parte reexamination.

Because we affirm the district court’s denial of Dr. Jang’s motion for JMOL, its vacatur of the jury verdict of infringement under the doctrine of equivalents, and its entry of judgment of non-infringement, we dismiss BSC’s cross-appeal and need not reach the arguments it raised.

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In re Smith International, Inc.

Smith International, Inc. (“Smith”) appeals from a decision of the United States Patent and Trademark Office (“the PTO”) Patent and Trial Appeal Board (“the Board”) affirming the examiner’s rejections of claims 28–36, 39–46, 49, 50, 79–81, and 93–1001 of U.S. Patent 6,732,817 (“the ’817 patent”) in an ex parte reexamination. Ex parte Smith Int’l, Inc., No. 2015-008323, 2016 Pat. App. LEXIS 3764 (P.T.A.B. Apr. 29, 2016) (“Board Decision”). For the reasons that follow, we reverse.

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In re Cray, Inc.

Cray Inc. (“Cray”) petitions for a writ of mandamus vacating the order of the United States District Court for the Eastern District of Texas denying its motion to transfer the case to the United States District Court for the Western District of Wisconsin. See Raytheon Co. v. Cray, Inc., No. 2:15-cv-01554-JRG, 2017 WL 2813896 (E.D. Tex. June 29, 2017) (“Transfer Order”). Raytheon Company (“Raytheon”) opposes the petition. The district court misinterpreted the scope and effect of our precedent in determining that Cray maintained “a regular and established place of business” in the Eastern District of Texas within the meaning of 28 U.S.C. § 1400(b). Accordingly, the court’s decision refusing transfer pursuant to 28 U.S.C. § 1406(a) was an abuse of discretion. We therefore grant Cray’s petition for a writ of mandamus and direct transfer of the case.

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NFC Techoloty, LLC v. Matal

NFC Technology, LLC (“NFC”) appeals from the final written decision of the U.S. Patent and Trademark Office Patent Trial and Appeal Board (“the Board”) in an inter partes review (“IPR”) proceeding concluding that claims 1–3 and 5 of U.S. Patent 6,700,551 (“the ’551 patent”) are unpatentable as obvious. See HTC Corp. v. NFC Tech., LLC, IPR 2014-01198, 2016 WL 497524, at *1 (P.T.A.B. Feb. 3, 2016) (“Final Decision”). Specifically, the Board rejected NFC’s argument that it had created a prototype embodying the claimed invention before the priority date of a cited reference, on the basis that NFC had not adequately proven that certain third-party activity inured to NFC’s benefit. Id. at *5–15. For the reasons that follow, we reverse the Board’s determination as to inurement, and remand for the Board to determine whether NFC presented sufficient evidence that the prototype embodied the claimed invention.

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Idemitsu Kosan Co., Ltd. v. SFC Co. Ltd.

Idemitsu Kosan Co., Ltd. (“Idemitsu”) seeks review of the July 29, 2016 decision of the Patent Trial and Appeal Board (“the Board”) finding claims 1–5, 7–11, 13, and 14 of U.S. Patent No. 8,334,648 (“the ’648 patent”) invalid as obvious over International Publication WO 02/052904 (“Arakane”). See SFC Co. Ltd. v. Idemitsu Kosan Co., Ltd., No. IPR2015-00564, 2016 Pat. App. LEXIS 13340 (P.T.A.B. July 29, 2016). For the following reasons, we affirm.

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First Data Corp. v. Inselberg

First Data Corporation (“First Data”) and Frank Bisignano (“Bisignano”) appeal from the district court’s dismissal of their counterclaims and their declaratory judgment action under Federal Rule of Civil Procedure 12(b)(1). See Bisignano v. Inselberg, Nos. 15-8301 (KM) (JBC), 16-317 (KM) (JBC), 2016 U.S. Dist. LEXIS 113563 (D.N.J. Aug. 25, 2016) (District Court Opinion). They also object to the district court’s order remanding their state law claims to state court. Because the district court correctly dismissed the federal claims for lack of subject matter jurisdiction and we cannot review the remand order, we affirm.

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