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IPO Daily News™

Thursday, 14 September 2017 12:21 pm

Federal Circuit Summaries Logo

* * INFRINGING USE REQUIRES USER TO OBTAIN BENEFIT FROM EACH AND EVERY ELEMENT OF CLAIMED SYSTEM

Intellectual Ventures I LLC v. Motorola Mobility LLC, 16-1795 – Yesterday in an opinion by Judge DYK, a split Federal Circuit upheld a district court denial of Motorola’s motion that IV’s claims were invalid and reversed denial of Motorola’s motion that IV’s ’144 patent was not infringed. The ’144 patent claimed a system for “transferring…computer files directly between two or more computers or computing devices.” The ’426 patent claimed a “laptop computer formed by docking a smartphone into a ‘shell’ having a larger display and keyboard.”

Substantial evidence supported the jury’s verdict regarding the validity of the patents’ claims. However, the Federal Circuit said the district court misapplied Centillion’s standard for finding infringing “use” of the ’144 patent’s system claim. “Proof of an infringing ‘use’ of the claimed system,” it said, “requires the patentee to demonstrate that the direct infringer obtained ‘benefit’ from each and every element of the claimed system.” Substantial evidence did not support that Motorola customers obtained benefit from the generation of delivery reports.

Judge NEWMAN concurred with regard to non-infringement but argued that the majority misread Centillion, which she said “held that the user must ‘obtain benefit’ from the ‘system as a whole’” and not “on a limitation-by-limitation basis.” She dissented with regard to the validity of IV’s claims, arguing that “no reasonable jury” could have found nonobviousness.
(1 to 4 stars rate impact of opinion on patent & trademark law)

Federal Circuit Summaries Logo

* PATENT OWNER’S ACTIONS DID NOT CREATE JUSTICIABLE CASE OR CONTROVERSY FOR DECLARATORY SUIT

Allied Mineral Prods., Inc. v. Osmi, Inc., 16-2641 — Yesterday in an opinion by Judge MOORE, the Federal Circuit upheld a district court dismissal of Allied’s suit for lack of subject matter jurisdiction. Stellar sued Allied’s customers in Mexico for infringing its Mexican patent. Allied, which manufactures the allegedly infringing products in the U.S., sought a declaration that it did not infringe Stellar’s U.S. patent. The Federal Circuit agreed that Stellar’s actions were insufficient to confer declaratory judgment jurisdiction. Stellar took no affirmative actions against Allied and had no communications with Allied related to either patent. Allied demonstrated merely its “fear of a future infringement suit,” which did not create “a case of actual controversy.”
(1 to 4 stars rate impact of opinion on patent & trademark law)

LAST DAY TO REGISTER ONLINE FOR IPO’S 2017 ANNUAL MEETING

Online registration for IPO’s 2017 Annual Meeting will close at 5:00p.m. ET today, 14 September. Walk-ins will be accepted. The meeting begins on Sunday, 17 September, at the Marriott Marquis in San Francisco, California. Bring a completed registration form to the onsite registration desk to expedite the process.

IP IN THE MASS MEDIA

Chance the Rapper Sued for Copyright Infringement

Yesterday Pitchfork reported that jazz musician and composer ABDUL WALI MUHAMMAD sued CHANCE THE RAPPER for copyright infringement, claiming that the rapper sampled his “Bridge Through Time” without permission in the 2012 track “Windows.”

Allergan Transfers Patents to Native American Tribe, Expecting Dismissal of IPR Petition

Yesterday the New York Times reported that Allergan transferred six patents for the dry eye drug Restasis to the St. Regis Mohawk Tribe in New York. In exchange for a payment of $13.75 million, the tribe will claim sovereign immunity as grounds for dismissal of petition for USPTO inter partes review. If the petition is dismissed, the tribe will lease the patents back to the pharmaceutical company for $15 million annually as long as the patents remain valid.

IP Chat Channel Logo

TODAY ON IPO’S IP CHAT CHANNEL: PRIVATE RIGHT OR PUBLIC RIGHT? PREVIEW OF OIL STATES AT THE U.S. SUPREME COURT

Tune in to the IP Chat Channel today at 2p.m. ET for Private Right or Public Right? Preview of Oil States at the U.S. Supreme Court. Our panel — WILLIAM JAY (Goodwin Procter LLP), Prof. ADAM MOSSOFF (George Mason University), and KENT RICHLAND (Greines, Martin, Stein & Richland) — will offer a uniquely informed and balanced discussion of the case.

IP Chat Channel webinars are recorded and available on our website after the live webinars. CLE granted in many states.