United States: Spotlight On Upcoming Oral Arguments – July 2018

By Priya Dalal

Edited by Caitlin E. O'Connell, Lillian R. Phares

Wednesday, July 11, 2018

Wisconsin Alumni Research v. Apple Inc., No. 17-2265, Courtroom 402

Apple appeals from a Western District of Wisconsin jury decision, finding Apple vicariously liable for infringement of U.S. Patent No. 5,781,752 by Samsung, a third-party, and awarding the Wisconsin Alumni Research Fund ("WARF") $506 million in damages. Apples argues that no reasonable jury could have found it liable because the wafers manufactured by Samsung were not reasonably capable of infringing, it does not have a principal-agent relationship with Samsung, and it does not control or direct Samsung's wafer manufacturing. WARF argues that substantial evidence supports the jury's finding that the wafers are capable of infringing. WARF further argues that the wafers were manufactured under Apple's "direction or control," which the Federal Circuit held in Akamai Technologies, Inc. v. Limelight Networks, Inc., 797 F.3d 1020 (Fed. Cir. 2015) (en banc), is the relevant standard for determining vicarious liability.

Thursday, July 12, 2018

Natural Alternatives v. Iancu, Nos. 17-1962 and 17-1963, Courtroom 201

This appeal arises from a PTAB decision finding that U.S. Patent Nos. 8,067,381 and 8,129,422 were not entitled to the 1996 priority date of the original UK filing, and were invalid under §§ 102 and 103. At the time of filing, the applications that issued as the '381 and '422 patents claimed priority to GB Application No. 96/169,107 and U.S. Application No. 60/462,238. While the applications that led to the '381 and '422 patents were pending, Natural Alternatives amended the specification of U.S. Application No. 60/462,238 to delete all the priority claims except for the priority claim to a 2003 provisional application outside of this chain. The PTAB found that the amendment to the priority claim of U.S. Application No. 60/462,238, severed the priority claim to the earlier-filed applications in the chain, including GB Application No. 96/169,107. The PTAB then held that the later-filed applications could no longer claim benefit to the earlier-filed applications in the chain.

On appeal, Natural Alternatives argues that nothing in the amendment to U.S. Application No. 60/462,238 indicated any intent to cease the priority claim of the later-filed applications and that the priority claim for these applications had already vested on the day they were filed under 35 U.S.C. § 120. The PTO argues that a priority claim under 35 U.S.C. § 120 does not permanently vest. The PTO further argues that the change in priority in one application can be negated or affected by changes to or actions taken in another application.

DBN Holding, Inc. v. ITC, No. 17-2128, Courtroom 201

DBN appeals from an International Trade Commission decision finding that DBN had violated a consent order by inducing infringement of certain claims of U.S. Patent No. 7,991,380. Shortly after the imposition of a $6.2 million penalty, DBN filed a declaratory judgment action challenging the validity of the '380 patent, and the patent was found invalid. Both decisions were appealed and affirmed in separate opinions by the Federal Circuit on the same day, by the same panel, in DeLorme Publishing Co., Inc. v. BriarTek IP, Inc., 622 F. App'x. 912 (Fed. Cir. 2015) and DeLorme Publishing Co., Inc. v. ITC ("DeLorme v. ITC"), 805 F.3d 1328 (Fed. Cir. 2015).

DBN argues that the penalty should be rescinded in light of the subsequent finding of invalidity. The ITC contends that the penalty should not be rescinded because DBN violated the previously-issued consent order and that the district court's invalidity holding had no bearing on the ITC's civil penalty order. The ITC further argues that DBN's claim is barred by res judicata as the Court previously considered and decided this issue in DeLorme v. ITC.

Real Foods Pty Ltd. v. Frito-Lay North America, Inc., No. 17-1959, Courtroom 402

Real Foods appeals a decision from the TTAB holding that CORN THINS and RICE THINS are "highly descriptive" and have not acquired a secondary meaning. Real Foods argues that the Board only considered the terms RICE/CORN and THINS separately, as opposed to evaluating the terms as a whole. Real Foods points to popular trademarks like WHEAT THINS, as well as other protected marks like SWEET THINS and FALAFEL THINS, reasoning that if products with similar terms could be protected, the terms are not merely descriptive. Real Foods further contends that it has acquired name recognition in the market. Frito-Lay argues that the term THINS is merely a generic description of the products, citing its own products that utilize the term to denote thinner versions of other products, like DORITOS Tortilla Thins.

Gust, Inc. v. Gutride Safier LLP & AlphaCap Ventures LLC, No. 12-2414, Courtroom 402

Law firm Gutride Safier ("Gutride") appeals from a Southern District of New York decision imposing over half a million dollars in attorneys' fees and costs against Gutride under 28 U.S.C. § 1927 for its representation of patent owner AlphaCap in an infringement suit. The district court justified the award on the grounds that Gutride should never have filed a lawsuit against Gust asserting AlphaCap's patents as Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014), provided "clear notice" that AlphaCap's patents were invalid under 35 U.S.C. § 101 and continued to litigate the case after admitting it was "not worth litigating." AlphaCap was sanctioned for filing suit, and Gutride was held to be jointly and severally liable for the fee award based on the determination that Gutride "knew" that Alice rendered AlphaCap's patents invalid. On appeal, Gutride contends that the district court erred in awarding attorneys' fees because § 101 is an unsettled area of the law and its actions were not taken in bad faith. Gust argues that the asserted patents were "inarguably invalid" under § 101; therefore, AlphaCap's infringement claims were colorless and frivolous. Gust further argues that the award was justified because Gutride "vexatiously multiplied the proceedings" and acted in bad faith throughout the litigation.

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