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Troutman Sanders Federal Circuit Review – October 24, 2014

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Each week, Troutman Sanders’ Federal Circuit review summarizes the Federal Circuit precedential patent opinions from the prior week.   

This week:

  • Patentee’s failure to argue infringement under adverse claim construction on appeal constitutes waiver of the infringement claim. 
  • A claim construction that naturally aligns with the problem and solution in the written description is most likely correct. 
  • The Government assumes infringement liability when it requires a private party to performed a quasi-governmental act that infringes on a patent. 

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October 28, 2014   Comments Off

EDVA Judge Holds that the Copyright Act Preempts Some Claims Under the Virginia Computer Crimes Act

In Maxient, LLC v. Symplicity Corp., Case No. 1:14CV1184, 2014 U.S. Dist. LEXIS 150542 (E.D.Va. Oct. 23, 2014) (found here), Maxient, a developer of web-based software for student conduct records management, claimed that a competitor, Symplicity, posed as a customer to access its proprietary website and gain access to Maxient’s trade secrets. Maxient brought suit in state court alleging violations of the Virginia Trade Secrets Act and the Virginia Computer Crimes Act (VCCA) and a claim for unlawful use of encryption in criminal activity. Symplicity removed the case on the grounds that the Copyright Act preempted all of Maxient’s claims other than the claim under the Trade Secrets Act.  On a Motion to Remand, Judge Trenga held that Maxient’s claims under the VCCA for using a computer to convert software and for computer trespass were preempted but held that a separate VCCA claim for using a computer to obtain property under false pretenses and Maxient’s claim for the unlawful use of encryption in criminal activity were not.

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October 24, 2014   Comments Off

Troutman Sanders Federal Circuit Review – October 17, 2014

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Each week, Troutman Sanders’ Federal Circuit review summarizes the Federal Circuit precedential patent opinions from the prior week.   

This week:

  • Disclosures that do no more than recite functions cannot meet the “means-plus-function” requirements of §112 ¶ 6. 
  • Attorney’s fees to a “prevailing party” do not require a patentee to succeed on all of its infringement claims.

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October 17, 2014   Comments Off

EDVA Court Rules that Federal Circuit Has Exclusive Jurisdiction Over IPR Appeals

In a recent memorandum opinion, Judge Cacheris of the Eastern District of Virginia dismissed Synopsys, Inc.’s challenge under the Administrative Procedure Act (APA) to a final decision rendered by the Patent Trial and Appeal Board (PTAB) on Synopsys’s petition for inter partes review of the validity of U.S. Patent No. 6,240,376 (the “‘376 patent”). The Court held that under the America Invents Act (AIA), the Federal Circuit possesses exclusive jurisdiction to review post-grant patentability decisions. “To conclude otherwise,” said Judge Cacheris, “would defeat Congress’s intent [in the AIA] to improve the efficiency of the post-grant patentability review process.” Slip Op. at 10-11. [Read more →]

October 10, 2014   Comments Off

EDVA: In battle between novelty bearded hat makers, defendant’s trademark infringement and cybersquatting claims survive motion to dismiss

In a patent and trademark dispute between makers of novelty bearded hats, Judge Hudson of the Eastern District of Virginia denied in part the plaintiff’s motion to dismiss the defendant’s trademark related counterclaims. Stat Ltd., v. Beard Head, Inc., et al, 3:13CV762, 2014 U.S. Dist. LEXIS 141097 (E.D. Va. Oct. 3, 2014).  Although defendant Beard Head’s trademark infringement and cybersquatting claims are skeletal, they were sufficiently pleaded to survive a 12(b)(6) motion.  Judge Hudson’s brief memorandum opinion can be found here.

For those of us unable to grow a beard, there’s hope! Enter Beardo and Beard Head.  Stat Ltd, or “Beardo,” produces hats with . . . well, beards. Beardo does not discriminate—it makes bearded hats for men, women, and children. Similarly, competitor in the bearded hat market Beard Head also produces bearded hats. The products are essentially ski masks. In the place of a boring, purely utilitarian mask, however, the consumer finds a fuzzy beard to keep his or her face warm.

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October 9, 2014   Comments Off

Troutman Sanders Federal Circuit Review – October 3, 2014

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Each week, Troutman Sanders’ Federal Circuit review summarizes the Federal Circuit precedential patent opinions from the prior week.   

This week:

  • Prior Art is “Analogous” When It Is Reasonably Pertinent To The Inventor’s Particular Problem 
  • Reexamination Did Not Toll Six-Year Laches Delay, But Equitable Estoppel Was Not Provided 
  • Grant of Litigation Stay Was Proper Despite Collateral Attack On The PTO’s Authority To Initiate The Related Post Grant Review

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October 6, 2014   Comments Off

EDVA Affirms USPTO Decision Not to Terminate Inter Partes Reexamination Proceedings Despite Parties’ Prior Settlement

Judge Trenga of the EDVA affirmed the US Patent and Trademark Office’s decision not to terminate inter partes patent reexamination proceedings despite the fact that the parties had settled a dispute in court concerning the same patents. Automated Merchandising Systems, Inc. v. Rea, et al., No. 1:13-cv-1289, 2014 U.S. Dist. LEXIS 132848 (E.D. Va. Aug. 6, 2014). The USPTO determined that the parties’ stipulation in settlement as to the validity of patents alone is insufficient to foreclose its obligation to consider the validity of patents once reexamination proceedings have begun. [Read more →]

September 24, 2014   Comments Off

EDVA Court Upholds Laches Defense and Federal Circuit Reaffirms Laches Defense in Patent Cases

In a detailed and comprehensive opinion, District Judge Mark Davis of the EDVA recently granted summary judgment of laches on a claim for correction of inventorship under 35 U.S.C. § 256. Lismont v. Alexander Binzel Corp., Case No. 2:12CV592, 2014 U.S. Dist. LEXIS 116203 (E.D.Va. Aug. 20, 2014) (found here). The Supreme Court’s recent decision in Petrella v. Metro-Goldwyn-Mayer, 134 S.Ct. 1962 (2014), however, raises serious questions about whether laches is still a viable defense to patent infringement claims, though the Federal Circuit recently ruled that its prior laches decisions remain controlling precedent, even after Petrella. [Read more →]

September 22, 2014   Comments Off

EDVA Grants Summary Judgment to Defendants in AWCPA Infringement Case, Finding Two High-Rise Residential Buildings Not Extrinsically Similar

In this architectural work copyright infringement action, Humphreys & Partners Architects, L.P. claimed defendants’ design and construction of a high-rise apartment building in McLean, Virginia, “Two Park Crest” (currently under construction), infringed upon Humphreys’ high-rise condominium building in Minneapolis, Minnesota, “Grant Park.” The court granted summary judgment for the defendants, ultimately concluding that no reasonable jury could find the Two Park Crest and the Grant Park designs extrinsically similar. Humphreys & Partners Architects, L.P. v. Lessard Design, Inc. et al., No. 1:13-cv-433, 2014 U.S. Dist. LEXIS 124305 (E.D. Va. Sept. 2, 2014).  [Read more →]

September 15, 2014   Comments Off

Troutman Sanders Federal Circuit Review – August 25, 2014

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Each week, Troutman Sanders’ Federal Circuit review summarizes the Federal Circuit precedential patent opinions from the prior week.   

This week:

  • Federal Circuit Affirms No Legally Sufficient Evidence Could Support A Finding Of Infringement

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August 25, 2014   Comments Off