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Jason MurataAxinn, Veltrop & Harkrider LLP

Patent Infringement:Round Up of Recent Cases

Claim Construction Federal Circuit Review of Claim Constructions Indefiniteness Means-Plus-Function Claims

Divided InfringementWillful InfringementNew Rules for Patent Infringement Complaints

Overview

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Claim Construction and Indefiniteness

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Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015)

Drug having specific average molecular weights

District court heard expert testimony and concluded that claims were definite

Federal Circuit reviewed de novo and reversed district court

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Claim Construction & Indefiniteness

Claim construction and indefiniteness are questions of law reviewed de novo (without deference to district court) Analysis of intrinsic evidence is a question of law

Underlying factual findings reviewed for clear error (with deference to district court

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Factual Findings

Conclusions of Law

BEFORE TEVA

DE NOVO

Factual Findings

Conclusions of Law

AFTER TEVA

DE NOVOCLEAR

ERROR

Takeaways

Expect a nominal increase in Federal Circuit affirmance of district court’s claim construction

Strategy for claim construction with respect to use of experts and other extrinsic evidence to support claim construction

In prosecution, consider the tests that may be used to prove infringement and the variability between the test methods

o More guidance in the specification?6

Nautilus, Inc. v. Biosig Instruments, Inc.,134 S. Ct. 2120 (2014)

Heart-rate monitor for exercise machine

“Spaced relationship” between electrodes for heart rate monitor

District Court found claims indefinite under “insolubly ambiguous” standard

Federal Circuit reversed

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Indefiniteness

Old Standard: A claim is

indefinite “only when it is ‘not amenable to construction’ or ‘insolubly ambiguous.’”

New Standard: Claims must inform

those in the art about the scope of the invention with “reasonable certainty”

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Takeaways

Expect at most a small effect on likelihood of success in invalidating claim for indefinitenesso Has Nautilus really changed the standard?

More indefiniteness arguments will be raised in the short term

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Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015)(en banc in

part) A method for a “virtual

classroom”

Defendant argued that “distributed learning control module” was a means-plus-function limitation

Prior cases gave “strong presumption” that not a means-plus-function claim

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Means-Plus-Function Claim Limitations

Federal Circuit overruled the “strong” presumption that limitation that does not say “means for” is not in means-plus-function format

Test remains whether claim limitation recites sufficient structure

“Nonce” words treated like “means” Device Module Mechanism Element

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Takeaways

There will likely be more claims found to be in means-plus-function format

Defendants may raise in claim construction more often to try to narrow the scope of the claims to corresponding structure(s) disclosed in the specification

Considerations for prosecution:

o More attention to “nonce” words

o Ensure adequate disclosure of corresponding structure in close cases to avoid indefiniteness

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Divided Infringement

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Akamai Tech. Inc. v. Limelight Networks, Inc., 2015 WL 4760450 (Fed. Cir. 2015) (en banc)

Patent concerned method of delivering Internet content

Parties agreed that defendant performed some steps but defendant’s customers performed other steps

Jury found defendant infringed patent

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A content delivery method, comprising:

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distributing a set of page objects . . .

tagging at least some of the embedded objects . . .

resolving the client request . . .

returning . . . an IP address . . .

Defendant’s Server

Defendant’s

Customers

Traditional principles of vicarious liability applies to determine whether or not the defendant is liable for another’s actions

Principle-agent relationships, contractual arrangements, and joint enterprise are situations in which one party can be responsible for another party’s action

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Takeaways Noninfringement because more than one actor

performs the claimed steps is harder to prove

Consider alternative theories of infringement

Note during prosecution:

o Draft claims to avoid issue of divided infringement

o Single actor to perform all claimed acts

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Willful Infringement

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Patent owner alleged induced infringement of patent concerning short-range wi-fi network

Defendant asserted a good faith belief that patent was invalid to prove no intent to induce infringement

Evidence of good faith belief of invalidity was excluded from trial by district court: Statements in interference that asserted

patent and prior art patent covered same subject matter

Alleged admissions regarding conception and reduction to practice of claimed invention

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Commil USA, LLC v. Cisco Sys., 135 S. Ct. 1920 (2015)

Good faith belief of invalidity is not a defense to induced infringement Invalidity is a defense to liability

Invalidity is not a defense to infringement

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Takeaways Companies face higher risk with product / services

launch if primary defense is invalidity

Inducement is not simple to prove – patentee must prove that defendant knew that induced acts would constitute infringement

Good faith belief of noninfringement is still a defense

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Amendments to Federal Rules of Civil Procedure

(December 1, 2015)

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Currently, complaint only has to state: Jurisdiction Plaintiff owns patent Defendant infringed patent Plaintiff has given defendant

notice of its infringement Demand for an injunction

and/or damages

Beginning December 1, 2015, unless Congress blocks new Rules, this will no longer be sufficient

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Under Twombly/Iqbal, complaint must state that are sufficient to make it plausible that the defendant infringed the patent

Almost unanimous agreement that a Complaint will have to be more detailed

Level of detail required by the courts remains to be seen

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Takeaways

For patent owners, patent infringement complaint will require more facts

o Guidance from cases regarding pleading induced and contributory infringement and patent invalidity

o Effect on pre-suit investigations

For defendants, consider moving to dismiss claims that lack such facts for cases filed after December 1, 201525

Questions?

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Jason T. Murata

AXINN, VELTROP & HARKRIDER LLP

90 State House SquareHartford, CT 06103jmurata@axinn.com