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Justin E. Gray

IP Litigation Attorney at Foley & Lardner LLP

Former Adjunct Professor at Northwestern University School of Law

Send questions, comments and suggestions to
grayonclaims@gmail.com

Thursday
Dec122013

Eastern District of Texas Adopts Model Order to Focus Asserted Patent Claims and Prior Art References

Recently, the Eastern District of Texas adopted a "Model Order Focusing Patent Claims and Prior Art to Reduce Costs."  A copy of the Model Order can be found here.  The Model Order provides for two rounds of narrowing both asserted patent claims and prior art references during litigation.

The first round of narrowing is triggered by the close of claim construction discovery.  At that time, the patent holder must narrow its asserted claims to no more than 10 claims from each patent and no more than a total of 32 claims for all patents-in-suit.  If only one patent is asserted, the limit is modified to 15 total claims.  Fourteen days later, the defendant must narrow its asserted prior art references, with limits of 12 references against each patent-in-suit and 40 total references for all patents-in-suit.  If only one patent is asserted, the limit is modified to 18 total references. 

The second round of narrowing is triggered by the deadline to serve opening expert reports.  No later than 28 days prior to that deadline, the patent holder must further narrow its asserted claims to no more than 5 claims per patent (selected from the 10 previously identified claims) and no more than a total of 16 claims.  If only one patent is asserted, this limit is modified to 8 total claims.  Twenty-eight days later, the defendant must further narrow its asserted prior art references, with limits of 6 references against each patent-in-suit (selected from the 12 previously identified references) and 20 total references.  If only one patent is asserted, the limit is modified to 9 total references.  Each obviousness combination counts as a separate prior art reference. 

Modification of these limits is subject to Court approval if either the parties agree or one party demonstrates good cause for the proposed modification.

Wednesday
Nov062013

Do the Joinder Provisions of the AIA Encourage a Race for Early Claim Construction?

After the America Invents Act ("AIA") went into effect, plaintiffs could no longer join multiple unrelated defendants in a single patent litigation on the sole basis that each defendant allegedly infringed in the patent-in-suit.  See 35 U.S.C. 299.  As a result, we now see certain plaintiffs filing scores of lawsuits against individual defendants in a single day in the same district.

In this post-AIA world, it should now be (at least in theory) easier for such defendants to secure transfer of their cases to a different venue.  In the pre-AIA world this was more difficult because a defendant seeking transfer of a multi-defendant litigation would either need to (1) convince all the other defendants that transfer to another venue would be beneficial to all defendants; or (2) ask the Court to sever and transfer the individual defendant.  Now, defendants are not bound to their pre-AIA co-defendants and can more easily seek transfer to their preferred venue.  Given this new world, an interesting question arises:  do the joinder provisions of the AIA encourage defendants to race to a different venue to seek early claim construction?

Many times in the pre-AIA world when multiple unrelated defendants were sued together in a single case, during claim construction the defendants would jointly propose a single construction for a disputed claim term to the court.  Even in the post-AIA world we may still see this happening, especially when cases are consolidated under Rule 42 for pre-trial purposes.  Of course, while there are times when multiple defendants can agree on a single construction, there are also times when a single construction may not be as advantageous for all defendants.  In our post-AIA world, what happens when a defendant successfully gets its case transferred to a forum that conducts early claim construction?  That defendant may now hold a significant advantage against the plaintiff in its litigation as it will be better able to dictate its own proposed construction regardless of whether that proposed construction would have been amenable to the other defendants in their respective cases back in the original forum.  And, whatever the result of claim construction in the transferee forum, the original forum that still contains the vast majority of the filed cases may decide to defer to the claim construction ordered by the transferee forum.  Else the original forum could run into a situation of construing a claim term in a way that conflicts with the order already issued by the transferee forum. 

Thus, the joinder provisions of the AIA may encourage defendants who want to pursue an aggressive defense to have their cases transferred to district courts that hold early claim construction proceedings so those defendants are more in control of their proposed constructions.  Further, if the transferee court does in fact issue a claim construction order prior to the original court doing so, the defendants still sitting in the original court may be put at a disadvantage. 

These issues are even more important given the pending Lighting Ballast case at the en banc Federal Circuit which could change the standard of review for claim construction orders.

Monday
Oct072013

Supreme Court Will Not Review False Marking Provisions of AIA

Public Patent Foundation, Inc. v. McNeil-PPC, Inc.

As previously reported on this blog, Public Patent Foundation asked the U.S. Supreme Court to consider whether the retroactive application of the AIA's changes to the false marking statue violate the Fifth Amendment.

Today, the Supreme Court denied the petition, as can be seen on the Supreme Court's website.

Thursday
Aug082013

Lighting Ballast and Purposive Construction

Lighting Ballast Control LLC v. Philips Electronics North America Corporation

Noticeably absent from the parties' briefs as well as the 20+ amicus briefs is any mention of how claim interpretation is performed in the United Kingdom.  This blog has previously reported on the way this system of "purposive construction" works here and here.  It can be summarized as follows: "The task for the court is to determine what the person skilled in the art would have understood the patentee to have been using the language of the claim to mean."

Monday
Aug052013

Public Patent Foundation Asks Supreme Court to Review False Marking Provisions of AIA

Public Patent Foundation, Inc. v. McNeil-PPC, Inc.

As previously reported on this blog, in May 2013 the Federal Circuit issued an order summarily affirming a district court's decision dismissing a qui tam false marking case pursuant to the retroactive changes to the false marking provisions enacted by the America Invents Act ("AIA").

Last week, Public Patent Foundation filed a Petition for Writ of Certioari with the U.S. Supreme Court regarding the Federal Circuit's decision.  Public Patent Foundation has asked the U.S. Supreme Court "[d]oes the retroactive application of the AIA's changes to the false marking statute to this case violate Petitioner's Due Process under the Fifth Amendment?"

This petition relates to a false marking case filed by Public Patent Foundation in June 2009.  After the AIA was passed in 2011, McNeil moved for judgment on the pleadings as a result of the amendments made to the false marking statute and the retroactive application of those amendments.  The district court granted McNeil's motion in 2012 and the Federal Circuit summarily affirmed the district court's decision in May 2013.

A copy of the petition can be found here.

Thursday
Jul182013

Cybor Watch: Final Set of Briefs Filed in En Banc De Novo Claim Construction Appeal

Lighting Ballast Control LLC v. Philips Electronics North America Corporation

This blog has continued work on collecting all of the briefs filed (both by the parties and amici) in the pending Lighting Ballast appeal regarding de novo review of claim construction.  The Federal Circuit is scheduled to hear the appeal en banc on September 13, 2013.  

The following are the final set set of briefs recently filed with the Court:

Copies of prior briefs filed can be found here and here.

Friday
Jun072013

Cybor Watch: Additional Briefs Filed in En Banc De Novo Claim Construction Appeal

Lighting Ballast Control LLC v. Philips Electronics North America Corporation

This blog is continuing work on collecting all of the briefs filed (both by the parties and amici) in the pending Lighting Ballast appeal regarding de novo review of claim construction.  The Federal Circuit is scheduled to hear the appeal en banc on September 13, 2013.

Below are PDF copies of additional briefs recently filed with the Court:

 As any additional briefs are filed, they will be made available on this blog.

 Copies of prior briefs filed can be found here.

Friday
May312013

Cybor Watch: Collection of Briefs Filed in En Banc De Novo Claim Construction Appeal

Lighting Ballast Control LLC v. Philips Electronics North America Corporation

This blog is working to collect all of the briefs filed (both by the parties and amici) in the pending Lighting Ballast appeal regarding de novo review of claim construction.  The Federal Circuit is scheduled to hear the appeal en banc on September 13, 2013.

Below are PDF copies of the briefs collected to date:

This blog is still working on collecting other briefs recently filed by other amici.  From the docket, it appears we should also be expecting briefs from the USPTO, Paul Michel, Google, Intel, Microsoft, the Connecticut IPLA, the Austin IPLA, and the Association of the Bar of the City of New York, which have all successfully filed motions to extend the deadline to file amicus briefs.  As those briefs are filed, they will be made available on this blog.

Friday
May032013

Federal Circuit Summarily Affirms District Court Decision Dismissing False Marking Case

Public Patent Foundation, Inc. v. McNeil-PPC, Inc.(Fed. Cir. May 3, 2013) (nonprecedential)

In this case, the Federal Circuit issued an order summarily affirming a district court's decision dismissing a qui tam false marking case pursuant to the retroactive changes to the false marking provisions enacted by the America Invents Act ("AIA").

Initially, the Appellant petitioned the Federal Circuit to hear the appeal en banc in the first instance, or, in the alternative, for summary affirmance due to the Court's nonprecedential decision in Rogers v. Tristar Products.  That decision held that the AIA's retroactive application of changes to the false marking statute does not violate either the Takings Clause or the Due Process Clause of the Fifth Amendment.  Appellant also asked the Federal Circuit to make the Rogers decision precedential under Federal Circuit Rule 32.1(e).  Last year, the Court denied Appellant's requests.

Late last year in Brooks v. Dunlop Manfacturing Inc., the Federal Circuit held in a precedential decision that the retroactive application of the false marking provisions in the AIA did not violate the Due Process Clause or the Intellectual Property Clause of the Constitution.  Soon after that decision, Appellant again petitioned the Court to summarily affirm the district court under the Brooks decision.  Appellee agreed that Brooks was controlling, but pointed out that Appellant has made an argument that Rogers and Brooks are distinguishable from its case as its case was filed prior to the Federal Circuit's Forest Group decision and Congress's intent in passing the retroactive false marking provisions of the AIA was due, at least in part, to the growing number of false marking cases filed after Forest Group.

The Federal Circuit ordered that the district court's judgment is summarily affirmed.

Tuesday
Apr162013

Revised Briefing Schedule in En Banc Federal Circuit Appeal Regarding De Novo Claim Construction Review

Lighting Ballast Control LLC v. Philips Electronics North America Corporation (Fed. Cir. Mar. 15, 2013)

This blog had previously reported that in this case where the Federal Circuit has agreed to reconsider the de novo review of claim construction en banc, the Defendant-Appellant's en banc brief was due on April 29, 2013 (45 days from the Court's March 15, 2013 Order granting en banc review).  Recently, the Court modified this due date to May 20, 2013.

Thus, under the current schedule, the Defendant-Appellant's brief is due May 20, 2013.  The Plaintiff-Cross Appellant's response brief will likely be due June 19, 2013 (or 30 days after service of Defendant-Appellant's en banc brief if filed earlier than May 20, 2013).  Then the Defendant-Appellant's reply brief will likely be due July 5, 2013 (or 15 days after service of the response brief if filed earlier than June 19, 2013).

Prior coverage of this case can be found here.