Spotlight on Upcoming Oral Arguments – August 2018

Monday, August 6, 2018

Uniloc USA, Inc. v. Amazon.com, Inc., No. 17-2051, Courtroom 402

Uniloc appeals from an Eastern District of Texas decision finding the claims of U.S. Patent No. 8,556,960 invalid under 35 U.S.C. § 101 and granting Amazon’s Fed. R. Civ. P. 12(b)(6) motion to dismiss.  Uniloc argues that in granting Amazon’s motion to dismiss, the district court inappropriately considered evidence beyond the pleadings and failed to draw all reasonable inferences in Uniloc’s favor.  Uniloc further argues that the district court’s holding relies on several unsupported factual findings, such as, what was “routine, generic, well-understood, or conventional” in the art at the time of the invention.  Amazon argues that the district court was entitled to take judicial notice of basic economic concepts and to rely on intrinsic evidence such as subject matter incorporated by reference in the patent.

Innovention Toys, LLC v. MGA Entertainment, Inc., No. 17-2204, Courtroom 402

MGA Entertainment, Wal-Mart Stores, and Toys “R” Us (“MGA”) appeal from an Eastern District of Louisiana decision awarding enhanced damages and attorneys’ fees to Innovention Toys.  MGA previously appealed the district court’s judgment of willful infringement to the Federal Circuit.  On appeal, the Federal Circuit affirmed the district court’s judgment that MGA’s infringement was willful, but remanded the case for the limited purpose of determining whether to enhance damages.

MGA argues that the district court abused its discretion by ignoring salient facts that preclude the award of enhanced damages.  Specifically, MGA argues that the district court failed to consider: (1) that MGA began selling the accused product before the PTO published Innovention’s patent application; (2) upon receiving Innovention’s notice letter, MGA had an invalidity analysis conducted by its counsel, which formed the basis of the invalidity defense MGA advanced at trial; and (3) the court held that MGA’s invalidity defense was reasonable as a matter of law.  Innovention argues that MGA’s argument is premised on the idea that the infringement was not willful.  Because the Federal Circuit had previously held that MGA willfully infringed, Innovention argues that the “law of the case” doctrine bars further adjudication of this issue.

Tuesday, August 7, 2018

Automated Merchandising System v. Iancu, No. 17-1953, Courtroom 402

This appeal arises from a PTAB decision invalidating certain claims of U.S. Patent Nos. 6,794,634, 6,384,402, 7,343,220, and 7,191,915 (“the AMS patents”) as obvious under 35 U.S.C. § 103.  The inter partes reexaminations that are the subject of this appeal were requested by Crane Co. (“Crane”). While the reexaminations were pending, a consent judgment was entered in a related district court action between Automated Merchandising System (“AMS”) and Crane.  The consent judgment included a provision in which the parties stipulated to the validity of the AMS patents.  In light of the consent judgment, AMS petitioned the PTO to terminate the reexaminations.  The PTO denied the petition, stating that a consent judgment based on party stipulation does not qualify as a “final decision” under 35 U.S.C. § 317(b).

AMS argues that under pre-AIA 35 U.S.C. § 317(b), the consent judgment constitutes a “final decision” that warranted termination because it contained a stipulation that the AMS patents are valid and provided for the dismissal of all claims in the action with prejudice.  AMS further argues that nothing in § 317(b) suggests that the term “final decision” is limited only to final decisions by the Court.  The PTO identifies several criteria that must be satisfied in order to require termination under § 317(b).  The PTO argues that the consent judgment did not satisfy the criteria because, while Crane was a party to the district court action and the decision was final, the consent judgment did not include any finding regarding whether or not Crane had met its burden of establishing the invalidity of the asserted claims. 

Coda Development v. Goodyear Tire & Rubber, No. 18-1028, Courtroom 402

Coda appeals from a Northern District of Ohio decision dismissing its trade secret misappropriation claims against Goodyear with prejudice without granting Coda leave to amend.  Coda argues that the district court erred in relying on Goodyear’s analysis of the prior art because the analysis was outside the scope of the pleadings and presented for the first time on reply.  Coda further argues that the district court erred in denying leave to amend after concluding that Coda had no additional facts to supplement its original complaint because Coda maintained that the original complaint was sufficient.  Goodyear argues that Coda’s vague and open-ended allegations failed to provide sufficient notice of the secret technology underlying Coda’s trade-secret claims.  Thus, Goodyear argues the district court properly dismissed the claims with prejudice when Coda had not moved to amend or presented an amended complaint before judgment.

Wednesday, August 8, 2018

Vehicle IP, LLC v. Cellco Partnership, No. 17-2511, Courtroom 201

Vehicle IP appeals from a District of Delaware decision granting summary judgment of no willful infringement by Cellco Partnership, doing business as Verizon Wireless (“Verizon”).  An inventor of the patented technology was hired by Verizon and put in charge of developing the accused product.  Vehicle IP contends that there is sufficient circumstantial evidence to make a prima facie case of willful infringement.  Vehicle IP argues that the district court, in granting summary judgment, improperly focused on factors such as direct evidence of copying or whether the inventor was hired for the specific purpose of copying the invention.  Verizon argues that there was no evidence to support Vehicle IP’s claim and that attorney argument, innuendo, and exaggeration of the facts cannot substitute for actual evidence.