Spotlight on Upcoming Oral Arguments – May 2019

Monday, May 6, 2019

Cobalt Boats, LLC v. Brunswick Corp., No. 18-1376, Courtroom 201

In the middle of trial between Cobalt Boats and Brunswick, the Supreme Court handed down its TC Heartland decision, which held that the term “resides” in 28 U.S.C. § 1400(b) encompasses only a corporation’s place of incorporation and principle place of business. Days after the TC Heartland decision, Brunswick argued that venue was improper in the United States District Court for the Eastern District of Virginia because it neither “resides” nor has a regular and established place of business in the district. Despite noting that “venue may not be proper” in the Eastern District, the court found that Brunswick had forfeited its venue objection by waiting to raise venue concerns until the eve of trial.

On appeal, Brunswick argues that it could not have waived its venue challenge because it challenged venue days after the TC Heartland decision. Brunswick argues that prior to the TC Heartland decision, venue was legally proper, and therefore, it could only argue that the Eastern District of Virginia was not the most convenient forum. Cobalt argues that it was within the court’s discretion to deny a transfer of venue brought “on the eve of trial” as part of its inherent authority to find forfeiture even where the party has a potentially meritorious venue defense.  Cobalt further argues that venue was proper in the Eastern District of Virginia based on the “considerable business being done by both parties” there and Brunswick’s admissions that it committed acts of infringement and owns an operating warehouse in the district.

Tuesday, May 7, 2019

ScentSational Technologies v. PepsiCo, Inc., No. 18-2091, Courtroom 203

ScentSational appeals from a Southern District of New York decision striking its experts’ opinions under Daubert.  The district court limited the scope of ScentSational’s industry expert on the grounds that she was not qualified to offer an opinion on commercialization of ScentSational’s trade secrets.  The district court struck the opinion of ScentSational’s damages expert, finding that his opinions were “outside his area of expertise.”  Finally, the district court found that the expertise of ScentSational’s technical expert was not relevant to the parties’ dispute.

On appeal, ScentSational argues that the experience commercializing products and teaching packaging qualifies its industry expert to provide an opinion as an expert on the commercialization of packing technologies for consumer product goods and that her methodology was reliably based on numerous significant factors. Next, ScentSational argues that the analysis of its damages expert was based on the governing law and appropriately left certain fact questions to the jury. Finally, ScentSational argues that its technical expert need not have been a “packaging expert” to serve as an expert on ScentSational’s trade secrets because of his expertise in aromatic food chemistry and packaging. PepsiCo counters that the court did not abuse its discretion in excluding ScentSational’s experts for lacking appropriate expertise, for failing to follow appropriate methodologies, and for not considering all the relevant facts.  PepsiCo argues that the proffered testimony from ScentSational’s experts failed to satisfy the reliability requirement set forth in the Federal Rules of Evidence and the court properly exercised its gatekeeping function.

Wednesday, May 8, 2019

Amgen Inc. v. Coherus BioSciences Inc., No. 18-1993, Courtroom 402

Amgen appeals from a District of Delaware decision dismissing Amgen’s complaint, with prejudice, on the grounds that prosecution history estoppel precludes Amgen from succeeding on its infringement claim under the doctrine of equivalents.  U.S. Patent No. 8,273,707 is directed to a method of increasing the dynamic capacity of a hydrophobic interaction chromatography column by using a combination of two salts.  During prosecution, the Examiner rejected the claims of Amgen’s application as anticipated.  In order to overcome that rejection, Amgen explained that the cited reference does not teach “the use of two salts, let alone the particular combination of salts of the claimed method” because the method in the cited reference relied upon the use of a high concentration of a single salt.  Amgen brought suit against Coherus alleging infringement under the doctrine of equivalents.  The district court found that Amgen’s statement during prosecution that the claims recite a “particular combination of salts” constituted a clear and unmistakable surrender to all salts except for the “particular” combinations recited in the claims.  Therefore, the district court granted Coherus’s motion to dismiss.

On appeal, Amgen argues that the district court improperly seized on the “particular combination” language because this language, in context, did not “clearly and unmistakably” surrender unclaimed salts. Instead, Amgen argues, it distinguished the cited art based on its failure to teach combining salts to increase dynamic capacity, not its failure to teach the recited salt pair combinations. Coherus argues that Amgen’s statement that the prior art does not disclose the “particular combinations of salts recited in the pending claims” estops Amgen from expanding its claim beyond the particular combinations of salts recited in the claims.  Coherus further argues that if Amgen had attempted to prosecute the claims it now pursues under the doctrine of equivalents, the claims likely would have been rejected on the grounds of obviousness, lack of written description, and lack of enablement.

Friday, May 10, 2019

Curver Luxembourg, SARL v. Home Expressions Inc., No. 18-2214, Courtroom 402

During prosecution of Curver’s overlapping “Y” design patent, the examiner entered an objection that the application’s original title, “Furniture Part,” did not “designate the particular article” that is the subject of the design. The examiner suggested the amended title “Pattern for a Chair,” which Curver accepted, and the patent issued. Later, Curver incorporated the overlapping “Y” pattern into storage baskets. Curver sued Home Expressions for making and selling similar overlapping “Y” baskets, the district court dismissed Curver’s complaint, finding that Curver was estopped from enforcing its design patent against any article that is not a chair.

On appeal, Curver argues that design patent claims should be construed based only on what is depicted in the drawings, not based on the patent’s title or the accompanying text.  Curver also argues that prosecution history estoppel only applies in design patent cases to “where substantive amendments are made to the patent drawings,” and does not apply when amendments are made only to the title or text of the patent. Home Expressions argues that the court’s claim construction properly limited the claim to the overlapping “Y” pattern “as used in chairs” because an ornamental design must be “tethered to the article of manufacture recited in the claim” to be patent eligible.  Home Expression argues that prosecution history estoppel in design patent cases applies when a narrowing amendment is made to satisfy any requirement of the Patent Act.  Therefore, Home Expression argues that prosecution history estoppel is applicable in the instant case, because Curver surrendered claim scope when it amended the title to overcome an objection.

Wednesday, May 22, 2019

Xitronix Corp. v. KLA-Tencor Corp., No. 16-2746, Courtroom 201

After the District Court for the Western District of Texas invalidated certain claims from U.S. Patent No. 7,362,441 (“the ’441 patent”), KLA pursued claims in a continuation application, which became U.S. Patent No. 8,817,260 (“the ’260 patent”). During prosecution of the continuation, KLA notified the Examiner of the outcome of the previous litigation with respect to the ’441 patent, but told the Examiner that the Examiner’s cited art did not teach the same limitation that the court found was taught by the prior art. Once the ’260 patent issued, Xitronix asserted a Walker Process antitrust claim, alleging that KLA had engaged in fraud during prosecution of the ’260 patent in an attempt to artificially exclude Xitronix from the market. The district court granted summary judgment for KLA, concluding that Xitronix could not demonstrate that KLA made a “material misrepresentation” during prosecution because the Examiner was free to independently review the previous litigation and determine what the prior art taught. The court also found that the Examiner was “fully apprised” of the previous litigation, so Xitronix could not succeed on a fraudulent omission theory. Finally, the court found that the Examiner likely “chose to ignore” the court’s holding in the previous litigation, so Xitronix could not show that the Examiner would have rejected the claims had KLA discussed the implications of that holding.

On appeal, Xitronix argues that the Examiner either overlooked the relationship between the claims of the ’441 patent and ’260 patent or knowingly and intentionally overrode a final judgment of an Article III court in allowing claims identical to those previously declared invalid.  Xitronix further argues that KLA’s statement that the prior art did not teach the same limitation that the district court found was taught was an affirmative misrepresentation of material fact because the examiner cited the statement in the notice of allowance. In response, KLA argues that it could not have misrepresented material facts because all of the material information, including the outcome of the ’441 patent litigation, was indisputably disclosed to the Examiner. KLA also argues that Xitronix cannot maintain a Walker Process claim against KLA because KLA has not taken any action to enforce the ’260 patent against Xitronix.