Weekly IP Takeaways

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.

1. In a recent opinion from the Federal Circuit Court of Appeals, the Court addressed whether a finding of inequitable conduct automatically rendered a case “exceptional” under 35 U.S.C. 285 for purposes of fee awards in patent cases. After noting that an exceptional case determination is within the Court’s equitable discretion and based on the totality of the circumstances, the Court confirmed that an inequitable conduct finding does not mandate a case being deemed exceptional; but, in this case, affirmed the district court’s determination that the case was, in fact, exceptional for failure to disclose “substantial on-sale and public uses of the claimed invention well before the patent’s critical date, and that is withheld with an intent to deceive.” The Court also noted that litigation misconduct is not required for an exceptional case determination, nor does the absence of litigation misconduct mandate a finding that a case is not exceptional, as the plaintiff argued. The takeaway here is that exceptional case findings are based on the totality of the circumstances, and there are not black and white rules one way or the other. That said, while a finding of inequitable conduct may not mandate an exceptional case determination, it will likely result in one absent compelling circumstances.

2. In a recent ruling from the District of Delaware, the Court granted summary judgment of non-infringement finding that Amazon’s Alexa did not infringe two patents directed to digital voice assistant technology. More specifically, the applicable claim language required that a service request be made in an “interagent communication language,” but the Court found that the Alexa system did not meet that claim limitation. The takeaway here is that claim limitations must be satisfied in an accused product in order for there to be infringement, and here, it seemed like a bit of a stretch at best that Alexa satisfied the patent language, which calls into question whether infringement was sufficiently vetted in advance.

3. In yet another installment in the Federal Circuit vs. Judge Alan Albright saga in terms of motions to transfer cases out of the Western District of Texas, Judge Albright sent a case to the Northern District of California, but not without criticizing the Federal Circuit for its inconsistency on various points of the analysis. For example, while generally true that for many years, the Federal Circuit has said that convenience to party witnesses is a factor to be afforded less weight in the transfer analysis, Judge Albright noted that the Federal Circuit recently seemed to moderate its position on that factor in the In re Hulu opinion in August. Judge Albright also suggested that the Federal Circuit’s position on access to sources of evidence as a significant factor in the transfer analysis is anachronistic given that most information and documents are now on servers. He also continues to assert that his time to trial is sufficiently faster that other districts such as the Northern District of California, but did not press that point in ultimately granting a transfer. The takeaway here is that, much like with the Eastern District of Texas 5-6 years ago, the Federal Circuit (and the Supreme Court) are making it more difficult to hold cases in Judge Albright’s court. Even Congress is getting in on the action via a letter from the Senate Judiciary Committee to Chief Justice Roberts of the Supreme Court. As much as Judge Albright and certain plaintiffs may want to litigate in the Western District of Texas, it is not going to be that easy to keep cases there going forward.