Weekly IP Takeaways

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

1. In a patent case, a judge in the Southern District of New York issued an order denying a motion for summary judgment of non-infringement, but granting the motion as to the absence of willful infringement. The Court found that there was no pre-suit knowledge of the patent-in-suit, and thus, there could be no finding of willfulness (i.e., pre-suit knowledge of the asserted patent is a requirement for finding willfulness). The Court noted that the Eastern District of Texas may not hold the same position on the requirement for pre-suit knowledge of the patent in order to find willfulness. This opinion reaffirms that pre-suit notice or cease and desist letters to infringers may have value for purposes of willfulness. It further informs that careful pre-filing investigations as to willfulness are an important aspect of pre-filing case evaluations.

2. In another patent case, the Federal Circuit issued an opinion reversing a determination by the Patent Trial and Appeal Board (PTAB) in an inter partes review (IPR) that certain claims of a patent were indefinite. The PTAB did not make a determination as to the obviousness of certain claims in the patent under consideration because it found those claims to be indefinite under 35 U.S.C. Section 112. Samsung asked that the PTAB cancel those claims, but the PTAB did not. It merely refrained from considering whether the claims were obvious in light of their indefiniteness. The Federal Circuit reversed the indefiniteness determination by the PTAB, and rejected Samsung’s request to cancel the claims, because the PTAB is not statutorily authorized to make an indefiniteness determination in an IPR. The Federal Circuit remanded the case to the PTAB to determine if a validity determination can nonetheless be made despite the apparent indefiniteness of the claims.

3. In a previous takeaway, we wrote about a judicial case load emergency in the Eastern District of California. This situation has not abated, and may, in fact, be worsening. Judge Dale A. Drozd issued a “Standing Order in Light of Ongoing Judicial Emergency in the Eastern District of California” indicating the absence of new judgeships in the district, recent judicial retirements, and a massive case load that “will seriously hinder the administration of justice throughout this district.” The new Standing Order notes that many cases will be unassigned, trial dates are backed up to 2022 and will not be issued in most civil cases, oral arguments on civil motions will largely be avoided, and that if civil litigants desire a quicker trial, they should have the assigned Magistrate Judge preside over the trial. This is obviously a very serious situation. It may be that President Trump and Sen McConnell’s intention to continue to appoint judges may resolve the situation. That said, it seems that the Eastern District of California is among the last districts to receive attention from Trump and McConnell.