IP Newsflash

In Kyocera Senco Industrial Tools Inc. v. International Trade Commission, the Federal Circuit held that an expert must meet the definition of a “person of ordinary skill in the art” of the asserted patents in order to opine on infringement, among other issues. This new bright-line test and the underlying rationale, however, raised several new questions regarding expert admissibility. See “Federal Circuit: Narrow Definition of Skill in the Art Dooms Expert’s Testimony” and “Grappling With A Bright-Line Patent Expert Admissibility Test.” The Federal Circuit recently addressed one of those questions, namely whether an expert must have acquired the requisite level of skill as of the time of the invention or whether it is sufficient for an expert to acquire that knowledge at a later date.

In advance of a new trial to determine damages for patent infringement, a district court denied plaintiff’s motion to preclude defendants from introducing the terms of plaintiff’s settlement offers. The district court concluded that the licensing offers had probative value to show industry practice for negotiating licenses on fair, reasonable, and non-discriminatory (FRAND) terms.

In a precedential 52-page sua sponte decision, the United States Patent and Trademark Office (USPTO) Director Katherine Vidal addressed several issues of first impression relating to sanctionable misconduct in inter partes review proceedings. As set forth in more detail below, the Director ultimately determined that the petitioner had engaged in abuse of process. The Director banned the petitioner from any further participation in the proceeding, and allowed a joined petitioner to step into the role of lead petitioner. The Director then instructed the Patent Trial and Appeal Board to determine whether the IPR petition met the compelling-merits standard for institution, which is a higher standard than the reasonable likelihood standard typically required for IPR institution.

A panel of the Federal Circuit reversed its prior decision and the decision of the District Court of Delaware when it found claims containing a negative limitation invalid for lack of written description. Because the specification did not expressly or inherently disclose that the claimed method of treatment excluded a loading step, it lacked sufficient support for such a negative limitation in the claims.  

In Kyocera Senco Industrial Tools Inc. v. International Trade Commission, the Federal Circuit held that an expert who did not possess the specific defined level of ordinary skill in the art could not testify about infringement, despite having advanced degrees and extensive experience in the general field of study. In so doing, the court confirmed that it is the defined level of skill in the art that determines whether an expert can provide relevant and reliable testimony from the perspective of a skilled artisan.

Chief Judge Stark granted a patent owner’s motion for summary judgment of inter partes review (IPR) estoppel, holding that obviousness defenses based on a prior art product could not be asserted because a prior art publication disclosing all of the product’s relevant features could have been raised during an IPR that reached a final written decision.

Chief Judge Gilstrap of the Eastern District of Texas held that the litigation conduct of defendants Huawei Device USA, Inc. and Huawei Device (Shenzhen) Co., Ltd. (collectively, “Huawei”), in a patent infringement action, merited a finding of exceptional case status and an award of attorneys’ fees to the plaintiff patent holders.

The Federal Circuit rejected a patent owner’s time-bar challenge to an inter partes review (IPR) proceeding, holding that the patent owner failed to provide sufficient details to establish proper service of a complaint for infringement. The court further held that the patent owner was precluded from relying on the petitioner’s waiver of service because it did not raise that argument to the Patent Trial and Appeal Board.