Page 48 - IP Record
P. 48
46 The IP Record - 2014
IPO’s 4-Star Federal Circuit Summaries™
Kilopass Technology, Inc. v. Sidense Corp. 13-1193
AWARD OF ATTORNEYS’ FEES UNDER and … obtain[ed] opinions from two different
PATENT ACT SECTION 285 DID NOT law frms,” although Kilopass “ignored ‘numer-
REQUIRE PROOF OF ACTUAL KNOWL- ous differences’ between the patent claims and
EDGE OF OBJECTIVE BASELESSNESS Sidense’s accused products.” The Federal Circuit
— December 27, 2013 — In an opinion by held Sidense was not required to prove that Kilo-
Judge O’MALLEY, the Federal Circuit vacated pass had actual knowledge that the suit was ob-
a district court’s denial of attorneys’ fees and re- jectively baseless. Subjective bad faith could be
manded the case. Kilopass’s patents claimed pro- proved if objective baselessness was “so obvious
grammable memory cells. Following summary that it should have been known,” or inferred if
judgment of no infringement, Sidense moved for Kilopass was “manifestly unreasonable in assess-
an award of attorneys’ fees under Patent Act sec- ing infringement, while continuing to assert in-
tion 285. The district court found Sidense failed fringement in court.” Chief Judge RADER fled a
to prove that Kilopass brought or maintained the concurring opinion.
suit in subjective bad faith. The district court rea-
soned the suit was not baseless because “Kilopass
performed substantial pre-fling investigation
Fresenius, USA, Inc. v. Baxter Int’l, Inc. 12-1334
TESTING BY GENERIC FIRM AFTER FDA Dissenting, Judge O’MALLEY, joined by Chief
APPROVAL FELL WITHIN PATENT ACT’S Judge RADER and Judge WALLACH, argued
SAFE HARBOR — November 7, 2013 — A that although USPTO actions can affect pro-
divided Federal Circuit denied a petition for en spective patent rights, such actions “cannot, and
banc rehearing of an appeal from a district court’s should not be permitted” to eradicate past in-
patent infringement judgment against Fresenius. fringement judgments. O’Malley said this could
The claims were for methods and apparatus for render district court decisions “meaningless in
kidney dialysis. A frst Federal Circuit panel the resolution of patent infringement disputes.”
upheld a district court fnding that the claims In the second dissenting opinion, Judge NEW-
were infringed and not invalid and remanded the MAN argued that an executive branch agency
case for reconsideration of injunctive relief and should not be able to override judgments of Ar-
post-judgment damages. While the remand was ticle III courts. Newman said the panel opinion
pending, a second Federal Circuit panel upheld created instability and an “unconstrained free-
a USPTO decision canceling the claims upon for-all” that replaced “innovation incentive with
reexamination. The Federal Circuit held that the litigation cost” and facilitated gaming of the sys-
infringement suit was not “suffciently fnal” to tem. Judge DYK, joined by Judge PROST, fled a
preclude application of the intervening cancella- concurring opinion.
tion. The cancellation extinguished the underly-
ing basis for the infringement suit.
Intellectual Property Owners Association
IPO’s 4-Star Federal Circuit Summaries™
Kilopass Technology, Inc. v. Sidense Corp. 13-1193
AWARD OF ATTORNEYS’ FEES UNDER and … obtain[ed] opinions from two different
PATENT ACT SECTION 285 DID NOT law frms,” although Kilopass “ignored ‘numer-
REQUIRE PROOF OF ACTUAL KNOWL- ous differences’ between the patent claims and
EDGE OF OBJECTIVE BASELESSNESS Sidense’s accused products.” The Federal Circuit
— December 27, 2013 — In an opinion by held Sidense was not required to prove that Kilo-
Judge O’MALLEY, the Federal Circuit vacated pass had actual knowledge that the suit was ob-
a district court’s denial of attorneys’ fees and re- jectively baseless. Subjective bad faith could be
manded the case. Kilopass’s patents claimed pro- proved if objective baselessness was “so obvious
grammable memory cells. Following summary that it should have been known,” or inferred if
judgment of no infringement, Sidense moved for Kilopass was “manifestly unreasonable in assess-
an award of attorneys’ fees under Patent Act sec- ing infringement, while continuing to assert in-
tion 285. The district court found Sidense failed fringement in court.” Chief Judge RADER fled a
to prove that Kilopass brought or maintained the concurring opinion.
suit in subjective bad faith. The district court rea-
soned the suit was not baseless because “Kilopass
performed substantial pre-fling investigation
Fresenius, USA, Inc. v. Baxter Int’l, Inc. 12-1334
TESTING BY GENERIC FIRM AFTER FDA Dissenting, Judge O’MALLEY, joined by Chief
APPROVAL FELL WITHIN PATENT ACT’S Judge RADER and Judge WALLACH, argued
SAFE HARBOR — November 7, 2013 — A that although USPTO actions can affect pro-
divided Federal Circuit denied a petition for en spective patent rights, such actions “cannot, and
banc rehearing of an appeal from a district court’s should not be permitted” to eradicate past in-
patent infringement judgment against Fresenius. fringement judgments. O’Malley said this could
The claims were for methods and apparatus for render district court decisions “meaningless in
kidney dialysis. A frst Federal Circuit panel the resolution of patent infringement disputes.”
upheld a district court fnding that the claims In the second dissenting opinion, Judge NEW-
were infringed and not invalid and remanded the MAN argued that an executive branch agency
case for reconsideration of injunctive relief and should not be able to override judgments of Ar-
post-judgment damages. While the remand was ticle III courts. Newman said the panel opinion
pending, a second Federal Circuit panel upheld created instability and an “unconstrained free-
a USPTO decision canceling the claims upon for-all” that replaced “innovation incentive with
reexamination. The Federal Circuit held that the litigation cost” and facilitated gaming of the sys-
infringement suit was not “suffciently fnal” to tem. Judge DYK, joined by Judge PROST, fled a
preclude application of the intervening cancella- concurring opinion.
tion. The cancellation extinguished the underly-
ing basis for the infringement suit.
Intellectual Property Owners Association
