Page 53 - IP Record
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The IP Record - 2014 51
Highmark Inc. v. Allcare Health Management System, Inc., 12-1163 Brief Filed on Janu-
ary 25, 2014
IPO’s brief in the U.S. Supreme Court argued that whether a patent infringement claim is “objectively
reasonable” presents a question of law that warrants de novo review. The issue in the courts below was
whether Allcare’s patent infringement claims were frivolous.
Octane Fitness, LLC v. Icon Health & Fitness, Inc., Brief Filed December 9, 2013
IPO fled a brief in the U. S. Supreme Court urging an interpretation of Patent Act section 285 that
would allow courts to grant more attorney fee awards to prevailing parties in patent suits. IPO said that
in the context of positions taken by parties in litigation, whether a case is “exceptional” under section
285 should turn only on whether the position taken by the non-prevailing party was objectively reason-
able and not on any subjective intent. The IPO Board of Directors approved fling the brief.
Medtronic, Inc. v. Boston Scientifc Corp., et al, Brief Filed September 23, 2013
The Federal Circuit ruled on September 18, 2012 that the declaratory judgment plaintiff, a licensee that
was seeking a declaration of no patent infringement, had the burden of proving no infringement, in the
limited circumstance in which the license prohibited the licensor from pursuing infringement counter-
claims. IPO’s brief argued that the Federal Circuit was correct. It followed the well-settled rule that the
party seeking relief bears the burden of persuasion.
Fresenius USA, Inc. v. Baxter International, Inc., 2012-1334, -1335 Brief Filed August
15, 2013
IPO supported a petition for rehearing en banc. IPO expressed no position on the correctness of the
decision, but argued that an en banc rehearing will help secure or maintain uniformity of the court’s
decisions, and that the case involves questions of exceptional importance. The panel vacated a dis-
trict court’s infringement judgment against Fresenius after the USPTO had cancelled the claims in a
reexamination proceeding and the Federal Circuit had upheld the cancellation. The district court case
was on remand to reconsider an injunction and damages. The panel held that the USPTO cancellation
removed the basis for the infringement suit. IPO said (1) the increasing number of reexaminations
creates a high likelihood of conficting USPTO and district court validity judgments, (2) the Federal
Circuit appears to have reached conficting conclusions in two Fresenius cases, and (3) the panel deci-
sion may raise serious constitutional questions.
Lighting Ballast Control LLC v. Philips Electronics North America Corp. and Universal
Lighting Technologies, Inc., 12-1014. -1015 – Brief Filed June 26, 2013
The Federal Circuit posed three questions when it ordered an en banc rehearing in the case: “a) Should
this court overrule Cybor Corp. v. FAS Technologies, Inc. . . . ? b) Should this court afford deference to
any aspect of a district court’s claim construction? c) If so, which aspects should be afforded defer-
ence?” IPO took the position that Cybor should be overruled in part. Issues of patent claim construc-
tion based on the intrinsic record should continue to be reviewed de novo. However, underlying fac-
tual determinations by the district court based on extrinsic evidence, such as expert testimony, should
be afforded deference and reviewed for “clear error” by the Federal Circuit.
www.ipo.org
Highmark Inc. v. Allcare Health Management System, Inc., 12-1163 Brief Filed on Janu-
ary 25, 2014
IPO’s brief in the U.S. Supreme Court argued that whether a patent infringement claim is “objectively
reasonable” presents a question of law that warrants de novo review. The issue in the courts below was
whether Allcare’s patent infringement claims were frivolous.
Octane Fitness, LLC v. Icon Health & Fitness, Inc., Brief Filed December 9, 2013
IPO fled a brief in the U. S. Supreme Court urging an interpretation of Patent Act section 285 that
would allow courts to grant more attorney fee awards to prevailing parties in patent suits. IPO said that
in the context of positions taken by parties in litigation, whether a case is “exceptional” under section
285 should turn only on whether the position taken by the non-prevailing party was objectively reason-
able and not on any subjective intent. The IPO Board of Directors approved fling the brief.
Medtronic, Inc. v. Boston Scientifc Corp., et al, Brief Filed September 23, 2013
The Federal Circuit ruled on September 18, 2012 that the declaratory judgment plaintiff, a licensee that
was seeking a declaration of no patent infringement, had the burden of proving no infringement, in the
limited circumstance in which the license prohibited the licensor from pursuing infringement counter-
claims. IPO’s brief argued that the Federal Circuit was correct. It followed the well-settled rule that the
party seeking relief bears the burden of persuasion.
Fresenius USA, Inc. v. Baxter International, Inc., 2012-1334, -1335 Brief Filed August
15, 2013
IPO supported a petition for rehearing en banc. IPO expressed no position on the correctness of the
decision, but argued that an en banc rehearing will help secure or maintain uniformity of the court’s
decisions, and that the case involves questions of exceptional importance. The panel vacated a dis-
trict court’s infringement judgment against Fresenius after the USPTO had cancelled the claims in a
reexamination proceeding and the Federal Circuit had upheld the cancellation. The district court case
was on remand to reconsider an injunction and damages. The panel held that the USPTO cancellation
removed the basis for the infringement suit. IPO said (1) the increasing number of reexaminations
creates a high likelihood of conficting USPTO and district court validity judgments, (2) the Federal
Circuit appears to have reached conficting conclusions in two Fresenius cases, and (3) the panel deci-
sion may raise serious constitutional questions.
Lighting Ballast Control LLC v. Philips Electronics North America Corp. and Universal
Lighting Technologies, Inc., 12-1014. -1015 – Brief Filed June 26, 2013
The Federal Circuit posed three questions when it ordered an en banc rehearing in the case: “a) Should
this court overrule Cybor Corp. v. FAS Technologies, Inc. . . . ? b) Should this court afford deference to
any aspect of a district court’s claim construction? c) If so, which aspects should be afforded defer-
ence?” IPO took the position that Cybor should be overruled in part. Issues of patent claim construc-
tion based on the intrinsic record should continue to be reviewed de novo. However, underlying fac-
tual determinations by the district court based on extrinsic evidence, such as expert testimony, should
be afforded deference and reviewed for “clear error” by the Federal Circuit.
www.ipo.org
