Jason Murata Axinn, Veltrop & Harkrider LLP Patent Infringement: Round Up of Recent Cases

Claim Construction  Federal Circuit Review of Claim Constructions  Indefiniteness  Means-Plus-Function Claims Divided Infringement Willful Infringement New Rules for Patent Infringement Complaints Overview 2

Claim Construction and Indefiniteness 3

Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015) Drug having specific average molecular weights District court heard expert testimony and concluded that claims were definite Federal Circuit reviewed de novo and reversed district court 4 Claim Construction & Indefiniteness

Claim construction and indefiniteness are questions of law reviewed de novo (without deference to district court)  Analysis of intrinsic evidence is a question of law Underlying factual findings reviewed for clear error (with deference to district court 5 Factual Findings Conclusions of Law BEFORE TEVA DE NOVO Factual Findings Conclusions of Law AFTER TEVA DE NOVO CLEAR ERROR

Takeaways  E xpect a nominal increase in Federal Circuit affirmance of district court’s claim construction  Strategy for claim construction with respect to use of experts and other extrinsic evidence to support claim construction  In prosecution, consider the tests that may be used to prove infringement and the variability between the test methods o More guidance in the specification? 6

Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct (2014) Heart-rate monitor for exercise machine “Spaced relationship” between electrodes for heart rate monitor District Court found claims indefinite under “insolubly ambiguous” standard Federal Circuit reversed 7 Indefiniteness

Old Standard:  A claim is indefinite “only when it is ‘not amenable to construction’ or ‘insolubly ambiguous.’” New Standard:  Claims must inform those in the art about the scope of the invention with “reasonable certainty” 8

Takeaways  Expect at most a small effect on likelihood of success in invalidating claim for indefiniteness o Has Nautilus really changed the standard?  More indefiniteness arguments will be raised in the short term 9

Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015)(en banc in part) A method for a “virtual classroom” Defendant argued that “distributed learning control module” was a means-plus-function limitation Prior cases gave “strong presumption” that not a means-plus-function claim 10 Means-Plus-Function Claim Limitations

Federal Circuit overruled the “strong” presumption that limitation that does not say “means for” is not in means-plus-function format Test remains whether claim limitation recites sufficient structure “Nonce” words treated like “means”  Device  Module  Mechanism  Element 11

Takeaways  There will likely be more claims found to be in means- plus-function format  Defendants may raise in claim construction more often to try to narrow the scope of the claims to corresponding structure(s) disclosed in the specification  Considerations for prosecution: o More attention to “nonce” words o Ensure adequate disclosure of corresponding structure in close cases to avoid indefiniteness 12

Divided Infringement 13

Akamai Tech. Inc. v. Limelight Networks, Inc., 2015 WL (Fed. Cir. 2015) (en banc) Patent concerned method of delivering Internet content Parties agreed that defendant performed some steps but defendant’s customers performed other steps Jury found defendant infringed patent 14

A content delivery method, comprising: 15 distributing a set of page objects... tagging at least some of the embedded objects... resolving the client request... returning... an IP address... Defendant’s Server Defendant’s Customers

Traditional principles of vicarious liability applies to determine whether or not the defendant is liable for another’s actions Principle-agent relationships, contractual arrangements, and joint enterprise are situations in which one party can be responsible for another party’s action 16

Takeaways  Noninfringement because more than one actor performs the claimed steps is harder to prove  Consider alternative theories of infringement  Note during prosecution: o Draft claims to avoid issue of divided infringement o Single actor to perform all claimed acts 17

Willful Infringement 18

Patent owner alleged induced infringement of patent concerning short-range wi-fi network Defendant asserted a good faith belief that patent was invalid to prove no intent to induce infringement Evidence of good faith belief of invalidity was excluded from trial by district court:  Statements in interference that asserted patent and prior art patent covered same subject matter  Alleged admissions regarding conception and reduction to practice of claimed invention 19 Commil USA, LLC v. Cisco Sys., 135 S. Ct (2015)

Good faith belief of invalidity is not a defense to induced infringement  Invalidity is a defense to liability  Invalidity is not a defense to infringement 20

Takeaways  Companies face higher risk with product / services launch if primary defense is invalidity  Inducement is not simple to prove – patentee must prove that defendant knew that induced acts would constitute infringement  Good faith belief of noninfringement is still a defense 21

Amendments to Federal Rules of Civil Procedure (December 1, 2015) 22

Currently, complaint only has to state:  Jurisdiction  Plaintiff owns patent  Defendant infringed patent  Plaintiff has given defendant notice of its infringement  Demand for an injunction and/or damages Beginning December 1, 2015, unless Congress blocks new Rules, this will no longer be sufficient 23

Under Twombly/Iqbal, complaint must state that are sufficient to make it plausible that the defendant infringed the patent Almost unanimous agreement that a Complaint will have to be more detailed Level of detail required by the courts remains to be seen 24

Takeaways  For patent owners, patent infringement complaint will require more facts o Guidance from cases regarding pleading induced and contributory infringement and patent invalidity o Effect on pre-suit investigations  For defendants, consider moving to dismiss claims that lack such facts for cases filed after December 1,

Questions? 26 Jason T. Murata AXINN, VELTROP & HARKRIDER LLP 90 State House Square Hartford, CT