The Decision To Grant Rehearing En Banc In Apple v. Samsung

On October 7, 2016, the Federal Circuit issued another decision in the ongoing patent litigations between Apple and Samsung that began in the Northern District of California. The district court had found at summary judgment that Samsung infringed one of Apple’s patents.  The jury subsequently determined that Samsung infringed two others, and that the asserted claims were not invalid.  The district court then denied Samsung’s motions for judgment as a matter of law (“JMOL”) and entered judgment accordingly.  In the subsequent appeals (2015-1171, 2015-1195, 2015-1994) a panel of the Federal Circuit (Chief Judge Prost, Judge Dyk, and Judge Reyna) reversed the district judge’s denial of JMOL with regard to the jury’s verdict of infringement of one patent and non-obviousness of two others.

Apple sought rehearing en banc, arguing that the panel had erred by relying upon “extra record evidence” to modify one of the parties’ agreed-upon claim constructions – evidence that the panel had located through its own independent research.  According to Judge Dyk’s dissent from the opinion of the en banc majority, for the first time in 26 years the Court granted en banc review in an obviousness case.  And the Court did so without further briefing from the parties, amici, or the government.

The en banc majority opinion and three dissents (authored by, not surprisingly, the members of the original panel) stretch more than one hundred  pages and include a fascinating obviousness analysis focusing on, in particular, motivation to combine and the role of secondary considerations.  The decision is, in this author’s opinion, a “must read” for that reason alone.  This article, however, concerns the Court’s grant of en banc review in the first place, which all three dissenting Judges condemned in their opinions.

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Hillary Clinton's IP Litigation Experience

Many people are surprised to learn that Hillary Clinton was an intellectual property attorney when she practiced law from 1977-1992 for the Rose Law Firm.  While the New York Times has reported that former colleagues cannot remember any cases she tried and that court reporters in Little Rock say she appeared in court infrequently, there are at least three reported court decisions on which she is named as counsel.  A review of those decisions provides an interesting glimpse into Clinton’s background with intellectual property.

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Federal Circuit Finds Claims Implemented on a General Purpose Cellphone Not Patentable

In Alice Corp. v. CLS Bank International, the Supreme Court applied its two-part test for patent eligibility under 35 U.S.C. § 101 – i.e., (1) whether the claims are drawn on a law of nature, natural phenomenon or abstract idea, and (2) whether the claims provide sufficient “inventive concept.” In Alice, the Supreme Court ultimately held that the claims were directed to the abstract idea of “intermediate settlement” and that the requirement of a general purpose computer was insufficient inventive concept to confer patent eligibility.

Since the Alice decision, many courts have referenced the Supreme Court’s discussion of a general purpose computer. However, in a recent precedential decision, the Federal Circuit further commented on whether reciting a conventional cellular telephone could provide sufficient inventive concept for patent eligibility.

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False Advertising Liability for Affiliate Marketing

The proliferation of e-commerce websites along with the rise of social media, blogging, and online communities has greatly increased the importance of affiliate marketing.  Affiliate marketing allows an affiliate to earn a commission by directing a customer to a company’s website to purchase a product.  Websites providing information, reviews, advice, and resources about particular types of products can earn substantial revenue by embedding affiliate links in webpages.  Affiliate marketers should be aware of a recent expansion in false advertising liability in the courts premised on negative reviews, rankings, and product comparisons.  Meanwhile, product manufacturers feeling aggrieved by statements made on product review websites now have a possible false advertising cause of action for seeking redress.

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Willfulness After Halo: Now What?

The general consensus is that the Supreme Court’s June decision in Halo Electronics v. Pulse Electronics eased the path to proving willfulness, as discussed previously on IP Litigation Current. Many speculated that one result of the Halo decision would be an increase in the value of patents, since a finding of willfulness may lead to trebling of damages.

While Halo did away with the objective prong of the willfulness inquiry, and also clarified that the requisite standard of proof for willfulness is a preponderance of the evidence as opposed to clear and convincing evidence, the question post-Halo has been: Now what? After all, the Supreme Court instructed that district courts “‘be guided by [the] sound legal principles’ developed over nearly two centuries of application and interpretation of the patent act.” Halo, 136 S. Ct. 1923, 1935 (2016) (quoting Martin v. Franklin Capital Corp., 546 U.S. 132, 136 (2005)). How have district courts have applied such guidance and legal principles post-Halo? Let’s have a look.

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