Federal Circuit Patent Watch: Duplicative-litigation doctrine precludes patentee from pursuing products in a second case

Federal Circuit Patent Watch: Duplicative-litigation doctrine precludes patentee from pursuing products in a second case

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Precedential Federal Circuit Opinions   

1.  ARENDI S.A.R.L. v. LG ELECTRONICS INC. [OPINION]  (2021-1967, 9/7/2022) (Prost, Chen, and Stoll)

Prost, J. Affirming grant of motion to dismiss under the duplicative-litigation doctrine. In a prior case involving the same parties and the same asserted patent, the patent owner accused hundreds of products including “Rebel 4” and “non-Rebel 4 products.” However, although local rules required the patent owner to submit, during fact discovery, claim charts for each accused product, patent owner submitted claim charts for only the Rebel 4 product. In the prior case, the district court granted defendant’s motion to strike portions of patent owner’s expert report because it allegedly “disclosed–for the first time–infringement contentions for [non-Rebel 4 products].” Patent owner then filed the present case accusing the non-Rebel 4 products, defendant moved to dismiss the present case as duplicative and the district court granted that motion to dismiss. “The duplicative-litigation doctrine prevents plaintiffs from ‘maintain[ing] two separate actions involving the same subject matter at the same time in the same court . . . against the same defendant.’” The current and prior cases were duplicative because they involved the same parties, the same patent, and the same accused non-Rebel 4 products. Patent owner incorrectly argued the non-Rebel 4 products were not accused in the prior case because the district court struck portions of its expert report. “But [patent owner] misunderstands (if not misrepresents) the district court’s [order in the prior case]. As the district court explained when dismissing the [current] complaint, although [patent owner] insists the district court ‘ruled’ that the non-Rebel 4 products ‘had not been accused in [the prior case],’ ‘[t]hat is not correct.’ [citation omitted]. The court did not grant [defendant’s] motion to strike parts of [patent owner’s] infringement expert report because [patent owner] failed to sufficiently accuse the non-Rebel 4 products. The court granted the motion to strike because [patent owner] ‘failed to fulfill its discovery obligations’ with respect to those products, so [patent owner’s] infringement allegations in its expert report were procedurally untimely.”

2.  HYATT v. PTO [OPINION]  (2021-2324, 9/8/2022) (Moore, Prost, and Hughes)

Prost, J. Affirming summary judgment that a restriction requirement was proper.  The application claimed “priority to applications filed as early as 1983” and was being prosecuted under pre-URAA rules providing a term of seventeen years from the grant date. In 2013, the examiner instructed the applicant to select claims for prosecution and the applicant “complied, under protest, and selected eight claims out of the approximately 200 in that application.” Subsequently, the examiner issued a rejection, the applicant “responded with significant amendments,” and the examiner then issued a restriction requirement. The applicant’s “failure to [previously] disclose his species-altering amendments can accurately be characterized as an act of withholding” sufficient to meet Rule 129(b)(1)(ii)’s requirement for action by the applicant.

3.  SAWSTOP HOLDING LLC v. VIDAL [OPINION]  (2021-1537, 2021-2105, 9/14/2022) (Newman, Linn, and Chen)

Linn, J. Affirming grant of summary judgment denying request for patent term adjustment. The “reversing an adverse determination of patentability” clause of 35 U.S.C. § 154(b)(1)(C) “requires a determination that the claim in question is substantively allowable, not just free of a particular rejection.”

4.  POLARIS INNOVATIONS LIMITED v. BRENT [OPINION]  (2019-1483, 9/15/2022) (Prost, Chen, and Stoll)

Stoll, J. Affirming Board’s denial of patentee’s motions to terminate. The Board issued final written decisions finding all claims unpatentable, the patentee appealed and the parties subsequently reached a settlement. Following its decision in Arthrex, the Federal Circuit vacated the final written decisions. The Supreme Court’s subsequent decision in Arthrex reinstated the final written decisions. “In sum, the Board had already decided the merits of the cases in final written decisions that were not vacated at the time the Board made its decision denying [patentee’s] motions to terminate. This determination was not arbitrary. We thus affirm the Board’s decision that termination was inappropriate.” Also affirming the Board’s claim constructions of “memory chip” to encompass either packaged or unpackaged dies and “resource tag buffer” as a single buffer. Also affirming the Board’s determinations of unpatentability.


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