A Lesson on Waiver: Voluntarily Dismissing Claim “Waives” Goodbye to Affirmative Defense

Author: Jose M. Recio
Editor: Lauren J. Dreyer

In Vapor Point L.L.C. v. Moorhead, Nos. 15-1801, 15-2003 (Fed. Cir. Aug. 10, 2016), the Federal Circuit affirmed a district court’s granting of a motion for correction of inventorship and dismissal of the case.

Vapor Point sued NanoVapor seeking to have two of Vapor Point’s employees added as joint inventors in NanoVapor’s patents. These two employees were previously employed by NanoVapor. NanoVapor countersued, seeking to have its employee added as a joint inventor in Vapor Point’s patents. Each party alleged state law claims against the other, and NanoVapor included an affirmative defense that Vapor Point’s employees, who were former employees of NanoVapor, had an obligation to assign their inventions to NanoVapor. As the case proceeded, the parties filed a notice of dismissal with prejudice of their state law claims. After resolving all inventorship issues in favor of Vapor Point, the district court dismissed the case and found that NanoVapor waived its claim relating to the obligation to assign.

The Federal Circuit affirmed the district court’s inventorship determination and also held that NanoPoint’s voluntary dismissal of its state law claims mooted its affirmative defense that Vapor Point’s two employees had an obligation to assign any rights to NanoVapor. Judge O’Malley concurred with the Court’s decision, but wrote separately to state that the Court should have decided NanoVapor’s assignment claim by holding that NanoVapor could not establish that any assignment of patent rights was executed in writing, as required by 35 U.S.C. § 261.

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PTAB Must Apply Phillips  Claim Construction Standard to Patents that Expire During Pending Reexam

Author: Jose M. Recio
Editor: Lauren J. Dreyer

In In re CSB-System Int’l, Inc., No. 15-1832 (Fed. Cir. Aug. 9, 2016), the Federal Circuit held that patents that expire during a pending reexamination should not be examined under the broadest reasonable interpretation (BRI) standard.

CSB’s patent was subjected to an ex parte reexam before it expired. During the pendency of an appeal to the PTAB of the examiner’s rejection of all claims, the patent expired. The PTAB, in analyzing the examiner’s claim constructions, which applied the BRI standard, applied the same standard.

The Federal Circuit held that the PTAB erred in using the same standard. The Court acknowledged that during reexams of unexpired patents the PTAB indeed should use the BRI standard. But when a patent expires during the reexam, the PTAB should thereafter apply the claim construction standard set forth in Phillips v. AWH Corp. The Court rejected the Patent Office’s argument that the PTAB, as a reviewer of the examiner’s work, should review claim constructions consistent with the standard used by the examiner. It held that the Phillips standard applies to expired patents in reexam regardless of the standard that the examiner applied. Nonetheless, it affirmed the PTAB’s decision because applying the BRI standard in this case produced the same result that would have been obtained under the correct Phillips standard.

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Delaware May Be Diminutive, But Its Long Arm Reaches All the Way to Finland

Author: Jon T. Self, Ph.D.
Editor: Kevin D. Rodkey

In Polar Electro Oy v. Suunto Oy, No. 15-1930 (Fed. Cir. July 20, 2016), the Federal Circuit vacated a district court’s dismissal for lack of personal jurisdiction and remanded to determine whether personal jurisdiction over a Finnish company would be reasonable and fair in Delaware. Polar Electro sued Suunto, alleging that Suunto’s shipments of exercise equipment through its sister company, ASWO, into Delaware for sale infringed Polar Electro’s patents. The district court dismissed the suit, finding defendant Suunto lacked minimum contacts with Delaware sufficient to find personal jurisdiction over Suunto.

On appeal, the Federal Circuit reversed, finding that Suunto created minimum contacts for jurisdiction when it purposefully shipped products to Delaware when Suunto physically fulfilled orders and transmitted those orders to ASWO, even though ASWO paid for shipping and took title at the dock in Europe. Next the Court found that Delaware’s long arm statute could be satisfied through “dual jurisdiction” by partial satisfaction of two subsections, even though “full satisfaction of any individual subsection” was lacking. Although the Court found minimum contacts with Delaware, it noted that the district court did not determine whether jurisdiction was reasonable. Accordingly, the Federal Circuit vacated the district court’s decision and remanded for consideration whether exercise of personal jurisdiction would be reasonable and fair.

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