A Blog About Intellectual Property Litigation and the District of Delaware


CAFC
United States Court of Appeals for the Federal Circuit

"Our RFAs will blot out the sun!" Possessed Photography, Unsplash

I have a feeling that, when the question of "how many RFAs can we serve if there is no limit" comes up going forward, we are all going to remember this case.

In FG SRC LLC v. Xilinx, Inc., C.A. No. 20-601-WCB (D. Del.), plaintiff apparently served 23,688 RFAs on the defendant, each one requesting an admission that a document produced by the defendant was authentic.

You may be thinking "Was this all in one set of RFAs?? Did they type this all out?!?" and it appears that the answer is "yes." According to the Court, the plaintiff served a "3,604-page document entitled 'First Requests for Admission of Authenticity.'" That's 9.1 RFAs per page.

I have to imagine they used a computer script or something similar to draft these. I hope they didn't condemn a poor associate or paralegal to their office for a week to type these out.

In any case, the defendant—shockingly!—objected that having to respond to 23,668 individual RFAs was "abusive, unreasonable, and oppressive." Judge Bryson ...

Fire Department
Mor Shani, Unsplash

In IOEngine v. Paypal Holdings, Inc., C.A. No. 18-452-WCB (D. Del.), the inventor kept a box of 33 prototypes for his invention in his basement "laboratory."

One of the prototypes—the "MediKey device"—had been the subject of intense dispute in a previous case on his patent. It had been analyzed by experts for both sides, who disputed its functionality and whether he had accurately described it to the PTO (as part of an inequitable conduct claim).

After a series of electrical incidents and fires in his laboratory, involving visits from various electricians and fire control personnel, the inventor discovered that the prototypes were in a new box and that the MediKey device was missing. …

A peel can be a trap for the unwary.
A peel can be a trap for the unwary. Jake Nackos, Unsplash

I saw on the Civil Procedure & Federal Courts Blog that the Supreme Court adopted an amended FRAP 3 last week.

The new amendment is focused on getting rid of some pitfalls in the previous procedure for filing a notice of appeal.

The old rule required a party to file a notice of appeal identifying the "judgment, order, or part thereof" that it is appealing. As explained in the comments to the amendment (embedded below), some courts interpreted that language strictly to hold that a party who named a specific order waived their right to otherwise appeal the judgment:

Whether due to misunderstanding or a misguided attempt …

Yesterday the Federal Circuit granted a mandamus petition to transfer a case against Apple out of the Western District of Texas to the Northern District of California, ordering that Judge Alan D. Albright had clearly erred in declining to transfer the case.

Patently O has a full summary of the opinion, including the strong dissent.

A couple of additional thoughts:

  • It is interesting that the Federal Circuit did not have a problem with Apple filing its mandamus petition before the District Court had even ruled on the motion to transfer. Footnote 1 does limit this practice to the "particular circumstances of the case," but obviously it worked out well for Apple here.
  • The Federal Circuit's opinion applies Fifth Circuit …

Handwritten Form
Glenn Carstens-Peters, Unsplash

The "printed matter" doctrine states that elements claiming printed matter—e.g., text printed on paper or some other substrate—bear no patentable weight unless the printed matter and the substrate are functionally related. As the Federal Circuit explained today:

[P]rinted matter encompasses any information claimed for its communicative content, and the doctrine prohibits patenting such printed matter unless it is “functionally related” to its “substrate,” which encompasses the structural elements of the claimed invention.

In its decision, the Federal Circuit noted the Court has—incredibly—never addressed whether a claim directed to printed matter is ineligible under § 101:

Notably, since the Supreme Court articulated its two-step framework in Alice, this court has not directly addressed whether …

Previous equations for deciding whether to join an existing IPR
Previous equations for deciding whether to join an existing IPR Roman Mager, Unsplash

Today the Federal Circuit held that a party joining an existing IPR is not subject to estoppel on any grounds other than those that were actually raised. See the opinion below.

Before this, a plaintiff could argue that a defendant who joined an in-progress IPR was estopped on any anticipation or obviousness arguments that "reasonably could have [been] raised" in the IPR.

The Court here held, in short, that because a defendant joining an existing IPR is not allowed to add new grounds at all, it cannot be estopped except on those grounds actually raised.

It relied on the Facebook decision we talked about …

Judge Bryon issued an interesting stay opinion last Friday.

The plaintiff had initially asserted six patents. Of those, four were dismissed under § 101, and the claims as to one of the remaining patents were severed and stayed pending IPR.

The case was set to go to trial on the last remaining patent on November 30, just over 11 weeks from the date of the order. But, last month, the PTO granted a request for ex parte reexamination of the sole asserted claim of that patent.

Shortly after that, Judge Bryson issued his opinion granting a motion to stay pending re-exam. A couple of interesting points:

  • What a turnaround! Defendant first indicated it intended to request a stay …
IPR

The Federal Circuit's decision is below.

It found that even though the defendant did not receive an identification of asserted claims from the plaintiff until after the statutory IPR deadline, and even though the patents included a total of 830 claims, the statute did not allow the defendant to file a new IPR petition and then join it to its previous IPR proceeding as a way to add claims after the statutory filing deadline.

The Court recognized that the decision would result in wasted efforts by defendants in challenging claims unnecessarily:

We . . . recognize that our analysis here may lead defendants, in some circumstances, to expend effort and expense in challenging claims that may ultimately never be asserted …

In an appeal from a Judge Battalion case in the District of Delaware, the Federal Circuit today held that—unsurprisingly—a jury may answer the fact question of whether a patent is standards essential.

It held that the argument to the contrary, that the Court must determine whether a patent is standards-essential during claim construction, was based on a misreading of precedent.

Buckets
Carolyn V, Unsplash

The Federal Circuit today reissued its March 2020 opinion in Illumina, Inc. v. Ariosa Diagnostics, Inc., which held a "method of preparation" claim relating to a natural phenomenon was patent eligible.

The reissue follows a petition for rehearing.

The patents involve a method for preparing a fetal DNA sample using a blood sample from a pregnant mother, by sorting the DNA fragments and removing the smaller ones using a size threshold.

The Original Bucket-Based Analysis

The Court originally described how it has consistently rejected "natural phenomenon"-related claims that fall into a "diagnostic" bucket, but has permitted method of treatment claims:

This is not a diagnostic case. And it is not a method of …