Insights

New York – June 3, 2020: For over five years, Palomar Technologies, Inc. (“Palomar”) has been asserting what has now been confirmed to be an invalid patent before the U.S. District Court for the District of Massachusetts. Palomar alleges that MRSI Systems, LLC (“MRSI”) infringes U.S. Patent No. 6,776,327. The claimed method, which Palomar refers to as “double pick,” is directed to “placing an item at a final location more accurately by first moving it to an intermediate location.” While Palomar tried to dress its claimed method up as a manufacturing process, the claims are recited at a high level of generality and abstraction. After five years of costly litigation, the verdict came down on May 28, 2020 by Chief Judge Saylor: a litigation team lead by Brian Paul Gearing, Ph.D. proved by clear and convincing evidence that Palomar’s patent claims subject matter that is not patentable and is therefore invalid under 35 U.S.C. § 101.

Appellate advocacy differs in many ways from earlier phases of a litigation. Perhaps the most significant differences can be observed during oral arguments. Time constraints combined with an extensive record and the high stakes at issue in an appeal can pose significant challenges for counsel and the panel of judges alike. To further streamline this process, the U.S. Court of Appeals for the Federal Circuit published an updated version of its Oral Argument Guide (located here). Although this new version modifies the Court’s guidelines in several respects, the Court’s summary signals the main focus to be on “a revised Courtroom Decorum Policy and new Guidelines for Counsel During Argument.” See Updated Argument Resources (last visited Jan. 29, 2020).

Since the early days of the America Invents Act (AIA), the U.S. Patent and Trademark Office has required patent owners seeking to amend claims in post-grant proceedings, such as inter partes reviews (IPRs), to demonstrate patentability of the amended claims, not only over a petitioner’s instituted grounds of unpatentability, but in light of all prior art known to the patent owner. As a result of this heightened standard, the Patent Trial and Appeal Board has thus far denied 95 percent of all patent owners’ motions to amend. This practice was upended on Wednesday, October 4, 2017, by a sharply divided en banc panel of the Federal Circuit in Aqua Prod., Inc. v. Matal, No. 2015-1177 (Fed. Cir. Oct. 4, 2017).

Apple won a major victory on Wednesday in its seemingly endless patent battles against Samsung when the Federal Circuit denied Samsung's petition for a rehearing en banc. By doing so, the Federal Circuit let stand an earlier opinion that Apple was entitled to a narrow, feature-based injunction against Samsung. On the same day, the majority of the divided panel reissued a slightly amended version of that precedential opinion, which had vacated the district court's holding that Apple did not establish the first two eBay factors: (1) that it was irreparably harmed by Samsung's infringement; and (2) that monetary damages were inadequate.