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35 U.S.C. § 287(a) and the Burdens of Providing Notice for Pre-Suit Damages: Packet Intelligence LLC, v. Netscout Systems, Inc.
In Packet Intelligence LLC, v. Netscout Systems, Inc. the Federal Circuit reversed a jury determination for pre-suit damages, and vacated an enhancement of such damages, for Netscout’s infringement of U.S. Patent 6,665,725, U.S. Patent 6,839,751, and U.S. Patent 6,954,789, all owned by Packet Intelligence. The patents at issue were all directed to monitoring packets exchanged over a computer network. The...
Plain and Ordinary Meaning Requires More Than a Mere Capability
The Eastern District of Texas has granted-in-part Defendant HTC’s motion to strike expert testimony based on application of improper legal principles, to wit, the expert had improperly extended the plain and ordinary meaning of claims of U.S. Pat. No. 5,802,467 to encompass a mere capability to do the thing. Salazar v. HTC Corp., Civil No. 2:16-cv-01096-JRG-RSP (E.D. Tex. May 2,...
Written Description Required to Claim Priority from a PCT
The Federal Circuit has clarified what written description is sufficient for a PCT application to qualify as a priority document for a U.S. Patent application. In Hologic, Inc. v. Smith & Nephew, Inc., No. 2017-1389 (Fed. Cir. Mar. 14, 2018) the Federal Circuit upheld a Patent Trial and Appeal Board (PTAB) decision finding that an earlier-filed PCT application (Publication No....
Contemporary Evidence Beats Google Obviousness Challenge
The Federal Circuit recently upheld two patents against an obviousness challenge by Google. (Google v. At Home Bondholders Liquidating Trust (Fed. Cir. 2018).) This case demonstrates the importance of contemporary evidence to support what a piece of prior art truly would have disclosed to a person of ordinary skill in the art. At Home Bondholders’ Liquidating Trust, as the name...
Expert Failing to Explain Source Code Analysis Is Precluded From Testifying
In a decision that will strike a chill into accused patent infringers everywhere, a defense expert has been precluded from testifying at trial about his analysis of source code that was purportedly central to the defendant’s non-infringement defense. Fleming v. Escort Inc., No. 1:CV 09-105 (D. Id. May 23, 2012). The expert’s report identified lines of source code that allegedly...