The big news this week (and it is particularly big news in Tyler and Marshall, Texas) is that the ‎Supreme Court rules that a defendant “resides” for purposes of the patent venue statute only ‎where the defendant actually ‎is incorporated or where the defendant has committed acts of ‎infringement and ‎has a regular and established place of business. That is, the general venue ‎statute, which permits corporations to be sued wherever personal jurisdiction is present, does not ‎apply to patent cases. See our report on the case here.‎

In Rivera, the panel affirms a determination by the ITC that the claims of a patent directed to ‎single brew coffee machines are invalid due to lack of compliance with the written description ‎requirement. In yet another Halo v. Pulse decision, the Circuit rules that it does not have ‎jurisdiction to hear an appeal because an order that had not decided remaining issues as to ‎prejudgment interest was not a final decision.‎

Thanks to my colleague Gillian Bunker, one of our biotech Ph.D. prosecutors, for her help with ‎this week’s report.‎

Pete ‎

Rivera v. ITC, Fed. Cir. Case 2016-1841 (May 23, 2017)‎

The ’320 patent describes as falling into two general categories: those that use “pods” (small filter ‎packages), and those that use larger, cup-shaped filter cartridges. The patent purports to solve the ‎problem of the incompatibility between pod-based and cartridge-based systems. The original ‎claims were directed to a “pod adaptor assembly” or a “brewing chamber for a beverage pod.” ‎However, these claims were cancelled during prosecution in favor of broader claims reciting “a ‎container … adapted to hold brewing material.” Rivera filed a complaint with the ITC over ‎refillable cartridges that included an integrated mesh filter. The panel identifies the basic issue in ‎this case as whether the patent as filed supports Rivera’s claims to a “container … adapted to ‎hold brewing material.” ‎

Rivera argued unsuccessfully that the broad definition of “pod” in the specification provided ‎written description support for both the species shown in the specification (with a “pod” being ‎distinct from the cartridge), and the species represented by the accused products (with a filter ‎integral to the cartridge). However, the panel notes that the distinction between pods and ‎cartridges permeates the entire patent, and points out that Rivera’s argument is directed to the ‎question of enablement, and not written description. The panel clarifies “whatever a ‘pod’ is, the ‎specification indicates that it is distinct from the receptacle; … nothing in the specification shows ‎that the ‘pod’ and the receptacle may be the same structure.” The panel also points out that “the ‎knowledge of ordinary artisans may be used to inform what is actually in the specification…but ‎not to teach limitations that are not in the specification, even if those limitations would be ‎rendered obvious by the disclosure in the specification.” ‎

Comments: When written description rejections arise during prosecution, they can often be ‎addressed with claim amendments. However, once prosecution has concluded, a written ‎description issue can result in a finding of invalidity. Thus, whenever claims are broadened ‎during prosecution (especially when they are amended to cover a new embodiment or potentially ‎infringing product), an applicant must take care to review the specification carefully for adequate ‎support for the newly-added scope. ‎

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Halo Electronics, Inc. v. Pulse Electronics, Inc., Fed. Cir. Case 2016-2006 (May 26, 2017)‎

The Circuit rules that it does not have jurisdiction to hear an appeal under either 28 U.S.C. ‎‎§ 1295(a)(1) or 1292(c)(2) because a prior order that had not decided remaining issues as to ‎prejudgment interest was not a “final decision.”‎

An April 6, 2016 order required the parties to either file a stipulation as to the amount of interest ‎due or, if they disagreed on the calculation of interest, to brief their respective positions. The ‎issue before the panel is whether that order was a final order. Clearly, the district court never ‎resolved the parties’ dispute regarding the date from which to begin calculating prejudgment ‎interest or set the amount of prejudgment interest to be awarded to Halo. As a result, the panel ‎holds that there is no final decision and the Circuit thus lacks jurisdiction under § 1295(a)(1).‎

For similar reasons, the panel determines that it lacks jurisdiction pursuant to § 1292(c)(2). This ‎statute provides an exception to the finality requirement over “an appeal from a judgment in a ‎civil action for patent infringement which would otherwise be appealable to this court and is final ‎except for an accounting.” However, the panel notes that, as an exception, § 1292(c)(2) is to be ‎interpreted narrowly. Regardless whether prejudgment interest is part of an accounting or not, ‎the award of prejudgment interest itself in this case is not final. The Circuit has held that ‎‎§ 1292(c)(2) “does not go so far as to permit us to consider a non-final order” that is related to ‎the accounting. Thus, because the order appealed from is itself non-final, the Circuit lacks ‎jurisdiction under § 1292(c)(2). ‎

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