Noonan identifies Immersion v. HTC in D. Del. as a significant case
Judge Richard Andrews, District Court Judge for the District of Delaware rendered a decision on a motion for summary judgment in Immersion Corp. v. HTC Corp. that, if affirmed, could put many more patents at risk than Myriad, Mayo, and Alice combined.
Noonan notes the issue is the deadline for filing a continuation; past law on the point:
The requirement that such an application (which would encompass divisional, continuation and continuation-in-part applications) be filed "before the patenting or abandonment of or termination of proceedings on the first application" has been interpreted by the Patent and Trademark Office as including a filing date that is the same as date the "first application" issues. This interpretation is set forth in the Manual of Patent Examining Procedures (MPEP) (which is not binding on the Court) relating to how PTO Rules of Practice (37 C.F.R. § 1.78) are applied (...)
Yes, the Supreme Court Chevron case comes up:
Judge Andrews' decision that HTC was correct in challenging the priority of the '105, '181, and '720 patents was based in his determination that the PTO was not entitled to deference under Chevron U.S.A., Inc. v. Natural Resources Defense Council, Inc., 467 U.S. 837 (1984) ("Chevron deference") because the statute is not silent or ambiguous on the question of when a continuation application must be filed to preserve the priority chain: simply put, "before" means "before" and not "before or on the same day as." At least part of the Court's reasoning was based on putting the burden to show entitlement to the priority claim on the patentee, citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1329 (Fed. Cir. 2008); PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1305-06 (Fed. Cir. 2008). However, this apportionment of the burden of proof seems to be contrary to the statutory presumption of validity (35 U.S.C. § 283). And the District Court here may have committed the same error discussed in the Tech. Licensing case regarding the holding of the PowerOasis decision
link to PatentDocs post: http://www.patentdocs.org/2015/03/immersion-corp-v-htc-corp-d-del-2015.html
In February 2015, Judge Andrews addressed a damages issue in the case. See 2015 U.S. Dist. LEXIS 21555.
As to reasonable royalty, the Judge noted:
Defendants identify several issues that should be considered when evaluating Mr. Pampinella's testimony.2 However, Defendants' "disagreements are with the conclusions reached by [Plaintiffs] expert and the factual assumptions and considerations underlying those conclusions, not his methodology. These disagreements go to the weight to be afforded the testimony and not its admissibility." Active Video Networks, Inc. v. Verizon Commo'ns, Inc., 694 F.3d 1312, 1333 (Fed. Cir. 2012).
As to lost profits, the Judge noted:
The Court finds that Mr. Pampinella's lost profits analysis is based on a faulty legal premise and will therefore exclude his lost profits testimony. A "patent owner who has suffered lost profits is entitled to lost profits damages regardless [*11] of whether the patent owner has made, used, or sold the patented device." King Instruments Corp. v. Perego, 65 F.3d 941, 947 (Fed. Cir. 1995). The fact that Plaintiff does not manufacture phones is therefore inapposite to the lost profits analysis. That does not mean, however, that recovery can be based on revenue lost from any product related to the patents-in-suit. To recover for lost sales of unpatented components sold with a patented product, "[a]ll the components together must be analogous to components of a single assembly or be parts of a complete machine, or they must constitute a functional unit." Rite-Hite Corp. v. Kelley Co., 56 F.3d 1538, 1550 (Fed. Cir. 1995) (en banc). The Federal Circuit held, "Our precedent has not extended liability to include items that have essentially no functional relationship to the patented invention and that may have been sold with an infringing device only as a matter of convenience or business advantage. We are not persuaded that we should extend that liability." Id.
"A functional relationship does not exist when independently operating patented and unpatented products are purchased as a package solely because of customer demand." Am. Seating Co. v. USSC Grp., Inc., 514 F.3d 1262, 1268 (Fed. Cir. 2008). If they can function independently, patented and unpatented products do not constitute a functional unit. Rite-Hite Corp., 56 F.3d at 1551.