IP Newsflash - July 2014 #3

by Akin Gump Strauss Hauer & Feld LLP


Federal Circuit Finds District Court Erred in Refusing to Consider Evidence Pertinent to Determination of Priority Even Though the Evidence was Not Presented to the Board of Patent Appeals and Interferences

The Court vacated and remanded the district court’s decision affirming the order of the Board of Patent Appeals and Interferences (Board) cancelling all claims of Stephen Troy’s U.S. Patent No. 7,216,451. In affirming the Board’s order, the district court refused to consider an affidavit and deposition submitted by Troy as evidence of reduction to practice on the basis that the evidence was not previously presented to the Board. On appeal, the Federal Circuit found the district court’s decision was inconsistent with Supreme Court precedent in Kappos v. Hyatt, 132 S. Ct. 1690, 1700-01 (2012). “Based on the Supreme Court’s holding in Hyatt that there are no limits on the admissibility of evidence in such civil actions except those in the Federal Rules of Evidence and the Federal Rules of Civil Procedure, we conclude that new evidence on new issues is admissible in such proceedings.” “We find it impossible to reconcile the limitation on evidence that Samson and the PTO seek with the Supreme Court’s unequivocal language, analysis, and holding in Hyatt.” “Turning to the case before us, we vacate the district court’s decision and remand with instructions to consider the new evidence and arguments raised by Mr. Troy in his district court filings.”

Troy v. Samson Manufacturing Corp., 2013-1565, Decided July 11, 2014.

Author: Marwan Elrakabawy

Federal Circuit Applies Fresenius to Vacate District Court’s Injunction and Contempt Finding Following PTO’s Invalidation of Underlying Patent Claims

The Federal Circuit vacated a district court’s modified injunction and subsequent contempt orders that were pending appeal in light of the PTO’s reexamination decision cancelling the underlying claim that provided the basis of the injunction. In 2009, ePlus sued defendant Lawson on its ’172 and ’683 patents relating to methods and systems for electronic sourcing. The jury found certain configurations of Lawson’s software infringed both patents and the court entered a permanent injunction against Lawson. On appeal, the Federal Circuit found some of the asserted claims were either invalid or not infringed, but affirmed infringement of claim 26 of the ’683 patent. That court remanded for the district court to consider what changes are required to the terms of the injunction. On remand, the district court modified the injunction by deleting one configuration of Lawson’s software from the scope of the injunction. ePlus also moved for contempt arguing that Lawson’s redesigned products were no more than colorably different and infringed its ’683 patent. The district court agreed and ordered Lawson to pay a compensatory fine of $18 million as well as coercive daily fines. While Lawson’s appeal of the contempt finding was pending, the Federal Circuit affirmed the PTO’s decision invalidating claim 26 of the ’683 patent.

In deciding Lawson’s appeal, the Federal Circuit held that there was no longer any legal basis to enjoin Lawson’s conduct based on rights that claim 26 of the ’683 patent previously conferred. Vacating the injunction and contempt finding, the court noted that “this case is not distinguishable on the ground that the injunction has been set aside as the result of the PTO proceeding rather than a court judgment.” Applying Fresenius, where “the cancellation of the patent precluded the patentee from recovering damages,” the court held that “similarly, here the civil contempt sanctions must be set aside.” The court thus vacated the compensatory award for the violation of the injunction without deciding whether Lawson’s redesigned products were colorably different.

Judge O’Malley issued a sharp dissent arguing once again that Fresenius was wrongly decided, and further, could not be applied to relieve Lawson of all penalties for having violated an injunction during the four years it was in place before the PTO’s cancellation of the claims. The Supreme Court recently denied certiorari in Fresenius.

Eplus, Inc. V. Lawson Software, Inc., No. 2013-1506 (Fed. Cir. July 25, 2014) [Prost, Dyk (author), O’Malley (dissent)].

Author: Manoj Gandhi



DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Akin Gump Strauss Hauer & Feld LLP | Attorney Advertising

Written by:

Akin Gump Strauss Hauer & Feld LLP

Akin Gump Strauss Hauer & Feld LLP on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.