Our weekly SoCal IP Institute meeting on Monday, January 19, 2015 will be a discussion of:

Tomita Techs. USA, LLC et al. v. Nintendo Co., Ltd. et al., Case No. 2014-1244 (Fed. Cir.  December 8, 2014 ) (available here).  Tomita sued Nintendo for infringement of U.S. Patent No. 7,417,664 based upon its sales of its 3DS handheld game system and related augmented reality software. The patented system was used, as described by the ‘664 patent, to create a “stereoscopic feeling” in a user. The jury found no invalidity and infringement and awarded $30.2 million in compensatory damages.

Nintendo appealed the denial of a motion for judgment as a matter of law on infringement.  The motion and the appeal was based upon allegedly erroneous constructions of the terms “cross-point measuring means” and with an “offset presetting means” claim limitations. With regard to the latter, the Federal Circuit stepped deep into the specification to determine what corresponding structure in the specification and figures disclosed an “offset presetting means.”  Tomita argued that element 106 of FIG. 2, along with the processes disclosed in FIGs. 7 and 8 disclosed the limitation.  The Federal Circuit disagreed, finding support only in certain elements of FIG. 3.  Nintendo made several additional arguments regarding noninfringement, invalidity, and requested a new trial.  The Federal Circuit was unpersuaded and remanded for further consideration since the jury did not have the proper construction of the “offset presetting means” at trial.

NeuroRepair, Inc. v. The Nath Law Group et al., Case No. 2013-1073  (Fed. Cir. January 15, 2014 ) (available here).  NeuroRepair sued the Nath Law Group and one affiliated attorney in San Diego Superior Court in March of 2009.  The defendants removed the case to federal district court in May of 2009.  The district court eventually entered judgment in the defendants’ favor and, along the way, denied several motions made by the plaintiffs.  NeuroRepair appealed, and in the interim, the Supreme Court decided Gunn v. Minton, 133 S. Ct. 1059 (2013).  In Gunn, the Supreme Court clarified federal subject matter jurisdiction jurisprudence under the following test:

Under this test, a cause of action created by state law may nevertheless “arise under” federal patent law within the meaning of 28 U.S.C. § 1338(a) if it involves a patent law issue that is “(1) necessarily raised, (2) actually disputed, (3) substantial, and (4) capable of resolution in federal court without disrupting the federal-state balance approved by Congress.” Gunn, 133 S. Ct. at 1065.

In Gunn, the Supreme Court indicated that while patent malpractice claims may raise disputed patent issues, they do not typically “arise under” federal patent law.

Here, the Federal Circuit, determining if it (and its subsidiary district court) had appropriate subject matter jurisdiction indicated that the claims asserted were all based upon state law.  Patent law, to the extent it is at issue, would be raised only as it pertained to one of the claims.  In fact, the Federal Circuit indicated that some of the issues raised, for example a failure to communicate with the client, may satisfy one or more of these claims without even raising any patent law issue.

The Federal Circuit acknowledged that one patent law issue was disputed.  Namely, whether the failure to act quickly to obtain patent protection resulted in NeuroRepair being unable to obtain a license (or to obtain broader claims).  However, the Federal Circuit stated that this patent issue is “not substantial.” The Supreme Court guidance on substantiality is a series of non-exclusive factors to consider including: (1) whether the issue is a pure issue of federal law and is dispositive of the case, (2) whether the court’s resolution of the issue will likely control “numerous other cases.” and (3) whether the government has a direct interest in the availability of a federal forum for administrative action.  The Federal Circuit here found none and, further, found that routinely hearing malpractice suits in federal courts would disrupt the federal-state balance of interests in such cases.  The case was, thus, vacated and remanded to the Superior Court of San Diego.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, January 19, 2015 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.