For our weekly SoCal IP Institute meeting on Monday, June 27, 2016, we will discuss the following:

Cuozzo Speed Techs. v. Lee, No. 15-446 (June 20, 2016) (available here). Cuozzo sued Garmin International who, in turn, sought inter parties review of a patent owned by Cuozzo.  The Patent Trial and Appeal Board concluded that the claims were invalid as obvious in view of prior art, denied Cuozzo’s motion to amend the claims, and cancelled the three claims for which inter partes review was instituted.

Cuozzo appealed the institution decision and the Patent Office’s use of the “broadest reasonable interpretation” standard of claim interpretation to the Federal Circuit.  The Federal Circuit affirmed. Cuozzo appealed to the Supreme Court who affirmed on both counts.  Specifically, the Supreme Court reasoned that there was clear Congressional intent to bar interlocutory review of institution decisions and to provide the Patent Office broad leeway in setting its own regulations regarding many aspects of the IPR process including the proper standard upon which to review patents for which IPRs are instituted.

Ingenuity 13 v. Doe and related cases, No 13-55859, (9th Cir. June 10, 2016) (available here).  You may look to our prior discussion of this case here for a recap of the facts.  Here, a three-judge panel at the 9th Circuit affirmed Judge Wright’s sanctions decision totaling approximately $230,000 in sanctions for the case and the cost of briefing and defending the appeal.  Specifically, given the circumstances, the 9th Circuit here found that the sanction was reasonable and within the court’s “inherent power” to sanction.  The court reiterated that “[d]ue process for civil sanctions requires notice, an opportunity to be heard, and a finding of bad faith,” all of which the 9th Circuit found were present in this case.  Also, the doubling of the attorney’s fees at the district court level was appropriate and did not trigger higher due process protections required if that award was granted to the court itself.  Finally, the requirement to post a bond to cover the cost of Doe’s attorney’s fees on appeal was also appropriate.  In short, Doe won on every count and Judge Wright’s original decision was affirmed in full.

All are invited to join us on Monday, June 27, 2016, 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 Moniquee Brown by 9 am Monday morning.