Fresh From the Bench: Latest Federal Circuit Court Case
CASE OF THE WEEK
Arendi S.A.R.L. v. LG Electronics Inc., Appeal No. 2021-1967 (Fed. Cir. Sept. 7, 2022)
In our Case of the Week, the Court of Appeals for the Federal Circuit affirmed the District of Delaware’s application of the duplicative litigation doctrine.
Arendi sued LG for patent infringement, claiming that hundreds of LG products, including LG’s Rebel 4 camera, infringed Arendi’s patent. Under Delaware’s discovery rules, Arendi was required to produce an initial claims chart for each accused product. However, despite multiple opportunities to remedy its deficiency, Arendi only submitted a claims chart for LG’s Rebel 4. When Arendi provided its expert report, the district court granted LG’s motion to strike portions of the report relating to non-Rebel 4 products. The district court agreed with LG that, by not providing initial claims charts for any non-Rebel 4 products, Arendi failed to timely disclose its infringement contentions as to any non-Rebel 4 products. Arendi still did not supplement with more claims charts, and instead filed a second lawsuit, also against LG and also in the District of Delaware, asserting that LG’s non-Rebel 4 products infringed the same asserted patent. The district court granted LG’s motion to dismiss the second lawsuit as duplicative, Arendi appealed, and the Federal Circuit reviewed for abuse of discretion.
Hyatt v. U.S. Patent and Trademark Office, Appeal No. 2021-2324 (Fed. Cir. Sept. 8, 2022)
In an appeal from a district court action that found the USPTO had properly issued a restriction requirement during continuing patent prosecution, the Federal Circuit affirmed. Prolific patent applicant Gilbert Hyatt had applied for the patents at issue decades ago—the earliest priority date asserted was in 1983. In 1995, Congress passed the Uruguay Round Agreements Act, which changed patent terms from being triggered upon issuance, to being triggered based on the priority date of the application. Hyatt’s claims were subject to prosecution for decades. In August 2015, he submitted significant claim amendments. The examiner issued a restriction requirement for several claims. This was significant because Hyatt would have been required to file new applications to pursue the additional claims and those applications would not have been grandfathered into the patent terms applicable to pre-1995 patents. Hyatt sued the Patent Office in district court, arguing that the restriction requirement was improper. The district court found the restriction requirement complied with Patent Office Rule 129—a rule that was promulgated to address pre-1995 applications. The Federal Circuit affirmed that Rule 129 applied because the restriction requirement was the result of Hyatt’s actions—it was the result of his substantial revisions to the pending claims.
For more on Hyatt and his continuing saga to pursue his pre-1995 patent applications, see our write up here.