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Spotlight on Upcoming Oral Arguments – December 2021

The following telephone arguments will be available to the public live. Access information will be available by 9 AM ET each day of argument.

Thursday, December 9, 2021

Polycom, Inc. v. directPacket Research, Inc., No. 21-1744

directPacket sued Polycom alleging infringement of U.S. Patent No. 7,710,978, and Polycom petitioned for IPR. The Board invalidated most claims as obvious, but a handful of dependent claims survived.

On appeal, Polycom argues these dependent claims are likewise obvious over the prior art and the Board’s decision must be reversed. According to Polycom, the Board applied an unduly narrow understanding of the law of obviousness, focusing inappropriately on minor differences between the prior art references to the exclusion of other motivations to combine them, including the nature of the problem to be solved. Polycom criticizes the Board for focusing on where a claimed limitation, “registering a network device,” occurs and finding a person of ordinary skill would not combine a prior art reference disclosing registration outside a firewall with a prior art reference disclosing registration inside a firewall. Polycom argues the Board framed the question too narrowly because there is no lexographic definition or disavowal of claim scope that would limit the claimed “registering” to being performed on either side of the firewall.

directPacket responds that the Board’s decision that there was no motivation to combine was firmly grounded in undisputed structural differences in the prior art references. According to directPacket, the Board’s decision did not rest on an “understanding of the law of obviousness” but on a question of fact, namely, how a person of ordinary skill would have understood the prior art references and whether that person would have been motivated to combine them. It argues that the substantial evidence standard of review applies, and such standard is easily met and shown in the Board’s decision.

Niazi Licensing Corporation v. St. Jude Medical S.C., Inc., No. 21-1864

Niazi Licensing Corporation (NLC) sued St. Jude for directly infringing Niazi’s U.S. Patent 6,638,268. During fact discovery, no witness testified to ever having used St. Jude’s accused products in an allegedly infringing manner. But following the close of fact discovery, NLC’s expert, Dr. Burke, included in his opening report a section titled “Evidence of Direct Infringement,” in which he alleged that he and others had in the past, at St. Jude’s direction, personally used St. Jude’s products in an allegedly infringing manner. St. Jude moved to strike Dr. Burke’s statements as untimely, which the district court granted. St. Jude moved for summary judgment of no direct infringement, which the district court also granted.

NLC appeals the district court’s grant of St. Jude’s motion to strike. NLC argues Dr. Burke’s statements were not only evidence of direct infringement, but also part of Dr. Burke’s credentials and a qualifying basis for his expert testimony. For this reason, NLC argues, the statements were not untimely, and the district court abused its discretion in excluding them. According to NLC, it was not aware of these facts until the expert discovery phase of the case, and there was no prejudice to St. Jude because no trial date had been set and St. Jude could have examined these statements during expert discovery.

St. Jude responds that NLC fails to demonstrate how the district court abused its discretion in excluding admittedly untimely and highly prejudicial factual disclosures. According to St. Jude, NLC does not dispute Dr. Burke’s statements were produced after the close of fact discovery. It notes NLC retained Dr. Burke before discovery closed and argues NLC thus could have obtained these statements sooner. It argues NLC’s failure to do so caused unfair surprise by converting Dr. Burke into a fact witness.

© 2023 Finnegan, Henderson, Farabow, Garrett & Dunner, LLPNational Law Review, Volume XI, Number 342

About this Author

Y. Leon Lin Atlanta Patent Litigation Attorney Finnegan Henderson Farabow Garrett & Dunner LLP

Leon Lin’s practice includes patent licensing, litigation, patent prosecution, and post-grant proceedings before the U.S. Patent and Trademark Office (USPTO). He has experience in the fields of organic and inorganic chemistry, specifically in solar energy and artificial photosynthesis.

While pursuing his undergraduate degrees, Leon worked in various labs that focused on carbon capture and solar-powered water-splitting to produce hydrogen fuel. As the head research assistant, Leon managed projects that involved proton NMR, carbon NMR, and GCMS analyses of potential catalyst reagents...

Gracie K. Mills Patent Attorney Finnegan Law Firm Washington, DC

Gracie Mills focuses on patent prosecution and post-grant proceedings at the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO), and appeals at the U.S. Court of Appeals for the Federal Circuit. She represents clients across numerous electrical and electronic technologies, including computer software, consumer electronics, telecommunications, encryption and cybersecurity, financial technologies, semiconductors, nanotechnology, and electrical materials.

Gracie’s patent prosecution experience includes leading invention harvests, developing patent...

Elizabeth Ferrill Patent Attorney Finnegan Law Firm

Elizabeth Ferrill is an “undisputed expert on design patents” who is “always updated and enlightening others with her deep knowledge,” “very involved in the design bar,” and “gives her clients an outstanding service” as noted in Intellectual Asset Management Patent 1000. She focuses her practice on all aspects of design patents, including prosecution, counseling, post-grant, and litigation.

Elizabeth counsels clients who hold design patents as well as those accused of infringement. She has experience with design patents related to consumer and industrial products, medical...

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