Justia Intellectual Property Opinion Summaries

Columbia University sued Gen Digital Inc., which markets Norton antivirus software, alleging infringement of certain claims in two patents related to methods for detecting anomalous program executions. These patents described techniques using an emulator to execute portions of software and compare function calls against models created from multiple computers, aiming to detect malicious activity. Columbia also sought to correct inventorship on a third patent owned by Norton. Norton’s products, including the SONAR/BASH feature, were sold both domestically and internationally. Columbia claimed that these products infringed the asserted patent claims by utilizing the patented detection methods.The United States District Court for the Eastern District of Virginia construed disputed claim terms largely in Columbia’s favor and denied Norton’s motion for judgment on the pleadings under 35 U.S.C. § 101, ruling that the claims were not directed to an abstract idea at Alice step one. Prior to trial, the district court struck Norton’s § 101 defense. At trial, the jury found willful infringement of four claims and awarded substantial damages, including damages based on Norton’s foreign sales. The district court denied Norton’s post-trial motions for judgment as a matter of law regarding infringement, willfulness, and foreign sales damages. It also awarded enhanced damages and attorneys’ fees, partly relying on a contempt finding against Norton’s counsel.On appeal, the United States Court of Appeals for the Federal Circuit vacated the district court’s judgment. The Federal Circuit held that the asserted claims are abstract at Alice step one and remanded for the district court to address step two. The court found no error in claim construction or in the denial of judgment as a matter of law for infringement and willfulness, but concluded that damages for foreign sales were improperly awarded. The contempt finding having been reversed in a companion case, the enhanced damages and attorneys’ fees awards must also be reconsidered. The disposition was reversed in part, vacated in part, and remanded. View "TRUSTEES OF COLUMBIA UNIVERSITY v. GEN DIGITAL INC. " on Justia Law

An inventor and his exclusive licensee filed a lawsuit alleging patent infringement against a manufacturer, asserting claims of a patent related to an apparatus for maintaining a crop harvester’s header at a designated height above the soil. The patent described a device using a controller interface, head controller, and hydraulic control system. The parties agreed that the “control means” term in the patent invoked means-plus-function claiming under 35 U.S.C. § 112(f), and further agreed on the basic claimed function and the corresponding structures described in the specification. However, they disagreed over whether the specification sufficiently disclosed the structure for “control means,” particularly regarding whether the disclosure required an algorithm for microprocessor-based controllers.After the case was transferred from the United States District Court for the Northern District of Indiana to the United States District Court for the Southern District of Iowa, the district court concluded that the patent’s “control means” limitation was indefinite. The district court found that the only sufficiently disclosed controllers were microprocessor-based versions, which would require a disclosed algorithm that the patent did not provide. The court excluded an earlier version of the controller that used logic circuitry, not a microprocessor, from the corresponding structure. Based on this, the district court held the asserted claims invalid as indefinite and entered judgment for the defendant.On appeal, the United States Court of Appeals for the Federal Circuit reversed. The appellate court held that the district court erred by excluding the non-microprocessor-based controller from the corresponding structure, as it performed the claimed function and did not trigger the algorithm disclosure requirement. The Federal Circuit clarified that a means-plus-function limitation need only be supported by one embodiment of corresponding structure. Therefore, the judgment of indefiniteness and invalidity was reversed, and the case was remanded for further proceedings. Costs were assessed against the manufacturer. View "GRAMM v. DEERE & COMPANY" on Justia Law

Implicit, LLC owned two patents that named Edward Balassanian and Scott Bradley as the only inventors. Both men worked for BeComm Corporation, Implicit’s predecessor. Sonos, Inc. filed petitions for inter partes review (IPR) with the Patent Trial and Appeal Board, arguing that the claims in both patents were unpatentable due to prior art, specifically referencing a patent by Janevski. Implicit responded that the inventions were conceived and reduced to practice before the Janevski filing date, involving work by engineer Guy Carpenter. The Board found Implicit’s evidence insufficient to establish Carpenter’s role or that any reduction to practice benefited the named inventors, and determined the challenged claims were unpatentable.After the Board’s final written decisions in 2019, Implicit appealed to the United States Court of Appeals for the Federal Circuit, raising Appointments Clause challenges based on Arthrex, Inc. v. Smith & Nephew, Inc. The Federal Circuit vacated and remanded for proceedings consistent with Arthrex. After the Supreme Court’s decision in United States v. Arthrex, Inc., the case was again remanded to allow for Director Review, which was denied. During this period, Implicit sought and obtained certificates of correction to add Carpenter as an inventor. The case was remanded to the Board to consider whether these corrections affected the prior IPR decisions. The Board held that judicial estoppel, waiver, and forfeiture barred Implicit from relying on the corrections to revisit the prior decisions.Upon appeal, the United States Court of Appeals for the Federal Circuit held that forfeiture can apply even when inventorship is corrected under 35 U.S.C. § 256. The court found no abuse of discretion by the Board in determining that Implicit forfeited its new inventorship arguments by waiting until after final decisions to seek correction. The Federal Circuit affirmed the Board’s decisions. View "IMPLICIT, LLC v. SONOS, INC. " on Justia Law

Exafer Ltd. owns two patents related to optimizing communication paths in virtual network environments. Exafer brought suit against Microsoft, alleging that Microsoft’s Azure Platform, specifically its Smart Network Interface Cards and Virtual Filtering Platform Fastpath technology, infringed these patents. To support its damages claim, Exafer submitted expert reports quantifying the technical and financial benefits Microsoft allegedly obtained through the accused features. The damages expert, Mr. Blok, based his analysis on the value of additional virtual machine hours made possible by the accused features.The United States District Court for the Western District of Texas excluded Mr. Blok’s damages testimony, reasoning that his use of unaccused virtual machines as the royalty base improperly included non-infringing activities, relying on Enplas Display Device Corp. v. Seoul Semiconductor Co. The district court also denied Exafer’s motion to reopen discovery to present an alternative damages theory and granted Microsoft’s motion for summary judgment due to an absence of a remedy, entering final judgment against Exafer.On appeal, the United States Court of Appeals for the Federal Circuit held that the district court abused its discretion in excluding the damages expert’s testimony. The appellate court found that Mr. Blok’s methodology—linking the value of the accused features to the additional virtual machine hours they enabled—was sufficiently tied to the patented inventions and did not improperly expand the patent’s scope. The court clarified that there is no categorical bar against using an unaccused product as the royalty base if there is a causal connection to the alleged infringement. The Federal Circuit reversed the district court’s exclusion of Mr. Blok’s testimony, vacated the orders denying reopening of discovery and granting summary judgment, and remanded the case for further proceedings. View "EXAFER LTD v. MICROSOFT CORPORATION " on Justia Law

The dispute involves two patents held by Magnolia Medical Technologies concerning devices that improve the accuracy of blood tests by reducing contamination from skin microbes. When a blood sample is drawn, contaminants are most likely present in the initial portion, which can cause false positives and unnecessary treatments. Magnolia’s patents aim to sequester this initial blood volume, improving test reliability. Kurin, Inc. manufactures the Kurin Lock, a device that separates the initial blood draw using a porous plug that functions first as a vent and then as a seal.The United States District Court for the District of Delaware initially addressed claim construction. Regarding Magnolia’s U.S. Patent 9,855,001, the court determined that the term “diverter” was a means-plus-function limitation under 35 U.S.C. § 112(f), restricting infringement to devices with corresponding structures detailed in the patent specification. The parties stipulated that the Kurin Lock did not infringe the ’001 patent based on this construction. For U.S. Patent 10,039,483, the case proceeded to trial on the claims related to “vent” and “seal” limitations. The jury found that Kurin Lock infringed these claims. However, Kurin moved for judgment as a matter of law (JMOL), arguing that the Kurin Lock did not have two separate structures corresponding to the “vent” and “seal” as required.The United States Court of Appeals for the Federal Circuit reviewed the district court's claim constructions and JMOL grant. The court held that the district court did not err in construing “diverter” as a means-plus-function term for the ’001 patent. It also affirmed that, under the plain and ordinary meaning and precedent, the ’483 patent required separate structures for “vent” and “seal,” which the Kurin Lock did not possess. The Federal Circuit affirmed the district court’s judgment in favor of Kurin, finding no infringement. View "MAGNOLIA MEDICAL TECHNOLOGIES, INC. v. KURIN, INC. " on Justia Law

The case concerns two individuals who previously worked for a consulting firm that provided proprietary software to several state agencies. After leaving the company, they joined a competitor and helped secure a contract to develop similar software for other states. In 2016, a whistleblower alleged that the defendants' new employer was using materials misappropriated from their former company. This triggered a multi-agency federal investigation that lasted approximately six years. By the time charges were brought, two potentially significant witnesses had died, and several state agencies had destroyed documents that might have been relevant to the defense.The United States District Court for the Southern District of West Virginia, after the defendants moved to dismiss, found that the loss of the witnesses' testimony and the destruction of documents resulted in substantial prejudice to the defendants. The district court concluded that the government's lengthy investigation did not sufficiently justify the preindictment delay, given the prejudice to the defense, and dismissed ten out of fourteen counts in the superseding indictment on due process grounds. The government appealed this dismissal.The United States Court of Appeals for the Fourth Circuit reviewed the case and held that, even assuming the defendants suffered actual and substantial prejudice, the government's preindictment delay was the result of a good faith, ongoing investigation and not motivated by bad faith or an attempt to gain a tactical advantage. The Fourth Circuit clarified that investigative delay, without improper motive, does not violate due process, even if it results in prejudice to the defendant. The court reversed the district court’s dismissal of the counts and remanded the case for further proceedings on all counts. View "US v. Minkkinen" on Justia Law

The case concerns a dispute between two companies involved in the production and sale of coiled tubing for the oil and gas industry. One company, having acquired assets and documents from a predecessor, developed a coiled tubing product and obtained several patents (the ’256, ’074, and ’075 patents) covering aspects of this technology. The predecessor’s documents disclosed a product with overlapping technical specifications compared to at least some claims of these patents. During the patent application process, the company submitted a related public reference to the Patent and Trademark Office (Chitwood), but did not disclose the predecessor’s internal documents (the CYMAX Documents) that contained additional details. Internal discussions reflected uncertainty among inventors and counsel about the relevance and necessity of disclosing these documents.After disputes arose in the marketplace over alleged patent infringement, the manufacturer of a competing product initiated litigation in the United States District Court for the Southern District of Texas, seeking a declaration of non-infringement. The patent holder counterclaimed for infringement and, as the case proceeded, the competitor amended its claims to include allegations of inequitable conduct (fraud on the Patent Office by withholding material information) and Walker Process fraud (antitrust liability for enforcing a patent obtained by fraud). The district court granted summary judgment to the competitor on the inequitable conduct claim, finding clear evidence of intent to deceive and materiality, and granted summary judgment to the patent holder on the Walker Process fraud claim, finding insufficient evidence of market power.On appeal, the United States Court of Appeals for the Federal Circuit vacated both summary judgment rulings. The appellate court held that genuine disputes of material fact precluded summary judgment on both inequitable conduct and Walker Process fraud. The court remanded for further proceedings, allowing both claims to proceed, and affirmed the denial of summary judgment for the patent holder on inequitable conduct. View "GLOBAL TUBING LLC v. TENARIS COILED TUBES LLC " on Justia Law

A major music performing rights organization, which licenses the public performance of musical works to concert promoters, was unable to reach agreement with a national association of concert promoters on the rates and revenue base for blanket licenses covering live performances. For the first time in their relationship, the rights organization petitioned the United States District Court for the Southern District of New York to set the licensing terms, as permitted under an antitrust consent decree applicable to the organization due to its significant market share. The promoters’ association, whose members include the two largest concert promoters in the United States, has historically secured blanket licenses from multiple performing rights organizations to avoid copyright infringement.The district court accepted the organization’s proposed rates for a retroactive period and set a new, higher rate for a more recent period. It also broadened the definition of “gross revenues” for calculating royalties, including new categories such as revenues from ticket service fees, VIP packages, and box suites, which had not traditionally been included. The promoters’ association appealed these decisions, arguing that both the rates and the expanded revenue base were unreasonable. The rights organization cross-appealed the denial of prejudgment interest on retroactive payments.The United States Court of Appeals for the Second Circuit reviewed the district court’s decisions. It held that the district court imposed unreasonable rates, in part because it adopted an unprecedented and administratively burdensome revenue base without justification and relied too heavily on benchmark agreements that were not sufficiently comparable to prior agreements with the association. The court also found no economic changes justifying a significant rate increase. While it found no abuse of discretion in denying prejudgment interest, it vacated the district court’s judgment and remanded for further proceedings consistent with its opinion. View "Broadcast Music, Inc. v. North American Concert Promoters Association" on Justia Law

The plaintiffs in this case, owners of a patent involving genetically engineered host cells containing recombinant DNA sequences, accused the defendants of infringing multiple claims of their patent. The technology at issue centers on human-made host cells that include a recombinant nucleic acid molecule encoding a specific adeno-associated virus (AAV) capsid protein, along with a heterologous non-AAV sequence. These recombinant molecules are created by artificially combining genetic material from different species, a process that does not occur in nature. The patented host cells are used in developing gene therapy products, including a product for treating Duchenne muscular dystrophy.The United States District Court for the District of Delaware reviewed cross-motions for summary judgment on the issue of patent eligibility under 35 U.S.C. § 101. The district court concluded that the asserted claims were ineligible for patent protection, reasoning that they were directed to a natural phenomenon. The court analogized the claims to those at issue in Supreme Court cases such as Funk Brothers Seed Co. v. Kalo Inoculant Co. and Association for Molecular Pathology v. Myriad Genetics, Inc., finding that merely combining natural sequences did not make the claimed invention patentable. The district court held that the claims lacked an inventive concept and granted summary judgment in favor of the defendants.The United States Court of Appeals for the Federal Circuit reviewed the decision de novo. The appellate court held that the patented host cells are not naturally occurring and possess markedly different characteristics from any product of nature, consistent with the Supreme Court’s guidance in Diamond v. Chakrabarty and Myriad Genetics. The Federal Circuit concluded that the claims are not directed to a natural phenomenon and are therefore patent-eligible under § 101. The court reversed the district court’s judgment and remanded the case for further proceedings. View "REGENXBIO INC. v. SAREPTA THERAPEUTICS, INC. " on Justia Law

This case concerns a patent dispute involving input devices for computers. The plaintiff, Genuine Enabling Technology LLC (GET), claimed that Sony’s PlayStation 3 and 4 controllers and consoles infringed several claims of U.S. Patent No. 6,219,730. The patent addresses the problem of limited computer resources by combining data streams from multiple input devices, such as keyboards and sensors, into a single stream. The contested claims include a means-plus-function limitation called “encoding means for synchronizing,” which requires synchronizing two input streams and encoding them into a combined data stream.The U.S. District Court for the District of Delaware handled the case initially. It interpreted the “encoding means” as a means-plus-function limitation and identified logic block 34 in Figure 4A of the patent as the corresponding structure. During litigation, GET’s expert, Dr. Fernald, failed to address most of the elements in logic block 34 when analyzing infringement, focusing primarily on the bit-rate clock signal. The district court excluded Dr. Fernald’s testimony on structural equivalence and ultimately granted Sony summary judgment of noninfringement, finding GET had not raised a genuine issue of material fact regarding infringement.The United States Court of Appeals for the Federal Circuit reviewed the district court’s grant of summary judgment de novo. The Federal Circuit affirmed the lower court’s decision, holding that GET’s infringement analysis was deficient because it did not adequately account for the full structure of logic block 34 required by the patent specification. The court emphasized that GET failed to explain why it was permissible to omit certain elements from its equivalence analysis. Thus, GET lacked sufficient evidence for a reasonable jury to find infringement. The district court’s exclusion of expert testimony and summary judgment were affirmed. View "GENUINE ENABLING TECHNOLOGY LLC v. SONY GROUP CORPORATION " on Justia Law