Justia Intellectual Property Opinion Summaries

Netlist, Inc. owned a patent related to computer memory systems, specifically methods for improving the performance and capacity of memory boards using dual in-line memory modules. The patent described memory modules with buffers that are normally disabled to electrically isolate the memory devices from the controller, but which can be selectively enabled during data operations. Samsung Electronics Co., Ltd. first filed a petition for inter partes review, challenging the patent’s claims as obvious over two prior art references: Ellsberry and Halbert. Micron Technology, Inc. and related entities filed a similar petition and were later joined to Samsung’s proceeding. While Samsung settled with Netlist and withdrew from the appeal, Micron remained as appellee.The Patent Trial and Appeal Board of the United States Patent and Trademark Office reviewed the matter and determined, by a preponderance of the evidence, that all challenged claims of Netlist’s patent were obvious in view of the cited prior art. The Board found that the references taught enabling and disabling data paths through buffers in accordance with a latency parameter, and further found that the prior art disclosed the structural and functional limitations recited in the claims. The Board also addressed and rejected various procedural arguments, including those based on the Administrative Procedure Act.Netlist appealed to the United States Court of Appeals for the Federal Circuit. The court reviewed the Board’s factual findings for substantial evidence and its legal conclusions de novo. The Federal Circuit found that the Board’s determinations were supported by substantial evidence and that it had adequately explained its reasoning. The court affirmed the Board’s conclusion that all challenged claims were unpatentable as obvious, rejecting Netlist’s arguments on both substantive and procedural grounds. Costs were awarded against Netlist. View "NETLIST, INC. v. MICRON TECHNOLOGY, INC. " on Justia Law

Manufacturers of medical and digital devices, represented by two trade associations, challenged a regulation enacted by the Librarian of Congress under the Digital Millennium Copyright Act (DMCA). The regulation, known as the medical device repair exemption, allows certain third parties to circumvent technological protection measures on medical equipment software for the purpose of diagnosis, maintenance, or repair. The associations contended that this exemption threatened their copyrights by enabling independent service organizations to access and use software that, they argued, was primarily intended for repair and maintenance.The United States District Court for the District of Columbia initially dismissed some of the associations’ claims, including those under the Administrative Procedure Act (APA), on sovereign immunity grounds and found the rulemaking was within the Librarian’s authority and not unconstitutional. On appeal, the United States Court of Appeals for the District of Columbia Circuit reversed in part, directing the district court to evaluate the APA claims. After further rulemaking and additional arguments, including discussion of Supreme Court precedent and the renewal of the exemption, the district court granted summary judgment for the Librarian and Library of Congress. The court concluded that the exemption was consistent with the DMCA, the fair use doctrine, and was supported by the administrative record.On further appeal, the United States Court of Appeals for the District of Columbia Circuit affirmed the district court’s judgment. It held that the Librarian’s adoption and renewal of the medical device repair exemption were not arbitrary or capricious under the APA. The court found the Librarian’s application of the statutory fair use factors reasonable, including determinations that the use was transformative, the software was primarily functional, the amount of use was justified, and the exemption did not harm the market for the original works. The judgment for the Librarian and Library of Congress was affirmed. View "Medical Imaging & Technology Alliance v. Library of Congress" on Justia Law

This case involves a dispute over several patents relating to digital communication systems that use non-uniform constellations to increase data transmission capacity compared to traditional, uniform constellations operating within similar signal-to-noise ratio (SNR) bands. The plaintiff, Constellation Designs, LLC, alleged that several LG entities infringed claims from four patents by manufacturing and selling televisions compatible with the ATSC 3.0 standard, specifically protocol A/322, which governs over-the-air television broadcasting. The patents at issue cover two primary types of claims: those that recite methods for optimizing constellations based on parallel decode (PD) capacity (“optimization claims”), and those that recite specific, non-uniform constellations (“constellation claims”).The United States District Court for the Eastern District of Texas granted summary judgment to Constellation on patent eligibility for all asserted claims, finding them directed to a technical solution to a technical problem. At trial, a jury found the asserted claims not invalid, found infringement by LG’s accused televisions, awarded damages, and found willful infringement. LG moved for judgment as a matter of law (JMOL) on non-infringement and no damages, and sought to exclude Constellation’s damages expert, but the district court denied these motions. The court then entered final judgment and ongoing royalties.On appeal, the United States Court of Appeals for the Federal Circuit vacated the summary judgment of eligibility for the optimization claims, holding that these claims were ineligible under 35 U.S.C. § 101 because they were directed to the abstract idea of “optimizing” a constellation for PD capacity without specifying how to achieve this result. The court affirmed the eligibility of the constellation claims, finding them directed to a concrete technological solution. The Federal Circuit also affirmed the denial of JMOL on non-infringement and no damages, and the denial of the motion to exclude Constellation’s damages expert. The case was remanded for further proceedings consistent with these rulings. View "CONSTELLATION DESIGNS, LLC v. LG ELECTRONICS, INC. " on Justia Law

Exelixis, Inc. developed Cabometyx®, a cancer treatment containing cabozantinib (L)-malate. After identifying and characterizing crystalline and amorphous forms of this compound, Exelixis obtained several related patents. MSN Laboratories Private Limited and MSN Pharmaceuticals, Inc. sought FDA approval for a generic version using a specific polymorph of cabozantinib (L)-malate and received their own patent for that form. Exelixis sued MSN in the United States District Court for the District of Delaware, alleging infringement of patents covering crystalline cabozantinib (L)-malate salts (the “Malate Salt Patents”) and a patent directed to pharmaceutical compositions with low levels of a genotoxic impurity (the ’349 patent).The District Court held a bench trial. MSN conceded infringement of the Malate Salt Patents but argued they were invalid for lack of written description under 35 U.S.C. § 112(a). For the ’349 patent, MSN contested both infringement and validity. The District Court found the Malate Salt Patents were not invalid, holding the written description requirement was met because the patents disclosed the chemical structure, formula, and crystalline nature of the claimed salts. The court analogized its analysis to GlaxoSmithKline LLC v. Banner Pharmacaps, Inc. For the ’349 patent, the court found no infringement and no invalidity, concluding that the evidence failed to show the prior art inherently disclosed the “essentially free” impurity limitation.The United States Court of Appeals for the Federal Circuit reviewed the case. It affirmed the District Court’s finding that the asserted claims of the ’439, ’440, and ’015 patents had adequate written description support. Regarding claim 3 of the ’349 patent, the Federal Circuit dismissed MSN’s appeal as moot after Exelixis dropped its cross-appeal and vacated the District Court’s judgment of nonobviousness of that claim. The main holdings were affirmance of written description support for the asserted Malate Salt Patents and dismissal and vacatur regarding claim 3 of the ’349 patent. View "EXELIXIS, INC. v. MSN LABORATORIES PRIVATE LTD. " on Justia Law

T-Mobile and KAIFI settled a patent infringement lawsuit involving claims of U.S. Patent No. 6,922,728, which covers Wi-Fi calling technology. As part of their settlement, T-Mobile agreed to make two payments: one immediate payment and another conditional payment, the latter to be made if any of the asserted patent claims “survived” an ex parte reexamination (EPR) at the United States Patent and Trademark Office. After the Patent Office confirmed the patentability of most of the asserted claims without amendment, T-Mobile refused to make the additional payment, arguing that the claims had not truly “survived” the EPR due to alleged changes in claim scope and supposed inequitable conduct by KAIFI during the reexamination.T-Mobile filed a declaratory judgment action in the United States District Court for the Eastern District of Texas, seeking a determination that it had not breached the settlement agreement by withholding the payment. The district court granted summary judgment for KAIFI, holding that the settlement agreement was clear: a claim “survives the EPR” if the Patent Office confirms its patentability in the Reexamination Certificate. The court found T-Mobile’s arguments about claim scope and inequitable conduct irrelevant to the payment obligation and ordered T-Mobile to make the additional payment.On appeal, the United States Court of Appeals for the Federal Circuit reviewed whether it had subject-matter jurisdiction. The court determined that the dispute centered on the interpretation of a contract governed by Texas law and did not necessarily involve a substantial question of federal patent law. Consequently, the court held that it lacked appellate jurisdiction and transferred the case to the United States Court of Appeals for the Fifth Circuit, which has jurisdiction over appeals from the Eastern District of Texas. View "T-MOBILE US, INC. v. KAIFI LLC " on Justia Law

AML IP, LLC brought lawsuits in the United States District Court for the Eastern District of Texas against Bath & Body Works Direct, Inc., The Buckle, Inc., and other entities, alleging infringement of U.S. Patent No. 6,876,979. The patent concerns e-commerce methods using a “bridge computer” to facilitate transactions between service providers. Each defendant moved to dismiss the suit on two grounds: improper venue, arguing the requirements of 28 U.S.C. § 1400(b) were not satisfied, and failure to state a claim, contending the patent’s claims were ineligible under 35 U.S.C. § 101.The district court addressed both grounds. It concluded that AML had not established proper venue, justifying dismissal, and separately determined that the patent claims were ineligible for patenting, also warranting dismissal. The court entered judgment accordingly. AML filed a motion to amend the judgment, arguing the court should have dismissed only for venue and not for ineligibility after finding venue improper. The district court denied the motion, explaining it had discretion to address both grounds given they were briefed together and no alternative venue was suggested for transfer. AML appealed, challenging the district court's decision to dismiss on both grounds.The United States Court of Appeals for the Federal Circuit reviewed the appeal, applying Fifth Circuit law for procedural questions. The court held that the district court did not abuse its discretion in dismissing for both improper venue and patent ineligibility, as venue is a waivable issue and courts may resolve multiple grounds when briefed together. The appellate court also declined to address whether the merits dismissal would have preclusive effect in future cases, noting that such determinations are properly made in subsequent actions. The judgment was affirmed. View "AML IP, LLC v. BATH & BODY WORKS DIRECT, INC." on Justia Law

A local news publisher brought suit against a technology company that operates a news aggregation app and website. The publisher alleged that the aggregator, through its app, displayed the publisher’s articles either by framing them within the aggregator’s interface (so that users viewed the publisher’s website content within an app frame) or by reproducing the full text of articles under the aggregator’s own URL due to a technical glitch. The publisher claimed this conduct violated its exclusive right to publicly display its content under the Copyright Act, and further alleged that the removal or alteration of its website’s URLs—when articles were shown under the aggregator’s URLs—constituted improper removal of copyright management information (CMI) under the Digital Millennium Copyright Act (DMCA).The United States District Court for the Southern District of Mississippi addressed the publisher’s claims through cross-motions for summary judgment. Relying on the “server test” from Perfect 10, Inc. v. Amazon.com, Inc., the district court held that the aggregator’s framed linking did not infringe the publisher’s display right, because the content was not stored on the aggregator’s servers but only linked to the publisher’s own server. The court also held that URLs do not constitute CMI under the DMCA, as they function merely as locational addresses and do not inherently convey protected copyright information.On interlocutory appeal, the United States Court of Appeals for the Fifth Circuit reviewed two questions: whether the server test is the proper standard for evaluating copyright display right infringement, and whether URLs can be CMI under the DMCA. The Fifth Circuit rejected the server test as inconsistent with the text of the Copyright Act, and instead adopted a “transmit requirement”—finding infringement only if the alleged infringer actually transmits (rather than merely links to) the copyrighted content. The court also held that the DMCA does not categorically foreclose URLs from being CMI, but for a URL to qualify as CMI, it must clearly convey the characteristics specified by statute. The case was remanded for further proceedings consistent with these holdings. View "Emmerich Nwspr v. Particle Media" on Justia Law

A company specializing in hybrid electric aircraft technology filed suit in Washington state court against a major aerospace manufacturer and its investment affiliate, alleging misappropriation of trade secrets, breach of contract, and tortious interference, among other state law claims. The plaintiff asserted that the defendant improperly used its confidential information, including by incorporating aspects of the plaintiff’s technology into two patents obtained by the defendant. The plaintiff’s claims involved several theories and more than 30 alleged trade secrets.The aerospace manufacturer responded by counterclaiming for a declaratory judgment that its employees were the sole inventors of one of the patents in question. The case was removed to the United States District Court for the Western District of Washington based on this federal patent law counterclaim, and a second inventorship counterclaim was later added regarding another patent. The district court granted summary judgment in favor of the defendant on both patent inventorship counterclaims. The remainder of the plaintiff’s claims proceeded to a jury, which returned a verdict awarding the plaintiff over $92 million for trade secret misappropriation and tortious interference. However, the district court granted the defendant’s post-trial motion for judgment as a matter of law and conditionally granted a new trial, vacating the jury award.On appeal, the United States Court of Appeals for the Ninth Circuit reversed the district court’s post-trial rulings and remanded the case with instructions for reassignment to a different district judge. In a subsequent petition for rehearing, the defendant argued for the first time that appellate jurisdiction belonged exclusively to the Federal Circuit because the counterclaims were compulsory and arose under patent law. The Ninth Circuit held that the defendant’s counterclaims, though arising under federal patent law, were permissive—not compulsory—because they did not share the same operative facts as the plaintiff’s state law claims; thus, Ninth Circuit jurisdiction was proper. The court also held that the district court appropriately exercised supplemental jurisdiction over the state law claims, as they shared a common nucleus of operative fact with the federal counterclaims. The petition for rehearing was denied. View "ZUNUM AERO, INC. V. THE BOEING COMPANY" on Justia Law

An architecture firm (KFA) held registered copyrights in several building plans and technical drawings. In 2016, the firm licensed certain works to a development company (AHV) for use in the Austin, Texas area, with explicit requirements to include KFA’s copyright management information (CMI) on any displays or copies. KFA later worked directly with third-party graphics companies to create floorplans and renderings, again requiring its CMI be included. However, the floorplans and renderings produced by these companies did not contain KFA’s CMI. When AHV and its affiliates used these images for a new housing development’s online marketing, KFA sent notices of default and, after noncompliance, terminated the licensing agreement and demanded the return of its materials.KFA then sued AHV and the Creekside defendants in the United States District Court for the Western District of Texas, alleging violations of the Digital Millennium Copyright Act (DMCA), copyright infringement, conversion, and seeking specific performance. The district court dismissed the DMCA and conversion claims, and parts of the infringement claims, but allowed others to proceed. KFA then voluntarily dismissed its remaining claims with prejudice to facilitate an appeal.The United States Court of Appeals for the Fifth Circuit first addressed whether it had jurisdiction, given that the district court’s dismissal under Rule 41(a)(2) was erroneous because it only dismissed part of the action. The appellate court held that this error did not deprive it of jurisdiction. On the merits, the Fifth Circuit affirmed dismissal of the DMCA claims, holding that failure to include CMI on newly created images is not “removal” or “alteration” under the statute. However, it vacated the dismissal of the copyright infringement claims, ruling that the district court erred in applying a statutory exemption beyond its scope and remanded those claims for further proceedings. View "Flores v. AMH Creekside" on Justia Law

Several inventor-advocacy groups challenged the language used on the cover of patents issued by the United States Patent and Trademark Office (PTO), alleging that it is misleading. Specifically, they contended that the statement granting patent holders the “right to exclude others” is inaccurate following the Supreme Court’s decision in eBay Inc. v. MercExchange, L.L.C., which established that injunctions are no longer automatically granted to patent holders. The plaintiffs, all non-profit organizations supporting inventors, argued that the PTO’s failure to amend this language harms them because they must divert resources to educate their members about the true scope of patent rights.The United States District Court for the Eastern District of Virginia dismissed the case for lack of standing, holding that the plaintiffs had not shown a sufficient risk of future injury resulting from the challenged language. The district court also denied leave to amend the complaint, finding that any amendment would be futile. The plaintiffs appealed this decision.The United States Court of Appeals for the Federal Circuit affirmed the district court’s dismissal. The appellate court held that the organizations failed to demonstrate organizational standing because their alleged injury—diverting resources to educate members—was foreclosed as a basis for standing by the Supreme Court’s decision in Food & Drug Admin. v. Alliance for Hippocratic Medicine. The court also found that the plaintiffs did not establish associational standing, as they did not identify any member facing a real and immediate threat of future injury from the patent cover language. The court concluded that amendment of the complaint would be futile, as the foundational deficiencies in establishing standing could not be remedied by further allegations. The judgment of the district court was therefore affirmed. View "US INVENTOR, INC. v. SQUIRES " on Justia Law