Justia Intellectual Property Opinion Summaries

Qualcomm Incorporated owned U.S. Patent No. 8,063,674, which relates to integrated circuit devices using multiple power supplies. Apple Inc. filed two petitions for inter partes review (IPR) challenging various claims of this patent as unpatentable due to obviousness. Each petition included a ground that relied on applicant admitted prior art (AAPA) in combination with other prior art patents. The Patent Trial and Appeal Board (PTAB) initially determined that the use of AAPA complied with 35 U.S.C. § 311(b), which allows IPR petitions to be based only on prior art consisting of patents or printed publications. Qualcomm appealed this decision.The United States Court of Appeals for the Federal Circuit previously held that the PTAB misinterpreted § 311(b) because AAPA is not considered prior art consisting of patents or printed publications. The case was remanded for the PTAB to determine whether the AAPA in Apple's petitions formed the basis of the ground at issue in violation of § 311(b). On remand, the PTAB concluded that the AAPA did not form the basis of the ground because it was used in combination with prior art patents, thus complying with § 311(b).The United States Court of Appeals for the Federal Circuit reviewed the PTAB's decision and held that the PTAB erred in its interpretation of § 311(b). The court clarified that the statute's plain meaning does not permit AAPA to form the basis of an IPR ground, even if used in combination with prior art patents or printed publications. The court found that Apple's petitions expressly included AAPA in the basis of the ground, violating § 311(b). Consequently, the court reversed the PTAB's decision, determining that the challenged claims of the '674 patent are not unpatentable as obvious. View "QUALCOMM INCORPORATED v. APPLE INC. " on Justia Law

Michael Hooper, a former employee of Double Eagle Alloys, Inc., left the company to join competitor Ace Alloys, LLC, taking with him 2,660 digital files containing Double Eagle’s business information. Double Eagle discovered the download and sued Hooper and Ace Alloys, alleging trade-secret violations, misappropriation of confidential business information, and civil conspiracy.The United States District Court for the Northern District of Oklahoma granted summary judgment to Hooper and Ace Alloys on all claims. The court found that Double Eagle failed to identify its alleged trade secrets with sufficient particularity and clarity to proceed to trial. The court also held that Double Eagle did not present evidence that its business information was confidential, and thus, the misappropriation claim could not stand. Finally, the court dismissed the civil-conspiracy claim because it lacked an underlying tort.The United States Court of Appeals for the Tenth Circuit reviewed the case. The court affirmed the district court’s decision, agreeing that Double Eagle did not identify its trade secrets with sufficient particularity. The court noted that Double Eagle’s PSQ specifications, pricing, and customer drawings were either publicly available or not shown to be unique and confidential. The court also found that Double Eagle failed to present sufficient evidence that its business information was confidential, as required for the misappropriation claim. Consequently, the civil-conspiracy claim was also dismissed due to the absence of an underlying tort. View "Double Eagle Alloys v. Hooper" on Justia Law

Recentive Analytics, Inc. owns four patents related to the use of machine learning for generating network maps and schedules for television broadcasts and live events. The patents are divided into two groups: the "Machine Learning Training" patents and the "Network Map" patents. The Machine Learning Training patents focus on optimizing event schedules using machine learning models, while the Network Map patents focus on creating network maps for broadcasters using similar techniques. Recentive sued Fox Corp. and its affiliates for patent infringement.The United States District Court for the District of Delaware dismissed the case, ruling that the patents were directed to ineligible subject matter under 35 U.S.C. § 101. The court found that the patents were focused on the abstract idea of using generic machine learning techniques in a specific environment without any inventive concept. Recentive acknowledged that the patents did not claim the machine learning techniques themselves but rather their application to event scheduling and network map creation.The United States Court of Appeals for the Federal Circuit reviewed the case and affirmed the district court's decision. The Federal Circuit held that the patents were directed to abstract ideas and did not contain an inventive concept that would transform them into patent-eligible applications. The court noted that the use of generic machine learning technology in a new environment, such as event scheduling or network map creation, does not make the patents eligible. The court also rejected Recentive's argument that the increased speed and efficiency of the methods rendered them patent-eligible. The Federal Circuit concluded that the district court did not err in denying leave to amend, as any amendment would have been futile. View "RECENTIVE ANALYTICS, INC. v. FOX CORP. " on Justia Law

Sage Products, LLC (“Sage”) challenged the final written decisions of the Patent Trial and Appeal Board (“Board”) which found all challenged claims of two of its patents unpatentable. The patents in question, U.S. Patent Nos. 10,398,642 and 10,688,067, relate to a sterilized chlorhexidine product in a package, such as an applicator filled with an antiseptic composition for disinfecting skin. The key claims at issue include claims 1-3, 5-8, 10-18, and 20 of the ’642 patent and claims 1-3, 5-8, and 10-19 of the ’067 patent.The Board relied on four key pieces of prior art in finding Sage’s claims unpatentable: the ChloraPrep Public Assessment Report (“PAR”), British Standard EN 556-1 (“BS EN-556-1”), U.S. Patent Application Publication 2015/0190535 (“Degala”), and U.S. Patent Publication No. 2014/0371695 (“Chiang”). The Board found that a skilled artisan would understand the PAR’s references to “sterile” to mean “sterilized” as used in the Sage patents. The Board determined that the PAR disclosed all elements of the challenged claims, including the sterilized chlorhexidine gluconate composition and the sterilized applicator.The United States Court of Appeals for the Federal Circuit reviewed the Board’s findings and affirmed the judgment. The court held that substantial evidence supported the Board’s findings that a skilled artisan would understand the PAR to describe a “sterilized” composition and product. The court also found that the Board correctly determined that the PAR disclosed the limitations of the dependent claims, including the “sterilized colorant” and the sterility assurance level (SAL) of 10-3 to 10-9. The court rejected Sage’s procedural arguments, finding no abuse of discretion in the Board’s reliance on expert testimony and other evidence to interpret the PAR. The court concluded that the Board’s decision was supported by substantial evidence and affirmed the Board’s finding of unpatentability. View "SAGE PRODUCTS, LLC v. STEWART " on Justia Law

Heritage Alliance offers voter guides under the names “iVoterGuide” and “iVoterGuide.com.” In January 2019, the American Policy Roundtable (APR) filed for registration of the marks “iVoters” and “iVoters.com.” Heritage opposed APR’s registration, claiming that APR’s marks would likely be confused with Heritage’s marks, for which Heritage claimed priority of use. The Trademark Trial and Appeal Board (Board) of the United States Patent and Trademark Office (PTO) found that Heritage’s prior-use marks were not protectable because they were highly descriptive and had not acquired distinctiveness, and dismissed the opposition.The Board determined that Heritage had begun using its iVoterGuide marks well before APR’s first use date. However, the Board found that APR effectively conceded likelihood of confusion. Despite this, the Board ruled that Heritage’s prior-use marks were not protectable as trademarks because they were highly descriptive and had not acquired distinctiveness. The Board found that the marks were highly descriptive as they clearly described the service offered, and that Heritage’s evidence of acquired distinctiveness was insufficient.The United States Court of Appeals for the Federal Circuit reviewed the Board’s decision. The court affirmed the Board’s findings that the iVoterGuide marks were highly descriptive and had not acquired distinctiveness. The court found that the Board’s determination was supported by substantial evidence, including the descriptive nature of the marks and the limited additional evidence of acquired distinctiveness. The court concluded that the Board’s decision to dismiss the opposition was correct and affirmed the dismissal. View "HERITAGE ALLIANCE v. AMERICAN POLICY ROUNDTABLE " on Justia Law

Azurity Pharmaceuticals, Inc. filed a lawsuit against Alkem Laboratories Ltd. under the Hatch-Waxman Act, alleging infringement of claims 5, 7, 8, and 9 of U.S. Patent No. 10,959,948. The patent pertains to non-sterile drinkable liquid formulations containing the antibiotic vancomycin. Alkem had submitted an Abbreviated New Drug Application (ANDA) for a product that Azurity claimed infringed on their patent.The United States District Court for the District of Delaware conducted a two-day bench trial and concluded that Alkem’s ANDA did not infringe any of the asserted claims of the ’948 patent. The court found that Azurity had disclaimed any presence of propylene glycol in the prosecution history of the ’948 patent. Since Alkem’s ANDA product contained propylene glycol, the court ruled in favor of Alkem. Azurity argued that a stipulation made during discovery should preclude Alkem’s disclaimer argument, but the district court found this interpretation unpersuasive.The United States Court of Appeals for the Federal Circuit reviewed the case and affirmed the district court’s decision. The Federal Circuit agreed that Azurity had clearly and unmistakably disclaimed propylene glycol during the prosecution of the ’948 patent. The court also found that the stipulation regarding suitable flavoring agents did not preclude the application of the disclaimer. Consequently, the presence of propylene glycol in Alkem’s ANDA product established non-infringement of the ’948 patent claims. The Federal Circuit affirmed the district court’s judgment, holding that Alkem’s ANDA product did not infringe the asserted claims of the ’948 patent. View "AZURITY PHARMACEUTICALS, INC. v. ALKEM LABORATORIES LTD. " on Justia Law

Pemco and Boeing entered into a contractual "teaming arrangement" to bid for a 2008 Air Force contract, which included a master agreement, a work share agreement, and a non-disclosure agreement. The relationship soured, leading Pemco to sue Boeing for breach of contract and trade secret misappropriation under the Missouri Trade Secrets Act. The district court initially dismissed the trade secrets claim as time-barred but allowed the breach of contract claims to proceed, resulting in a jury awarding Pemco $2,132,038 in direct damages.On appeal, the Eleventh Circuit reversed the dismissal of the trade secrets claim, holding that the Missouri statute of limitations applied, not Alabama's. After remand, Pemco filed a new complaint asserting only the trade secrets claim. The district court dismissed this claim, concluding that the contractual limitation of liability provision barred all additional damages since Pemco had already recovered the maximum amount allowed for breach of contract.The Eleventh Circuit reviewed the case de novo and held that the limitation of liability provision in the master agreement applies to Pemco’s trade secrets claim, barring most categories of damages, including incidental, punitive, and consequential damages. However, the court found that the provision does not bar recovery for unjust enrichment, which Pemco had alleged. The court noted that unjust enrichment damages are distinct from the direct, out-of-pocket damages Pemco had already recovered and are not categorically barred by the limitation provision.The court reversed the district court’s dismissal of Pemco’s trade secrets claim and remanded the case for further proceedings, allowing Pemco to pursue recovery based on Boeing’s alleged unjust enrichment. The court denied Pemco’s request to reassign the case to a different district judge. View "Alabama Aircraft Industries Inc. v. Boeing Company, The" on Justia Law

In 2008, the plaintiff, ams-OSRAM USA Inc. (formerly Texas Advanced Optoelectronic Solutions, Inc. or TAOS), sued Renesas Electronics America, Inc. (formerly Intersil Corporation) in the Eastern District of Texas. TAOS alleged patent infringement and state-law claims of trade secret misappropriation and breach of a confidentiality agreement related to ambient-light sensors. The patent claim is no longer at issue. TAOS claimed that Intersil used confidential information disclosed during merger discussions to develop competing products.The district court entered a judgment in 2015 based on a jury verdict, awarding TAOS damages for trade secret misappropriation but not for breach of contract, deeming the latter duplicative. In 2018, the Federal Circuit affirmed Intersil’s liability for trade secret misappropriation on a narrower basis, vacated the monetary award, and remanded for further proceedings. The court also vacated the judgment denying contract damages as duplicative.On remand, the district court held additional proceedings, including a new jury trial. The court awarded TAOS $8,546,000 in disgorged profits for trade secret misappropriation, $17,092,000 in exemplary damages, and reasonable royalties for breach of contract totaling $6,637,693. The court also awarded prejudgment interest and attorneys’ fees. Both parties appealed.The United States Court of Appeals for the Federal Circuit affirmed the district court’s findings on the trade secret and contract claims, including the disgorgement and exemplary damages awards. However, the court reversed the finding that the trade secret became properly accessible in January 2006, determining the correct date to be February 28, 2005. The court affirmed the 26-month head-start period and the inclusion of profits from sales to Apple for the iPod Touch in the disgorgement award. The court vacated the prejudgment interest awards and remanded for further consideration of the appropriate accrual dates for interest on sales occurring after the complaint was filed. View "AMS-OSRAM USA INC. v. RENESAS ELECTRONICS AMERICA, INC. " on Justia Law

In 2018, DeWolff, Boberg & Associates, Inc. (DB&A), a management consulting firm, hired Justin Pethick as a regional vice president of sales. In 2020, Pethick accepted a job offer from The Randall Powers Company (the Powers Co.), a competitor. After Pethick joined the Powers Co., some prospective DB&A clients hired the Powers Co. DB&A alleged that Pethick stole its trade secrets and used them to poach clients.The United States District Court for the Northern District of Texas excluded DB&A’s damages expert under Daubert v. Merrell Dow Pharmaceuticals, Inc., and granted summary judgment to the defendants, citing DB&A’s lack of evidence of damages. DB&A appealed, contesting the exclusion of its expert and the summary judgment on its misappropriation of trade secrets claim.The United States Court of Appeals for the Fifth Circuit reviewed the case. The court noted that to prevail on a misappropriation of trade secrets claim under Texas law, a plaintiff must show that a trade secret existed, it was acquired through a breach of a confidential relationship or discovered by improper means, and the defendant used the trade secret without authorization. The court found that DB&A failed to identify specific trade secrets within its databases and did not provide evidence that Pethick or the Powers Co. used or disclosed any trade secrets. Consequently, the court affirmed the summary judgment dismissal of DB&A’s misappropriation claim on these alternative grounds. View "DeWolff, Boberg & Associates, Inc. v. Pethick" on Justia Law

Donald Forest submitted a patent application for an "Apparatus for Selecting from a Touch Screen" to the United States Patent and Trademark Office (USPTO) on December 27, 2016. The Patent Trial and Appeal Board (PTAB) affirmed in part the examiner’s rejection of certain claims under 35 U.S.C. § 103 and nonstatutory double patenting. Forest appealed this decision.The PTAB reviewed the case and upheld the examiner's rejection of certain claims in Forest's patent application. Forest did not dispute that his application was filed more than a year after the expiration date of any resulting patent, which would have been in 2015. The USPTO raised a jurisdictional issue, arguing that Forest had no personal stake in the appeal because he could not be granted enforceable rights by a patent with zero term. Forest argued that he would still acquire "provisional rights" under 35 U.S.C. § 154(d) if the USPTO issued him an expired patent.The United States Court of Appeals for the Federal Circuit reviewed the case and disagreed with Forest's interpretation of the statute. The court held that provisional rights are granted only when a patent would issue with exclusionary rights, meaning before its expiration date. Since Forest's patent would issue after its expiration date, he would not receive any enforceable rights. Consequently, the court dismissed the appeal. View "In Re FOREST " on Justia Law