Justia Intellectual Property Opinion Summaries

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SynQor’s 190 patent issued in 2006, as part of an extensive family of patents that disclose technology for DC-DC power converters used in large computer systems and data communication equipment to convert direct electric current from one voltage to another. In 2011, SynQor asserted several patents against Vicor. Vicor petitioned for reexamination of the 190, 702, and 290 patents. The Patent Trial and Appeal Board affirmed that claims of the 702 patent were not unpatentable, finding that “there are incompatibilities in frequency between” prior references Cobos and Steigerwald, and found the challenged claims of the 290 patent not unpatentable based on a combination of Steigerwald, Cobos, and another reference.The Federal Circuit court affirmed the patentability of the claims of the 290 patent and the finding the 702 patent not unpatentable but did not reach the finding that Steigerwald and Cobos were incompatible. The 190 patent expired in 2018. A year later, the Board issued its decision in the 190 reexamination, rejecting SynQor’s argument that Steigerwald and Cobos had incompatible frequencies.The Federal Circuit vacated. Common law issue preclusion arising from the 702 and 290 reexaminations collaterally estopped the Board from finding that an artisan would be motivated to combine Steigerwald and Cobos. The Board’s decision on newly presented claims 34–38 became moot with the patent's expiration. View "SynQor, Inc. v. Vicor Corp." on Justia Law

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LHO owns a downtown hotel that it rebranded as “Hotel Chicago” in 2014. In 2016, Rosemoor renamed its existing westside hotel as “Hotel Chicago.” LHO sued Rosemoor for trademark infringement and unfair competition under the Lanham Act and for deceptive advertising and common-law trademark violations under Illinois law. The district court denied preliminary injunctive relief, finding that “LHO has failed, at this juncture, to show that it is likely to succeed in proving secondary meaning" and was unlikely to show that “Hotel Chicago” was a protectable trademark. LHO appealed but successfully moved to voluntarily dismiss its claims with prejudice before briefing.Rosemoor requested more than $500,000 in attorney fees, arguing that the case qualified as “exceptional.” The district court denied the request under the Seventh Circuit's “abuse-of-process” standard. The Seventh Circuit held that the district court should have evaluated Rosemoor’s attorney-fee request under the Supreme Court’s “Octane Fitness” holding. On remand, Rosemoor filed a renewed request for more than $630,000 in fees, arguing that the weakness of LHO’s position on the merits, LHO’s motives in bringing suit, and its conduct in discovery, made the case exceptional under Octane Fitness. The Seventh Circuit affirmed the denial of the request. The district court applied the Octane Fitness standard and reasonably exercised its discretion in weighing the evidence before it. View "LHO Chicago River, L.L.C. v. Rosemoor Suites, LLC" on Justia Law

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Bean’s patent, issued in 2002, covers an auger-type poultry chiller. Days after the patent issued, Bean’s only domestic competition, Morris, wrote a demand letter, arguing that the patent was invalid and citing prior art. Morris received no response and proceeded to develop and sell chillers that included features described in the Bean patent. About 11 years later, Bean requested ex parte reexamination of its patent. After John Bean amended and added claims, the Patent and Trademark Office issued a reexamination certificate; six weeks after receiving that certificate, Bean filed suit, alleging that Morris infringed the patent once the reexamination certificate issued.The Federal Circuit affirmed partial summary judgment in favor of Morris. A defendant, accused of infringing a reissued patent, may raise the affirmative defense of equitable intervening rights, 35 U.S.C. 252, and may be protected from liability for infringement of substantively and substantially altered claims in a reissued patent. Granting equitable intervening rights is a matter of judicial discretion. Once granted, they give the alleged infringer the continued right to manufacture, sell, or use the accused product after the reexamination certificate is issued “when the defendant made, purchased, or used identical products, or made substantial preparations to make, use, or sell identical products, before the reissue date.” The public has the right to use what is not specifically claimed in the original patent. View "John Bean Technologies Corp. v. Morris & Associates, Inc." on Justia Law

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Melanoscan’s patent, titled “Apparatus for Total Immersion Photography,” relates to the detection, diagnosis, and treatment of skin cancer as well as other diseases and cosmetic conditions of the visible human. The apparatus claimed as a “device” is an enclosure fitted with cameras and lights arranged in a manner that “allows for the imaging of total or subtotal non-occluded body surfaces in order to detect health and cosmetic conditions and involves the measurement and analysis of an optically depicted image of a patient’s surfaces.” Canfield petitioned the Patent Trial and Appeal Board for inter partes review (IPR) of multiple claims, asserting unpatentability on the ground of obviousness. The Board ruled that all of the challenged claims are patentable.The Federal Circuit reversed as to independent claims 1 and 51, and vacated and remanded as to the dependent claims in the petition. Claims 1 and 51 place the subject within the enclosure, as in the prior art, and place multiple cameras and lights within the enclosure, as in the prior art; the subject matter described in claims 1 and 51 would have been obvious to a person of ordinary skill in the field of the invention. View "Canfield Scientific, Inc. v. Melanoscan, LLC" on Justia Law

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The Second Circuit reversed the district court's grant of final judgment for Mixpac on its claims of unfair competition, infringement of common law trademarks, and its claims under the Trademark Act of 1946 (Lanham Act) for trademark counterfeiting, infringement of registered marks, and false designation of origin. Mixpac and defendants are competitors in the U.S. market for mixing tips used by dentists to create impressions of teeth for dental procedures, such as crowns.The court disagreed with the district court's holding that Mixpac's trade dress—its use of yellow, teal, blue, pink, purple, brown, and white on mixing tips—is not functional. Instead, the court held that the use of these colors on mixing tips is functional, as the colors signify diameter and enable users to match a cartridge to the appropriate mixing tip. Accordingly, the court remanded for entry of final judgment in favor of defendants on the unfair competition, trademark infringement, trademark counterfeiting, and false designation of origin claims. The court declined to address defendants' counter claims and to address in the first instance Mixpac's civil contempt claim. View "Sulzer Mixpac AG v. A&N Trading Co., Ltd." on Justia Law

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Metal Jeans, an apparel brand and owner of the non-stylized "METAL" trademark, filed an infringement claim against Metal Sport, a powerlifting brand with a similar but stylized mark. The district court denied both parties' merits motions because material facts remained in dispute, but granted Metal Sport's separate motion for summary judgment on whether Metal Jeans was barred from pressing its infringement claim by the equitable doctrine of unclean hands. In doing so, the district court rejected Metal Jeans' counter-defense that Metal Sport also acted with unclean hands.In a separate memorandum disposition filed simultaneously with this opinion, the Ninth Circuit concluded that the district court improperly granted summary judgment against Metal Jeans. The panel wrote here to resolve an issue of first impression: the standard of review the panel employs when a district court concludes that a party has acted with unclean hands. The panel held that the appropriate standard of review of a district court's determination to grant summary judgment on the affirmative defense of unclean hands is abuse of discretion. The panel remanded for further proceedings. View "Metal Jeans, Inc. v. Metal Sport, Inc." on Justia Law

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The Synchronoss patents describe a system for synchronizing data across multiple systems or devices connected via the Internet and a “method for transferring media data to a network coupled apparatus.” The system generally involves one device or system that utilizes a first sync engine, a second device or system that utilizes a second sync engine, and a data store. In an infringement suit against Dropbox, the district court held that all asserted claims in the patent are either invalid under 35 U.S.C. 112, paragraph 2, or not infringed.The Federal Circuit affirmed the findings of invalidity and non-infringement and did not address Dropbox’s claims of ineligible subject matter. The asserted claims of one patent “are nonsensical.” Adopting Synchronoss’s proposal would require rewriting the claims. With respect to another patent, the claim term “user identifier module” does what the definiteness requirement prohibits; the term does not correspond to “adequate” structure in the specification that a person of ordinary skill in the art would be able to recognize and associate with the corresponding function in the claim. With respect to the third patent, Dropbox does not directly infringe by “using” Synchronoss’s claimed system. View "Synchronoss Technologies, Inc. v. Dropbox, Inc." on Justia Law

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Crocs's Design Patent 789, titled “Footwear,” has a single claim for the “ornamental design for footwear.” Crocs sued Dawgs for infringement, Dawgs sought inter partes reexamination (IPE) under 35 U.S.C. 311. The district court stayed its proceedings. The examiner rejected the claim as anticipated, 35 U.S.C. 102(b). While an appeal to the Patent Trial and Appeal Board was pending, Dawgs filed for Chapter 11 bankruptcy. The bankruptcy court approved the sale of all of its assets to a new entity, Holdings, “not free and clear of any Claims Crocs . . . may hold for patent infringement occurring post-Closing Date by any person ... or any defenses Crocs may have in respect of any litigation claims that are sold.” The bankruptcy court authorized the distribution of the net sale proceeds and dismissed Dawgs’s bankruptcy case. Holdings assigned all rights, including explicitly the claims asserted by Dawgs in the infringement action and the IPE, to Mojave. Dawgs dissolved but continued to exist for limited purposes, including “prosecuting and defending suits" and "claims of any kind.”The Board declined to change the real-party-in-interest from the IPE requestor to Mojave, then reversed the examiner’s rejection of the patent’s claim. The Federal Circuit granted the motion to substitute. The assignments indicate that Mojave is Dawgs's successor-in-interest; as such, Mojave has standing. If the Board precludes substitution on the basis of a transfer in interest because of a late filing, it would defeat the important interest in having the proper party before the Board. View "Mojave Desert Holdings, LLC v. Crocs, Inc." on Justia Law

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Elevated LDL cholesterol is linked to heart disease. LDL receptors remove LDL cholesterol from the bloodstream; the PCSK9 enzyme regulates LDL receptor degradation. Amgen’s 165 and 741 patents describe antibodies that purportedly bind to the PCSK9 protein and lower LDL levels by blocking PCSK9 from binding to LDL receptors. Amgen sued Sanofi, alleging infringement of multiple patents, including the 165 and 741 patents. Amgen and Sanofi stipulated to infringement of selected claims and tried issues of validity to a jury.The court granted judgment as a matter of law (JMOL) of nonobviousness and of no willful infringement. Following remand, a jury again found that Sanofi failed to prove that the asserted claims were invalid for lack of written description and enablement. The district court granted Sanofi’s Motion for JMOL for lack of enablement and denied the motion for lack of written description. The Federal Circuit affirmed. Undue experimentation would be required to practice the full scope of these claims, which encompasses millions of candidates claimed with respect to multiple specific functions. It would be necessary to first generate and then screen each candidate antibody to determine whether it meets the double-function claim limitations. View "Amgen Inc. v. Sanofi, Aventisub LLC" on Justia Law

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The Infinity patents share a specification and involve using a fax machine as a printer or scanner for a personal computer. The indefiniteness issues revolve around the connection between the fax machine and the computer, termed a “passive link.” In a suit alleging that Oki infringed the patents, the district court found the patent claims indefinite.The Federal Circuit affirmed. Infinity has taken materially inconsistent positions regarding the extent of the claimed “passive link”— specifically, whether it ends at the I/O bus inside the computer or merely at the computer’s port; the endpoint of “passive link” is not reasonably certain and the term is indefinite. Because there is no reasonable certainty about where the “passive link” ends, there also cannot be reasonable certainty about where the “computer” begins. View "Infinity Computer Products, Inc. v. Oki Data Americas, Inc." on Justia Law