Heraeus, a German company, develops and produces bone cement, using copolymers. Biomet also sells bone cement and uses the same copolymers, which it buys from Esschem, a Pennsylvania company. Heraeus holds trade secrets related to the bone cement, including specifications for the copolymers. The trade secrets changed hands during joint ventures before allegedly falling into Esschem’s possession. Heraeus analyzed samples of Biomet’s bone cement in 2005 and discovered that it was virtually identical to Heraeus’ bone cement and that Esschem was manufacturing Biomet's copolymers. Heraeus sued Biomet in Germany in 2008, and brought discovery suits in the U.S. against Esschem and Biomet. By March 2011, Esschem produced e-mail chains between employees of Biomet and Esschem concerning the copolymers. During proceedings against Biomet, that information was corroborated. Heraeus contends it was not until then (December 2011), that it had sufficient information to believe that Esschem had actively participated in the misappropriation of its trade secrets. Less than three years later, Heraeus sued Esschem under the Pennsylvania Uniform Trade Secrets Act (PUTSA) which gives a plaintiff three years from when “the misappropriation was discovered or by the exercise of reasonable diligence should have been discovered” to bring suit. The district court ruled that the limitations period had run because Heraeus was aware of the facts supporting its claims by January 2009. The Third Circuit reversed in part, holding that Pennsylvania applies the rule of separate accrual to continuing trade secret misappropriations, Heraeus may sue for misappropriations that occurred within the three-year period before filing. The court agreed that alleged misappropriations more than three years before Heraeus filed suit are time-barred. View "Heraeus Medical GMBH v. Esschem Inc" on Justia Law

Mayne’s 745 patent discloses and claims pharmaceutical compositions of azole antifungal drugs that are practically insoluble in aqueous media. The patent explains that insoluble drugs are difficult to formulate into dosage forms because of their low absorption and poor bioavailability and purports to provide a pharmaceutical composition addressing these shortcomings. On MSD’s petition, the Patent Trial and Appeal Board initiated inter partes review and found several claims unpatentable as anticipated or obvious, 35 U.S.C. 103 The Federal Circuit affirmed, upholding the Board’s decision to permit MSD’s amendment, finding no indication of intentional concealment, no bad faith on MSD’s part, no attempt to circumvent the estoppel rules, or any other material benefit to it in its delay in naming MCI as a real party in interest. The Board did not err in its constructions of either “pharmaceutical composition” or the “wherein” clauses; under the Board’s constructions, the claims are obvious or anticipated View "Mayne Pharma International Pty. Ltd. v. Merck Sharp & Dohme Corp." on Justia Law

Activision sought inter partes review of GAT’s 743 patent, entitled “Method and System for Providing Character Having Game Item Functions,” which relates to the field of customizing Internet game characters in online games by combining game items with layers of an avatar in the game and discloses a method and system for providing “game item[s]” to Internet game characters and generating a type of avatar the patent refers to as a “gamvatar” that is equipped with particular game items. The Patent Trial and Appeal Board concluded that the challenged claims were “obvious based on the combined teachings” of the prior art references. The Federal Circuit affirmed. The Board properly determined that the gamvatar of the 743 patent is a combination of the conventional avatar with the game item function, rather than a combination of a conventional gamvatar with a game item function, as suggested by GAT and construed the term “layers” to mean that “‘layers’ encompasses ‘graphics regions for displaying graphical objects’ and ‘constructs for holding graphics.’” Substantial evidence supported findings of obviousness under 35 U.S.C. 103. View "Game and Technology Co., Ltd. v. Activision Blizzard Inc." on Justia Law

Hyosung and Diebold manufacture and sell ATMs. Diebold filed a complaint with the International Trade Commission claiming that Hyosung’s imported ATMs infringe its 616 and 631 patents and their importation violates 19 U.S.C. 1337(a)(1)(B). The 616 patent claims an ATM rollout tray that allows for easier servicing of its internal components. The 631 patent relates to a particular method for reading magnetic ink character recognition data on checks (e.g., ink used for the account and routing numbers) that are inserted into an ATM regardless of their width or orientation. The ITC concluded that Hyosung’s accused products infringed both patents; that the asserted claims were not invalid; and that the domestic industry requirement was met for both patents; it entered a limited exclusion order and cease and desist orders against Hyosung. Hyosung redesigned its products to avoid infringing the 616 patent and sought an administrative ruling by U.S. Customs and Border Protection. Customs concluded that the newly redesigned products did not infringe and were therefore not covered by the ITC’s limited exclusion order. The Federal Circuit affirmed as to the 631 patent and concluded that the appeal was moot as to the 616 patent, which has expired, so the ITC’s orders as to that patent have no prospective effect. View "Hyosung TNS Inc. v. International Trade Commission" on Justia Law

Flow Valve’s patent, entitled “Workpiece Supporting Assembly,” is a reissue of the 213 patent. During reissue prosecution, Flow added claims 14-20 but made no changes to the written description or drawings of the original 213 patent. The Reissue patent relates to supporting assemblies--fixtures, for holding workpieces during machining. Forum sought a declaration of invalidity of the Reissue patent, arguing that the added reissue claims did not comply with the original patent requirement under 35 U.S.C. 251 and improperly broadened the original patent claims by omitting the arbor limitations. Flow argued that a person of ordinary skill in the art would understand that the patent disclosed multiple inventions, consisting of embodiments with and without arbors and supported its argument with an expert declaration from an experienced machinist. The Federal Circuit summary judgment in favor of Forum. The original patent does not disclose the invention claimed in the reissue patent. The reissue claims, therefore, do not comply with the original patent requirement as a matter of law. The few references in the written description to machining, in general, do not refer to or disclose specific embodiments, and the boilerplate language that modifications can be made to the original disclosed invention does not even suggest an arbor-less embodiment of the disclosed invention. View "Forum US, Inc. v. Flow Valve, LLC" on Justia Law

University of Minnesota (UMN), an arm of the state of Minnesota, pursues patent protection for inventions resulting from its research and is the owner of the patents at issue. LSI designs and supplies semiconductors; it allegedly infringed UMN’s 601 patent, which claims particular types of “read channel” chips. Ericsson, a telecommunications company. Its customers’ use of Ericsson’s products was alleged to infringe four UMN patents that claim technology used for 4G LTE networks. UMN sued LSI and separately sued Ericsson’s customers. Ericsson intervened in the customer suits. After the commencement of the infringement suits, LSI and Ericsson separately petitioned the Patent Trial and Appeal Board for inter partes review, seeking a determination of unpatentability of the challenged claims on grounds of anticipation and obviousness. The Board declined to dismiss the petitions, rejecting an argument that states enjoy sovereign immunity in IPR proceedings. The Federal Circuit affirmed. IPR represents the sovereign’s reconsideration of the initial patent grant, and the differences between state and tribal sovereign immunity do not warrant a different result than in circuit precedent concerning tribal sovereign immunity: State sovereign immunity does not apply to IPR proceedings. View "Regents of the University of Minnesota. v. LSI Corp." on Justia Law

ON Semiconductor sought inter partes review (IPR) of several claims of Power’s 079 patent. The Patent Trial and Appeal Board determined that the IPR was not time-barred by 35 U.S.C. 315(b) and that the challenged claims were invalid. The Federal Circuit vacated. Power raised the same section 315(b) argument that it raised and litigated in a non-appealed IPR on a different patent, so ON established the basic requirements for issue preclusion. However, the lack-of-incentive-to-litigate exception applies and justifies rejecting ON’s issue preclusion argument. On the merits, the court concluded that section 315(b) requires consideration of privity and real-party-in-interest (RPI) relationships arising after filing but before institution. The court declined to construe section 315(b) in a way that would have the Board, when deciding whether to institute, ignore the existence of RPIs or privies who would benefit from having an IPR instituted simply because they were not RPIs or privies when the petition was filed. IPR was time-barred by because Fairchild, which challenged the patent in 2009 and merged with ON several years later, was an RPI at the time the IPR was instituted, even though it was not an RPI at the time the petition was filed. View "Power Integrations, Inc. v. Semiconductor Components Industries, LLC" on Justia Law

Bodum produces and sells what design magazines and art museums have recognized as an iconically designed houseware product—the Chambord French press coffee maker. Bodum sued Top for selling a French press that Bodum claimed infringes on its unregistered trade dress in the Chambord, 15 U.S.C. 1125(a)(1)(A). The court excluded evidence of various utility patents covering French press coffee makers and rejected Top’s argument that Bodum failed to prove the Chambord design was nonfunctional. A jury awarded Bodum $2 million in damages. The Seventh Circuit affirmed. Bodum presented sufficient evidence for the jury to have found Bodum’s claimed trade dress was non‐functional. The district court did not abuse its discretion in excluding evidence of utility patents that do not claim any of the features that comprise the claimed Chambord trade dress. View "Bodum USA, Inc. v. A Top New Casting Inc." on Justia Law

Elm owns the Challenged Patents, which share a specification and all relate to “stacked integrated circuit memory.” The Challenged Patents are the subject of co-pending litigation between Elm and Petitioners. The Patent Trial and Appeal Board instituted inter partes review and held that Petitioners did not establish the unpatentability of 105 claims across 11 patents. The Federal Circuit affirmed. Each challenged claim requires a low-tensile-stress dielectric, and substantial evidence supports the Board’s finding that a person of ordinary skill in the art would not have reasonably expected success in combining the prior art to meet this limitation. The court construed the term “substantially flexible” as largely able to bend without breaking and contains a circuit layer that is substantially flexible semiconductor substrate and a sufficiently low tensile stress dielectric material. View "Samsung Electronics Co., Ltd. v. Elm 3DS Innovations, LLC" on Justia Law

The U.S. Patent and Trademark Office has, on a few occasions, found that “capsule” was “merely descriptive” of cellphone cases, a finding that precludes registration on the Principal Register. The Office has also found otherwise and allowed Uncommon to register “capsule.” Rival case manufacturers still use the term. Uncommon sued Spigen for trademark infringement and unfair competition, 15 U.S.C. 1114, 1125(a). Spigen sought cancellation of the mark. In discovery, Spigen produced a survey to prove that consumers did not associate “capsule” with Uncommon’s cases, and disclosed the person who conducted the survey as a “non-testifying expert,” but without foundational expert testimony to explain the survey’s methodology, it was inadmissible, FRCP 26(a). The district court excused Spigen’s error and granted Spigen summary judgment on the merits. The Seventh Circuit affirmed. Spigen’s disclosure was inaccurate but harmless. Spigen carried its burden to defeat Uncommon’s presumption of inherent distinctiveness. Spigen demonstrated that there is no issue of material fact regarding the descriptiveness of the “capsule” mark. With the survey, there was no genuine issue of material fact as to the mark’s invalid registration. Nor was there an issue of fact regarding the unlikelihood of consumer confusion. View "Uncommon, LLC v. Spigen, Inc." on Justia Law