Justia Intellectual Property Opinion Summaries

In September 2010, IntraCellular filed the application leading to the 077 patent. In October 2012, the Patent Office issued a non-final office action including rejections under 35 U.S.C. 103 and 112. Intra-Cellular argued against section 103 rejections without amendment. In April 2013, the Patent Office mailed a final Office action, allowing no claims. In July 2013, on the last day for filing a “reply” to the final Office action without accruing applicant delay, 36 U.S.C. 154(b)(2)(C)(ii), Intra-Cellular responded with “Amendments and Response,” repeating the same arguments and adding a new claim. Nine days later, the Patent Office mailed an Advisory Action: Intra-Cellular’s after-final submission overcame some of the previous rejections but failed to overcome the section 103 rejection for the prior reasons of record. The examiner suggested amending or cancelling certain claims. Ten days later, Intra-Cellular filed its second after-final submission adopting all of those suggestions. A Notice of Allowance was mailed on August 20, 2013. In January 2017, the Patent Office issued a determination that the patent was entitled to 264 days of patent term adjustment ( for agency delays, after subtracting 21 days for applicant delay based on the time it took Intra-Cellular to file its second after-final submission after the response deadline, reasoning that Intra-Cellular’s first after-final submission did not constitute a proper “reply” under 37 CFR 1.704(b). The clock stopped with the second after-final submission, 21 days later. The Federal Circuit affirmed that determination. While timely, Intra-Cellular’ initial response continued to argue the merits of the final rejections, failing to comply with regulatory requirements for what constitutes a proper “reply” to a final Office action. View "Intra-Cellular Therapies, Inc. v. Iancu" on Justia Law

Inspired Development sued KidsEmbrace for breach of contract and other related state law claims in federal district court on the basis of diversity jurisdiction under 28 U.S.C. 1332(a). The dispute involved the purported breach of a patent-licensing agreement by failure to pay outstanding royalties. The district court granted summary judgment in KidsEmbrace’s favor on certain claims. On appeal, the Eleventh Circuit discovered that diversity jurisdiction did not exist. The district court concluded on remand that it retained jurisdiction over the suit based on federal question jurisdiction. The Eleventh Circuit transferred the case to the Federal Circuit, which vacated and remanded for dismissal. The parties’ claims did not arise under the patent laws pursuant to 28 U.S.C. 1338(a). No claims allege a cause of action created by federal patent law. This is a state law contract case for past due royalties. Inspired Development need not demonstrate that KidsEmbrace actually practiced the licensed patents, and the question of infringement is not a “necessary element” of the claim. Finding a federal question here merely because this contract implicates a run-of-the-mill question of infringement or validity would undoubtedly impact the wider balance between state and federal courts. View "Inspired Development Group v. Inspired Products Group, LLC" on Justia Law

In 1965, in Memphis, Tennessee, Plaintiffs wrote the song Ain’t That a Lot of Love and registered it with the U.S.Copyright Office. The following year, in London, England, brothers Mervyn and Steve Winwood, members of the Spencer Davis Group, wrote the song Gimme Some Lovin’, which was also registered with the Copyright Office. "Ain’t" fell flat. "Gimme" reached the second spot in the U.K. and the seventh spot in the U.S. Fifty-one years later, Plaintiffs sued the Winwoods for copyright infringement, 17 U.S.C. 504, claiming the Winwoods lifted the bass line from Ain’t That a Lot of Love. The defendants claimed no one in the Group had heard the song before writing Gimme Some Lovin’. Plaintiffs argued that the Group could have copied the bass line during a 21-day window between "Ain’t That’s" debut and the commercial release of Gimme. The court ruled that documents Plaintiffs sought to rely on to show direct evidence of copying were inadmissible under the rule against hearsay and that Mervyn did not have enough of a connection with Tennessee to exercise jurisdiction over him. The Sixth Circuit affirmed. Plaintiffs presented no admissible evidence that created a genuine issue of material fact over whether Winwood copied "Ain’t That." Exercising jurisdiction over Mervyn would conflict with due process because he has not purposely availed himself of the privilege of acting in Tennessee. View "Parker v. Winwood" on Justia Law

The patent term length is 20 years from the effective filing date of the application, 35 U.S.C. 154. Applicants are compensated for three classes of prosecution delay: a “B Delay” generally entitles the applicant to patent term adjustment (PTA) for each day the application is pending beyond three years. Limitations reduce PTA for "time during which the applicant failed to engage in reasonable efforts to conclude prosecution.” Mayo’s 310 application had a November 1999, effective filing date. The PTO issued a final rejection for anticipation (757 patent) in October 2010. In September 2011, Mayo requested continued examination (RCE) arguing that Mayo had priority of invention over the 757 patent. Mayo cancelled certain claims and pursued them in a separate continuation application, which later issued as the 927 patent. In February 2012, an interference was declared. In February 2014, the Board awarded priority to Mayo’s 310 application and canceled the 757 patent. In June 2014, an examiner rejected the 310 application, citing double patenting in view of the 927 patent. Mayo argued that the claims were patentably distinct. The examiner mailed a Notice of Allowance in November 2014. The 310 application issued as the 063 patent in March 2015. The PTO calculated 621 days of PTA, with no B Delay. Mayo claimed 685 days, arguing the examiner’s reopening of prosecution after termination of the interference was not RCE under 35 U.S.C. 154(b)(1)(B)(i). The PTO concluded that RCE time (which is deducted from B Delay) did not end when the interference was declared, but instead when the Notice of Allowance was mailed. The Federal Circuit affirmed, upholding the PTO’s interpretation of “any time consumed by continued examination of the application requested by the applicant under section 132(b),” 35 U.S.C. 154(b)(1)(B)(i). View "Mayo Foundation for Medical Education and Research v. Iancu" on Justia Law

During frying, cooking oil gradually degrades and loses its cooking capacity, generating impurities called total polar materials (TPMs). Frymaster’s patent describes a system for measuring the state of cooking oil degradation with a TPM sensor. When the sensor detects that TPM levels are too high, the system instructs the fryer operator to change the oil. On inter partes review, the Patent and Trademark Office Patent Trial and Appeal Board found multiple claims not unpatentable as obvious under 35 U.S.C. 103. The Federal Circuit affirmed, agreeing that industry praise is probative of nonobviousness even if it was not precisely limited to the point of novelty of the claimed combination. Substantial evidence supports the Board’s finding of no motivation to combine prior references and Frymaster’s evidence of secondary considerations supports nonobviousness. View "Henny Penny Corp. v. Frymaster LLC" on Justia Law

Curver’s 946 patent, filed in 2011, entitled “Pattern for a Chair” claims an “ornamental design for a pattern for a chair” with an overlapping “Y” design. The design patent’s figures, however, merely illustrate the design pattern disembodied from any article of manufacture. Curver sued Home Expressions, alleging that Home Expressions made and sold baskets that incorporated Curver’s claimed design pattern and infringed the 946 patent. The Federal Circuit affirmed the dismissal of the suit. The accused baskets could not infringe because the asserted design patent was limited to chairs only. The scope of the design patent was limited to the illustrated pattern applied to a chair. View "Curver Luxembourg, SARL v. Home Expressions Inc." on Justia Law

The Intellectual Ventures (IV) patents are directed to tracking and storing information relating to a user’s purchases and expenses; methods and systems for providing customized Internet content to a user as a function of user-specific information and the user’s navigation history; and methods of scanning hardcopy images onto a computer. IV unsuccessfully sued Capital One for infringement in the Eastern District of Virginia and in the District of Maryland. Capital filed antitrust counterclaims, alleging monopolization and attempted monopolization (Sherman Act, 15 U.S.C. 2) and unlawful acquisition of assets (Clayton Act, 15 U.S.C. 18), claiming that IV is principally engaged in the business of acquiring patents and asserting them in litigation. IV acquired approximately 3,500 patents relating to commercial banking and attempted to obtain large licensing fees from banks by threatening infringement suits. Capital alleged that IV concealed the identity of its patents and insisted that banks license IV’s entire portfolio of financial services patents, knowing that many were invalid, unenforceable, and not infringed. The Virginia court dismissed the antitrust counterclaims for failure to state a claim on which relief could be granted. The Maryland district court granted summary judgment against Capital on all the antitrust claims. The Federal Circuit affirmed the Maryland holding, citing collateral estoppel. The Virginia decision that Capital failed to plausibly allege a proper relevant antitrust market and failed to plausibly allege that IV wields monopoly power within that market was conclusive in the Maryland action. View "Intellectual Ventures I LLC v. Capital One Financial Corp." on Justia Law

This appeal stemmed from the parties' longstanding dispute over the literary works of John Steinbeck. In this case, a federal jury in Los Angeles unanimously awarded plaintiff, as executrix of Elaine's estate (Elaine was the widow of Steinbeck), compensatory damages for slander of title, breach of contract, and tortious interference with economic advantage, and punitive damages against defendants. Determining that it had jurisdiction, the Ninth Circuit affirmed the orders granting summary judgment and striking defendants' defenses to tortious interference on grounds of collateral estoppel. Furthermore, the panel explained that it follows that the district court's decisions to exclude evidence related to defendants' different understanding of the agreement at issue or the validity of the prior court decisions were not abuses of discretion. The panel affirmed the compensatory damages award, holding that the record contained substantial evidence to support the awards on each cause of action independently. Furthermore, the compensatory damages were not speculative. The panel held that there was more than ample evidence of defendants' malice in the record to support the jury's verdict, thus triggering entitlement to punitive damages. However, the panel vacated and remanded with instructions to dismiss the punitive damages claims against Gail, Steinbeck's daughter-in-law, based on lack of meaningful evidence of Gail's financial condition and her ability to pay. View "Kaffaga v. The Estate of Thomas Steinbeck" on Justia Law

University of Texas System (UT) sued BSC for patent infringement in the Western District of Texas. The patents resulted from research conducted at UT and are directed to implantable drug-releasing biodegradable fibers. BSC is a Delaware corporation with a principal place of business in Massachusetts. BSC does not own or lease any property or maintain a business address in the Western District of Texas but has 46 employees in the District; all maintain home offices and do not work in spaces that are owned or controlled by BSC. UT asserted that venue was proper because UT has sovereign immunity. The district court transferred the case to the District of Delaware. The Federal Circuit affirmed, first holding that it had jurisdiction to hear the appeal under the collateral order doctrine. State sovereignty principles do not grant UT the right to bring suit in an otherwise improper venue; 28 U.S.C. 1400(b) is the sole and exclusive provision controlling venue in patent infringement actions and venue is proper where a defendant resides or has a regular and established place of business. Sovereign immunity is a shield, not a sword. There was no claim or counterclaim against UT that placed it in the position of a defendant. View "Board of Regents of the University of Texas System v. Boston Scientific Corp." on Justia Law

In 2014, BioDelivery filed three petitions for inter partes review (IPR) of Aquestive’s 167 patent. The Patent Trial and Appeal Board instituted review on a single ground in each petition. For the 14 non-instituted grounds, the Board found that BioDelivery failed to establish a reasonable likelihood of prevailing on the merits. The Board sustained the patentability of the three claims. The Supreme Court then issued its SAS Institute (2018) holdings that IPR proceedings must proceed in accordance with the petition including the grounds on which the challenge to each claim is based. On remand, the Board modified the institution decisions, denied the petitions, and terminated the proceedings, emphasizing its discretion to institute IPR under 35 U.S.C. 314(a) even upon a showing of a reasonable likelihood of prevailing on at least one challenged claim. The Board considered the merits of the previously noninstituted grounds, finding that BioDelivery had not “establish[ed] a reasonable likelihood of success in relation to those claims and grounds.” The Federal Circuit dismissed BioDelivery’s appeals as barred by 35 U.S.C. 314(d). In following the remand order to “implement SAS,” the Board corrected its partial institution errors by revisiting its institution decisions and properly exercising its discretion not to institute review at all. Nothing in the order divested the Board of that discretion. View "BioDelivery Sciences International, Inc. v. Aquestive Therapeutics, Inc." on Justia Law