Justia Intellectual Property Opinion Summaries

Future Link Systems, LLC entered into a license agreement with MediaTek, Inc. in 2019, which stipulated that MediaTek would pay Future Link a lump sum if Future Link filed a lawsuit against Realtek Semiconductor Corporation. Future Link subsequently filed a complaint with the International Trade Commission (ITC) accusing Realtek of patent infringement. During the litigation, Future Link settled with a third party and informed Realtek, leading Realtek to file a motion for sanctions against Future Link before the administrative law judge (ALJ).The ALJ expressed concerns about the legality of the agreement between Future Link and MediaTek but ultimately denied Realtek's motion for sanctions, concluding that the agreement did not influence Future Link's decision to file the complaint. Future Link then withdrew its complaint and moved to terminate the investigation, which the ALJ granted. The ITC terminated the investigation when no petition for review was filed. Realtek petitioned the ITC to review the ALJ's order denying sanctions, but the ITC declined and terminated the sanctions proceeding.Realtek appealed to the United States Court of Appeals for the Federal Circuit, seeking an order for Future Link to pay a fine to the Commission. The Federal Circuit concluded that it lacked jurisdiction to hear Realtek's appeal, as the Commission's decision on sanctions was not a "final determination" under 19 U.S.C. § 1337(c) that would affect the exclusion or non-exclusion of articles from entry. The court dismissed the appeal, noting that jurisdiction over such matters likely lies with the district courts, not the Federal Circuit. View "Realtek Semiconductor Corp. v. International Trade Commission" on Justia Law

Optis Cellular Technology, LLC, Optis Wireless Technology, LLC, PanOptis Patent Management, LLC, Unwired Planet International Limited, and Unwired Planet, LLC (collectively, “Optis”) sued Apple Inc. (“Apple”) for patent infringement in the U.S. District Court for the Eastern District of Texas. Optis asserted that various Apple products implementing the LTE standard infringed five of its standard-essential patents. The jury found Apple infringed certain claims of the asserted patents and awarded $506,200,000 in damages. Apple moved for a new trial, arguing the jury did not hear evidence regarding Optis’s obligation to license the patents on FRAND terms. The district court granted a new trial on damages, and the jury awarded $300,000,000 in the retrial.The United States Court of Appeals for the Federal Circuit reviewed the case. The court vacated both the infringement and second damages judgments, remanding for a new trial on infringement and damages. The court dismissed Optis’s cross-appeal to reinstate the original damages verdict. The court also reversed the district court’s findings that claims 6 and 7 of the ’332 patent are not directed to an abstract idea under 35 U.S.C. § 101 and that claim 1 of the ’557 patent does not invoke 35 U.S.C. § 112 ¶ 6. The court affirmed the district court’s construction of claim 8 of the ’833 patent. Additionally, the court concluded that the district court abused its discretion by admitting the Apple-Qualcomm settlement agreement and related expert testimony into evidence.The Federal Circuit held that the single infringement question on the verdict form violated Apple’s right to a unanimous verdict, as it did not ensure all jurors agreed on the same patent being infringed. The court also determined that claims 6 and 7 of the ’332 patent are directed to an abstract idea and remanded for further analysis under Alice step two. The court found that “selecting unit” in claim 1 of the ’557 patent invokes § 112 ¶ 6 and remanded for further proceedings. View "OPTIS WIRELESS TECHNOLOGY, LLC v. APPLE INC. " on Justia Law

TWD, LLC filed a complaint against Grunt Style LLC in 2018, alleging trademark infringement. Both companies sell goods with military-related trademarks. Grunt Style counterclaimed, asserting TWD was infringing on its prior trademark. The district court granted Grunt Style's motion for partial summary judgment in April 2022, dismissing all of TWD's claims. The case was reassigned to Judge Hunt, who held a bench trial in 2024 and ordered TWD to pay Grunt Style $739,500. Grunt Style moved to amend the judgment to include interest and permanent injunctive relief, which the district court granted in January 2025.TWD filed a notice of appeal from the amended judgment, which was docketed as appeal No. 25-1305. During a preliminary review, the Seventh Circuit identified a potential jurisdictional issue because the district court's judgment did not explicitly address TWD's counterclaims. The court directed the parties to address whether the judgment was deficient. TWD filed an amended notice of appeal, which was docketed as a new appeal, No. 25-1341. The district court later issued an indicative ruling, signaling its intent to correct the judgment if the case was remanded.The United States Court of Appeals for the Seventh Circuit agreed with the district court's solution and decided to remand the case for correction of the clerical mistake in the judgment. The court retained jurisdiction over the appeal and dismissed the second appeal (No. 25-1341) as unnecessary, without collecting an additional fee. The court emphasized the importance of clear and complete judgments to avoid jurisdictional issues and ensure appellate jurisdiction is clear. View "Grunt Style LLC v TWD, LLC" on Justia Law

United Services Automobile Association (USAA) owns U.S. Patent No. 10,402,638, which is directed to remote check deposit technology. The patent describes a system where a customer uses a personal mobile device to take a picture of a check and transmit the image to a financial institution. The system includes steps for error checking and optical character recognition (OCR) to ensure the check image is of sufficient quality. USAA sued PNC Bank, N.A. for infringement of this and other patents.The United States District Court for the Eastern District of Texas granted USAA’s motion for summary judgment, finding the asserted claims patent-eligible under 35 U.S.C. § 101. The court denied PNC’s cross-motion for summary judgment. A jury trial followed, where the jury found no invalidity and that PNC had infringed USAA’s patents. PNC appealed the district court’s summary judgment ruling on § 101.The United States Court of Appeals for the Federal Circuit reviewed the case and reversed the district court’s decision. The Federal Circuit held that the asserted claim of the ’638 patent is directed to the abstract idea of depositing a check using a handheld mobile device and does not contain an inventive concept sufficient to transform the abstract idea into a patent-eligible application. The court concluded that the claim recites routine data collection and analysis steps implemented by a generic device, which is insufficient for patent eligibility under § 101. Consequently, the Federal Circuit reversed the district court’s grant of summary judgment and did not address USAA’s cross-appeal regarding damages testimony. View "UNITED SERVICES AUTOMOBILE ASSOCIATION v. PNC BANK N.A. " on Justia Law

Mitek Systems, Inc. (Mitek) filed a declaratory judgment action against United Services Automobile Association (USAA) seeking a declaration of non-infringement concerning four patents related to its MiSnap software product. Mitek argued that it faced potential liability for direct, induced, and contributory infringement, as well as indemnification demands from its licensees after USAA sent them letters seeking to sell licenses to USAA patents.The United States District Court for the Eastern District of Texas initially dismissed Mitek’s complaint for lack of subject-matter jurisdiction and alternatively declined to exercise jurisdiction. On appeal, the Federal Circuit vacated the dismissal and remanded for further proceedings, instructing the district court to conduct a more detailed analysis. On remand, the district court again dismissed the case, finding no subject-matter jurisdiction and reiterating its decision to decline jurisdiction even if it existed.The United States Court of Appeals for the Federal Circuit reviewed the case and affirmed the district court’s decision. The court agreed that Mitek did not have a reasonable apprehension of suit for direct, induced, or contributory infringement based on the record evidence, including USAA’s allegations and claim charts from prior litigation. The court also found that Mitek’s potential indemnification liability was not sufficient to establish jurisdiction, as the indemnification agreements contained applicable carve-outs and did not create a reasonable potential for liability. Additionally, the court upheld the district court’s discretionary decision to decline jurisdiction, noting that intervention in future litigation involving Mitek’s customers would be a more effective remedy. View "MITEK SYSTEMS, INC. v. UNITED SERVICES AUTOMOBILE ASSOCIATION " on Justia Law

Agilent Technologies, Inc. appealed two final written decisions by the Patent Trial and Appeal Board (Board) that determined all claims of U.S. Patent Nos. 10,337,001 and 10,900,034 to be unpatentable. The patents in question relate to CRISPR-Cas systems for gene editing, specifically focusing on chemically modified guide RNAs (gRNAs) used in these systems. The Board found that the claims were anticipated by prior art, specifically a reference known as Pioneer Hi-Bred, and that certain claims were also obvious in view of additional references, Threlfall and Deleavey.The Board's decisions were based on findings that Pioneer Hi-Bred disclosed the claimed gRNA functionality and that the reference was enabling. The Board also found that the additional references provided sufficient motivation and reasonable expectation of success for a person of ordinary skill in the art to combine the teachings of Pioneer Hi-Bred with those of Threlfall and Deleavey.The United States Court of Appeals for the Federal Circuit reviewed the Board's findings. The court affirmed the Board's determination that Pioneer Hi-Bred disclosed the claimed gRNA functionality, noting that substantial evidence supported the Board's findings. The court also agreed with the Board's conclusion that Pioneer Hi-Bred was an enabling reference, rejecting Agilent's arguments that undue experimentation would be required to practice the disclosed invention.Additionally, the court upheld the Board's finding that the dependent claims, which included specific chemical modifications, were obvious in view of the combined teachings of Pioneer Hi-Bred, Threlfall, and Deleavey. The court found that the Board had provided a thorough analysis and that substantial evidence supported the Board's conclusion that a person of ordinary skill in the art would have had a reasonable expectation of success in making the claimed modifications.In conclusion, the Federal Circuit affirmed the Board's decisions, holding that all claims of the '001 and '034 patents were unpatentable. View "AGILENT TECHNOLOGIES, INC. v. SYNTHEGO CORP. " on Justia Law

Jekyll Island State Park Authority, a Georgia entity, operates the Summer Waves Water Park and owns the federally registered trademark for SUMMER WAVES. In 2021, Jekyll Island discovered that Polygroup Macau Limited, an intellectual property holding company registered in the British Virgin Islands, had registered nearly identical SUMMER WAVES marks. Polygroup Macau’s general counsel had also asked to buy Jekyll Island’s domain name, summerwaves.com. Jekyll Island sued Polygroup Macau for trademark infringement and to cancel Polygroup Macau’s marks. Polygroup Macau moved to dismiss for lack of personal jurisdiction, arguing it did not sell products in the United States using its trademarks.The United States District Court for the Southern District of Georgia granted Polygroup Macau’s motion to dismiss, concluding that Polygroup Macau did not have sufficient contacts with the United States to support personal jurisdiction. The court noted that Polygroup Macau did not sell products in the United States using its trademarks and only permitted other entities to do so, making the connection between Polygroup Macau’s activities and Jekyll Island’s claims too attenuated.The United States Court of Appeals for the Eleventh Circuit reviewed the case and disagreed with the district court’s conclusion. The Eleventh Circuit found that Polygroup Macau had purposefully availed itself of the benefits of United States law by registering and maintaining trademarks with the USPTO, allowing its sister companies to use those trademarks to sell products in the United States, and marketing specifically to U.S. consumers. The court held that the connection between Jekyll Island’s claims and Polygroup Macau’s activities in the United States was close enough to support specific jurisdiction. The Eleventh Circuit reversed the district court’s dismissal and remanded the case for consideration on the merits. View "Jekyll Island-State Park Authority v. Polygroup Macau Limited" on Justia Law

Fraunhofer-Gesellschaft zur Förderung der angewandten Forschung e.V. (Fraunhofer) is a non-profit research organization that developed and patented multicarrier modulation (MCM) technology used in satellite radio. In 1998, Fraunhofer granted WorldSpace International Network, Inc. (WorldSpace) an exclusive license to its MCM technology patents. Fraunhofer also collaborated with XM Satellite Radio (XM) to develop a satellite radio system, requiring XM to obtain a sublicense from WorldSpace. XM later merged with Sirius Satellite Radio to form Sirius XM Radio Inc. (SXM), which continued using the XM system. In 2010, WorldSpace filed for bankruptcy, and Fraunhofer claimed the Master Agreement was terminated, reverting patent rights to Fraunhofer. In 2015, Fraunhofer notified SXM of alleged patent infringement and filed a lawsuit in 2017.The United States District Court for the District of Delaware initially dismissed the case, ruling SXM had a valid license. The Federal Circuit vacated this decision and remanded the case. On remand, the district court granted summary judgment for SXM, concluding Fraunhofer's claims were barred by equitable estoppel due to Fraunhofer's delay in asserting its rights and SXM's reliance on this delay to its detriment.The United States Court of Appeals for the Federal Circuit reviewed the case and reversed the district court's summary judgment. The Federal Circuit agreed that Fraunhofer's delay constituted misleading conduct but found that SXM did not indisputably rely on this conduct in deciding to migrate to the high-band system. The court noted that SXM's decision was based on business pragmatics rather than reliance on Fraunhofer's silence. The case was remanded for further proceedings to determine if SXM relied on Fraunhofer's conduct and if it was prejudiced by this reliance. View "Fraunhofer-Gesellschaft v. Sirius XM Radio Inc." on Justia Law

Amgen Inc., a biotechnology company, holds patents in the U.S. and South Korea for denosumab, a drug used in treating certain bone cancers. Amgen filed patent infringement suits against Celltrion Inc. (Celltrion Korea) in both countries. To support its case, Amgen sought discovery from Celltrion Korea’s subsidiary, Celltrion USA, located in New Jersey. Amgen filed an application under 28 U.S.C. § 1782 in the District of New Jersey to subpoena Celltrion USA for documents and testimony related to Celltrion Korea’s denosumab products.The Magistrate Judge granted Amgen’s § 1782 application, rejecting Celltrion USA’s argument that § 1782 cannot compel it to produce information held by its foreign parent company. The Judge also found the request not unduly burdensome and ordered the parties to meet and confer to agree on a confidentiality agreement. The District Court affirmed the Magistrate Judge’s order, leading Celltrion USA to appeal.The United States Court of Appeals for the Third Circuit reviewed the case to determine if the order under § 1782 was final and thus appealable under 28 U.S.C. § 1291. The Court concluded that the order was not final because the scope of permissible discovery had not been conclusively defined. The Court emphasized that without a definite scope of discovery, it could not properly review whether the District Court had abused its discretion. Consequently, the Third Circuit dismissed the appeal for lack of jurisdiction, holding that an order granting discovery under § 1782 but leaving the scope of discovery unresolved is not a final order under § 1291. View "Amgen Inc v. Celltrion USA Inc" on Justia Law

Dolby Laboratories Licensing Corporation (Dolby) owns U.S. Patent No. 10,237,577, which is directed to a prediction method using an in-loop filter. Unified Patents, LLC (Unified) filed a petition for inter partes review (IPR) challenging claims 1, 7, and 8 of the patent as anticipated and obvious. Unified certified it was the sole real party in interest (RPI). Dolby identified nine other entities it believed should also have been named as RPIs. The Patent Trial and Appeal Board (Board) declined to adjudicate whether these entities were RPIs and instituted the review with Unified as the sole RPI. The Board ultimately held that Unified failed to show any of the challenged claims were unpatentable.The Board's final written decision did not address the RPI dispute, explaining that there was no evidence any of the alleged RPIs were time-barred or estopped from bringing the IPR, or that Unified purposefully omitted any RPIs to gain an advantage. Dolby appealed the Board's decision, arguing that the Board's refusal to adjudicate the RPI dispute caused various harms, including potential breaches of license agreements, conflicts of interest, improper estoppel in future proceedings, and disincentivizing Unified from filing IPRs.The United States Court of Appeals for the Federal Circuit reviewed the case. The court held that Dolby failed to establish an injury in fact sufficient to confer standing to appeal. The court found Dolby's claims of harm to be too speculative, noting that Dolby did not provide evidence of any actual or imminent injury. The court dismissed the appeal for lack of standing and did not reach the merits of Dolby's substantive challenges. View "Dolby Laboratories Licensing Corporation v. Unified Patents, LLC" on Justia Law