Justia Intellectual Property Opinion Summaries

by
Yu sued for infringement of the 289 patent, titled “Digital Cameras Using Multiple Sensors with Multiple Lenses.” The district court dismissed the suit with prejudice after concluding that each asserted claim was patent-ineligible under 35 U.S.C. 101. The court found that the asserted claims were directed to “the abstract idea of taking two pictures and using those pictures to enhance each other in some way.” The court explained that “photographers ha[ve] been using multiple pictures to enhance each other for over a century” and that the asserted claims lack an inventive concept, noting “the complete absence of any facts showing that the[] [claimed] elements were not well-known, routine, and conventional.” The Federal Circuit affirmed. The claimed hardware configuration itself is not an advance and does not itself produce the asserted advance of enhancement of one image by another, which is an abstract idea. View "Yu v. Apple Inc." on Justia Law

by
In 2006 Heat On-The-Fly began using a new fracking technology on certain jobs. Heat’s owner later filed a patent application regarding the process but failed to disclose 61 public uses of the process that occurred over a year before the application was filed. This application led to the 993 patent. Heat asserted that patent against several parties. In 2014, Phoenix acquired Heat and the patent. Chandler alleges that enforcement of the 993 patent continued in various forms. In an unrelated 2018 suit, the Federal Circuit affirmed a holding that the knowing failure to disclose prior uses of the fracking process rendered the 993 patent unenforceable due to inequitable conduct.Chandler filed a “Walker Process” monopolization action under the Sherman Act, which required that the antitrust-defendant obtained the patent by knowing and willful fraud on the patent office and maintained and enforced that patent with knowledge of the fraudulent procurement, and proof of “all other elements necessary to establish a Sherman Act monopolization claim.” The Federal Circuit transferred the case to the Fifth Circuit, which has appellate jurisdiction over cases from the Northern District of Texas. The court concluded that it lacked jurisdiction because this case does not arise under the patent laws of the United States. View "Chandler v. Phoenix Services LLC" on Justia Law

by
Oakwood hired Dr. Thanoo in 1997. As Oakwood's Senior Scientist, he signed confidentiality agreements. Thanoo designed Oakwood’s microsphere process technology. Oakwood invested more than $130 million and two decades in its Microsphere Project and developed the “Leuprolide Products,” which are bioequivalent to Lupron Depot®. Aurobindo contacted Oakwood to discuss collaboration. Some of Oakwood’s trade secret information was shared under a confidentiality agreement. Negotiations failed. Aurobindo hired Thanoo six months later and began developing microsphere-based injectable products that Oakwood alleges are “substantially similar to and competitive with Oakwood’s Microsphere Project." Oakwood asserts that the product could not have been developed within the rapid timeframe without Thanoo’s assistance and the use of Oakwood’s trade secret information.The Third Circuit vacated the dismissal of Oakwood's suit, asserting trade secret misappropriation, breach of contract, and tortious interference with contractual relations. Under the Defend Trade Secrets Act, 18 U.S.C. 1836(b), Oakwood sufficiently identified its trade secrets and sufficiently alleged that the defendants misappropriated those trade secrets. The “use” of a trade secret encompasses all the ways one can take advantage of trade secret information to obtain an economic benefit, competitive advantage, or other commercial value, or for an exploitative purpose, such as research or development. A trade secret plaintiff need not allege that its information was the only source by which a defendant might develop its product. Aurobindo's avoidance of substantial research and development costs that Oakwood has invested is recognized as "harm" in the DTSA. View "Oakwood Laboratories LLC v. Thanoo" on Justia Law

by
SpeedTrack’s 360 patent discloses a “computer filing system for accessing files and data according to user-designated criteria.” The patent explains that prior-art systems “employ a hierarchical filing structure” and “emulate[] commonly[ ]used paper filing systems” in that they “organize[] data into files (analogous to papers in a paper filing system) and directories (analogous to file folders and hanging files).” According to the patent, such systems could “become[] very cumbersome.” According to the patent, prior-art solutions presented additional drawbacks. The 360 patent discloses a method that uses “hybrid” folders, which “contain those files whose content overlaps more than one physical directory” and “allows total freedom from the restrictions imposed by hierarchical and other present-day computer filing systems.”SpeedTrack sued various retail website operators, alleging infringement of the patent. The Federal Circuit affirmed the stipulated judgment of noninfringement based on the district court’s construction of the term “hierarchical limitation.” View "SpeedTrack, Inc. v. Amazon.com, Inc." on Justia Law

by
Until 1995, a patent’s term was 17 years from the date of issuance, which incentivized certain patentees to delay by abandoning applications and filing continuing applications in their place to obtain patents at a financially desirable time. In 1995, changes in the law triggered a patent application rush. Hyatt, the named inventor on 399 patent applications, bulk-filed 381 applications during that "bubble," each a photocopy of an earlier application. Four applications relate to computer technologies, claim priority to applications filed in the 1970s and 1980s, and are atypically long and complex. Hyatt filed multiple amendments. From 2003 to 2012, the PTO stayed the examination of many of Hyatt’s applications pending litigation. The Board of Patent Appeals affirmed the rejection of the four applications.Hyatt filed suit under 35 U.S.C. 145. The district court ordered the PTO to issue the patents.The Federal Circuit vacated. Prosecution laches may “render a patent unenforceable when it has issued only after an unreasonable and unexplained delay in prosecution that constitutes an egregious misuse of the statutory patent system under a totality of the circumstances” and is a defense available to the PTO in an action to obtain a patent. The district court erred in concluding that the PTO failed to prove prosecution laches. Rather than analyze the evidence of Hyatt’s conduct, the court repeatedly placed blame on the PTO. The court held the issues invalidity for anticipation and lack of written description.in abeyance. View "Hyatt v. Hirshfeld" on Justia Law

by
Bio-Rad’s patents relate to the generation of microscopic droplets, contiguous fluid that is encapsulated within a different fluid, by using a microfluidic chip. Typically, the inner fluid is water-based, while the outer fluid is oil. The patents arise out of research conducted by inventors at QuantaLife. In 2011, Bio-Rad purchased QuantaLife, acquiring QuantaLife’s patent rights. The inventors became employees of Bio-Rad and executed assignments of their rights to applications that later issued as the 664, 682, and 635 patents. Soon after Bio-Rad acquired QuantaLife, three inventors left Bio-Rad to start 10X, which has developed technology and products in the field of microfluidics, with the goal of achieving DNA and RNA sequencing at the single-cell level. Bio-Rad alleged that 10X violated the Tariff Act, 19 U.S.C. 1337, by importing into the U.S. certain microfluidic chips. The Trade Commission concluded that 10X did not infringe the 664 patent by importing its “Chip GB” but infringed the 664, 682, and 635 patents by importing its “GEM Chips.” The Federal Circuit affirmed. The construction of the term “droplet generation region” is consistent with the intrinsic evidence; substantial evidence established that the use of 10X’s GEM chips directly infringes the asserted claims. Bio-Rad proved the elements of induced and contributory infringement of the 682 and 635 patents with respect to the GEM Chips. View "Bio-Rad Laboratories, Inc. v. United States International Trade Commission" on Justia Law

by
Becton petitioned for inter partes review of claims in Baxter’s patent, directed to “[s]ystems for preparing patient-specific doses and a method for telepharmacy in which data captured while following [a protocol associated with each received drug order and specifying a set of steps to fill the drug order] are provided to a remote site for review and approval by a pharmacist.” The Patent Trial and Appeal Board found that Becton had established that one of ordinary skill in the art would have been motivated to combine prior references and that Baxter’s “evidence of secondary considerations [was] weak” and concluded that none of the challenged claims were shown to be unpatentable as obvious.The Federal Circuit reversed. The Board’s determination that prior art did not teach the verification limitation is not supported by substantial evidence; a highlighting limitation would have been obvious to one of ordinary skill in the art in view of prior art. View "Becton, Dickinson & Co. v. Baxter Corp. Englewood" on Justia Law

by
Alliance and Coalition are nonprofit organizations that endorse political candidates in New Orleans. Alliance filed suit against Coalition, seeking to enjoin use of its trade name and logo for federal trademark infringement under the Lanham Act, state trademark infringement, and unfair trade practices. The district court subsequently joined Darleen Jacobs as a third party to the case.The Fifth Circuit affirmed the district court's award of attorney's fees to Alliance for federal trademark infringement under the Lanham Act. The court concluded that the district court's procedure for joining Jacobs met the demands of due process, and the district court did not abuse its discretion in holding her directly liable for the fee award. The court found it appropriate to extend the interpretation of the Patent Act fee-shifting provision to its interpretation of the Lanham Act and found that district courts do have the authority to award appellate fees under the Lanham Act. The court concluded that the district court's decision to award fees for further litigation of the attorney's fee award did not contravene the mandate rule; even if appellants are correct that Alliance's billing entries are flawed, the proper remedy is "a reduction of the award by a percentage intended to substitute for the exercise of billing judgment," which the district court did; and the district court considered each of appellants' objections to Alliance's fees motion. Finally, the court declined to address appellants' First Amendment argument, which was not addressed in Alliance I. View "Alliance for Good Government v. Coalition for Better Government" on Justia Law

by
Atlas Movers federally registered the “Atlas” mark for “transportation of household goods of others,” first using “Atlas” in 1948 when it formed Atlas Van Lines, providing transportation and logistics services, primarily moving household goods. Since 1970, its division, STG, has provided logistics services for non-household goods shipments. Atlas Movers eventually focused more on logistics, forming Atlas Relocation Services in 1995. In 2007, Atlas Movers began marketing its service as “Atlas Logistics.” and renamed its logistics company Atlas Logistics, which can ship, or arrange the shipment of, any commodity.Eaton manufactures and distributes steel. Eaton created Atlas Trucking in 1999, then expanded to ship goods other than steel and metal for companies in addition to its own. It developed Atlas Logistics in 2003 as an adjunct to Atlas Trucking. Eaton knew of Atlas Van Lines. Atlas Movers sued in 2017 for infringement. Eaton answered and counterclaimed that it owned the Atlas Logistics mark.The Sixth Circuit affirmed a judgment in favor of Atlas Movers, upholding findings that Atlas Movers marketed “Atlas” to an extent that the public recognized it, that the parties’ services are related because they engage in at least some of the same transportation services, that the marks were functionally identical, and that there was actual confusion. View "AWGI, LLC v. Atlas Trucking Co., LLC" on Justia Law

by
New Vision sued SG in the federal district court in Nevada. SG then filed Patent Trial and Appeal Board petitions. The Board declined to respect the forum selection agreement in the parties’ license agreement, which referred to “exclusive” jurisdiction in the appropriate federal or state court in the state of Nevada, and proceeded to a final decision, finding the claims at issue as well as proposed substitute claims, patent-ineligible under 35 U.S.C. 101.The Federal Circuit vacated and remanded the Board’s decisions for consideration of the forum selection clause in light of its 2019 “Arthrex” decision. Because Arthrex issued after the Board’s final-written decisions and after New Vision sought Board rehearing, New Vision has not waived its Arthrex challenge by raising it for the first time in its opening brief. The Board’s rejection of the parties’ choice of forum is subject to judicial review; section 324(e) does not bar review of Board decisions “separate . . . to the in[stitu]tion decision.” View "New Vision Gaming & Development, Inc. v. SG Gaming, Inc." on Justia Law