Justia Intellectual Property Opinion Summaries

The case concerns a dispute over patents related to spinal implant technology. The plaintiff, a company that owns three patents describing various spinal implant systems and related tools, sued a medical device manufacturer, alleging that several of the manufacturer’s products infringed its patents. At issue were claims from three patents: one describing a tool for manipulating and inserting a “universal, intervertebral bone fusion spacer,” another covering a “universal, intervertebral combination internal screw guide and fixation apparatus,” and a third involving an expandable spinal implant system. The meaning of the word “universal” in the claims of two patents was especially significant, as was the question of whether this term in the preambles of the claims was limiting.The United States District Court for the Eastern District of Pennsylvania construed “universal” to mean a device designed to be inserted between vertebrae in any region of the spine using any surgical approach. The district court determined that the preambles containing “universal” were limiting, and, based on the agreed construction, granted summary judgment of noninfringement to the defendant for the two patents in question. A jury later found no infringement of the third patent, and the district court denied the plaintiff’s motion for judgment as a matter of law, finding that substantial evidence supported the jury’s verdict.The United States Court of Appeals for the Federal Circuit reviewed the district court’s claim constructions, summary judgment, and denial of judgment as a matter of law. The appellate court held that the district court correctly found the preambles to be limiting and properly construed the term “universal.” It also concluded that substantial evidence supported the jury’s verdict of noninfringement regarding the third patent. Accordingly, the Federal Circuit affirmed the district court’s decisions. View "MOSKOWITZ FAMILY LLC v. GLOBUS MEDICAL, INC. " on Justia Law

Ford hired Versata to develop software for vehicle configuration, resulting in two products: Automotive Configuration Manager (ACM) and Materials Cost Analytics (MCA). In 2004, the parties entered into a licensing agreement called the Master Subscription and Services Agreement (MSSA). When the MSSA expired in 2014 and negotiations failed, Ford developed its own software, PDO, while still licensing Versata’s products. Ford sought a declaratory judgment that it had not infringed Versata’s rights. Versata counterclaimed, alleging misappropriation of trade secrets (specifically three combination secrets within ACM) and breach of contract.The United States District Court for the Eastern District of Michigan excluded testimony from Versata’s damages expert regarding trade secret damages, limiting Versata to damages based on the parties’ licensing history. At trial, a jury found Ford liable for trade secret misappropriation (of ACM, not MCA) and breach of contract, awarding Versata $22,386,000 for misappropriation and $82,260,000 for breach. Post-trial, the district court reduced both awards, setting trade secret damages to $0 and breach damages to $3, reasoning that the jury lacked sufficient evidentiary basis for their calculations. The district court denied Ford’s motion for judgment as a matter of law on liability.The United States Court of Appeals for the Federal Circuit reviewed the case. It held that Versata was entitled to pursue unjust enrichment damages under both the Defend Trade Secrets Act and the Michigan Uniform Trade Secrets Act, and the district court erred in precluding this. The Federal Circuit vacated the district court's judgment on trade secret damages, remanding for a new trial with instructions to consider previously excluded damages models. For breach of contract, the Federal Circuit reversed the district court’s reduction and reinstated the jury’s $82,260,000 award. It affirmed the district court’s denial of Ford’s motion for judgment as a matter of law regarding liability for trade secret misappropriation. View "VERSATA SOFTWARE, LLC v. FORD MOTOR COMPANY " on Justia Law

A company that provides information to the diamond industry publishes a weekly price list for diamonds, categorizing them by attributes such as size, color, and clarity. This list, which the company claims is based on its expert opinion and proprietary methods, is distributed to paid subscribers. The company alleged that another business operating an online diamond marketplace copied prices from this list and displayed them on its website, showing the difference between its own prices and those in the list.The United States District Court for the Southern District of New York granted the defendant's motion to dismiss the complaint. The district court found that the “merger doctrine” applied, reasoning that the idea of the market price for diamonds based on their characteristics could only be expressed in one way—by the specific numbers listed—and that protecting these numbers would impermissibly grant copyright protection to an idea rather than its expression. The district court did not reach other arguments, such as whether the plaintiff had proper copyright registration or whether fair use applied.On appeal, the United States Court of Appeals for the Second Circuit reviewed the district court’s decision de novo. The appellate court held that the district court erred in applying the merger doctrine at the motion to dismiss stage, as there were unresolved factual questions about how the price list was created and whether the prices could only be expressed in one way. The appellate court concluded that, based on the complaint’s allegations, the list may reflect the plaintiff’s opinion and expert judgment, not just objective market facts. The Second Circuit vacated the district court’s judgment and remanded the case for further proceedings, including consideration of alternative grounds for dismissal. View "Rapaport v. Nivoda" on Justia Law

Netlist, Inc. owned a patent related to computer memory systems, specifically methods for improving the performance and capacity of memory boards using dual in-line memory modules. The patent described memory modules with buffers that are normally disabled to electrically isolate the memory devices from the controller, but which can be selectively enabled during data operations. Samsung Electronics Co., Ltd. first filed a petition for inter partes review, challenging the patent’s claims as obvious over two prior art references: Ellsberry and Halbert. Micron Technology, Inc. and related entities filed a similar petition and were later joined to Samsung’s proceeding. While Samsung settled with Netlist and withdrew from the appeal, Micron remained as appellee.The Patent Trial and Appeal Board of the United States Patent and Trademark Office reviewed the matter and determined, by a preponderance of the evidence, that all challenged claims of Netlist’s patent were obvious in view of the cited prior art. The Board found that the references taught enabling and disabling data paths through buffers in accordance with a latency parameter, and further found that the prior art disclosed the structural and functional limitations recited in the claims. The Board also addressed and rejected various procedural arguments, including those based on the Administrative Procedure Act.Netlist appealed to the United States Court of Appeals for the Federal Circuit. The court reviewed the Board’s factual findings for substantial evidence and its legal conclusions de novo. The Federal Circuit found that the Board’s determinations were supported by substantial evidence and that it had adequately explained its reasoning. The court affirmed the Board’s conclusion that all challenged claims were unpatentable as obvious, rejecting Netlist’s arguments on both substantive and procedural grounds. Costs were awarded against Netlist. View "NETLIST, INC. v. MICRON TECHNOLOGY, INC. " on Justia Law

Manufacturers of medical and digital devices, represented by two trade associations, challenged a regulation enacted by the Librarian of Congress under the Digital Millennium Copyright Act (DMCA). The regulation, known as the medical device repair exemption, allows certain third parties to circumvent technological protection measures on medical equipment software for the purpose of diagnosis, maintenance, or repair. The associations contended that this exemption threatened their copyrights by enabling independent service organizations to access and use software that, they argued, was primarily intended for repair and maintenance.The United States District Court for the District of Columbia initially dismissed some of the associations’ claims, including those under the Administrative Procedure Act (APA), on sovereign immunity grounds and found the rulemaking was within the Librarian’s authority and not unconstitutional. On appeal, the United States Court of Appeals for the District of Columbia Circuit reversed in part, directing the district court to evaluate the APA claims. After further rulemaking and additional arguments, including discussion of Supreme Court precedent and the renewal of the exemption, the district court granted summary judgment for the Librarian and Library of Congress. The court concluded that the exemption was consistent with the DMCA, the fair use doctrine, and was supported by the administrative record.On further appeal, the United States Court of Appeals for the District of Columbia Circuit affirmed the district court’s judgment. It held that the Librarian’s adoption and renewal of the medical device repair exemption were not arbitrary or capricious under the APA. The court found the Librarian’s application of the statutory fair use factors reasonable, including determinations that the use was transformative, the software was primarily functional, the amount of use was justified, and the exemption did not harm the market for the original works. The judgment for the Librarian and Library of Congress was affirmed. View "Medical Imaging & Technology Alliance v. Library of Congress" on Justia Law

This case involves a dispute over several patents relating to digital communication systems that use non-uniform constellations to increase data transmission capacity compared to traditional, uniform constellations operating within similar signal-to-noise ratio (SNR) bands. The plaintiff, Constellation Designs, LLC, alleged that several LG entities infringed claims from four patents by manufacturing and selling televisions compatible with the ATSC 3.0 standard, specifically protocol A/322, which governs over-the-air television broadcasting. The patents at issue cover two primary types of claims: those that recite methods for optimizing constellations based on parallel decode (PD) capacity (“optimization claims”), and those that recite specific, non-uniform constellations (“constellation claims”).The United States District Court for the Eastern District of Texas granted summary judgment to Constellation on patent eligibility for all asserted claims, finding them directed to a technical solution to a technical problem. At trial, a jury found the asserted claims not invalid, found infringement by LG’s accused televisions, awarded damages, and found willful infringement. LG moved for judgment as a matter of law (JMOL) on non-infringement and no damages, and sought to exclude Constellation’s damages expert, but the district court denied these motions. The court then entered final judgment and ongoing royalties.On appeal, the United States Court of Appeals for the Federal Circuit vacated the summary judgment of eligibility for the optimization claims, holding that these claims were ineligible under 35 U.S.C. § 101 because they were directed to the abstract idea of “optimizing” a constellation for PD capacity without specifying how to achieve this result. The court affirmed the eligibility of the constellation claims, finding them directed to a concrete technological solution. The Federal Circuit also affirmed the denial of JMOL on non-infringement and no damages, and the denial of the motion to exclude Constellation’s damages expert. The case was remanded for further proceedings consistent with these rulings. View "CONSTELLATION DESIGNS, LLC v. LG ELECTRONICS, INC. " on Justia Law

Exelixis, Inc. developed Cabometyx®, a cancer treatment containing cabozantinib (L)-malate. After identifying and characterizing crystalline and amorphous forms of this compound, Exelixis obtained several related patents. MSN Laboratories Private Limited and MSN Pharmaceuticals, Inc. sought FDA approval for a generic version using a specific polymorph of cabozantinib (L)-malate and received their own patent for that form. Exelixis sued MSN in the United States District Court for the District of Delaware, alleging infringement of patents covering crystalline cabozantinib (L)-malate salts (the “Malate Salt Patents”) and a patent directed to pharmaceutical compositions with low levels of a genotoxic impurity (the ’349 patent).The District Court held a bench trial. MSN conceded infringement of the Malate Salt Patents but argued they were invalid for lack of written description under 35 U.S.C. § 112(a). For the ’349 patent, MSN contested both infringement and validity. The District Court found the Malate Salt Patents were not invalid, holding the written description requirement was met because the patents disclosed the chemical structure, formula, and crystalline nature of the claimed salts. The court analogized its analysis to GlaxoSmithKline LLC v. Banner Pharmacaps, Inc. For the ’349 patent, the court found no infringement and no invalidity, concluding that the evidence failed to show the prior art inherently disclosed the “essentially free” impurity limitation.The United States Court of Appeals for the Federal Circuit reviewed the case. It affirmed the District Court’s finding that the asserted claims of the ’439, ’440, and ’015 patents had adequate written description support. Regarding claim 3 of the ’349 patent, the Federal Circuit dismissed MSN’s appeal as moot after Exelixis dropped its cross-appeal and vacated the District Court’s judgment of nonobviousness of that claim. The main holdings were affirmance of written description support for the asserted Malate Salt Patents and dismissal and vacatur regarding claim 3 of the ’349 patent. View "EXELIXIS, INC. v. MSN LABORATORIES PRIVATE LTD. " on Justia Law

T-Mobile and KAIFI settled a patent infringement lawsuit involving claims of U.S. Patent No. 6,922,728, which covers Wi-Fi calling technology. As part of their settlement, T-Mobile agreed to make two payments: one immediate payment and another conditional payment, the latter to be made if any of the asserted patent claims “survived” an ex parte reexamination (EPR) at the United States Patent and Trademark Office. After the Patent Office confirmed the patentability of most of the asserted claims without amendment, T-Mobile refused to make the additional payment, arguing that the claims had not truly “survived” the EPR due to alleged changes in claim scope and supposed inequitable conduct by KAIFI during the reexamination.T-Mobile filed a declaratory judgment action in the United States District Court for the Eastern District of Texas, seeking a determination that it had not breached the settlement agreement by withholding the payment. The district court granted summary judgment for KAIFI, holding that the settlement agreement was clear: a claim “survives the EPR” if the Patent Office confirms its patentability in the Reexamination Certificate. The court found T-Mobile’s arguments about claim scope and inequitable conduct irrelevant to the payment obligation and ordered T-Mobile to make the additional payment.On appeal, the United States Court of Appeals for the Federal Circuit reviewed whether it had subject-matter jurisdiction. The court determined that the dispute centered on the interpretation of a contract governed by Texas law and did not necessarily involve a substantial question of federal patent law. Consequently, the court held that it lacked appellate jurisdiction and transferred the case to the United States Court of Appeals for the Fifth Circuit, which has jurisdiction over appeals from the Eastern District of Texas. View "T-MOBILE US, INC. v. KAIFI LLC " on Justia Law

AML IP, LLC brought lawsuits in the United States District Court for the Eastern District of Texas against Bath & Body Works Direct, Inc., The Buckle, Inc., and other entities, alleging infringement of U.S. Patent No. 6,876,979. The patent concerns e-commerce methods using a “bridge computer” to facilitate transactions between service providers. Each defendant moved to dismiss the suit on two grounds: improper venue, arguing the requirements of 28 U.S.C. § 1400(b) were not satisfied, and failure to state a claim, contending the patent’s claims were ineligible under 35 U.S.C. § 101.The district court addressed both grounds. It concluded that AML had not established proper venue, justifying dismissal, and separately determined that the patent claims were ineligible for patenting, also warranting dismissal. The court entered judgment accordingly. AML filed a motion to amend the judgment, arguing the court should have dismissed only for venue and not for ineligibility after finding venue improper. The district court denied the motion, explaining it had discretion to address both grounds given they were briefed together and no alternative venue was suggested for transfer. AML appealed, challenging the district court's decision to dismiss on both grounds.The United States Court of Appeals for the Federal Circuit reviewed the appeal, applying Fifth Circuit law for procedural questions. The court held that the district court did not abuse its discretion in dismissing for both improper venue and patent ineligibility, as venue is a waivable issue and courts may resolve multiple grounds when briefed together. The appellate court also declined to address whether the merits dismissal would have preclusive effect in future cases, noting that such determinations are properly made in subsequent actions. The judgment was affirmed. View "AML IP, LLC v. BATH & BODY WORKS DIRECT, INC." on Justia Law

A local news publisher brought suit against a technology company that operates a news aggregation app and website. The publisher alleged that the aggregator, through its app, displayed the publisher’s articles either by framing them within the aggregator’s interface (so that users viewed the publisher’s website content within an app frame) or by reproducing the full text of articles under the aggregator’s own URL due to a technical glitch. The publisher claimed this conduct violated its exclusive right to publicly display its content under the Copyright Act, and further alleged that the removal or alteration of its website’s URLs—when articles were shown under the aggregator’s URLs—constituted improper removal of copyright management information (CMI) under the Digital Millennium Copyright Act (DMCA).The United States District Court for the Southern District of Mississippi addressed the publisher’s claims through cross-motions for summary judgment. Relying on the “server test” from Perfect 10, Inc. v. Amazon.com, Inc., the district court held that the aggregator’s framed linking did not infringe the publisher’s display right, because the content was not stored on the aggregator’s servers but only linked to the publisher’s own server. The court also held that URLs do not constitute CMI under the DMCA, as they function merely as locational addresses and do not inherently convey protected copyright information.On interlocutory appeal, the United States Court of Appeals for the Fifth Circuit reviewed two questions: whether the server test is the proper standard for evaluating copyright display right infringement, and whether URLs can be CMI under the DMCA. The Fifth Circuit rejected the server test as inconsistent with the text of the Copyright Act, and instead adopted a “transmit requirement”—finding infringement only if the alleged infringer actually transmits (rather than merely links to) the copyrighted content. The court also held that the DMCA does not categorically foreclose URLs from being CMI, but for a URL to qualify as CMI, it must clearly convey the characteristics specified by statute. The case was remanded for further proceedings consistent with these holdings. View "Emmerich Nwspr v. Particle Media" on Justia Law