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Presidio alleged infringement of its patent, which claims a multilayer capacitor design and teaches a multilayer integrated network of capacitors electrically connected in series and in parallel. While the suit was pending, ATC sought an ex parte reexamination of the patent in light of new prior art. The examiner rejected the claims as anticipated and obvious. Presidio amended the claims. The Patent and Trademark Office issued a reexamination certificate for the patent. Based on the amended claims, a jury found direct infringement and induced infringement of six claims by the accused products and that Presidio had proven by clear and convincing evidence that ATC’s infringement of the asserted claims was willful. The jury awarded Presidio $2,166,654 in lost profit damages and issued an advisory verdict that ATC failed to prove by clear and convincing evidence that claim 1 was indefinite. The district court upheld the findings, in favor of Presidio, but denied Presidio’s motion for enhanced damages. The Federal Circuit affirmed that the claims are not indefinite, that enhanced damages were appropriate, and that ATC is entitled to absolute intervening rights because a substantive amendment was made during reexamination but held that the evidence did not support an award of lost profits, vacated an injunction, and remanded for determination of a reasonable royalty. View "Presidio Components, Inc. v. American Technical Ceramics Corp." on Justia Law

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BASF’s patent describes and claims systems for performing catalytic conversion of nitrogen oxides (NOx) in an exhaust gas stream, with a partly-dual-layer arrangement of coatings on a substrate over which exhaust gas passes—a coat along the full length of the substrate containing “a material composition B effective to catalyze selective catalytic reduction (SCR) of NOx”; and beneath part of that coat, on the outlet end of the gas passage, a partial-substrate undercoat containing “a material composition A effective for catalyzing NH3 oxidation” (ammonia oxidation, or AMOx). BASF sued its competitor for infringement. The district court held that the “effective for catalyzing”/“effective to catalyze” language was indefinite and entered judgment of invalidity. The Federal Circuit reversed. Under the Supreme Court’s decision in “Nautilus,” the question is: would the “composition . . . effective to catalyze” language, understood in light of the rest of the patent and the knowledge of the ordinary skilled artisan, have given a person of ordinary skill in the art a reasonably certain understanding of what compositions are covered? The district court’s reasoning supplied no basis to answer that question in defendant’s favor; the inference of indefiniteness simply from the scope finding is legally incorrect: “breadth is not indefiniteness.” View "BASF Corp. v. Johnson Matthey Inc." on Justia Law

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The Ninth Circuit affirmed the district court's grant of summary judgment to Fox and held that Fox's use of the name "Empire" was protected by the First Amendment and was outside the reach of the Lanham Act, 15 U.S.C. 1125. At issue was a Fox television show entitled Empire, which portrays a fictional hip hop music label named "Empire Enterprises" that was based in New York. The panel applied a test developed by the Second Circuit in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), to determine whether the Lanham Act applied. The panel held that Fox's expressive work sufficiently satisfied the first prong of the Rogers test where the title Empire supported the themes and geographic setting of the work and the second prong of the Rogers test where the use of the mark "Empire" did not explicitly mislead consumers. View "Twentieth Century Fox Television v. Empire Distribution" on Justia Law

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The Fifth Circuit affirmed the district court's grant of judgment as a matter of law to defendants, concluding that federal law preempted ThermoTek's unfair competition claim and that ThermoTek failed to prove its damages for fraud. ThermoTek designs, manufacturers, and sells the VascuTherm system, which consists of a medical device and specially designed wraps that provide thermal and compression therapy. The court held that the district court did not abuse its discretion in reaching the preemption defense on the merits. On the merits, the court held that federal copyright and patent laws preempted the unfair-competition-by-misappropriation claim. View "Motion Medical Technologies, LLC v. Thermotek, Inc." on Justia Law

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LifeTech sold genetic testing kits to detect the presence of “short tandem repeat” (STR) sequences of DNA. Its “STR kits,” were assembled in the United Kingdom and consisted of five components. At least one component was supplied from the U.S. Promega, the exclusive licensee of the U.S. “Tautz patent,” which expired in 2015 and claimed methods and kits for analyzing DNA to determine the identity and kinship of organisms, sued LifeTech for infringement. In 2014, the Federal Circuit held that a multi-component product assembled overseas could infringe a U.S. patent under 35 U.S.C. 271(f)(1)1 when only a single component is supplied from the U.S. The Supreme Court reversed, holding that section 271(f)(1) does not cover the supply of a single component of a multicomponent invention. On remand, the Federal Circuit first reaffirmed: that the asserted claims of four Promega patents were invalid for failure to comply with the enablement requirement, 35 U.S.C. 112; that certain of LifeTech’s alleged acts of infringement were not licensed under a license agreement between LifeTech and Promega; and that LifeTech was not required to “actively induce” a third party to combine the components of the accused products to be liable under section 271(f)(1)--that requirement could be met if LifeTech had the specific intent to combine the components itself. The court then reinstated the district court’s grant of judgment as a matter of law that Promega failed to prove infringement under 35 U.S.C. 271(a)3; 271(f)(1). View "Promega Corp v. Life Technologies, Inc." on Justia Law

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Sanofi’s patents describe and claim compositions and uses of the cardiovascular (antiarrhythmic) drug dronedarone. The 800 patent, which expires in 2019, claims pharmaceutical compositions containing dronedarone. The 167 patent, which expires in 2029, claims methods of reducing hospitalization by administering dronedarone to patients having specified characteristics. In 2009, Sanofii received New Drug Application approval for 400 mg tablets of dronedarone, sold as Multaq®. Both patents are listed in the FDA publication Approved Drug Products with Therapeutic Equivalence Evaluations (Orange Book) as patents claiming either Multaq® or a method of using Multaq®. Defendants, hoping to market generic versions of Multaq®, filed abbreviated new drug applications with the FDA, certifying under 21 U.S.C. 355(j)(2)(A)(vii)(IV), their beliefs that both patents were invalid and/or that the manufacture, use, and sale of the proposed generic drugs would not infringe either patent. Sanofi sued for infringement under 35 U.S.C. 271(e)(2)(A). The district court ruled, and the Federal Circuit affirmed, that as to the 167 patent, Sanofi proved that sale of the proposed generic drugs, with the proposed labels, would induce physicians to infringe, and defendants did not prove that any asserted claims were invalid for obviousness. As to the 800 patent, the courts rejected the non-infringement argument. View "Sanofi v. Watson Laboratories Inc." on Justia Law

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Two-Way’s patents, entitled “Multicasting Method and Apparatus,” generally relate to a system for streaming audio/visual data over a communications system like the internet. The patents explain that internet systems typically operate on a point-to-point, unicast, basis. In unicast systems, a message is converted into a series of addressed packets which are routed from a source node to a destination node. Unicast systems cannot broadcast a message from a source node to all the other recipients in a network, as this type of operation could easily overload the network. IP Multicasting provides a way to transmit one packet of information to multiple recipients; packets destined for several recipients are encapsulated in a unicast packet and forwarded from a source to a point in a network where the packets are replicated and forwarded on to all desired recipients. The patents explain that this technology had previously been used to provide internet-based audio/visual conferencing servicing and radio-like broadcasts and describe the invention as an improved scalable architecture for delivering real-time information. The Federal Circuit affirmed a holding that certain claims are directed to patent-ineligible subject matter under 35 U.S.C. 101. The claims are directed to abstract ideas and contain no additional elements that transform them into an application of the abstract ideas. View "Two-Way Media Ltd. v. Comcast Cable Communications, LLC" on Justia Law

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In 2003, the FDA granted Bayer approval to market vardenafil hydrochloride trihydrate to treat erectile dysfunction (ED) under the name Levitra. Vardenafil belongs to a class of ED drugs called phosphodiesterase inhibitors. When the FDA approved Levitra, two other phosphodiesterase inhibitors were already on the market: Pfizer launched Viagra in 1998, and Eli Lilly launched Cialis in 2003. Each is formulated as immediate-release tablets that are swallowed whole. Bayer’s 950 patent issued in 2013, claiming priority to 2005; it is directed to a formulation of vardenafil as “an uncoated tablet which disintegrates rapidly in the mouth,” vardenafil ODT, which Bayer markets as Staxyn. Watson filed an FDA Abbreviated New Drug Application (ANDA) seeking approval to market a generic version of Staxyn. Bayer alleged infringement. The Federal Circuit reversed the district court’s holding Watson failed to prove by clear and convincing evidence that two claims would have been obvious, 35 U.S.C. 103. The district court clearly erred in finding a skilled artisan would not have been motivated to use the claim elements to formulate an ED drug as a fast-dissolving tablet; the claims would have been obvious. View "Bayer Pharma AG v. Watson Laboratories, Inc." on Justia Law

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Mastermine’s patents disclose methods and systems “that allow[] a user to easily mine and report data maintained by a customer relationship management (CRM) application” and describe a process by which an electronic worksheet is automatically created. Within this electronic worksheet, a multi-dimensional analysis table, known as a pivot table, “allows the user to quickly and easily summarize[] or view large amounts of CRM data.” The patents further describe that a user is able to “analyze the captured CRM data and ‘mine’ the data for important insights” upon generation of the pivot table. In Mastermine’s infringement suit against Microsoft, the district court construed the term “pivot table” to mean “an interactive set of data displayed in rows and columns that can be rotated and filtered to summarize or view the data in different ways” and entered a stipulated judgment of noninfringement and invalidity for indefiniteness. The Federal Circuit reversed and remanded as to indefiniteness. The claims do not improperly claim both an apparatus and a method of using the apparatus. The court found the district court’s claim construction supported by the intrinsic evidence. View "Mastermine Software, Inc. v. Microsoft Corp." on Justia Law

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This petition for writ of mandamus arose in the context of a contested trademark action initiated by San Diego Comic Convention (SDCC) against petitioners, over the use of the mark "comic-con" or "comic con." The Ninth Circuit granted the petition and vacated the district court's orders directing petitioners to prominently post on their social medial outlets its order prohibiting comments about the litigation on social media, dubbing this posting a "disclaimer." The panel held that the orders at issue were unconstitutional prior restraints on speech because they prohibit speech that poses neither a clear and present danger nor a serious and imminent threat to SDCC's interest in a fair trial. The panel explained that the well-established doctrines on jury selection and the court's inherent management powers provide an alternative, less restrictive, means of ensuring a fair trial. View "Dan Farr Productions v. USDC-CASD" on Justia Law