Justia Intellectual Property Opinion Summaries

The Axcess patent, entitled “System and Method for Authenticating a Web Page,” relates to "systems and methods for authenticating a web page.” The Patent Trial and Appeal Board determined that it was a covered business method (CBM) patent under the America Invents Act (AIA), 125 Stat. 284, and that certain claims were unpatentable as obvious under prior art. The Board rejected a claim by Axcess that the patent was ineligible for CBM review because it was not directed to a financial product or service and can be used by institutions other than financial institutions. The Federal Circuit reversed, finding that the Board’s characterization of a CBM was inconsistent with the statutory definition: a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service. If a CBM patent is to be usefully distinguished from all other patents, the distinction will not lie based on non-statutory phrases like “incidental to” or “complementary to” financial activity. Necessarily, the statutory definition of a CBM patent requires that the patent have a claim that contains, however phrased, a financial activity element. View "Secure Axcess, LLC v. PNC Bank National Association" on Justia Law

Scag, which manufactures commercial riding lawnmowers, developed a suspended operator platform for a ride-on lawnmower or other riding light utility vehicle connected to a rigid chassis by a suspension system. The operator platform supports the entire body of the operator. The suspension system suspends the operator platform from the chassis in a manner that isolates an operator from vibrations, or shock loads, generated by the mower during use or when driven over uneven terrain. The operator platform can suspend or isolate some controls from the rigid chassis. Scag commercialized the system, which is disclosed in the 475 patent, in its Cheetah line of lawnmowers. In 2015, Toro introduced riding lawnmowers with suspended operator platforms to compete with Scag’s Cheetah line. The steering controls in Toro’s riding lawnmowers are connected to the chassis, not the operator platform. Scag filed an infringement action and obtained a preliminary injunction. The Federal Circuit affirmed, finding that Scag established a likelihood of success that the accused products infringe claim 21 of the 475 patent and that there is not a substantial question of validity as to claim 21. View "Metalcraft of Mayville, Inc. v. Toro Co." on Justia Law

Organik and Dow both manufacture opaque polymers, hollow spheres used as additives to increase paint’s opacity. Dow has maintained its worldwide market-leader position through a combination of patent and trade-secret protections. Dow filed a complaint with the International Trade Commission requesting an investigation into whether Organik’s opaque polymer products infringed four Dow patents. The Commission granted Dow’s request, and the parties began discovery. During the proceedings, Dow amended its complaint to add allegations of trade secret misappropriation when it discovered that Organik may have coordinated the production of its opaque polymers with the assistance of former Dow employees. As Dow attempted to obtain discovery relating to the activities of those employees, Dow discovered spoliation of evidence “on a staggering scale.” The Federal Circuit affirmed the Commission’s imposition of default judgment and entry of a limited exclusion order against Organik as sanctions for the spoliation of evidence. Organik’s “willful, bad faith misconduct” deprived Dow of its ability to pursue its trade secret misappropriation claim effectively. The record supports the limited exclusion order of 25 years with the opportunity for Organik to bypass that order at any time if it can show that it has developed its opaque polymers without using Dow’s misappropriated trade secrets. View "Organik Kimya v. International Trade Commission" on Justia Law

Personal Web’s patent describes and claims methods (or devices for carrying out methods) of locating data and controlling access by giving a data file a substantially unique “True Name” that depends on its content. The patent describes generating a True Name using mathematical algorithms (hash functions) that use a file’s contents to generate a small-size identifier. It calls for comparing that name with values in a network, determining whether a user is authorized to access the data, and providing or denying access based on that determination. Apple petitioned for inter partes review, arguing unpatentability under 35 U.S.C. 103, for obviousness based on a combination of one reference that focuses on a system for backing up or restoring data and one that focuses on a system for managing rights to access data. The Patent Trial and Appeal Board agreed with Apple. The Federal Circuit affirmed the Board’s claim construction of “content-dependent name,” “content-based identifier,” and “digital identifier,” but vacated the obviousness determination because the Board did not adequately support its findings that the prior art disclosed all elements of the challenged claims and that a relevant skilled artisan would have had a motivation to combine the references to produce the claimed inventions with a reasonable expectation of success. View "Personal Web Technologies, LLC v. Apple, Inc." on Justia Law

MPHJ’s 173 Patent, entitled “Distributed Computer Architecture and Process for Document Management,” describes a system and method that “extends the notion of copying from a process that involves paper going through a conventional copier device, to a process that involves paper being scanned from a device at one location and copied to a device at another location.” The patent calls its invention a “Virtual Copier” whose purpose is “to enable a typical PC user to add electronic paper processing to their existing business process,” and states that it replicates an image “using a single GO or START button, to do a similar operation in software so that the image gets seamlessly replicated into other devices or applications or the Internet.” The Patent Trial and Appeals Board, on inter partes review, found certain claims invalid for anticipation of obviousness. The Federal Circuit affirmed, citing Supreme Court precedent that “when unexpired patents are reviewed by the Board, the claims are given their broadest reasonable interpretation consistent with the specification and the prosecution history, from the viewpoint of persons skilled in the field of the invention,” and upholding the Board’s constructions of the claim terms “application” and “rendering.” View "MPHJ Technology Investments, LLC v. Ricoh Americas Corp." on Justia Law

Shire sued Watson for infringing the 720 patent by filing an Abbreviated New Drug Application (ANDA) with the FDA seeking to market a generic version of Shire’s drug, LIALDA®. The patent is directed to a controlled-release oral pharmaceutical composition of mesalamine used to treat inflammatory bowel diseases. The district court rejected Watson’s invalidity arguments that the patent lacked written description and enablement, and held that Watson infringed two claims. On appeal, and again after remand from the Supreme Court, the Federal Circuit stated that the matrix compositions are “limited by the Markush groups” added during prosecution “to overcome the examiner’s rejection of the claims as obvious” and that “the correct construction requires that the inner volume contain substances from the group described for the inner lipophilic matrix (which are all lipophilic substances), and that the outer volume separately contain substances from the group described for the outer hydrophilic matrix (which are all hydrophilic).” On remand, the district court concluded that Watson’s ANDA Product satisfied the “inner lipophilic matrix” and “outer hydrophilic matrix” limitations and satisfied the Markush limitations because the excipients falling outside the respective Markush groups were “unrelated” to the invention since they did not drive the water-affinity property of their respective matrices. The Federal Circuit reversed and remanded with instructions to enter judgment of non-infringement. Watson’s ANDA Product does not satisfy the Markush group requirements. View "Shire Development, LLC v. Watson Pharmaceuticals, Inc." on Justia Law

In 2004, the Patent and Trademark Office issued JobDiva’s 917 registration for the service mark JOBDIVA for “personnel placement and recruitment” services. In 2005, it issued JobDiva’s 235 registration for a service mark for “personnel placement and recruitment services; computer services, namely, providing databases featuring recruitment and employment, employment advertising, career information and resources, resume creation, resume transmittals and communication of responses thereto via a global computer network.” JobDiva’s software provides a database of employment applications and employs automated “harvesters” to find potential job candidates. It analyzes resumes and helps hiring managers directly communicate with job candidates; it also recommends openings to job candidates and provides automated resume feedback. JobDiva’s software-as-a-service is delivered over the Internet without downloading software. Users pay for the computing as a service rather than owning the machines and software. The Board cancelled JobDiva’s marks in a proceeding that JobDiva initiated, challenging a registration owned by Jobvite. The Board granted Jobvite’s counterclaim stating, “[a] mark shall be deemed to be ‘abandoned’ . . . [w]hen its use has been discontinued with intent not to resume such use,” 15 U.S.C. 1125, and that JobDiva provided software, not “personnel placement and recruitment” services. The Federal Circuit vacated. The question is whether JobDiva, through its software, performed personnel placement and recruitment services and whether consumers would associate JobDiva’s registered marks with personnel placement and recruitment services, regardless of whether the steps of the service were performed by software. View "In re: JobDiva, Inc." on Justia Law

MOVA technology can capture an actor’s facial performance for use in motion picture special effects and video games; it is secured by trademarks, copyrights, and patents, and is reflected in hardware, source code, and physical assets. VGHL claims that Perlman, the head of Rearden, declined to acquire the MOVA assets from OL2 and proposed OL2 sell to a Rearden employee, LaSalle. Perlman introduced LaSalle to Rearden’s corporate attorney who helped LaSalle establish his own company, MO2, and negotiated with OL2. Perlman later demanded that LaSalle convey the MOVA assets to Rearden and terminated LaSalle’s employment when LaSalle refused. MO2 sold the MOVA assets to SHST, which hired LaSalle, and began selling the technology. The Rearden parties claimed that SHST never obtained ownership and that LaSalle was simply hired to handle the acquisition on Rearden’s behalf. SHST sued, alleging that Rearden had made “false or misleading representations ... concerning the ownership of the MOVA Assets ... to mislead the public and actual and prospective users and licensees” and had falsely recorded assignments of the MOVA patents. During discovery, SHST moved to compel Rearden to produce documents exchanged between MO2 and Rearden’s corporate attorney. The district court granted the request, concluding that Rearden had not shown entitlement to assert attorney-client privilege on behalf of MO2 and that LaSalle waived privilege when he shared documents. The Federal Circuit denied a petition for mandamus. Rearden's arguments failed to carry the high burden required on mandamus to overturn the court’s discovery determination. View "In re: Rearden, LLC" on Justia Law

In 2005, the Church, within five miles of the Illinois–Wisconsin border, began selling caps and shirts, emblazoned with the phrase “ADD A ZERO” as part of a fundraising campaign. The Church obtained two federal trademarks for the “ADD A ZERO” mark, based on actual use of the marks in commerce, not intent to use the marks in commerce. In 2009, Adidas sought a clothing trademark for the phrase “ADIZERO.” The Trademark Office refused the application for likelihood of confusion with the Church’s “ADD A ZERO” marks. Adidas brought an action; the Trademark Trial and Appeal Board cancelled the marks, based on the Church’s failure to use the marks in commerce before registration. The Board considered the Church’s proffered evidence of a cancelled check with a printed Wisconsin address for the sale of two “ADD A ZERO”-marked hats for $38.34 in February 2005, before the Church applied for its marks, but concluded that the “de minimis” sale did not evidence the requisite “use in commerce” under the Lanham Act. The Federal Circuit reversed. The Lanham Act defines commerce as all activity regulable by Congress; the Church’s sale to an out-of-state resident fell within Congress’s power to regulate under the Commerce Clause. View "Christian Faith Fellowship Church v. Adidas AG" on Justia Law

Illumina’s 794 patent, covering DNA assay optimization techniques, issued in 2011. In 2010-2011, Ariosa provided Illumina, as a prospective investor, with information on its efforts to develop a noninvasive prenatal diagnostic test. Seven months after the 794 patent issued, Illumina agreed to supply consumables, hardware, and software to Ariosa for three years, providing Ariosa with a non-exclusive license to Illumina’s “Core IP Rights in Goods,” specifically excluding “Secondary IP Rights … that pertain to the Goods (and use thereof) only with regard to particular field(s) or application(s), and are not common to the Goods in all applications and fields.” The agreement’s arbitration clause excluded “disputes relating to issues of scope, infringement, validity and/or enforceability of any Intellectual Property Rights.” Illumina never indicated that Ariosa needed to license the 794 patent . Ariosa launched the Harmony Prenatal Test, using materials supplied by Illumina. Verinata and Stanford sued, alleging that the Test infringed other patents. Illumina later acquired Verinata and accused Ariosa of breaching the supply agreement by failing to license Secondary Rights. Ariosa filed counterclaims, asserting invalidity and non-infringement; breach of contract; and breach of the covenant of good faith and fair dealing. The district court concluded that the counterclaims were not subject to compulsory arbitration. The Federal Circuit affirmed. The counterclaims depend on the scope determination of licensed intellectual property rights, which is expressly exempt from arbitration. View "Verinata Health, Inc. v. Ariosa Diagnostics, Inc." on Justia Law