Justia Intellectual Property Opinion Summaries

The company sells computer networking products, including firewalls, and filed a false marking claim against a "hacker" after the company was charged with infringement in a separate suit. The hacker's website claimed patent on a firewall product, but did not offer the product for sale; the company claims that the actual product was destroyed in a harddrive crash in 1999. The district court dismissed, reasoning that the website had not marked an âunpatented articleâ under 35 U.S.C. 292(a) because the âmarkingâ referred to the project and did not claim that the software was functioning on the site and that, even if the marking could be imputed to the site generally, the hacker had obtained two patents. The court characterized the company's complaint as alleging that the public was misled into believing that the site was running on software that no longer exists. The Federal Circuit affirmed and awarded costs.

The district court found a patent for a genetic test for Type I hereditary hemochromatosis invalid and rejected a claim of infringement. The Federal Circuit affirmed. The patent did not satisfy the written description requirement of 35 U.S.C. 112, which requires the inventor to disclose the claimed invention so as to allow persons of ordinary skill in the art to recognize that the inventor invented what is claimed. Given the immaturity of the science at the time of filing, the filing represented a research plan; the requirement cannot be satisfied by later-acquired knowledge. The patent claim was also "anticipated;" every limitation was found either expressly or inherently in a prior application.

The Wellman patents disclose polyethylene terephthalate (âPETâ) resins for use in plastic beverage containers, claim that prior PET resins shrank or grew hazy when hot-filled, and disclose slow-crystallizing PET resins. Wellman claimed indirect infringement by Eastman. The district court found certain Wellman patents invalid. The Federal Circuit affirmed in part, holding that five patents are invalid for intentional failure to disclose the best mode of practicing the technology. The court reversed a finding that certain claims were indefinite under 35 U.S.C. 112. A claim need only provide a discernible boundary between what is claimed and what is not claimed; in this case, a person of ordinary skill in the art would follow standard industry guidance for conditioning plastics and could understand the bounds.

The Tennessee holder of a patent on a pet-access door received communications from a New Jersey company concerning cooperative marketing of a portable pet-access door, but did not respond until the New Jersey company indicated that it had obtained patent 141. The companies negotiated; the owner of the New Jersey company traveled to Tennessee to demonstrate the product and the parties signed a non-disclosure agreement, with a provision identifying Tennessee as the forum of any litigation. When the Tennessee company sought a patent on a similar item, the New Jersey company claimed infringement. The Tennessee district court dismissed an action seeking a declaration of noninfringement and of invalidity of patent 141. The Federal Circuit affirmed, finding that the court lacked personal jurisdiction over the New Jersey defendant. Only activities of the patentee relating to enforcement or defense of the patent, not actions relating to commercialization, give rise to personal jurisdiction in a declaratory judgment action. The New Jersey company's efforts to interest the Tennessee company in its product were insufficient to vest jurisdiction; the New Jersey company's only activities relating to enforcement consisted of correspondence. The suit did not arise from the non-disclosure agreement.

The holder of a patent for a device used to heat gas inserted into the abdomen for expansion during laparoscopic procedures obtained summary judgment finding infringement by a similar device. The Federal Circuit affirmed. The district court correctly construed the claim limitation âhaving a temperature within 2°C of the predetermined temperatureâ and properly declined to read in a limitation that the gas must always fall within a 4°C range of the predetermined temperature.

After a jury found willful patent violation, the district court entered an injunction ordering the defendant to stop making, using, and offering infringing television broadcast receivers (infringement provision) and to disable the DVR functionality in existing receivers (disablement provision). The Federal Circuit remanded, noting that the injunction would be in effect after its decision. The district court found the defendant in contempt. The Federal Circuit vacated in part, first rejecting the "two-step" process for evaluating contempt of patent injunctions. A district court, familiar with underlying parties and issues, has broad discretion in deciding to hold contempt proceedings. The court vacated the holding of contempt of the infringement provision and, in part, the damages awarded for continued infringement and remanded. The defendant's diligence and good faith efforts are not a defense to contempt, but the district court applied the wrong test. Proper analysis requires focus on the differences between the features relied upon to establish infringement and the modified features of the newly accused products. The court affirmed the finding of contempt of the disablement provision and related sanctions, rejecting claims of vagueness and overbreadth.

The owner of patents for computer modems and methods of identifying modems licensed the patents to Rockwell; a related agreement gave Rockwell sub-licensing rights. Rockwell reorganized and assigned its rights. The patent owner acknowledged the assignment. Defendants obtain modem chips from a "spin off" of the companies formed in the Rockwell reorganization. The patent owner sued for infringement. The district court held that the defendants are licensed and entered summary judgment that certain patents are invalid. The Federal Circuit reversed in part, first holding that the assignment was within Rockwell's sub-licensing rights without further consent. Two patent claims were invalid for indefiniteness, but there was a material issue of fact on whether two others were invalid for failure to disclose necessary algorithms.

In 2000 the applicant obtained a patent for an âalternator pulleyâ that uses a one-way clutch to improve the power generation efficiency of an automobileâs alternator. Two years later, the applicant filed a reissue application to add a single dependent claim, narrower than the entire patent. The application was denied on the ground that the specified error was not subject to correction on reissue because the broadest scope of the patent would remain the same. The Board of Patent Appeals affirmed. The Federal Circuit reversed and remanded. Section 251, provides for reissue: "Whenever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent." The section authorizes reissue to add the dependent claim; its omission could render a patent partially inoperative by failing to protect the disclosed invention to the fullest extent permitted by law.

McKesson holds a patent on an electronic means of communication between doctors and patients and sued Epic, which licenses software to medical providers, for infringement. The district court entered summary judgment for Epic. The Federal Circuit affirmed. McKesson failed to demonstrate that a single party directly infringes the patent and could not succeed on its claim of indirect infringement. Customers to whom Epic licenses software neither directly perform the âinitiating a communicationâ step nor exercise control or direction over another who performs this step; no single party infringes the entire method claimed by the patent. Expanding the rules governing direct infringement to reach independent conduct of multiple actors would subvert the statutory scheme for indirect infringement.