Justia Intellectual Property Opinion SummariesArticles Posted in US Court of Appeals for the Federal Circuit
CardioNet, LLC v. InfoBionic, Inc.
CardioNet’s 207 patent, titled “Cardiac Monitoring,” claims priority to an application filed in 2004 and describes cardiac monitoring systems and techniques for detecting and distinguishing atrial fibrillation and atrial flutter from other various forms of cardiac arrythmia. The district court dismissed CardioNet’s patent infringement complaint against InfoBionic, finding that the asserted claims of the patent are ineligible under 35 U.S.C. 101. The Federal Circuit reversed, applying the Supreme Court’s two-step “Alice” framework and finding that the asserted claims of the 207 patent are directed to a patent-eligible improvement to cardiac monitoring technology and are not directed to an abstract idea. Nothing in the record suggests that the claims merely computerize pre-existing techniques for diagnosing atrial fibrillation and atrial flutter. View "CardioNet, LLC v. InfoBionic, Inc." on Justia Law
Spigen Korea Co., Ltd. v. Ultraproof, Inc.
The Spigen Design Patents each claim a case for a cellular phone. In an infringement case, the district court held as a matter of law that the Spigen Design Patents were obvious over the 218 and 209 patents and granted summary judgment of invalidity in favor of Ultraproof. Subsequently, Ultraproof moved for attorneys’ fees under 35 U.S.C. 285. The district court denied the motion. The Federal Circuit reversed with respect to invalidity; the district court improperly resolved a genuine dispute of material fact. The district court found that despite “slight differences,” the 218 patent undisputedly was “basically the same” as the Spigen Design Patents, and, thus, a proper primary reference. That determination was error because, based on the competing evidence before the district court, a reasonable fact-finder could find otherwise. View "Spigen Korea Co., Ltd. v. Ultraproof, Inc." on Justia Law
Stratus Networks, Inc. v. UBTA-UBET Communications Inc.
In 2012, Stratus, a facilities-based telecommunications provider, applied to register the STRATUS mark. UBTA, also a telecommunications provider, owns the STRATA mark and opposed registration of the STRATUS mark on grounds of a likelihood of confusion with UBTA’s STRATA mark. The Trademark Trial and Appeal Board found a likelihood of confusion and refused registration of the STRATUS mark, 15 U.S.C. 1052. The Board concluded that six of the 13 “DuPont factors” were relevant and that two factors “weigh heavily in favor” of finding a likelihood of confusion, one factor “weighs in favor” of finding a likelihood of confusion, two factors are neutral, and one factor weighs “slightly” against finding a likelihood of confusion. The Federal Circuit affirmed the determination as supported by substantial evidence and is not otherwise legally erroneous. While the Board is required to consider each DuPont factor for which it has evidence, it may focus its analysis on dispositive factors, such as similarity of the marks and relatedness of the goods. The Board determined that “even careful purchasers are likely to be confused by similar marks used in connection with services that are, in part, legally identical.” View "Stratus Networks, Inc. v. UBTA-UBET Communications Inc." on Justia Law
Ericsson Inc. v. TCL Communication Technology Holdings, Ltd.
Ericsson sued TCL for infringement of its patent, titled “Security Access Manager in Middleware,” describing “a system and method for controlling access to a platform for a mobile terminal for a wireless telecommunications system.” Ericsson argued that TCL infringed claims 1 and 5 by making and selling smartphones that include the Android operating system, including “a security system that can grant apps access to a subset of services on the phone, with the end-user controlling the permissions granted to each app.” The jury found those claims infringed, awarded damages and found that TCL’s infringement was willful. The Federal Circuit reversed, finding that the patent claims ineligible subject matter under 35 U.S.C. 101. Claims 1 and 5 are directed to the abstract idea of controlling access to or limiting permission to, resources. Although written in technical jargon, a close analysis of the claims reveals that they require nothing more than this abstract idea. The claims are silent as to how access is controlled. They merely make generic functional recitations that requests are made and then granted. Neither claim recites any particular architecture; there is nothing sufficient to turn the claim into anything more than a generic computer for performing the abstract idea of controlling access to resources. View "Ericsson Inc. v. TCL Communication Technology Holdings, Ltd." on Justia Law
O.F. Mossberg & Sons, Inc. v. Timney Triggers, LLC
After licensing negotiations with Timney failed, Mossberg sued Timney for patent infringement. Instead of answering the complaint, Timney filed for inter partes reexamination. The district court granted a stay. The Patent Office rejected certain claims. Mossberg canceled the rejected claims and added new claims. Before the inter partes reexamination proceeded further, the Patent Office vacated its institution decision because Timney had not identified the real party in interest in its petition. In 2014-2015, Timney filed three ex parte reexamination requests. The examiner ultimately rejected all pending claims over prior art. The Patent Trial and Appeal Board affirmed. Throughout these reexaminations, the district court maintained the stay despite several motions by Mossberg to lift it. Mossberg filed a notice of voluntary dismissal under Rule 41(a)(1)(A)(i). The district court entered a docket text order stating that the case was dismissed without prejudice under Rule 41(a)(1)(A)(i). Timney moved to declare the case exceptional so that it could pursue attorney’s fees, 35 U.S.C. 285. The Federal Circuit affirmed the denial of the motion. Timney was not a “prevailing party” because a Rule 41 dismissal without prejudice is not a decision on the merits and thus cannot be a judicial declaration altering the legal relationship between the parties. View "O.F. Mossberg & Sons, Inc. v. Timney Triggers, LLC" on Justia Law
Golden v. United States
Golden, pro se, filed this suit in 2019, under the Tucker Act, 28 U.S.C. 1491(a), seeking “reasonable and entire compensation for the unlicensed use and manufacture” of his “inventions described in and covered by” various patents. He had filed an unsuccessful patent infringement suit against the government in 2013; a fifth amended complaint had alleged “Fifth Amendment Takings.” In 2014, the government sought inter partes review (IPR) of the patents; Golden is challenging an unfavorable decision as “ultra vires.” The Claims Court dismissed Golden’s 2019 complaint as largely duplicative of the 2013 suit. The Federal Circuit affirmed. The Claims Court did not have jurisdiction over these section 1491 claims because patent infringement claims against the government are to be pursued exclusively under 28 U.S.C. 1498. A patent owner may not pursue an infringement action as a taking under the Fifth Amendment. With respect to claims arising from the IPR proceedings, the court noted that Golden voluntarily filed a non-contingent motion to amend the claims on which the IPR was instituted. His substitute claims were found unpatentable. The claims at issue were canceled as result of Golden’s own voluntary actions; cancellation of the claims in the government-initiated IPR cannot, therefore, be chargeable to the government under any legal theory. View "Golden v. United States" on Justia Law
Bozeman Financial LLC v. Federal Reserve Bank
The Patent Trial and Appeal Board conducted covered business method (CBM) review and found all of the claims of Bozeman’s patents, directed to methods for authorizing and clearing financial transactions to detect and prevent fraud, ineligible under 35 U.S.C. 101.1. Bozeman challenged the Board’s authority to decide the petitions, arguing that the Federal Reserve Banks are not “persons” under the America Invents Act (AIA). The Federal Circuit affirmed, holding that the Banks are “persons” who may petition for post-issuance review under the AIA. While the Supreme Court has held that federal agencies are not “persons” able to seek post-issuance review of a patent under the AIA, the Banks are distinct from the government for purposes of the AIA. They are operating members of the nation’s Federal Reserve System, which is a federal agency, but they are not government-owned and are operationally distinct from the federal government. The claims at issue are directed to the abstract idea of “collecting and analyzing information for financial transaction fraud or error detection” and do not contain an inventive concept sufficient to “transform the nature of the claims into patent-eligible applications of an abstract idea.” View "Bozeman Financial LLC v. Federal Reserve Bank" on Justia Law
Nike, Inc. v. Adidas AG
In an earlier appeal from inter partes review, the Federal Circuit vacated-in-part the Patent Trial and Appeal Board’s decision denying Nike’s motion to amend and remanded for the Board to address errors underlying its conclusion that Nike’s proposed substitute claims 47–50 were unpatentable for obviousness. On remand, the Board denied Nike’s request to enter substitute claims 47–50 of its patent on the ground that those claims are unpatentable under 35 U.S.C. 103. Nike asserts that the Board violated the notice provisions of the Administrative Procedure Act by finding that a limitation of substitute claim 49 was well-known in the art based on a prior art reference that, while in the record, was never cited by Adidas for disclosing that limitation. Nike also challenged the Board’s finding that Nike’s evidence of long-felt but unmet need was insufficient to establish the nonobviousness of substitute claims 47–50. The Federal Circuit affirmed in part. Substantial evidence supports the finding that Nike failed to establish a long-felt need for substitute claims 47–50. The court vacated in part. No notice was provided for the Board’s theory of unpatentability for substitute claim 49. View "Nike, Inc. v. Adidas AG" on Justia Law
Nevro Corp. v. Boston Scientific Corp.
Nevro sued, alleging infringement of 18 claims across seven patents that are directed to high-frequency spinal cord stimulation therapy for inhibiting pain. Conventional spinal cord stimulation systems deliver electrical pulses to the spinal cord to generate sensations, such as tingling or paresthesia, that mask or otherwise alter the patient’s pain. The claimed invention purportedly improves conventional spinal cord stimulation therapy by using waveforms with high-frequency elements or components, which are intended to reduce or eliminate side effects. The district court issued a joint claim construction and summary judgment order, holding certain claims invalid as indefinite. As to the remaining six claims, found not indefinite, the court granted summary judgment of noninfringement. The Federal Circuit vacated and remanded. The district court erred in holding invalid as indefinite the “paresthesia-free” system and device terms and in holding indefinite the claims reciting the term “configured to.” The Federal Circuit construed “configured to” to mean “programmed to” and construed “means for generating” as a means-plus-function term, having a function of “generating” and a structure of “a signal/pulse generator configured to generate” the claimed signals. The district court erred in its claim construction but correctly determined that the term “therapy signal” does not render the claims indefinite; a “therapy signal” is “a spinal cord stimulation or modulation signal to treat pain.” View "Nevro Corp. v. Boston Scientific Corp." on Justia Law
Valeant Pharmaceuticals International, Inc. v. Mylan Pharmaceuticals Inc.
Valeant’s patent claims stable methylnaltrexone pharmaceutical preparations; methylnaltrexone, a quaternary amine opioid antagonist derivative, can be useful for reducing the side effects of opioids but is unstable in aqueous solution. The inventors discovered that when the pH of a methylnaltrexone solution is adjusted, the percentage of total degradants drops significantly. The patent is listed in the Orange Book for Relistor®, an injectable drug used to treat constipation as a side effect of taking opioid medication. Mylan filed an Abbreviated New Drug Application seeking FDA approval to market a generic version of Relistor®. Mylan conceded that its ANDA product would infringe claim 8 of the patent. The district court entered the parties’ stipulation to the construction of claim 8’s stability limitation: the phrase “the preparation is stable to storage for 24 months at about room temperature” means “the methylnaltrexone degradation products in the preparation do not exceed 2.0% of the total methylnaltrexone present in the preparation and the preparation is suitable for pharmaceutical use when stored for 24 months at room temperature” and granted summary judgment that claim 8 would not have been obvious. The court rejected Mylan’s expert testimony and cited references and Mylan’s theory that the claimed pH range would have been obvious to try. The Federal Circuit reversed. Mylar raised at least a prima facie case of obviousness. The district court’s obvious-to-try analysis is inconsistent with precedent. View "Valeant Pharmaceuticals International, Inc. v. Mylan Pharmaceuticals Inc." on Justia Law