Articles Posted in US Court of Appeals for the Federal Circuit

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GKN’s patent describes a drivetrain for a four-wheel drive vehicle, consisting of primary and secondary drivetrains. The drivetrain can be switched between two-wheel drive mode and four-wheel drive mode. The claimed drivetrain operates to reduce the number of rotating components when the secondary drivetrain is disconnected. JTEKT petitioned for inter partes review (IPR). The Patent Trial and Appeal Board instituted IPR on all challenged claims. The IPR focused on whether claims 2 and 3, which specify that two side-shaft couplings connect the secondary axle rather than one side-shaft coupling to provide both transverse and longitudinal power distribution between the left and right wheels and the front and rear wheels, would have been obvious over prior art and whether claims 6 and 7 would have been obvious over prior art. The Board held that claims 6 and 7 would have been obvious but that JTEKT did not show that claims 2 and 3 would have been obvious. The Federal Circuit dismissed an appeal for lack of standing. While the fact that JTEKT has no product on the market does not preclude Article III standing, either in IPRs or in declaratory judgment actions, JTEKT has not established at this stage of the development that its product creates a concrete and substantial risk of infringement or will likely lead to infringement claims. View "JTEKT Corp. v. GKN Automotive Ltd." on Justia Law

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Advantek’s design patent covers a portable animal kennel that Advantek sells with the mark “Pet Gazebo.” Advantek sued its former manufacturer, Shanghai Walk-Long, Advantek’s former vice president, and others for patent infringement, breach of contract, and aiding and abetting breach of fiduciary duty, alleging that Walk-Long copied the Pet Gazebo and infringed the patent with their “Pet Companion.” The district court granted Walk-Long judgment on the pleadings, holding that prosecution history estoppel bars Advantek from enforcing the patent against the Pet Companion. The parties stipulated to the dismissal of the non-patent counts. The Federal Circuit reversed, concluding that prosecution history estoppel does not preclude enforcement of the patent against the accused kennel. Advantek elected to patent the ornamental design for a kennel with a particular skeletal structure. A competitor who sells a kennel embodying Advantek’s patented structural design infringes the patent, regardless of extra features, such as a cover, that the competitor might add to its kennel. Construed in the light most favorable to Advantek, the complaint can be read to accuse the skeletal structure of Walk-Long’s Pet Companion. View "Advantek Marketing, Inc. v. Shanghai Walk-Long Tools Co." on Justia Law

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BioDelivery filed petitions for inter partes review (IPR) of Aquestive's Patent. The Patent Trial and Appeal Board (PTAB) instituted review of fewer than all of the asserted claims based upon fewer than all asserted grounds and issued final written decisions that sustained the patentability of all instituted claims on all instituted grounds and included a discussion of collateral estoppel between inter partes reexamination and IPR. On appeal, PTAB acknowledged error in its assumption that inter partes reexamination could give rise to collateral estoppel in IPR. After oral argument in the Federal Circuit, the Supreme Court issued its 2018 “SAS” decision, explaining that the petitioner, not the Director defines the contours of the IPR; if the Director institutes review, PTAB review must proceed “in accordance with or in conformance to the petition,” including “‘each claim challenged’ and ‘the grounds on which the challenge to each claim is based,’” BioDelivery requested remand to consider the patentability of the non-instituted claims. Aquestive and the Patent Office argued that BioDelivery had waived SAS-based relief by failing to raise any issue of non-instituted claims on appeal. The Federal Circuit granted a remand; waiver does not apply and the motion is not untimely. The PTO’s salutary decision concerning future action does not insulate earlier PTAB actions from remedy. View "BioDelivery Sciences International, Inc.. v. Aquestive Therapeutics, Inc." on Justia Law

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Contour’s patents describe action sport video cameras or camcorders, configured for remote image acquisition control and viewing. The claimed device uses GPS technology and includes wireless communication capability to allow another device, such as a smartphone, to control camera settings in real time, access stored video, and act as a “viewfinder” to preview what the camera sees. The patents claim priority to a provisional application filed in September 2010; the one-year critical date is September 13, 2009. GoPro sought inter partes review of the patents, alleging unpatentability on obviousness grounds, relying on a 2009 GoPro sales catalog as prior art. That catalog discloses a digital camera linked to a wireless viewfinder/controller. There was testimony that the catalog was distributed at a July 2009 trade show with approximately 150 vendors and more than 1,000 attendees. The Patent Trial and Appeal Board concluded that the catalog is not a prior art printed publication under 35 U.S.C. 102(b). The Federal Circuit vacated. A dealer show focused on extreme sports vehicles is an obvious forum for action sports cameras; while the general public may not have been aware of the trade show, dealers would encompass the relevant audience such that a person ordinarily skilled and interested in action cameras, exercising reasonable diligence, should have been aware of it. The catalog was disseminated with no restrictions and was intended to reach the general public. View "GoPro, INC. v. Contour IP Holding, LLC" on Justia Law

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Nash has been in the water recreational device industry for more than 50 years and designs and manufactures water skis, kneeboards, wakeboards, and similar recreational devices. ZUP entered the market in 2012 with its “ZUP Board,” designed to assist riders who have difficulty pulling themselves up out of the water into a standing position while being towed behind a motorboat. ZUP owns the 681 patent, which includes 12 claims that generally cover a water recreational board and a method of riding that board in which a rider simultaneously uses side-by-side handles and side-by-side foot bindings to help maneuver between various riding positions to allow the rider to more readily move from lying prone, to kneeling, to crouching, to standing. The district court invalidated claims 1 and 9 as obvious and, in the alternative, held that Nash does not infringe claim 9. The Federal Circuit affirmed that claims 1 and 9 are invalid as obvious, 35 U.S.C. 103(a), and did not reach the infringement question. One of ordinary skill in the art would have been motivated to combine the various elements from prior art references, “to aid in rider stability, to allow a wide variety of users to enjoy the device, and to aid users in maneuvering between positions”—all motivations that were “a driving force throughout the prior art." View "ZUP, LLC v. Nash Manufacturing, Inc." on Justia Law

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Light-emitting diodes (LEDs) are semiconductor devices that emit light when an electric current is applied. They provide illumination in products such as printers, phones, and televisions. LEDs typically consist of a substrate, an n-type semiconductor layer, and a p-type semiconductor layer. Gallium nitride (GaN) is a semiconductor that emits blue light in LEDs. Fabricating monocrystalline GaN films is difficult because of the lack of available substrates with a matching lattice structure. BU’s 738 patent relates to the preparation of monocrystalline GaN films via molecular beam epitaxy, which addresses the GaN lattice-mismatch problem with a two-step growth process. A jury found that defendants infringed the patent and failed to prove its invalidity. The district court rejected defendants’ argument that the patent is invalid for not meeting the enablement requirement, 35 U.S.C. 112. The Federal Circuit reversed, finding the asserted claim not enabled as a matter of law. The patent’s specification does not teach one of skill in the art how to make the claimed semiconductor device with a monocrystalline growth layer grown directly on an amorphous buffer layer. Defendants’ expert testified that it is impossible to epitaxially grow a monocrystalline film directly on an amorphous structure; the specification does not enable what the experts agree is physically impossible. View "Trustees of Boston University v. Everlight Electronics Co." on Justia Law

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The Patent Trial and Appeal Board instituted inter partes review (IPR) over AIT’s objection that the RPX's IPR petitions were time-barred under 35 U.S.C. 315(b) because RPX was acting as a “proxy” for its client, Salesforce, on whom AIT had served a complaint alleging infringement of the patents more than one year before RPX filed its petitions. AIT alleged that RPX that the time bar applicable to Salesforce was applicable to RPX. The Board held certain claims of the patents unpatentable under 35 U.S.C. 103. The Federal Circuit vacated, concluding that the Board applied an unduly restrictive test for determining whether a person or entity is a “real party in interest” under section 315(b) and failed to consider the entirety of the evidentiary record. The term “real party in interest” has an expansive common-law meaning. RPX, unlike a traditional trade association, is a for-profit company whose clients pay for its portfolio of “patent risk solutions” to help extricate themselves from non-practicing entity lawsuits. Its SEC filings reveal one of its “strategies” is “the facilitation of challenges to patent validity,” to “reduce expenses.” The Board did not consider these facts, which, taken together, imply that RPX files IPRs to serve its clients and that a key reason clients pay RPX is to benefit from this practice if they are sued. View "Applications in Internet Time, LLC v. RPX Corp." on Justia Law

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Allergan’s Restasis Patents relate to a treatment for alleviating the symptoms of chronic dry eye. In 2015, Allergan sued, alleging infringement of the Restasis Patents based on Mylan’s filings of Abbreviated New Drug Applications. Mylan, Teva, and Akorn sought inter partes review of the patents. The Patent Board instituted IPR and scheduled a consolidated oral hearing. Before the hearing, Allergan and the Tribe entered into an agreement Mylan alleges was intended to protect the patents from review. A patent assignment transferring the Restasis patents from Allergan to the Tribe was recorded with the Patent Office. The Tribe moved to terminate the IPRs, arguing it is entitled to assert tribal sovereign immunity; Allergan moved to withdraw. The Board denied both motions. The Federal Circuit affirmed. IPR is neither clearly a judicial proceeding instituted by a private party nor clearly an enforcement action brought by the federal government: tribal sovereign immunity may not be asserted in IPR proceedings. View "Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc." on Justia Law

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The patent describes an “attention manager [that] makes use of ‘unused capacity’” of a display device, by displaying content in that unused capacity; it can display content when the display device is turned on but the user is not actively engaged or display content in an area of the display screen not used by already-displayed content with which the user is engaged. In 2014, the Federal Circuit upheld a judgment invalidating various claims on indefiniteness grounds but remanded with respect to four claims; the court construed “attention manager” as “a system that displays images to a user either when the user is not engaged in a primary interaction or in an area of the display screen that is not used by the user’s primary activity.” On remand, the district court found that the claims fail to recite patent-eligible subject matter, 35 U.S.C. 101. The Federal Circuit affirmed. The claims are directed to an abstract idea, presentation of two sets of information, in a nonoverlapping way, on a display screen. The claimed “attention manager,” broadly construed as any “system” for producing that result, is not limited to a means of locating space on the screen and displaying the second set of information in that space. The claim limitations for accessing, scheduling, and then displaying the second information set are conventional functions stated in general terms. The claims lack any arguable technical advance over conventional computer and network technology. View "Interval Licensing, LLC v. AOL, Inc." on Justia Law

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Blackbird’s 747 patent is directed to energy-efficient lighting apparatuses. One embodiment discloses retrofitting an existing light fixture with a more energy efficient lighting apparatus. The district court entered a judgment of noninfringement of the patent based on its construction of “attachment surface.” The Federal Circuit vacated, holding that the district court erred in construing “attachment surface” to be secured to the ballast cover. By its plain language, claim 12 does not require the attachment surface to be secured to the ballast cover. Claim 12 expressly recites a fastening mechanism for securing the attachment surface to the illumination surface. It does not refer to any other fastening mechanism. It does not require the attachment surface be secured to anything other than the illumination surface. View "Blackbird Tech LLC v. ELB Electronics, Inc." on Justia Law