Justia Intellectual Property Opinion Summaries

Acceleration Bay appealed the district court's decisions construing certain claim terms in Acceleration Bay's four asserted patents, U.S. Patent Nos. 6,701,344, 6,714,966, 6,910,069, and 6,920,497, and granting 2K Sports, Rockstar Games, and Take-Two Interactive Software's motion for summary judgment of non-infringement. In this case, the patents disclose a networking technology that allegedly improves upon pre-existing communication techniques because it is "suitable for the simultaneous sharing of information among a large number of the processes that are widely distributed."The Federal Circuit concluded that Acceleration Bay's appeal is moot with respect to the '344 and '966 patents, and thus dismissed the appeal in part for lack of jurisdiction. The court explained that Acceleration Bay has forfeited any challenge to the district court's grant of summary judgment of non-infringement on the basis that the accused products fail to satisfy the "mregular" limitation of the '344 and '966 patents' asserted claims.The court affirmed the district court's claim construction on the '069 patent and its grant of summary judgment of non-infringement as to the '069 and '497 patents. Even considering Acceleration Bay's arguments regarding the construction of the term "fully connected portal computer," the court concluded that the district court's grant of summary judgment would remain intact because the district court interpreted a separate term in the '069 patent's asserted claims to include the "m-regular" limitation. Finally, in regard to the '497 patent, the court rejected Accleration Bay's contention that it has asserted a viable "final assembler" theory of direct infringement based on Centrak, Inc. v. Sonitor Technologies, Inc., 915 F.3d 1360 (Fed. Cir. 2019). View "Acceleration Bay LLC v. 2K Sports, Inc." on Justia Law

Vivint sued Alarm.com for infringement of the 513 patent. Alarm.com unsuccessfully requested inter partes review (IPR). Later, Alarm.com requested ex parte reexamination of the 513 patent, repackaging its arguments. The Patent Office ordered reexamination, finding that Alarm.com had raised substantial new questions of patentability despite the prior IPRs, reasoning that references to prior art had been presented in a new light. Vivint argued that the Patent Office has authority to deny reexamination under 35 U.S.C. 325(d) because that statute applies to ex parte reexaminations and IPRs equally and that each factor applicable to exercising its discretion under section 325(d) counseled in favor of dismissal. In Vivint’s view, the Patent Office could not decline to institute IPR based on abusive filing practices, yet grant reexamination on essentially the same facts. The Patent Office disagreed, holding that a petition raising 35 U.S.C. 325(d) must be filed before reexamination is ordered. Ultimately, an examiner issued a final rejection for all claims of the 513 patent.The Federal Circuit vacated. The Patent Office must find a “substantial new question of patentability” before ordering reexamination, 35 U.S.C. 303(a), and it may deny reexamination when “the same or substantially the same prior art or arguments previously were presented to the Office,” section 325(d) While the ex parte reexamination, in this case, was based on substantial new questions of patentability, the Patent Office abused its discretion and acted arbitrarily and capriciously under section 325(d). View "In Re Vivint, Inc." on Justia Law

SRI alleged that Cisco infringed its patents, titled “Network Surveillance” and “Hierarchical Event Monitoring and Analysis.” A jury found infringement, awarded $23,660,000 in compensatory damages, and found that Cisco’s infringement was willful. The district court determined that substantial evidence—including that certain Cisco employees did not read the asserted patents until their depositions, that Cisco designed the products in an infringing manner, and that Cisco instructed its customers to use those products in an infringing manner—supported the willfulness finding and awarded SRI attorney fees and costs, noting that “Cisco pursued litigation about as aggressively as the court has seen,” and doubling the damages award.The Federal Circuit remanded, noting it was undisputed that Cisco did not know of SRI’s patents until after May 2012, and “the record is insufficient to establish that Cisco’s conduct rose to the level of wanton, malicious, and bad-faith behavior required for willful infringement.” On remand, the district court held that substantial evidence did not support the verdict of willful infringement after May 2012 and again found the case “exceptional.”The Federal Circuit reversed. Substantial evidence supports the finding of willful infringement. The court restored the award of enhanced damages and affirmed the award of attorney fees. View "SRI International, Inc. v. Cisco Systems, Inc." on Justia Law

Brazos filed lawsuits in the Western District of Texas charging Juniper, a Delaware corporation headquartered in California, with infringing patents that had been assigned to Brazos. Juniper moved to transfer the case to the Northern District of California, 28 U.S.C. 1404(a). Juniper argued that Brazos “describes itself as a patent assertion entity” that “does not seem to conduct any business” from its recently-opened office in Waco other than filing patent lawsuits. The assignment agreement by which Brazos received much of its patent portfolio lists a California address for Brazos; only one of the officers listed on its website resides in Texas. Brazos’s CEO and its president reside in California. The accused products were primarily designed, developed, marketed, and sold from Juniper’s headquarters within the Northern District of California; potential witnesses who would be expected to testify as to the structure, function, marketing, and sales of the accused products are located in California. Juniper had a small office in Austin, Texas.The Federal Circuit vacated the denial of the motion to transfer and granted the petition. The “center of gravity of the action” was clearly in California: several of the most important factors strongly favor the transferee court. No factor favors retaining the case in Texas. View "In Re Juniper Networks, Inc." on Justia Law

The Patent Trial and Appeal Board instituted inter partes review proceedings, involving MaxPower patents. MaxPower sought a writ of mandamus to review those decisions. The Federal Circuit denied the petition. A decision to institute IPR proceedings, like a decision not to institute, is “nonappealable” under 35 U.S.C. 314(d). The court rejected MaxPower’s argument that the collateral order doctrine warranted immediate review because its challenge implicates questions of whether the Board can institute proceedings that are subject to arbitration; that doctrine only allows appeal when an order “affect[s] rights that will be irretrievably lost in the absence of an immediate appeal.” MaxPower can meaningfully raise its arbitration-related challenges after the Board’s final decisions. The court also rejected MaxPower’s argument that its appeals are authorized under 9 U.S.C. 16(a)(1), which states that an appeal may be taken from an order “refusing a stay of any action under section 3 of this title,” “denying a petition under section 4 of this title to order arbitration to proceed,” “denying an application under section 206 of this title to compel arbitration,” “confirming or denying confirmation of an award or partial award,” or “modifying, correcting, or vacating an award.” MaxPower has not shown that this mandamus petition is not merely a “means of avoiding the statutory prohibition on appellate review of agency institution decisions.” View "In Re MaxPower Semiconductor, Inc." on Justia Law

Lubby’s patent is titled “Personal Vaporizer.” “Personal vaporizers are handheld devices that vaporize a vaporizing medium such as a liquid solution or a wax.” The patent relates to personal vaporizers that “will resist leaking, particularly during periods of nonuse.” Lubby and Vaporous Technologies, a nonexclusive licensee of the patent, sued Chung for infringement. The district court found Chung liable and awarded damages of $863,936.10.The Federal Circuit affirmed in part. There was evidence to support the jury’s verdict that Chung directly infringed the patent but the district court erred in awarding damages for the sales of infringing products before the commencement of the suit, which is the date Chung received actual notice of the patent under 35 U.S.C. 287. The court remanded for a new trial to determine the number of infringing products sold after the commencement of the suit and for the determination of a reasonable royalty rate for the sale of these units. View "Lubby Holdings LLC v. Chung" on Justia Law

Epinephrine (adrenaline), a hormone that has been on the market since approximately 1938, is used for various medical purposes. It degrades by racemization and oxidation. A 1986 publication taught that “there is an optimum pH at which racemization and oxidation can be balanced to minimize loss of intact drug by these two routes.” In 2012, Belcher submitted New Drug Application (NDA) for a 1 mg/mL injectable l-epinephrine formulation. The NDA was literature-based; Belcher did not perform any studies on its epinephrine formulation. Belcher responded to FDA inquiries concerning pH levels and racemization. In 2014, Belcher filed an application entitled “More Potent and Less Toxic Formulations of Epinephrine and Methods of Medical Use,” resulting in the 197. Hospira then submitted an NDA seeking approval of a 0.1 mg/mL injectable l-epinephrine formulation, including a Paragraph IV certification (21 U.S.C. 355(b)(2)(A)(iv)) alleging that the patent’s claims are invalid, unenforceable, and/or not infringed. Belcher sued Hospira for infringement.The Federal Circuit affirmed a finding that the patent was unenforceable for inequitable conduct. Belcher’s Chief Science Officer withheld material information about the pH range and the impurity levels from the Patent and Trademark Office. Belcher’s alleged critical improvement over the prior art was already within the public domain, just not before the examiner. Belcher’s officer acted with intent to deceive. View "Belcher Pharmaceuticals, LLC v. Hospira, Inc." on Justia Law

Schiedmayer makes and sells celestas, keyboard instruments that resemble small pianos. and is the successor to a line of German companies that have sold keyboard musical instruments under the Schiedmayer name for nearly 300 years. In 1980, Georg Schiedmayer, the owner of Schiedmayer & Soehne, stopped making pianos and renamed the company Schiedmayer GmbH, then briefly entered into a joint venture with Ibach. The “Schiedmayer” trademark was not sold, assigned, or otherwise transferred to Ibach or any other entity. but Ibach entered into an agreement with Kawai under which Kawai produced pianos carrying the Schiedmayer name. Georg’s widow, Elianne, became the sole owner of Schiedmayer, and, in 1995, founded a new company that became Schiedmayer Celesta.In 2002, the owner of Piano Factory retail outlets, believing that the “Schiedmayer” mark had been abandoned for pianos, acquired the domain name “schiedmayer.com.” The Patent and Trademark Office issued a registration for the “Schiedmaryer” mark in 2007. Piano Factory assigned the registration to Sweet 16, which purchased “no-name” pianos from China and affixed labels on them, including the Schiedmayer label. Schiedmayer Celesta filed a cancellation petition with the Trademark Trial and Appeal Board, citing the Lanham Act, 15 U.S.C. 1052(a). The Federal Circuit affirmed the cancellation of the mark. All of the relevant factors—similarity of the goods, recognition among particular consumers, and intent in using the mark—support the Board’s finding that the name was sufficiently well known among consumers of Sweet 16’s products that a connection with Schiedmayer would be presumed. View "Piano Factory Group, Inc. v. Schiedmayer Celesta GmbH" on Justia Law

USR sued Apple for infringement of patents otherwise directed to similar technology, securing electronic payment transactions. The patents “address the need for technology that allows consumers to conveniently make payment-card [e.g., credit card] transactions without a magnetic-stripe reader and with a high degree of security.”The district court found all claims of four asserted patents ineligible under 35 U.S.C. 101. The Federal Circuit affirmed. All claims of the asserted patents are directed to an abstract idea and contain no additional elements that transform them into a patent-eligible application of the abstract idea. Applying the Supreme Court’s “Alice” analysis, the court stated that sending data to a third party as opposed to the merchant is an abstract idea and cannot serve as an inventive concept, as is authenticating a user using conventional tools and generating and transmitting that authentication—without “improv[ing] any underlying technology.” Nothing in the claims is directed to a new authentication technique; rather, the claims are directed to combining longstanding, known authentication techniques to yield expected additional amounts of security. View "Universal Secure Registry LLC v. Apple Inc." on Justia Law

T cells, white blood cells that contribute to the immune response, have naturally occurring receptors on their surfaces that facilitate their attack on target cells (such as cancer cells) by recognizing and binding an antigen, i.e., a structure on a target cell’s surface. Chimeric antigen receptor (CAR) T-cell therapy involves isolating a patient’s T cells; reprogramming those T cells to produce a specific, targeted receptor (a CAR) on each T cell’s surface; and infusing the patient with the reprogrammed cells. Juno’s patent relates to a nucleic acid polymer encoding a three-part CAR for a T cell. It claims priority to a provisional application filed in 2002, at “the birth of the CART field.” Kite’s YESCARTA® is a “therapy in which a patient’s T cells are engineered to express a [CAR] to target the antigen CD19, a protein expressed on the cell surface of B-cell lymphomas and leukemias, and redirect the T cells to kill cancer cells.”Juno sued, alleging infringement. The district court held that the claims were not invalid for lack of written description or enablement, the patent’s certificate of correction was not invalid, and Juno was entitled to $1,200,322,551.50 in damages. The Federal Circuit reversed. No reasonable jury could find the patent’s written description sufficiently demonstrates that the inventors possessed the full scope of the claimed invention. View "Juno Therapeutics, Inc v. Kite Pharma, Inc." on Justia Law