Justia Intellectual Property Opinion Summaries

Dr. Chudik applied to the Patent and Trademark Office (PTO) for a patent on his “Guide for Shoulder Surgery” in 2006. The PTO examiner issued a second rejection in 2010. Rather than taking an appeal to the Patent Trial and Appeal Board (35 U.S.C. 134(a)), Chudik requested continued examination (section 132(b)). In 2014, the examiner again rejected his claims. Chudik appealed to the Board. Instead of filing an answer, the examiner reopened prosecution and rejected the claims as unpatentable on a different ground; that process repeated in 2016. In 2017, while Chudik’s fourth notice of appeal from an examiner rejection was pending, the examiner issued another rejection, which led to a notice of allowance after Chudik altered his claims. Chudik’s patent issued in 2018.The PTO awarded Chudik a patent term adjustment of 2,066 days (35 U.S.C. 154(b)) but rejected Chudik’s claim for an additional 655 days of “C-delay,” for the time his four notices of appeal were pending in the PTO. C-delay covers appellate review by the Board or a federal court in a case in which the patent was issued under a decision in the review reversing an adverse determination of patentability. The PTO concluded that, in light of the reopening of prosecution, the Board’s jurisdiction never attached and there was no Board or reviewing court reversal. The district court and Federal Circuit affirmed. C-delay for “appellate review” requires a reversal by the Board or a court. View "Chudik v. Hirshfeld" on Justia Law

Customer loyalty programs issue points that customers can redeem for goods and services. Maritz’s patent relates to a system and method for permitting a customer to redeem loyalty points without human intervention. A graphical user interface provides allows the participant to communicate with a web-based vendor system, such as an airline reservation system. An application programming interface interfaces with the GUI and the vendor system to facilitate information transfer between them.cxLoyalty petitioned for a covered business method (CBM) review of claims 1–15 of the patent. The Patent Trial and Appeal Board concluded that original claims 1–15 are ineligible for patenting under 35 U.S.C. 101 but that proposed substitute claims 16–23 are patent-eligible. cxLoyalty appealed as to the substitute claims; Maritz cross-appealed both the determination that the patent is eligible for CBM review and the ruling as to the original claims.The Federal Circuit dismissed Maritz’s challenge to CBM eligibility and held that both the original and substitute claims are directed to patent-ineligible subject matter. The threshold determination that a patent qualifies for CBM review is non-appealable under 35 U.S.C. 324(e). Representative claim 1 is directed to transfers of information relating to a longstanding commercial practice and is directed to an abstract idea. The claims amount to nothing more than applying an abstract idea using techniques that are, individually or as an ordered combination, well-understood, routine, and conventional. View "cxLoyalty, Inc. v. Maritz Holdings Inc." on Justia Law

The patent at issue is directed to an efficient method for compressing video files; its claims generally concern “a method of decoding a moving picture in inter prediction mode,” in which “one or more reference pictures are used to estimate motion of a current block” over the time of the video. In inter partes review, the Patent Trial and Appeal Board found all claims unpatentable.The Federal Circuit affirmed in part and vacated with respect to claim 3. The court rejected an argument that the Board erred by relying on references that do not qualify as prior art printed publications under 35 U.S.C. 102. Substantial evidence supports the Board’s finding that persons of ordinary skill in video-coding technology could have accessed the references with reasonable diligence; those references constitute printed publications within the meaning of 35 U.S.C. 102. The Board erred by finding claim 3 anticipated when the petition for inter partes review asserted only obviousness as to that claim. View "M & K Holdings, Inc. v. Samsung Electronics Co., Ltd." on Justia Law

QuikTrip and Weigel operate gasoline-convenience stores. QuikTrip has sold food and beverages in its stores under the registered mark QT KITCHENS since 2011. In 2014, Weigel began using the stylized mark W KITCHENS. QuikTrip requested that Weigel stop using the mark on the basis that it was confusingly similar to QuikTrip’s QT KITCHENS mark. Weigel modified its mark by changing the plural “KITCHENS” to the singular “KITCHEN,” altering the font, and adding the words “WEIGEL’S” and “NOW OPEN.” QuikTrip objected to Weigel’s continued use of the word “KITCHEN” in its mark. In 2017, Weigel applied to register the mark, W WEIGEL’S KITCHEN NOW OPEN.QuikTrip filed an opposition, 15 U.S.C. 1052(d). The Patent and Trademark Office Board evaluated the likelihood of confusion between the marks, referencing the “DuPont” factors, and found that the parties’ identical-in-part goods and related services, overlapping trade channels, overlapping classes of customers, and similar conditions of purchase pointed to a likelihood of confusion but that the dissimilarity of the marks weighed against a likelihood of confusion. It determined that customers would not focus on the word “KITCHEN” for source indication and that Weigel did not act in bad faith in adopting the mark. The Federal Circuit affirmed the dismissal of QuikTrip’s opposition. The finding that the marks, in their entireties, differ in appearance, sound, connotation, and commercial impression is supported by substantial evidence. View "QuikTrip West, Inc. v. Weigel Stores, Inc." on Justia Law

In separate district court proceedings, several plaintiffs sued ABS and others for infringement of claims of six patents, including Cytonome’s 161 patent. Four months later, ABS sought inter partes review (IPR) of the 161 patent. The Patent Board invalidated certain claims of that patent while finding that ABS had failed to demonstrate that the remaining claims were unpatentable. Two weeks after the Board’s final IPR decision, the district court granted ABS partial summary judgment, concluding that ABS’s accused products did not infringe any of the 161 claims. Two months after that summary judgment decision, ABS appealed the IPR decision. The district court held a trial covering the patents remaining in the infringement case in September 2019. ABS filed its opening brief challenging the IPR decision in the Federal Circuit in November 2019. Cytonome “elected not to pursue an appeal of the district court’s finding of non-infringement,” then argued that, because it disavowed its ability to challenge that judgment, ABS lacked the requisite injury-in-fact required for Article III standing to appeal the IPR decision. Four months later, the district court entered a final judgment of noninfringement as to the patent claims. The district court has not yet ruled on ABS’s post-trial motions. The Federal Circuit then dismissed ABS’s appeal of the IPR decision as moot. Cytonome cannot reasonably be expected to assert the patent against ABS in the future. View "ABS Global, Inc. v. Cytonome/ST, LLC." on Justia Law

SIMO’s patent deals with roaming charges on cellular networks and describes apparatuses and methods that allow individuals to reduce roaming charges on cellular networks when traveling outside their home territory. SIMO sued uCloudlink)for infringement, alleging that four uCloudlink products came within claim 8 of the patent. The district court granted SIMO summary judgment, concluding that claim 8 does not require a “non-local calls database.” and entered a final judgment of $8,230,654 for SIMO.The Federal Circuit reversed, rejecting the district court’s claim construction and holding that claim 8 requires two or more nonlocal calls databases. A “plurality of memory, processors, programs, communication circuitry, authentication data stored on a subscribed identify module (SIM) card and/or in memory and non-local calls database” requires “a plurality of” each component in the list, including “non-local calls database.” In responding to uCloudlink’s summary-judgment motion, SIMO did not identify a triable issue on the factual question of whether, as uCloudlink asserted, the accused products lack a nonlocal calls database; uCloudlink is entitled to summary judgment of noninfringement. View "SIMO Holdings Inc. v. Hong Kong uCloudlink Network Technology, Ltd." on Justia Law

Simio’s patent, entitled “System and Method for Creating Intelligent Simulation Objects Using Graphical Process Descriptions,” describes different types of simulations, including those that are event-oriented, process-oriented, and object-oriented. In Simio’s infringement suit, the district court held that certain claims were ineligible for patenting under 35 U.S.C. 101. The Federal Circuit affirmed, applying the two-step “Alice” analysis. The claims are closely aligned to the decades-old computer programming practice of substituting text-based coding with graphical processing; the focus of the claimed advance remains the abstract idea. Considering the claim elements both individually and as an ordered combination, FlexSim “met its burden of showing no inventive concept or alteration of computer functionality sufficient to transform the system into a patent-eligible application.” View "Simio, LLC v. FlexSim Software Products, Inc." on Justia Law

Raytheon and GE compete in the market to supply propulsion engines to the commercial aviation industry. Raytheon’s patent, entitled “Gas Turbine Engine with Low Stage Count Low-Pressure Turbine,” claims a two-stage high-pressure turbine engine for commercial airplanes. The patent issued in 2014. In 2016, GE petitioned the Patent Trial and Appeal Board for inter partes review, asserting that certain claims were unpatentable as obvious based on the combination of two prior art references. The Board found five claims nonobvious. GE filed an unsuccessful request for rehearing challenging the Board’s application of the legal standard for both teaching away and motivation to combine. Raytheon moved to dismiss GE’s appeal for lack of standing.The Federal Circuit vacated. Having alleged sufficient facts to establish that it is engaging in an activity that creates a substantial risk of future infringement, GE has standing to bring its appeal. The Board lacked substantial evidence for its conclusions that prior art teaches away from using a two-stage high-pressure turbine and that GE did not establish a motivation to combine prior art. View "General Electric Co. v. Raytheon Technologies Corp." on Justia Law

Mazur discovered a process for creating “black silicon” by irradiating a silicon surface with ultra-short laser pulses to create a textured surface; the resulting black silicon has electronic properties different from traditional silicon. Several patents issued, including the 467 patent, from a 2001 patent application. SiOnyx was formed to commercialize black silicon. In 2006, SiOnyx met with Hamamatsu, which produces silicon-based photodetector devices. The parties entered into a nondisclosure agreement (NDA), providing that a party receiving confidential information shall maintain the information in strict confidence for seven years after the expiration of the agreement and acknowledges that the disclosing party claims ownership of the information and all patent rights. While the NDA was in effect, SiOnyx provided to Hamamatsu proposed architectures and a manufacturing process for a photodetector device, which were marked as confidential. Hamamatsu ultimately represented that it wished to develop its products alone. The NDA expired in 2008. In 2009, Hamamatsu notified SiOnyx that Hamamatsu intended to introduce a new photodiode that it did not believe infringed SiOnyx’s intellectual property or breached Hamamatsu’s confidentiality obligations. Hamamatsu filed patent applications in several countries. In 2010, Hamamatsu began releasing the accused products. SiOnyx began selling its own photodetector products. In 2014 a customer alerted SiOnyx to Hamamatsu’s patents.The Federal Circuit affirmed that Hamamatsu breached the NDA and infringed the 467 patent. SiOnyx is entitled to sole ownership of the disputed U.S. Patents. The district court erred in failing to grant SiOnyx sole ownership of the Disputed Foreign Patents. View "Sionyx LLC v. Hamamatsu Photonics K.K." on Justia Law

VidStream’s patent, titled: “Recording and Publishing Content on Social Media Websites,” has a priority date of May 2012. Twitter filed two petitions for inter partes review (IPR), with method claims 1–19 in one petition, and medium and system claims 20–35 in the other. Twitter cited the Bradford book as the primary reference for both petitions, combined with other references. With the petitions, Twitter filed copies of several pages of the Bradford book and explained their relevance to the claims. Twitter also filed a Bradford 2011 copyright page and copies of archived webpages from the Internet Archive, showing the Bradford book listed on a publicly accessible website bearing a November 2011 website date and website pages dated December 6, 2011, showing the Bradford book available for purchase from Amazon.The Patent Trial and Appeal Board held that claims 1–35 are unpatentable as obvious. The Federal Circuit affirmed the Board’s holding that Bradford is prior art. The Board permitted both sides to provide evidence concerning the reference date of the Bradford book; the evidence well supports its finding that Bradford was published and publicly accessible before the patent’s 2012 priority date. With Bradford as the primary reference, VidStream did not appeal the unpatentability of claims 1–35. View "VidStream LLC v. Twitter, Inc." on Justia Law