Justia Intellectual Property Opinion Summaries

Kaken’s patent, titled “Method For Treating Onychomycosis,” describes and claims methods for topically treating fungal infections in human nails. On inter partes review under 35 U.S.C. 311–319, the Patent Trial and Appeal Board determined that all claims of the patent are unpatentable for obviousness. The Federal Circuit vacated. The Board erred in its claim construction of one claim limitation--“treating a subject having onychomycosis.” Kaken’s unambiguous statement that onychomycosis affects the nail plate, and the examiner’s concomitant action based on this statement, make clear that “treating onychomycosis” requires penetrating the nail plate to treat an infection inside the nail plate or in the nail bed under it. The Board’s obviousness analysis materially relied on its erroneous claim construction. View "Kaken Pharmaceutical Co., Ltd. v. Iancu" on Justia Law

CTDI is a worldwide engineering, repair, and logistics company with its principal place of business in Pennsylvania. Since 2007, CTDI has developed, manufactured, and used its “Gen3” and “Gen5” test systems within the U.S. for testing set-top boxes and multimedia devices. The test systems were designed and developed at CTDI’s Pennsylvania facility. Contec “provides repair, test and reverse logistics for electronics hardware used in a broad range of markets.” Contec owns patents for the “Arrangement and Method for Managing Testing and Repair of Set-Top Boxes” and for a “Multimedia Device Test System.” The patented systems were designed and developed at Contec’s New York headquarters. Three of the six inventors of the patents reside in New York; another left Contec and works in CTDI’s, New York facility. CTDI sought a declaratory judgment in a Pennsylvania federal court that its test systems do not infringe Contec’s patents. Six days later, Contec sued CTDI for infringement in the Northern District of New York. The Pennsylvania court dismissed, finding that CTDI’s anticipatory filing was made in bad faith during active licensing discussions; the court found that equitable considerations warranted departure from the first-to-file rule. The Federal Circuit affirmed, finding that the district court did not abuse its broad discretion under the Declaratory Judgment Act, 28 U.S.C. 2201(a) and pursuant to the first-to-file rule. View "Communications Test Design, Inc. v. Contec, LLC" on Justia Law

ICCS imported 56,616 individual butane gas canisters into the U.S. that displayed a “PREMIUM” brand label and a registered certification mark owned by Underwriters Laboratories (UL). Customs determined that the canisters were “counterfeit” in that they made unauthorized use of the UL certification mark and issued a notice ordering ICCS to redeliver the imported canisters to Customs’ custody pursuant to 19 U.S.C. 1526(e). ICCS redelivered only 29,008 canisters. UL did not consent to retroactive certification. Customs assessed damages of $41,412.00.The Trade Court granted the government summary judgment. The Federal Circuit affirmed. The canisters displayed UL’s mark without UL’s approval. ICCS’s arguments as to physical similarities between the PREMIUM model and other merchandise that UL had previously certified fail because the Service Terms dictate that UL, not ICCS, determines whether any differences from the basic product are superficial. On the date of entry, Customs had no way of ascertaining whether the PREMIUM model was the same physical product as the basic product without UL having made that determination. The court rejected an argument that, in denying ICCS’s protest, Customs relied on UL’s lack of consent to the point of delegating its statutory duty to enforce the trademark laws to UL. View "ICCS USA Corp. v. United States" on Justia Law

Customedia’s patents, which share a specification, disclose comprehensive data management and processing systems that comprise a remote AccountTransaction Server (ATS) and a local host Data Case Management System and Audio/Video Processor Recorderplayer (VPR/DMS), e.g., a cable set-top box. Broadcasters and other content providers transmit advertising data via the ATS to a local VPR/DMS. That data be selectively recorded in programmable storage sections in the VPR/DMS according to a user’s preferences. These storage sections may be “reserved, rented, leased or purchased from end user[s], content providers, broadcasters, cable/satellite distributor, or other data communications companies administering the data products and services.” On Dish Network’s petition for review, the Patent Trial and Appeal Board found various claims ineligible under 35 U.S.C. 101 and other claims unpatentable under 35 U.S.C. 102. The Federal Circuit affirmed the ineligibility finding, applying the Supreme Court’s “Alice” holding that “[l]aws of nature, natural phenomena, and abstract ideas are not patent-eligible.” The claimed invention is at most an improvement to the abstract concept of targeted advertising wherein computers are merely used as a tool; the invocation of already-available computers that are not themselves plausibly asserted to be an advance amounts to a recitation of what is well-understood, routine, and conventional. View "Customedia Technologies, LLC v. Dish Network Corp." on Justia Law

The Patents-in-Suit are directed to the recovery of oil from a dry mill ethanol plant’s byproduct, thin stillage, for example, “evaporating the thin stillage to form a concentrate,” or syrup, and then “separating the oil from the concentrate using a disk stack centrifuge.” In an infringement suit, the district court determined that specified claims were invalid because of the on-sale bar, anticipation, obviousness, incorrect inventorship, inadequate written description, lack of enablement, and indefiniteness. The court concluded that, under the UCC, a signed proposal would have constituted a commercial contract and that a reasonable jury would not have concluded that the proposal was an offer to test its claimed invention as the Inventors knew the method could be successfully reduced to practice and had been reduced to practice. After an inequitable conduct bench trial, the court concluded that the patents were ready for patenting when the Inventors provided the 2003 Proposal and that CleanTech committed inequitable conduct: The "Inventors made a mistake” by offering the invention for sale in 2003, and later affirmatively hid that fact from the lawyers and the Patent Office. The Federal Circuit affirmed. The district court did not abuse its discretion in concluding that CleanTech and its lawyers made a deliberate decision to withhold material information with the specific intent to deceive the Patent Office. View "GS CleanTech Corp. v. Adkins Energy LLC" on Justia Law

The International Trade Commission (ITC) investigated a complaint under Tariff Act Section 337, alleging that Comcast’s customers directly infringe patents by using Comcast’s X1 system. The patents claim an interactive television program guide system for remote access to television programs. An ALJ found a violation, concluding that the X1 set-top boxes are imported by ARRIS and Technicolor and that Comcast is sufficiently involved with the design, manufacture, and importation of the products, such that it is an importer under Section 337. The ITC affirmed, stating that Comcast induced infringement and that Comcast "instructs, directs, or advises its customers on how to carry out direct infringement.” The ITC affirmed that ARRIS and Technicolor do not directly infringe because they do not provide a “remote access device” as required by the claims and do not contributorily infringe because the set-top boxes have substantial non-infringing uses. The ITC issued a limited exclusion order and cease and desist orders directed to Comcast. The Federal Circuit affirmed, rejecting Comcast’s arguments that its conduct is not actionable under Section 337 because Comcast’s inducing conduct “takes place entirely domestically, well after, and unrelated to," the importation and that Comcast does not itself import the articles. The ITC has authority (19 U.S.C. 1337(d)(1)) to issue an exclusion order that blocks the importation of articles manufactured and imported by ARRIS and Technicolor, despite its determination that they did not violate Section 337 and did not infringe the patents. View "Comcast Corp. v. International Trade Commission" on Justia Law

Arctic’s patents, directed to personal watercraft (PWC) steering systems, issued in 2004 and 2003, after Arctic stopped selling PWCs. In 2002, Arctic entered into a license agreement with Honda that expressly stated that Honda had no marking obligations. Honda began making and selling unmarked PWCs. Arctic asserted that Honda stopped selling unmarked products in 2013. Bombardier claimed that Honda continued to sell PWCs under the Arctic license until 2018. In 2014, Arctic sued Bombardier for infringement. The court held that Bombardier bore the burden of proving that Honda’s PWCs practiced the asserted claims and denied Bombardier’s motion to limit potential damages because of Honda’s sales of unmarked products. A jury awarded Arctic a royalty to begin in 2008 and found that Bombardier had willfully infringed the asserted claims. The Federal Circuit affirmed as to willfulness but vacated in part. Once an alleged infringer identifies products that it believes are unmarked patented articles subject to the 35 U.S.C. 287 notice requirements, the patentee bears the burden of proving that the products do not practice the claimed invention. On remand, Arctic conceded that it could not show that the Honda PWCs do not practice the asserted claims. The Federal Circuit affirmed summary judgment in favor of Bombardier. Section 287 continues to limit damages after a patentee or licensee ceases sales of unmarked products; willful infringement does not establish actual notice under section 287. View "Arctic Cat Inc. v. Bombardier Recreational Products, Inc." on Justia Law

Serta filed a patent infringement action against Casper, citing the 173, 763, and 935 patents. Those patents cover mattresses that include a channel and methods for forming it. These mattresses can have varying areas of firmness by inserting reinforcement of various types into their channels that can be located at regions where additional support is desired. Casper filed three motions for summary judgment directed to non-infringement of Casper’s accused mattresses, accused methods of manufacturing, and redesigned mattresses. While Casper’s summary judgment motions were pending, the parties executed a settlement agreement and advised the district court of the settlement. The district court nevertheless granted Casper’s summary judgment motions of non-infringement. It later denied Serta’s motions to vacate the summary judgment order and to enforce the settlement agreement. The Federal Circuit vacated and remanded with instructions to enforce the settlement agreement. There is no contention that the settlement or the relief sought by Serta is unlawful or contrary to public policy. There is also no dispute that the parties executed the agreement before the district court issued the summary judgment order; Casper has admitted that the agreement was binding. The settlement agreement mooted the case even though it included terms that required future performance. View "Serta Simmons Bedding, LLC v. Casper Sleep Inc." on Justia Law

Acoustic’s 841 patent relates to communications systems for utility providers to remotely monitor groups of utility meters, e.g., electricity meters. According to Acoustic, the claimed invention was “an improvement upon prior art automated meter reading systems that used expensive and problematic radio frequency (RF) transmitters, or systems that relied on human meter-readers using hand-held or vehicle-mounted short-range wireless devices to obtain meter readings when they were in a customer’s vicinity.” On Network’s petition, the Patent Trial and Appeal Board instituted inter partes review (IPR). Nine days after institution, Network agreed to merge with Itron, an entity undisputedly time-barred under 35 U.S.C. 315(b). Network and Itron completed the merger during the IPR proceeding. The Board later issued a final written decision and found the challenged claim unpatentable. The Federal Circuit affirmed, rejecting Acoustic’s claim that the inter partes review was time-barred due to Network’s and Itron’s merger-related activities. Acoustic waived its time-bar argument because it failed to present that argument before the Board. Substantial evidence supports the Board’s unpatentability findings based on anticipation. View "Acoustic Technology, Inc. v. Itron Networked Solutions, Inc." on Justia Law

Andrea sued Apple for infringement of Andrea’s 345 patent, relating to certain aspects of digital audio processing. Apple filed two inter partes review (IPR) petitions. The Patent Trial and Appeal Board instituted review. In its 626 IPR Final Written Decision, the Board concluded that, in light of prior art, several challenged claims were unpatentable. The Board declined to consider certain arguments in Apple’s reply brief because Apple was raising new arguments in its reply brief. In its 627 Decision, the Board concluded that, in light of other cited art, several challenged claims are unpatentable. The Board construed the term “periodically” in favor of Andrea. Between the two IPRs, the Board held that all challenged claims except claims 6–9 are unpatentable.The Federal Circuit vacated with respect to the 626 IPR; the Board erred in refusing to consider Apple’s reply arguments. Apple’s reply does not cite any new evidence or “unidentified portions” of the reference at issue but merely demonstrates another example of the same algorithm to further explain why the reference discloses the “current minimum” and “future minimum” limitations of claims 6–9. Apple’s reply arguments are responsive to arguments raised in Andrea’s Patent Owner Response. The petitioner in an IPR may introduce new evidence after the petition stage if the evidence is a legitimate reply to evidence introduced by the patent owner. The court affirmed with respect to the 627 IPR, finding the decision supported by substantial evidence. View "Apple Inc. v. Andrea Electronics Corp." on Justia Law