Justia Intellectual Property Opinion Summaries

VerHoef’s dog developed a walking problem called “knuckling.” Their veterinarian, Dr. Lamb, suggested trying a commercially available harness to support the leg during therapy. The harness did not fix the problem. VerHoef recognized that the harness would work if connected to the dog’s toes. Lamb suggested a strap configured in a figure 8 that fit around the toes and wrapped around the lower leg, above the paw. VerHoef implemented Lamb’s figure eight idea, and, after adjustments, had a working device that reduced the knuckling problem. VerHoef filed a patent application listing the two as joint inventors. A single independent claim expressly recited the figure eight loop. Relations between VerHoef and Lamb soured. VerHoef’s attorney abandoned the joint application and filed a substantially identical application, listing VerHoef as the sole inventor. That same day Lamb filed a substantially identical application listing herself as sole inventor. Each application recites the same independent claim. The examiner issued a final rejection (35 U.S.C. 102(f)). The Patent Board agreed that VerHoef did not maintain “intellectual domination” over the inventive process and that Lamb was a joint inventor. The Federal Circuit affirmed. Substantial evidence in the form of VerHoef’s affidavit supports determinations that Lamb contributed the idea of the figure eight loop and that the figure eight loop is an essential feature of the invention not insignificant in quality or well-known in the art. View "In re: Verhoef" on Justia Law

TAOS and Intersil were both developing ambient light sensors for electronic devices. Ambient light sensors use a silicon- or other semiconductor-based photodiode that absorbs light and conducts a current. The resulting photocurrent is detected by a sensor, and measurements of the current, a function of the ambient light, are used to adjust the brightness of an electronic screen display. One benefit is better visibility; another is improved battery efficiency. In 2004, the parties confidentially shared technical and financial information during negotiations regarding a possible merger that did not occur. Soon after, Intersil released new sensors with the technical design TAOS had disclosed in the confidential negotiations. TAOS sued for infringement of its patent, and for trade secret misappropriation, breach of contract, and tortious interference with prospective business relations under Texas state law. A jury returned a verdict for TAOS and awarded damages on all four claims. The Federal Circuit affirmed liability for trade secret misappropriation, though on a more limited basis than TAOS presented to the jury, and affirmed liability for infringement of the asserted apparatus claims of the patent, but vacated the monetary awards. The court noted that there was no evidence of Intersil’s independent design of the photodiode array structure. View "Texas Advanced Optoelectronic Solutions, Inc. v. Renesas Electronics America, Inc." on Justia Law

Disc’s 113 patent, entitled “Spinal Brace,” is directed to an air injectable band with a rigid panel worn around the waist. When the band is inflated it expands vertically to provide traction to the spine of the user to relieve back pain. Disc's 509 patent is entitled “Wrinkled Band Without Air Expansion Tube and its Manufacturing Method.” VGH manufactures and sells inflatable spinal brace products. Disc sued for infringement, specifically identifying VGH’s products and alleging that the products meet “each and every element of at least one claim of the 113 [or 509] Patent, either literally or equivalently.” Disc attached the asserted patents and photographs of the accused products. The following day, amendments to the Federal Rules of Civil Procedure took effect, abrogating Rule 84 and Form 18, stating that the amendments “shall govern in all proceedings in civil cases thereafter commenced and, insofar as just and practicable, all proceedings then pending.” The district court dismissed Disc’s complaint with prejudice, reasoning that the change applied and that the complaint did not meet the “Iqbal/Twombly” standard articulated by the Supreme Court. The court denied Disc’s motions for reconsideration and to amend the judgment. The Federal Circuit reversed. Disc’s allegations are sufficient under the plausibility standard of Iqbal/Twombly. Disc’s disclosures provided VGH fair notice of infringement of the asserted patents. View "Disc Disease Solutions Inc. v. VGH Solutions, Inc." on Justia Law

Communique’s patent, entitled “System Computer Product and Method for Providing a Private Communication Portal,” allows a remote computer to access a personal computer via the Internet, using a “location facility” to “creat[e] a communication channel.” In 2006, Communique sued, alleging that Citrix’s GoToMyPC remote computer connection service infringed two claims. The court stayed proceedings pending resolution of inter partes reexamination. In 2013, the Patent Board confirmed the patentability of the claims over prior art references, including Citrix’s BuddyHelp computer connection service. The Federal Circuit affirmed. Returning to the district court, Citrix argued that the claims were patent ineligible under 35 U.S.C. 101, because they “only require[] generic software operating on a generic computer system to implement the abstract idea of connecting two computers.” The court rejected this argument. A jury concluded that Citrix had not established that the claims were invalid, but that Communique had not established that Citrix’s product infringed those claims. The Federal Circuit affirmed; the court did not abuse its discretion in ruling that while the reexamination record could be used at trial, the jury could not be informed that Citrix had requested the reexamination. Citrix’s argument did not rest on an improper “practicing the prior art” defense, but instead correctly recognized that claim terms must be “construed the same way for both invalidity and infringement.” View "01 Communique Laboratory, Inc v. Citrix Online, LLC" on Justia Law

Merck's patents claim classes of compounds, identified by structural formulas, and the administration of therapeutically effective amounts of such compounds for treating Hepatitis C. Gilead developed its own Hepatitis C treatments, marketed as Solvadi® and Harvoni®, based on the compound sofosbuvir. Gilead sought a declaratory judgment that Merck’s patents were invalid and that Gilead was not infringing. Merck counterclaimed for infringement. Gilead stipulated to infringement based on the court’s claim construction, which was not appealed. A jury trial was held on Gilead’s challenges to the patents as invalid for lack of both an adequate written description and enablement of the asserted claims, and Gilead’s defense that Merck did not actually invent the subject matter but derived it from another inventor, employed by Gilead’s predecessor. The jury ruled for Merck but the district court ruled for Gilead, finding pre-litigation business misconduct and litigation misconduct attributable to Merck, and barred Merck from asserting the patents against Gilead. The court awarded attorney’s fees, relying on the finding of unclean hands. The Federal Circuit affirmed the judgment based on unclean hands. The district court found, with adequate evidentiary support, two related forms of pre-litigation business misconduct attributable to Merck. The court noted clear violations of a “firewall” understanding between Gilead’s predecessor and Merck, with a direct connection to the ultimate patent litigation. View "Gilead Sciences, Inc. v. Merck & Co., Inc." on Justia Law

Verified’s patent is directed to “auto-verification” of a voter’s ballot. In 2009, Verified sued Election Systems, which markets automated voting systems, for infringement. Election counterclaimed that the patent's claims were invalid under 35 U.S.C. 101, 102, 103, and 112. The court determined that claims 1–93 were not infringed and claim 94 was invalid under section 112. No further analysis of section 101 was provided; claim 49 was invalid under section 103, but not infringed, while claims 1–48, 50–84, and 86–92 were not invalid under sections 102 and 103. The Federal Circuit affirmed the invalidity of claim 49 and upheld that claims 1–48, 50–84, and 86–92 were not proven invalid because, in failing to respond to these arguments in its summary judgment briefing, Election had not met its burden to prove its invalidity counterclaims. In 2016, Verified again sued Election for infringement, asserting that issue preclusion, or collateral estoppel, precludes Election from relitigating the section 101 issue. The district court dismissed, concluding that the Supreme Court's 2014 “Alice” decision constituted a “substantial change” in the law such that “the issue of patent validity is not precluded from further litigation.” The court determined that the patent was based on the abstract idea of “vote collection and verification” and that the voting system was made up of “generic computer components performing generic computer functions,” insufficient to transform the abstract idea into patent-eligible subject matter. The Federal Circuit affirmed. While “Alice” did not constitute a substantial change in law and the section 101 issue was not actually litigated, the claims are patent-ineligible. View "Voter Verified, Inc. v. Election Systems & Software LLC" on Justia Law

The patent, which lists Rieley and Muller as inventors and for which they applied for in 1997, describes the conversion of an incoming facsimile or voicemail message into a digital representation, which is then forwarded to an email address. The patent was originally assigned to JFAX, which was owned by Rieley and Muller. It is now assigned to AMT; j2 has an exclusive license. The patent expired in 2017. James alleges that in 1995 Rieley asked James to develop software that would provide “Fax-to-Email, Email-to-Fax, and Voicemail-to-Email” functions. In 1996, James and Rieley signed a contract that does not mention patent rights, but expressly requires the assignment to JFAX of “all copyright interests” in the developed “code and compiled software.” The system was complete in 1996. James assigned all copyrights in code and compiled software to JFAX, but “did not assign any patent ownership or inventorship rights.” He claims that he was not aware of the patent until 2013 when he was contacted by attorneys representing a defendant in an infringement suit. James brought a claim for correction of inventorship under 35 U.S.C. 256, with state-law claims for unjust enrichment, conversion, misappropriation, and unfair competition. Finding James had no Article III standing, the district court dismissed. The Federal Circuit reversed, finding that the agreement could be read as not assigning patent rights and as not establishing a hired-to-invent relationship. View "James v. J2 Cloud Services, LLC" on Justia Law

The patent is directed to improving the efficiency by which messages are sent from a receiver to a sender in a telecommunications system to advise the sender that errors occurred in a particular message.The patent is concerned with organizing the information contained in Status Protocol Data Units efficiently, to minimize the size of the S-PDUs, thus conserving bandwidth. The patent discloses several methods for encoding the sequence numbers of missing packets in S-PDUs. In inter partes review, the Patent Board found, and the Federal Circuit affirmed, that various claims were anticipated and that the petition for review was not time-barred. After an en banc court vacated the decision, addressing only the appealability of the Board’s time-bar determination under 35 U.S.C. 315(b), the panel reaffirmed the determinations left unaffected by the en banc court’s decision. With respect to the time-bar claim, the panel affirmed the decision of the Board. In making that determination, the Board did not apply a legally erroneous standard in deciding the “real party in interest, or privy” issue and based its decision on substantial evidence. View "Wi-Fi One, LLC v. Broadcom Corp." on Justia Law

John Bean’s patent, directed to a chiller for cooling poultry carcasses, issued in 2002. Morris is the only other U.S. poultry chiller manufacturer. Weeks after the patent issued, Morris sent a letter stating that Bean had been contacting Morris’s customers and claiming that the equipment being sold by Morris infringed the patent. That Demand Letter notified Bean that Morris believed the patent to be invalid based on prior art and claimed unfair competition. Bean never responded. Morris continued to sell its chillers. In 2013, Bean requested ex parte reexamination. The Patent Office rejected both claims of the 622 patent as anticipated or obvious. Bean amended the two original claims and added six claims. The Patent Office issued a reexamination certificate under 35 U.S.C. 307 allowing the amended and newly added claims. Bean sued, alleging infringement from the date the reexamination certificate issued. In 2016, the district court granted Morris summary judgment, finding the infringement action barred by laches and equitable estoppel based on the 2002 Demand Letter. The Federal Circuit reversed, noting the Supreme Court holding in SCA Hygiene Products (2017), that laches cannot be asserted as a defense to infringement occurring within the six-year period before the filing of an infringement complaint as prescribed by 35 U.S.C. 286. Tthe allegedly infringing activity for which Bean sought damages started in 2014, and Bean filed its infringement complaint in 2014; SCA Hygiene bars Morris’s laches defense. View "John Bean Technologies Corp. v. Morris & Associates, Inc." on Justia Law

Droplets’s 115 Patent, describing a system “for delivering interactive links for presenting applications and second information at a client computer from remote sources in a network-configured computer processing system,” was filed in 2009, copending with the application leading to the 838 Patent, filed in 2003. The 838 Patent was copending with the application leading to the 745 Patent, filed in 2000; the 745 Patent was copending with the 917 Provisional, filed in 1999. A Patent Cooperation Treaty application was filed in 2000, and published in 2001. The specification of the 115 Patent includes a priority claim that specifically refers to the 838 Patent and incorporates its disclosure by reference and includes a cross reference to the 917 Provisional. The 115 Patent properly claims priority from the 838 Patent and is entitled to the benefit of the 2003 filing date; the 838 patent is entitled to the benefit of the 917 Provisional's 1999 filing date. The Patent Board found the 115 Patent invalid as obvious under 35 U.S.C. 103, reasoning that it failed to enumerate a priority claim sufficient to avoid fully-invalidating prior art; incorporation by reference is insufficient to satisfy a patentee’s burden of providing notice of the asserted priority date under 35 U.S.C. 120. The Federal Circuit affirmed. Because the 115 Patent expressly claims priority only to an immediately preceding application, and not the preceding provisional application, an earlier-filed reference (international publication with the same specification) invalidated it. View "Droplets, Inc. v. E*Trade Bank" on Justia Law