Justia Intellectual Property Opinion Summaries

Aqua’s patent concerns automated swimming pool cleaners that use “an angled jet drive propulsion system” to move in a controlled pattern. Using motor-driven wheels that enable the cleaner to move in a controlled pattern requires a drive motor and integrated circuitry. Cleaners that use suction or water jets do not require a drive motor but often move in erratic patterns. Zodiac sought inter partes review, citing prior art. Aqua moved to substitute new claims to require that the jet creates a downward vector force rear of the front wheels and the wheels control the cleaner's directional movement. Aqua argued that the combination of prior art did not render the substitute claims obvious because it does not suggest the vector limitation. The Patent Board denied Aqua’s motion to amend. The Federal Circuit initially affirmed, but on en banc review, vacated, holding that 35 U.S.C. 316(e) requires the petitioner to prove all propositions of unpatentability, including for amended claims. The court alternatively reasoned that, absent required deference, the most reasonable reading of the Leahy-Smith America Invents Act places the burden of persuasion with respect to the patentability of amended claims on the petitioner. The Board must consider the entire record when assessing the patentability of amended claims without placing the burden of persuasion on the patent owner. View "Aqua Products, Inc. v. Matal" on Justia Law

Dr. David Jang, M.D., is the named inventor of the patent, which is directed to a coronary stent. Jang assigned the patent to BSC. BSC agreed to pay a royalty if it ever produced a product that would infringe the patent. Jang sued, based on BSC’s “Express stent.” BSC sought ex parte reexamination, then sought to include invalidity defenses in Jang’s suit. The district court denied the motion, deeming invalidity defenses “irrelevant” as to whether BSC owed royalties for past sales. The Patent and Trademark Office subsequently cancelled the asserted claims as unpatentable. The court denied BSC’s motion in limine to preclude Jang from presenting a doctrine of equivalents theory, finding that Jang’s experts sufficiently explained his doctrine of equivalents theory in their expert reports. The jury ultimately found no literal infringement, but found infringement under the doctrine of equivalents. Following through on its earlier decision, the district court conducted an evidentiary hearing on ensnarement. Concluding that Jang did not meet his burden of persuasion, which includes providing a proper hypothetical claim that does not ensnare the prior art, the district court vacated the jury verdict and entered judgment of non-infringement. The Federal Circuit affirmed the entry of judgment of non-infringement. View "Jang v. Boston Scientific Corp." on Justia Law

Smith’s 817 patent, entitled “Expandable Underreamer/Stabilizer,” is directed to a downhole drilling tool for oil and gas operations. It describes an “expandable tool 500” having “a generally cylindrical tool body 510 with a flowbore 508 extending therethrough” and “one or more moveable, non-pivotable tool arms 520.” The Patent Board affirmed the rejection of certain claims in an ex parte examination, interpreting the term “body” as a broad term that may encompass other components such as “mandrel” and “cam sleeve.” The Federal Circuit reversed. The Board’s construction of “body” was unreasonably broad. Even when giving claim terms their broadest reasonable interpretation, the Board cannot construe the claims “so broadly that its constructions are unreasonable under general claim construction principles.” The challenged claims were not unpatentable as obvious. View "In re: Smith International, Inc." on Justia Law

NFC’s patent relates to a near-field communication device, using electromagnetic induction to communicate information over very short distances. The patent claims a priority date of March 1999, the date of the filing of a French patent application. HTC sought inter partes review, alleging that claims were unpatentable as obvious over the Sears patent, with a filing date of February 1999. NFC responded that the inventor, Charrat, had reduced the invention to practice before Sears’s priority date. By September 1998, NFC claimed, Charrat and his team had sufficiently developed the device that they commissioned CE, a chip fabrication company, to generate printed circuit board layouts for the device. The Patent Board determined that NFC had not adequately demonstrated that Charrat had reduced the invention to practice before Sears’s priority date; even if the prototype embodied the invention, NFC had not adequately established that Charrat had conceived the claims' subject matter. The Federal Circuit reversed and remanded. Charrat’s testimony relating to conception was adequately corroborated by NFC’s documentary evidence. NFC established conception. The Board assumed, but did not decide, that the prototype embodied the claimed invention; that issue must be decided in order to determine whether Sears can be antedated. View "NFC Techoloty, LLC v. Matal" on Justia Law

Idemitsu’s patent, titled “Organic Electroluminescence Device and Organic Light Emitting Medium,” claims a device containing a particular organic medium layered between an anode and cathode; when a voltage is applied through the electrodes, the organic medium emits light. On inter partes review of all claims, the Patent Trial and Appeal Board held that all instituted claims were obvious, 35 U.S.C. 103 finding in particular that: the patent's formula compounds correspond to those in a prior reference and that the prior reference teaches that a light emitting layer can be formed by combining those compounds. The Federal Circuit affirmed. The Board reasonably concluded that the prior reference teaches that a light-producing device can be made—regardless of comparative shortcomings in durability or resistance caused by imperfect energy gap ratio—by combining the compounds, including the claimed combinations, as the critical layer. View "Idemitsu Kosan Co., Ltd. v. SFC Co. Ltd." on Justia Law

Inselberg is the inventor systems by which audiences interact with live events, such as concerts and football games. In 2010, his company received a $500,000 loan from Bisignano, who received security interest in the patents.Federal authorities brought criminal charges against Inselberg. He defaulted on the loan. Inselberg and Bisignano entered into an agreement that purported to convey the patent portfolio to Bisignano. , Bisignano became the CEO of First Data. In 2014, Inselberg began claiming that the assignment was invalid.and that First Data was infringing. Bisignano granted First Data a royalty-free license and sought a federal declaratory judgment regarding the validity of the license agreement and ownership of the patents, to preempt "an inevitable infringement action. Inselberg filed a complaint in New Jersey Superior Court, asserting only state law claims. Bisignano and First Data filed an answer with counterclaims, seeking declaratory judgments of noninfringement and invalidity, then removed the action to federal court. The Federal Circuit affirmed a dismissal for lack of jurisdiction. Inselberg’s claims were all state law property rights claims; the alleged patent law issues were “incidental and contingent.” It did not become a patent case merely because some of the damages might be measured based on “forgone royalties. Bisignano remains the owner of the patents unless a state court invalidates the assignment; the district court did not have jurisdiction to consider the matter. View "First Data Corp. v. Inselberg" on Justia Law

IV’s patent issued in 2010, from a series of continuing applications first filed in 1997 and is titled “File Transfer System for Direct Transfer Between Computers.” The patents broadly relate to transferring computer files electronically from one location to another, and more particularly to electronic transfer of computer files directly between two or more computers or computing devices. IV sued Motorola for infringement. A jury found the asserted claims infringed and not invalid. The Federal Circuit held that substantial evidence supported the jury’s verdict regarding the validity of certain claims, but concluded that substantial evidence did not support the jury’s verdict of direct infringement of another claim. Since a finding of direct infringement is a predicate to any finding of indirect infringement, the court reversed all of the infringement findings with respect to that patent. View "Intellectual Ventures I LLC v. Motorola Mobility LLC" on Justia Law

Stellar and Allied are American companies. Stellar sent Allied's Mexican distributors notice letters accusing them of infringing Stellar’s Mexican Patent. Allied manufactures the accused products in the U.S., which are then sold in Mexico by the distributors. Allied sells the same product in the U.S. under a different name. Allied’s U.S. counsel responded to Stellar’s notice letters on behalf of the distributors, arguing that the products did not infringe. Stellar did not respond but filed infringement actions in Mexico. Allied then sought a declaratory judgment against Stellar in the Southern District of Florida, of non-infringement, invalidity, unenforceability due to inequitable conduct, and tortious interference with business relationships. The district court dismissed for lack of subject matter jurisdiction, stating: “Stellar’s decision to enforce its Mexican patent under Mexican law against separate entities cannot, without further affirmative action by Stellar, create an actual controversy with Allied with regard to its U.S. Patent,” and that the complaint was “devoid of any allegations that Stellar has done anything to give Allied a reasonable belief that Stellar intends to enforce its 974 Patent in the United States.” The Federal Circuit affirmed. Stellar’s actions do not create a justiciable case or controversy. View "Allied Mineral Products, Inc. v. OSMI, Inc." on Justia Law

Waymo sued Uber and Ottomotto for patent infringement and violations of trade secret laws, claiming that its former employee, Levandowski, improperly downloaded documents related to Waymo’s driverless vehicle technology, then left Waymo to found Ottomotto, which Uber subsequently acquired. Before that acquisition closed, counsel for Ottomotto and Uber retained Stroz to investigate Ottomotto employees previously employed by Waymo, including Levandowski. During discovery, Waymo successfully moved to compel the defendants to produce the Stroz Report. Waymo also subpoenaed Stroz to obtain the Report plus the communications, documents, and devices provided to Stroz. Levandowski, Ottomotto, and Uber unsuccessfully moved to quash the subpoena, arguing that the Report was subject to attorney-client privilege or work-product protection. The Federal Circuit denied Levandowski’s petition for mandamus relief. Levandowski failed to articulate any persuasive reasons why disclosure of the Report should be barred; the possibility of admissions against his interest is a valid function of civil discovery. The court rejected Levandowski’s “unsupported assertions” that the district court would be unable to “cleanse the trial of all taint from the improper disclosure,” noting that the court had examined the Report in camera and declined to exclude it. The district court properly determined that the common interest doctrine did not apply, found that Levandowski waived work-product protection, and rejected Levandowski’s claim of Fifth Amendment privilege. View "Waymo LLC v. Uber Technologies, Inc." on Justia Law

Southwire’s patent is directed to a method of manufacturing an electric cable, wherein a lubricant is incorporated into the outer sheath such that the lubricant migrates to the surface of the sheath and results in a reduction in pulling force required to install the cable. One prior art solution for reducing the pulling force on a cable during installation was a post-manufacturing method of coating the cable's exterior surface with a lubricant, such as petroleum jelly, immediately before installation. Southwire explains that this was expensive and inefficient; its patent purports to improve upon such methods by incorporating a lubricant into the cable sheath material during manufacture so that the finished cable sheath comprises a lubricant that will migrate to the exterior of the sheath and lubricate the surface during installation. The Federal Circuit affirmed a determination, on inter partes review, that 42 claims are unpatentable under 35 U.S.C. 103. While the Patent Board erred in relying on inherency without finding that prior art necessarily would achieve a 30% reduction in pulling force, but rather finding that it merely renders that limitation obvious, the error was harmless because the Board made the necessary underlying factual findings to support an obviousness determination. View "Southwire Co. v. Cerro Wire LLC" on Justia Law