Justia Intellectual Property Opinion Summaries

Global’s patent claims carpeted automotive vehicle load floors having sandwich-type composite panels with cellular cores. Global filed a reissue application, seeking to broaden its claims. It replaced the term “thermoplastic” with “plastic” in several independent claims. The Patent Office’s rules for reissue applications require an inventor oath or declaration specifically identifying the error relied on as the basis for the reissue. The inventor filed a declaration explaining that he is the inventor of over 50 U.S. patents in the field of plastic-molded products and that, at the time of the invention, he was aware of the use of plastics other than thermoplastics for the formation of a sandwich-type composite panel with a cellular core. He cited patents and patent applications, including his own, and technical papers purportedly disclosing the use of thermoset plastics (instead of thermoplastics) in vehicle load floors. The examiner rejected Global’s reissue claims for failing to comply with the written description requirement of 35 U.S.C. 112. The Board affirmed. The Federal Circuit vacated; “the level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.”On remand, the Board should address the relevant factors, including predictability and criticality, based on the record and determine whether the written description requirement has been satisfied under the proper legal standard. View "In re: Global IP Holdings LLC" on Justia Law

Kolcraft’s 970 and 231 Design Patents are both titled “Exposed Legs for a Play Yard” and have an effective filing date of November 2004. In 2016, Graco sought inter partes review, challenging the patents on multiple grounds. The Patent Trial and Appeal Board instituted a single trial addressing both patents on grounds related to the prior art (Chen). In its Patent Owner Response, Kolcraft included a declaration signed by inventors with exhibits. Neither the Declaration nor the exhibits included specific dates of conception. Graco deposed the inventors. The Board concluded that Chen is prior art because Kolcraft failed to show that conception, diligence, and reduction to practice of the patents occurred before Chen was filed and that the testimony of the inventors that they conceived of the play yard invention before Chen's effective filing date was not corroborated by non-inventor testimony, documents, or other evidence. The Board relied on the redacted version of the Inventor Declaration and did not take into account inventor deposition testimony of prior conception, finding Kolcraft’s reliance on inventor deposition testimony to be waived as it was raised for the first time at oral hearing. The Board determined and the Federal Circuit affirmed that the patents-in-suit were obvious in view of Chen. View "Kolcraft Enterprises, Inc. v. Graco Children's Products, Inc." on Justia Law

Hill built Commerce Bank from a single commercial bank location in 1973 by emphasizing customer loyalty through initiatives such as extended hours, quick account openings, and free perks. His success brought personal acclaim. The relationship between Hill and Commerce soured, culminating in Hill’s 2007 termination and TD Bank’s acquisition of Commerce for $8.5 billion. The publication of a book Hill had written during his Commerce tenure was canceled. In 2012, Hill wrote a new book. TD filed a copyright lawsuit alleging that parts of the 2012 book infringe the earlier book. In enjoining Hill from publishing or marketing his book, the district court concluded that TD owned the copyright under a letter agreement and that Hill’s book irreparably violated its “right to not use the copyright.” The Third Circuit vacated the injunction, reasoning that the district court had made “sweeping conclusions” that would justify the issuance of an injunction in every copyright case. Instead of employing “categorical rule[s]” that would resolve the propriety of injunctive relief “in a broad swath of cases,” courts should issue injunctive relief only upon a sufficient showing that such relief is warranted under particular circumstances. Although the agreement between the parties did not vest initial ownership of the copyright by purporting to designate the manuscript a work “for hire,” it did transfer any ownership interest Hill possessed to TD, so Hill’s co-ownership defense fails. View "TD Bank NA v. Hill" on Justia Law

Cellspin sued Fitbit, Moov, Nike, Fossil, Garmin, Canon, GoPro, Panasonic, and JKI (defendants) for infringing various claims of four patents that share the same specification and generally relate to connecting a data capture device, e.g., a digital camera, to a mobile device so that a user can automatically publish content from the data capture device to a website.. The district court dismissed, finding the patents ineligible for patent protection under 35 U.S.C. 101, and awarded attorney fees to defendants under 35 U.S.C. 285. The Federal Circuit vacated, concluding that the district court misapplied precedent. The asserted claims are directed to an abstract idea--the idea of capturing and transmitting data from one device to another--but the district court erred with respect to the “second step” inventive concept inquiry, by ignoring allegations that, when properly accepted as true, preclude the grant of a motion to dismiss. Cellspin made specific, plausible factual allegations about why aspects of its claimed inventions were not conventional, e.g., its two-step, two-device structure requiring a connection before data is transmitted. View "Cellspin Soft, Inc. v. Fitbit, Inc." on Justia Law

Elbit’s 073 patent, entitled “Reverse Link for a Satellite Communication Network,” claims a system for transmitting information from user terminals to a central hub using satellite communication—a “reverse link.” Add “a forward link,” i.e., satellite communication from the hub to user terminals, and the result is “a complete two-way communication system via satellite.” To transmit data to the hub, user terminals employ a “transmitter means,” which has two communication means, one for “transmitting short bursty data,” and a second for “continuous transmission of data.” Elbit sued Hughes for infringement. The jury found system claims 2–4 of the patent infringed and not invalid, and awarded damages. The district court found that the case was exceptional and that Elbit is entitled to attorney’s fees, but the court has not quantified the fees. The Federal Circuit affirmed as to infringement and damages but concluded it lacked jurisdiction over the unquantified attorney’s fees decision. Substantial evidence supported the jury’s findings. Elbit and its expert did what case law requires in explaining the relevance of a prior settlement to this case. Hughes, which introduced no expert damages testimony, did not demonstrate either “faulty assumptions” or “a lack of reliable economic testimony” that would warrant disturbing the jury’s award. View "Elbit Systems Land & C4I Ltd v. Hughes Network Systems, LLC" on Justia Law

UCB’s 434 patent, entitled “Transdermal therapeutic system which contains a d2 agonist and which is provided for treating Parkinsonism, and a method for the production thereof,” claims a polymorph of rotigotine. UCB’s 414 patent is entitled “Polymorphic form of rotigotine and process for production.” UCB has been selling the FDA-approved product, Neupro, since 2007. The district court concluded that Actavis’s generic products infringed the patent under the doctrine of equivalents and upheld the 434 patent's validity over obviousness and anticipation challenges. The court invalidated the 414 patent under 35 U.S.C. 102(a) as known and used by others in the U.S. before the date of invention. The Federal Circuit affirmed. There is not enough evidence to conclude that UCB surrendered polyisobutylene as a possible equivalent; UCB’s claiming of acrylates and silicates does not bar treating polyisobutylenes as an equivalent for infringement purposes and vitiation does not bar application of the doctrine of equivalents here. Actavis offers no examples of prior art that would be ensnared by the addition of polyisobutylene to the claim, in contrast to the claim as is. The court upheld fact findings as to polyisobutylene’s characteristics as compared to silicates and acrylates and as to what a skilled artisan would have known about the interchangeability of polyisobutylene-based adhesives and silicone-based adhesives and the conclusion that the accused products infringe the claims under the doctrine of equivalents. View "UCB, Inc. v. Watson Laboratories Inc." on Justia Law

Brunetti sought federal registration of the trademark FUCT. The Patent and Trademark Office denied his application under a Lanham Act provision that prohibits registration of trademarks that consist of or comprise "immoral[ ] or scandalous matter,” 15 U.S.C. 1052(a).The Supreme Court affirmed the Federal Circuit in holding that the provision violates the First Amendment. The Court noted that it previously invalidated the Act’s ban on registering marks that “disparage” any “person[ ], living or dead.” The “immoral or scandalous” bar similarly discriminates on the basis of viewpoint. Expressive material is “immoral” when it is “inconsistent with rectitude, purity, or good morals”; “wicked”; or “vicious”; the Act permits registration of marks that champion society’s sense of rectitude and morality, but not marks that denigrate those concepts. Material is “scandalous” when it “giv[es] offense to the conscience or moral feelings”; “excite[s] reprobation”; or “call[s] out condemnation”; the Act allows registration of marks when their messages accord with, but not when their messages defy, society’s sense of decency or propriety. The statute, on its face, distinguishes between ideas aligned with conventional moral standards and those hostile to them.The Court rejected an argument that the statute is susceptible of a limiting construction. The “immoral or scandalous” bar does not draw the line at lewd, sexually explicit, or profane marks. Nor does it refer only to marks whose “mode of expression,” independent of viewpoint, is particularly offensive. To cut the statute off where the government urges would not interpret the statute Congress enacted, but fashion a new one. View "Iancu v. Brunetti" on Justia Law

Heraeus, a German company, develops and produces bone cement, using copolymers. Biomet also sells bone cement and uses the same copolymers, which it buys from Esschem, a Pennsylvania company. Heraeus holds trade secrets related to the bone cement, including specifications for the copolymers. The trade secrets changed hands during joint ventures before allegedly falling into Esschem’s possession. Heraeus analyzed samples of Biomet’s bone cement in 2005 and discovered that it was virtually identical to Heraeus’ bone cement and that Esschem was manufacturing Biomet's copolymers. Heraeus sued Biomet in Germany in 2008, and brought discovery suits in the U.S. against Esschem and Biomet. By March 2011, Esschem produced e-mail chains between employees of Biomet and Esschem concerning the copolymers. During proceedings against Biomet, that information was corroborated. Heraeus contends it was not until then (December 2011), that it had sufficient information to believe that Esschem had actively participated in the misappropriation of its trade secrets. Less than three years later, Heraeus sued Esschem under the Pennsylvania Uniform Trade Secrets Act (PUTSA) which gives a plaintiff three years from when “the misappropriation was discovered or by the exercise of reasonable diligence should have been discovered” to bring suit. The district court ruled that the limitations period had run because Heraeus was aware of the facts supporting its claims by January 2009. The Third Circuit reversed in part, holding that Pennsylvania applies the rule of separate accrual to continuing trade secret misappropriations, Heraeus may sue for misappropriations that occurred within the three-year period before filing. The court agreed that alleged misappropriations more than three years before Heraeus filed suit are time-barred. View "Heraeus Medical GMBH v. Esschem Inc" on Justia Law

Mayne’s 745 patent discloses and claims pharmaceutical compositions of azole antifungal drugs that are practically insoluble in aqueous media. The patent explains that insoluble drugs are difficult to formulate into dosage forms because of their low absorption and poor bioavailability and purports to provide a pharmaceutical composition addressing these shortcomings. On MSD’s petition, the Patent Trial and Appeal Board initiated inter partes review and found several claims unpatentable as anticipated or obvious, 35 U.S.C. 103 The Federal Circuit affirmed, upholding the Board’s decision to permit MSD’s amendment, finding no indication of intentional concealment, no bad faith on MSD’s part, no attempt to circumvent the estoppel rules, or any other material benefit to it in its delay in naming MCI as a real party in interest. The Board did not err in its constructions of either “pharmaceutical composition” or the “wherein” clauses; under the Board’s constructions, the claims are obvious or anticipated View "Mayne Pharma International Pty. Ltd. v. Merck Sharp & Dohme Corp." on Justia Law

Activision sought inter partes review of GAT’s 743 patent, entitled “Method and System for Providing Character Having Game Item Functions,” which relates to the field of customizing Internet game characters in online games by combining game items with layers of an avatar in the game and discloses a method and system for providing “game item[s]” to Internet game characters and generating a type of avatar the patent refers to as a “gamvatar” that is equipped with particular game items. The Patent Trial and Appeal Board concluded that the challenged claims were “obvious based on the combined teachings” of the prior art references. The Federal Circuit affirmed. The Board properly determined that the gamvatar of the 743 patent is a combination of the conventional avatar with the game item function, rather than a combination of a conventional gamvatar with a game item function, as suggested by GAT and construed the term “layers” to mean that “‘layers’ encompasses ‘graphics regions for displaying graphical objects’ and ‘constructs for holding graphics.’” Substantial evidence supported findings of obviousness under 35 U.S.C. 103. View "Game and Technology Co., Ltd. v. Activision Blizzard Inc." on Justia Law