Justia Intellectual Property Opinion Summaries

The Patent Trial and Appeal Board, in an ex parte reexamination of Janssen’s 471 patent, affirmed the rejection of claims 1–7 as unpatentable under the doctrine of obviousness-type double patenting, which is intended to prevent the extension of the term of a patent by prohibiting the issuance of the claims of a second patent that are not patentably distinct from the claims of the first patent. The Federal Circuit affirmed, rejecting Janssen’s argument that obviousness-type double patenting is not applicable under the safe-harbor provision of 35 U.S.C. 121. The safe harbor, “protects only divisional applications (or the original application) and patents issued on such applications.” A patent owner cannot retroactively bring its challenged patent within the scope of the safe-harbor provision by amendment in a reexamination proceeding. Once the 471 patent issued on the 093 application, which, at the time of issuance included new matter not disclosed in the original application and so was a properly designated a continuation-in-part, the 471 patent was barred from safe-harbor protections. Janssen cannot establish that the PTO is “solely responsible” for any alleged delay associated with the 471 claims, so the two-way test for double patenting does not apply. View "In re: Janssen Biotech, Inc." on Justia Law

The Patent Trial and Appeal Board, in an ex parte reexamination of Janssen’s 471 patent, affirmed the rejection of claims 1–7 as unpatentable under the doctrine of obviousness-type double patenting, which is intended to prevent the extension of the term of a patent by prohibiting the issuance of the claims of a second patent that are not patentably distinct from the claims of the first patent. The Federal Circuit affirmed, rejecting Janssen’s argument that obviousness-type double patenting is not applicable under the safe-harbor provision of 35 U.S.C. 121. The safe harbor, “protects only divisional applications (or the original application) and patents issued on such applications.” A patent owner cannot retroactively bring its challenged patent within the scope of the safe-harbor provision by amendment in a reexamination proceeding. Once the 471 patent issued on the 093 application, which, at the time of issuance included new matter not disclosed in the original application and so was a properly designated a continuation-in-part, the 471 patent was barred from safe-harbor protections. Janssen cannot establish that the PTO is “solely responsible” for any alleged delay associated with the 471 claims, so the two-way test for double patenting does not apply. View "In re: Janssen Biotech, Inc." on Justia Law

Flexuspine sued Globus for infringement. Globus asserted noninfringement and invalidity. After Inter Partes Review and claim construction, the court dismissed several claims and counterclaims and granted Globus summary judgment of noninfringement with respect to one patent. Before trial, Flexuspine submitted a proposed verdict form including a “stop instruction” that conditioned the submission of invalidity on an affirmative finding of infringement. The court's intended final jury instructions and final verdict form adopted Flexuspine’s proposed form, with the stop instruction. During a formal charge conference, the court reviewed the final instructions. Neither party objected to a question concerning invalidity or the stop instruction. The court specifically inquired as to the propriety of the instruction. After the jury returned a verdict, the court determined that the jury had not filled out the verdict form correctly. The jury answered “no” to Question 1 regarding infringement but did not heed the stop instruction and continued, indicating the claims were invalid and submitting “0” for the damages. Neither party objected to sending the jury back to re-execute the form. The second verdict found the claims not infringed and left the other questions unanswered. Globus then lodged its first formal objection. The Federal Circuit affirmed that Globus did not infringe without addressing invalidity; denial of Globus’s Rule 59(e) motion requesting that the judgment include the jury’s invalidity verdict; and dismissal of Globus’s invalidity counterclaims without prejudice. View "Flexuspine, Inc. v. Gobus Medical, Inc." on Justia Law

Exmark sued Briggs & Stratton for infringement of a patent directed to a lawn mower having improved flow control baffles. .The court entered summary judgment that claim 1 was not invalid because the claim survived multiple reexaminations involving the same prior art and denied summary judgment of indefiniteness with respect to claim 1. A jury found that Briggs willfully infringed and awarded $24,280,330 in compensatory damages, which the court doubled as enhanced damages for willful infringement. The Federal Circuit vacated in part. The district court erred by determining invalidity solely on the fact that claim 1 survived multiple reexaminations; erred in denying a new trial on damages because Exmark’s damages expert failed to provide an adequate explanation for a 5% royalty rate for the patented feature relative to other conventional features of the accused products; and abused its discretion by limiting the evidence relevant to damages to prior art that had been commercialized, The district court's willfulness ruling did not comport with the Supreme Court’s 2016 decision in Halo Electronics, mandating that willfulness is to be determined by the jury regardless of whether Briggs’ defenses were objectively reasonable. The Federal Circuit affirmed the denial of summary judgment that claim 1 is indefinite and denial of Briggs’ laches defense. View "Exmark Manufacturing Co., Inc. v. Briggs & Stratton Power Group, LLC" on Justia Law

Finjan sued Blue Coat for infringement of patents directed to identifying and protecting against malware. Certain claims recite a system and method for providing computer security by attaching a security profile to a downloadable; others recite a system and method for providing computer security at a network gateway by comparing security profiles associated with requested files to the security policies of requesting users. Others recite a “policy-based cache manager” that indicates the allowability of cached files under a plurality of user security policies and relate to a system and method for using “mobile code runtime monitoring” to protect against malicious downloadables. A jury awarded Finjan $39.5 million for infringement, including $24 million for the 844 patent. The court concluded that the 844 patent is directed to patent-eligible subject matter under 35 U.S.C. 101. The Federal Circuit affirmed in part, upholding the subject matter eligibility determination as to the 844 patent and the jury’s finding of infringement of the 844 and 731 patents. Blue Coat was entitled to judgment of noninfringement for the 968 patent because the accused products do not perform the claimed “policy index” limitation. With respect to damages, the court affirmed the award for the 731 and 633 patents, vacated the award for the 968 patent, and, as to the 844 patent, agreed with Blue Coat that Finjan failed to apportion damages to the infringing functionality. View "Finjan, Inc. v. Blue Coat Systems, Inc." on Justia Law

Leapers makes rifle scopes, textured with “knurling,” allowing users to grip the products more easily and to make fine-tuned adjustments. Knurling can be found on many items, including door handles, coin edges, and bottle lids. Leapers asserts that its unique knurling pattern is distinctly “ornamental” and allows consumers to recognize Leapers as the item's source. Leapers had an exclusive manufacturing contract with the Nantong factory in China, which agreed to never disclose information related to the products. Leapers ended that relationship. The factory agreed to stop using technical specifications, product design and packaging design documents related to Leaper and to destroy parts, accessories, and attachments related to Leaper’s products. Factory manager Shi formed a company (Trarms) and began selling rifle scopes and manufacturing rifle scopes for other sellers, including Defendant. Leaper’s sued, alleging trade dress infringement of the knurling design under the Lanham Act, 15 U.S.C. 105. Shi refused to testify, asserting the Fifth Amendment. Trarms refused to provide an alternate witness. The court granted Defendant summary judgment, reasoning that Leapers could not prove essential elements: nonfunctionality and secondary meaning, regardless of Shi 's testimony. The Sixth Circuit vacated. A jury could reasonably conclude that the design is purely ornamental and nonfunctional; that it does not represent a technological advancement; and that exclusive use of Leaper’s design would not put competitors at a significant, non-reputation related disadvantage. View "Leapers, Inc. v. SMTS, LLC" on Justia Law

This case arose from a dispute over the ownership of the mark "The Commodores." Defendant appealed an order granting judgment as a matter of law to CEC and converting a preliminary injunction into a permanent one against defendant and his corporation, Fifth Avenue. The Eleventh Circuit held that it lacked jurisdiction to review the denial of the motion to dismiss and that the district court did not abuse its discretion in excluding expert testimony from an attorney who proffered only legal conclusions; when defendant left the band, he left behind his common-law rights to the marks and those rights remained with CEC; the scope of the injunction was not impermissibly broad; defendant's arguments about the validity of the federal registration of the marks were irrelevant to this determination; and defendant did not establish any affirmative defenses. Accordingly, the court affirmed the judgment. View "Commodores Entertainment Corp. v. McClary" on Justia Law

Oracle filed a copyright infringement suit against Rimini, a provider of third-party support for Oracle's enterprise software, and Rimini's CEO. The Ninth Circuit affirmed partial summary judgment and partial judgment after trial on Oracle's claims that Rimini infringed its copyright by copying under the license of one customer for work performed for other existing customers or for unknown or future customers; reversed judgment after trial in regard to Oracle's claims under the California Comprehensive Data Access and Fraud Act (CDAFA), the Nevada Computer Crimes Law (NCCL), and California’s Unfair Competition Law (UCL), because taking data from a website, using a method prohibited by the applicable terms of use, when the taking itself generally was permitted, did not violate the CDAFA or the NCCL; reversed the determination that Rimini violated the UCL; reduced the award of damages based on Rimini's alleged violation of the CDAFA and NCCL; affirmed the award of prejudgment interest on the copyright claims; reversed the permanent injunction based on violations of the CDAFA; vacated the permanent injunction based on copyright infringement; reversed with respect to the CEO's liability for attorneys' fees; vacated the fee award and remanded for reconsideration; reduced the award of taxable costs; and affirmed the award of non-taxable costs. View "Oracle USA v. Rimini Street" on Justia Law

The 215 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. In inter partes review, the Patent Trial and Appeal Board found that various claims were anticipated. The Federal Circuit initially affirmed, holding that whether the petition for review was time-barred was not subject to judicial review. On rehearing, en banc, the Federal Circuit remanded. The Patent and Trademark Office is prohibited from instituting inter partes review if the petition requesting that review is filed more than one year after the petitioner, real party in interest, or privy of the petitioner is served with a complaint for patent infringement, 35 U.S.C. 315(b); under section 314(d) the determination “whether to institute an inter partes review under this section shall be final and nonappealable.” The court, noting the strong presumption in favor of judicial review of agency actions, found no clear and convincing indication of congressional intent to prohibit review of time-bar determinations under section 315(b). In finding such rulings appealable, the court overruled its own precedent. View "Wi-Fi One, LLC v. Broadcom Corp." on Justia Law

Monsanto’s patent, titled “Soybean Seed and Oil Compositions and Methods of Making Same,” claims a two-step process for crossing (mating) two parent soybean lines to produce soybean seeds with a modified fatty acid profile. The patent describes “the combination of transgenes that provide both moderate oleic acid levels and low saturated fat levels with soybean germplasm that contains mutations in soybean genes that confer low linolenic acid phenotypes.” After granting DuPont’s request for inter partes review, the Patent Trial and Appeal Board affirmed the rejection of several claims as anticipated, 35 U.S.C. 102(b), and one as obvious over prior art (Booth). The Federal Circuit affirmed. The PTAB “reasonably interpreted” Booth’s parent line containing 4% linolenic acid “to be within the scope of ‘about 3%,’” as recited in claim 1 of the patent. Substantial evidence supported the finding that Booth “necessarily includes” step (b) of the asserted claims. View "Monsanto Technology LLC v. E.I. DuPont de Nemours" on Justia Law