Justia Intellectual Property Opinion Summaries

In 2011, PersonalWeb sued Amazon in Texas, alleging that Amazon’s S3 technology infringed PersonalWeb’s “True Name” patents. After the court construed the claim terms, PersonalWeb stipulated to dismissal. In 2018, PersonalWeb asserted the same patents against 85 Amazon customers for their use of Amazon S3. Amazon intervened and filed a declaratory judgment action. The customer cases and Amazon’s declaratory judgment action were consolidated. PersonalWeb represented that if it lost its “Twitch” customer case, it could not prevail in the other customer cases. The court stayed the other cases; the Twitch case and Amazon’s declaratory judgment action proceeded. PersonalWeb counterclaimed against Amazon, alleging that Amazon S3 infringed its True Name patents and accused another Amazon product, CloudFront, of infringement.The Federal Circuit affirmed partial summary judgment of non-infringement of the S3 product, based on claim preclusion and summary judgment of non-infringement as to CloudFront because, under the earlier claim construction, PersonalWeb admittedly could not prove infringement. The district court granted Amazon and Twitch attorneys’ fees and costs, 35 U.S.C. 285, determining that the case was exceptional because PersonalWeb’s claims related to Amazon S3 were objectively baseless in light of the Texas Action; PersonalWeb frequently changed positions; PersonalWeb unnecessarily prolonged litigation after claim construction foreclosed its infringement theories; PersonalWeb’s positions regarding the customer cases were unreasonable; and PersonalWeb submitted declarations that it should have known were not accurate. The Federal Circuit affirmed an award of $5,401,625.06, including $5,187,203.99 in attorneys’ fees. View "In re PersonalWeb Techs., LLC" on Justia Law

Lai, an engineer, had access to Applied’s trade secrets and participated in highly confidential meetings. Mattson, Applied's direct competitor, recruited 17 Applied employees. Lai accepted a job with Mattson. Before his last day at Applied, Lai accessed proprietary information from Applied’s cloud-based storage system and sent e-mails attaching highly confidential Applied documents—many clearly marked as such—to his personal email accounts. He signed a separation certificate stating he had not retained any Applied information and confirmed this in two exit interviews. After starting his new job, Lai logged into his personal email accounts on his Mattson computer. Lai claims never disclosed any Applied information to Mattson. Mattson denies any knowledge of Lai’s actions.Applied sued Mattson and Lai, citing the Uniform Trade Secrets Act (Civ. Code 3426) and breach of Lai’s employment agreement. Lai then deleted the emails he had sent to one account, and, after communicating with Mattson’s lawyers, downloaded a confidential Applied document to his Mattson laptop, deleting it a moment later. Mattson put Lai on leave. cut off his access to his personal email accounts. and sequestered his iPhone and computers. The defendants moved to compel arbitration based on a provision in the Applied-Lai employment contract. The court of appeal affirmed a preliminary injunction prohibiting the defendants from accessing or using Applied’s confidential information and an order compelling arbitration as to Lai. Mattson, a non-party, is not entitled to arbitration. The litigation should be stayed pending arbitration. View "Mattson Technology, Inc. v. Applied Materials, Inc." on Justia Law

Choreographer Kyle Hanagami claimed that Epic Games, Inc., the creator of the videogame Fortnite, infringed the copyright of a choreographic work when the company created and sold a virtual animation, known as an “emote,” depicting portions of the registered choreography. The district court dismissed his action under the Copyright Act and remanded for further proceedings on claims of direct and contributory infringement of a choreographic work.   The Ninth Circuit reversed. The panel held that, under the “extrinsic test” for assessing substantial similarity, Hanagami plausibly alleged that his choreography and Epic’s emote shared substantial similarities. The panel held that, like other forms of copyrightable material such as music, choreography is composed of various elements that are unprotectable when viewed in isolation. What is protectable is the choreographer’s selection and arrangement of the work’s otherwise unprotectable elements. The panel held that “poses” are not the only relevant element, and a choreographic work also may include body position, body shape, body actions, transitions, use of space, timing, pauses, energy, canon, motif, contrast, and repetition. The panel concluded that Hanagami plausibly alleged that the creative choices he made in selecting and arranging elements of the choreography—the movement of the limbs, movement of the hands and fingers, head and shoulder movement, and tempo—were substantially similar to the choices Epic made in creating the emote. The panel held that the district court also erred in dismissing Hanagami’s claim on the ground that the allegedly copied choreography was “short” and a “small component” of Hanagami’s overall work. View "KYLE HANAGAMI V. EPIC GAMES, INC., ET AL" on Justia Law

The 549 and 175 patents disclose microcalorimeters, machines that measure the amount of energy absorbed or released during a chemical reaction between two compounds, specifically an isothermal titration calorimeter (ITC). Malvern’s 782 patent is unrelated to those patents. An examiner rejected various claims of the 782 patent (with an automated ITC) as anticipated by the 968 application, disclosing a prior art “manual ITC system.” The examiner understood the 968 application to disclose an automated ITC system but noted that because the 968 application and the 782 patent had a common assignee, the 968 application might not qualify as prior art under pre-America Invents Act, 35 U.S.C. 103(c)(1). The examiner then withdrew the rejection, finding that the 968 application did not count as prior art. After Malvern acquired the 549 and 175 patents, Malvern sought supplemental examination of the 175 patent under 35 U.S.C. 257.Malvern sued Waters for infringing the 549 and 175 patents. The district court construed the term “pipette guiding mechanism” as a “mechanism that manually guides the pipette assembly.” The Federal Circuit vacated. The claim language and the specification indicate that the term is used broadly in the 549 and 175 patents and refers to a mechanism that guides the pipette assembly either manually or automatically. Merely listing the 782 patent office actions in the IDS of the 175 patent supplemental examination was insufficient to inform the meaning of “pipette guiding mechanism” in unrelated patents. View "Malvern Panalytical Inc. v. TA Instruments-Waters LLC" on Justia Law

Divx’s 720 and 515 patents relate to a method for adaptive bitrate streaming of content on a playback device, such as a mobile phone or personal computer. “Adaptive bit rate streaming involves detecting the present streaming conditions (e.g., the playback device’s network bandwidth and video decoding capacity) in real-time and adjusting the quality of the streamed media accordingly.” On inter partes review, the Patent Trial and Appeal Board held that Netflix did not meet its burden of proving challenged claims in the patents unpatentable under 35 U.S.C. 103.Netflix’s appeal argued that the Board failed to address several arguments purportedly raised in Netflix’s petitions. The Federal Circuit found no error in how the Board understood Netflix’s petition arguments and affirmed. It is the petitioner’s burden to make clear when alternative arguments are being presented and to sufficiently expound on each one. The Board should not have to work as hard as Netflix wants to identify all arguments fairly presented in a petition. View "Netflix, Inc. v. DivX, LLC" on Justia Law

Cytonome/ST’s 439 patent, titled “Hydrodynamic Focusing Apparatus and Methods,” describes and claims a microfluidic device for use in processing particles of interest contained in a sample fluid. ABS petitioned the Patent and Trademark Office (PTO) for an inter partes review, 35 U.S.C. 311–19, of the patentability of five claims of the patent. The PTO’s Patent Trial and Appeal Board determined that ABS had not shown any of the challenged claims to be unpatentable.The Federal Circuit reversed in part and vacated in part. The Board erred in its claim construction of a limitation common to all challenged claims: “a fluid focusing region configured to focus the sample stream.” The “sample stream” is not limited to a singular-only sample stream. Under the correct claim construction, at least two claims are invalid as anticipated. View "ABS Global, Inc. v. Cytonome/ST, LLC" on Justia Law

Great Concepts applied to register “DANTANNA’S” as a mark for a “steak and seafood restaurant.” Its 764 Registration issued in 2005. Chutter’s predecessor-in-interest, Dan Tana, subsequently petitioned the Trademark Trial and Appeal Board to cancel the Registration, based on an alleged likelihood of confusion with Tana’s common law “DAN TANA” mark for restaurant services. The cancellation proceeding was suspended during a trademark infringement civil suit. In 2009, the district court granted Great Concepts summary judgment; the Eleventh Circuit affirmed. In December 2010, the Board dismissed Tana’s cancellation proceeding. Meanwhile, in March 2010, Great Concepts’ then-attorney, Taylor, filed with the Patent and Trademark Office (PTO) a combined declaration of use and declaration of incontestability, under the Lanham Act, 15 U.S.C. 1058, 1065, declaring “there is no proceeding involving said rights pending and not disposed of either in the U.S. Patent and Trademark Office or in the courts.” At the time, both the PTO cancellation proceeding and the Eleventh Circuit appeal were pending.In 2015, Chutter successfully petitioned the PTO for cancellation of Great Concepts’ “DANTANNA’S” mark based on Taylor’s 2010 false affidavit. The Federal Circuit reversed. The statute limits the Board’s authority to cancel registration of a mark to circumstances in which the “registration was obtained fraudulently,” but does not authorize cancellation of a registration when the incontestability status of that mark is “obtained fraudulently.” View "Great Concepts, LLC v. Chutter, Inc." on Justia Law

Cyntecsued Chilisin, alleging infringement of certain claims of patents directed to molded chokes and a method of manufacturing molded chokes. A choke is a type of inductor used to eliminate undesirable signals in a circuit. Chokes are found in most modern electronics that use batteries or a power supply. Before closing arguments, the district court granted judgment as a matter of law that the asserted claims were not invalid as obvious. The jury then found that Chilisin infringed the asserted claims and awarded the full amount of damages requested by Cyntec.The Federal Circuit affirmed the judgment of infringement as supported by substantial evidence, given the court’s construction of the “by means of” limitation and its jury instruction regarding that limitation. The court reversed the judgment of nonobviousness; given the evidence, a reasonable jury could have found the asserted claims obvious in view of prior art. The court vacated the award of lost profits; the expert’s importation calculations, were unreliable and speculative and his lost profits calculation stemmed from those calculations. View "Cyntec Company, Ltd. v. Chilisin Electronics Corp." on Justia Law

Corephonics’s Challenged Patents relate to dual-aperture camera systems and disclose techniques for using the images from both lenses when zooming while capturing video. The Patent Trial and Appeal Board found claims of the Challenged Patents unpatentable as obvious (35 U.S.C. 103) in inter partes reviews initiated by Apple.The Federal Circuit vacated, finding no procedural error in the Board’s handling of whether two prior references are analogous art. The Board’s handling of the analogous art issue neither markedly departed from the evidence and theories presented by the petition or institution decision nor unfairly surprised” Corephotonics. The Board’s determination that one of the references is analogous art is supported by substantial evidence; the reference is in the same field of endeavor as the Challenged Patents . The court remanded for the Board to explain why the other reference is (or is not) analogous art and how this finding affects its overall conclusion as to obviousness. The Board must decide whether it should consider Apple’s contention that, regardless of whether the reference is pertinent to the problem faced by the inventors, it is in the same field of endeavor as the Challenged Patents. View "Corephotonics, Ltd. v. Apple, Inc." on Justia Law

Finjan asserted the “Downloadable Patents” and the “ARB Patent,” among others in a patent infringement complaint as to SonicWall’s Gateways, Email Security products, and Capture Advanced Threat Protection, among other products. The Downloadable Patents relate to ways to protect network-connectable devices from undesirable downloadable operations.The district court agreed with SonicWall’s interpretation of the claims, concluding that the recited claim limitations “must be performed by the same computer.” Capture ATP and Gateways and Capture ATP and ES products involve separate, remote computers. The court granted summary judgment of noninfringement. Finjan unsuccessfully argued that there remained a factual dispute as to whether Capture ATP and its Gateway and Capture ATP and its ES products each work together to act as a unified computer system to form the steps as Finjan alleged. The district court excluded the apportionment opinions of Finjan’s technical expert and of Finjan’s damages expert based on that apportionment analysis.The Federal Circuit vacated in part. The district court based its judgment of invalidity on a collateral estoppel decision that has since been vacated. The court affirmed the summary judgment of noninfringement and the exclusion of Finjan’s expert analysis. View "Finjan LLC v. SonicWall, Inc." on Justia Law