Justia Intellectual Property Opinion Summaries

Ironburg sued Valve for infringing its patent, entitled “Controller for Video Game Console.” In 2021, after much pretrial litigation and a change of venue, a trial was held, with each juror attending remotely through videoconferencing technology. The parties and the court agreed that each juror should have the accused product in hand. The device was mailed to each juror. Before trial, the court rejected invalidity challenges based on the purported indefiniteness of several claim terms and held that Valve was estopped from pressing its prior-art-based invalidity defenses as a consequence of Valve’s partially instituted inter partes review. The jury returned a verdict of willful infringement and assessed damages ($4 million). The court denied Ironburg’s motion to enhance damages.The Federal Circuit affirmed that the terms “elongate member” and “extends substantially the full distance between the top edge and the bottom edge” are not indefinite; the claims are infringed; the infringement was willful; damages will not be enhanced; and Valve is estopped from litigating the prior-art grounds on which IPR was requested but not instituted. The court vacated the holding that Valve was estopped from litigating its later-discovered invalidity grounds; the court erred in placing the burden on Valve concerning whether a skilled searcher conducting a diligent search reasonably would have been expected to discover certain grounds for invalidating claims. View "Ironburg Inventions Ltd. v. Valve Corp." on Justia Law

Sullivan registered copyrights for two “illustration collections,” comprising 33 individual illustrations, and sued Flora for infringing those copyrights, 17 U.S.C. 504(c)(1). A jury found that Flora willfully infringed Sullivan’s copyrights and awarded statutory damages for each of the individual illustrations infringed ($3,600,000). The Seventh Circuit rejected the court's test for calculating statutory damages, which focused exclusively on how the illustrations were copyrighted. The court adopted the “independent economic value test”: “A protected work has standalone value if the evidence shows that work has distinct and discernable value to the copyright holder.” On remand, the district court denied Flora’s request to reopen discovery; held that Flora had waived arguments challenging the independent economic value of certain illustrations; granted Sullivan summary judgment; and entered the same verdict, finding that the 33 illustrations constitute separate works.The Seventh Circuit reversed, finding that, in entering summary judgment, the district court violated the remand mandate and improperly weighed the evidence. The case must proceed to trial on the question of damages. The scope of the remand was narrow and limited to determining whether Sullivan’s illustrations “constitute 33 individual works or instead are parts of two compilations (corresponding with the two advertising campaigns in which Flora used the illustrations).” At trial, Flora is not prohibited from “nitpicking” specific aspects of the 33 illustrations to show that they lack independent economic value. Flora is not permitted to relitigate the issues of infringement or joint authorship. View "Sullivan v. Flora, Inc." on Justia Law

Reynolds filed a complaint at the International Trade Commission alleging that Philip Morris violated Section 337 of the Tariff Act, 19 U.S.C. 1337, through the importation and sale of tobacco products (the IQOS line of electronic nicotine delivery system products) that infringed certain claims of the 123 and 915 patents. The patents are directed to electrically powered “smoking articles” that heat tobacco instead of burning it, providing an inhalable substance in vapor or aerosol form. After an investigation, the Commission barred Philip Morris and its affiliates from importing products infringing the asserted patents.The Federal Circuit affirmed. The Commission satisfied its Section 337 duty to “consult with” the Department of Health and Human Services and asked interested government agencies, including the FDA, to provide written submissions on the public interest factor. The Commission provided a sufficient basis for the issuance of an exclusion order. Philip Morris’s argument that Reynolds’ products that had not received FDA authorization are precluded from consideration by Section 337 for purposes of its domestic industry requirement has no merit. The court also upheld findings of non-obviousness and infringement concerning the patents. View "Philip Morris Products S.A. v. International Trade Commission" on Justia Law

The 853 patent relates to universal remotes, specifically to a universal control engine that facilitates communication between a controlling device (i.e., a remote) and intended target appliances (e.g., a TV, a DVD player, a sound system, etc.). Although the specification of the patent acknowledges that universal remotes were known at the time of the invention, it states that the proliferation of new communication methods raises the potential for “confusion, misoperation, or other problems,” particularly because the preferred communication method for transmitting commands “may vary by both appliance and by the function to be performed.”. The 853 patent’s purported invention is the ability to reliably use different communication methods that enable a single remote control to provide commands to a variety of target appliances, according to the optimal method of communication for each target appliance and command.The Patent Trial and Appeal Board held that the patent’s claims had not been proven unpatentable as obvious. The Federal Circuit affirmed. The Board thoroughly considered the evidence of record and found that the skilled artisan would not have understood the prior patent’s listing of remote command codes to correspond to the claim limitation at issue. The Board’s finding in this close factual dispute is supported by substantial evidence. View "Roku, Inc. v. Universal Electronics, Inc." on Justia Law

AlterWAN sued Amazon for infringement of two patents concerning improvements to implementing wide area networks (WANs) over the Internet. The patents share a common specification that describes two core problems with WANs: latency (delay) due to uncontrolled “hops” from one node to another while the data packet is en route to its destination and the lack of security for data transmitted over the Internet. The patents purport to address those problems with a “private tunnel” that provides “preplanned high bandwidth, low hop-count routing paths between pairs of customer sites.” The parties disputed claim construction of the terms “non-blocking bandwidth” and “cooperating service provider.”The district court agreed with Amazon’s constructions: “bandwidth that will always be available and will always be sufficient,” even if the Internet is down, and changed its construction of “cooperating service provider” to be a “service provider that agrees to provide non-blocking bandwidth.” The Federal Circuit vacated a stipulated judgment of non-infringement that provided that Amazon does not infringe under the court’s constructions of the two terms. Under the circumstances of this case, the stipulation does not provide sufficient detail to the resolution of the claim construction issues presented on appeal. View "AlterWAN, Inc. v. Amazon.com, Inc." on Justia Law

Plaintiffs, Apple and four other companies, have repeatedly been sued for patent infringement and thereafter petitioned the Patent and Trademark Office (PTO) to institute inter partes reviews (IPRs), under 35 U.S.C. 311–319, with unpatentability challenges to patent claims that were asserted against them in court. They sued the PTO under the Administrative Procedure Act (APA), 5 U.S.C. 701– 706, challenging instructions issued to the Patent Trial and Appeal Board concerning how to exercise, under delegation by the Director, the Director’s discretion whether to institute a requested IPR. Plaintiffs assert that the instructions are likely to produce too many denials.The district court dismissed the APA action, finding that the Director’s instructions were made unreviewable by 35 U.S.C. 314(d): “The determination by the Director whether to institute an inter partes review under [section 314] shall be final and nonappealable.” The Federal Circuit affirmed the unreviewability dismissal of plaintiffs’ challenges to the instructions as being contrary to the statute and arbitrary and capricious. No constitutional challenges are presented. The court reversed the unreviewability dismissal of the challenge to the instructions as having been improperly issued because they had to be, but were not, promulgated through notice-and-comment rulemaking under 5 U.S.C. 553. Apple had standing to present that challenge. View "Apple Inc. v. Vidal" on Justia Law

PACT’s 908 patent relates to multiprocessor systems and how processors in those systems access data. Multiprocessor systems typically store data in several places: a main memory, where all of a system’s data is stored, and various cache memories, where smaller pieces of that same data are stored. Cache memories are closer to the processors, allowing the processors quicker access to the data available in a given cache. A system can use multiple cache levels, where a primary cache is closer to the processer but can store less data than a further-away secondary cache. The use of multiple cache memories can pose problems for cache coherency.In seeking inter partes review (IPR), Intel asserted that the prior art taught a multiprocessor system that used the separated cache and interconnect system as described in the patent. The Patent Trial and Appeal Board determined that Intel had failed to establish obviousness in light of prior art. The Federal Circuit reversed. The Board’s finding that prior art did not teach the segment-to-segment limitation and its rejection of Intel’s “known-technique” rationale for a motivation to combine lacked substantial evidence. View "Intel Corp. v. PACT XPP Schweiz AG" on Justia Law

Springboards for Education (“Springboards”) brought trademark infringement claims against McAllen Independent School District (“MISD”), a public school district in Texas, and IDEA Public Schools (“IDEA”), a nonprofit organization operating charter schools in Texas. The district court dismissed the suit against IDEA, concluding it was an arm of the state and therefore shared Texas’s sovereign immunity. As for MISD, the court found that it did not have sovereign immunity but ultimately granted summary judgment in MISD’s favor.   The Fifth Circuit affirmed the district court’s judgment for MISD. The court explained that while it disagrees with the district court’s conclusion that IDEA has sovereign immunity, the court affirmed the judgment for IDEA on alternate grounds. The court reasoned that in determining whether an entity is an arm of the state, the court balances the so-called “Clark factors,” which our court first articulated decades ago in Clark v. Tarrant County. Those factors are: (1) whether state statutes and case law view the entity as an arm of the state; (2) the source of the entity’s funding; (3) the entity’s degree of local autonomy; (4) whether the entity is concerned primarily with local, as opposed to statewide, problems; (5) whether the entity has the authority to sue and be sued in its own name; and (6) whether it has the right to hold and use property. The court held that factors one and three favor sovereign immunity while factors two, four, five, and six do not. The court concluded that IDEA is not an arm of the state and does not share in Texas’s sovereign immunity. View "Springboards v. IDEA Public Schools" on Justia Law

Gilead filed an inter partes review (IPR) petition challenging claims of the University of Minnesota’s 830 patent, directed to phosphoramidate prodrugs of nucleoside derivatives that prevent viruses from reproducing or cancerous tumors from growing. The U.S. Patent and Trademark Office Patent Trial and Appeal Board found certain claims unpatentable as anticipated by the asserted prior art.The Federal Circuit affirmed. There is no “ipsis verbis” written description disclosure sufficient to support the patent’s claims, 35 U.S.C. 112. The court referred to “a compendium of common organic chemical functional groups, yielding a laundry list disclosure of different moieties for every possible side chain or functional group. Indeed, the listings of possibilities are so long, and so interwoven, that it is quite unclear how many compounds actually fall within the described genera and subgenera.” The court found no violations of the Administrative Procedures Act and rejected the University argument that sovereign immunity barred IPR proceedings against it. View "Regents of the University of Minnesota v. Gilead Sciences, Inc." on Justia Law

Appellants are a Swiss consortium, Interprofession du Gruyère (“IDG”), and a French consortium, Syndicat Interprofessionel du Gruyère (“SIG”) (together, “the Consortiums”), who believe that gruyere should only be used to label cheese that is produced in the Gruyère region of Switzerland and France. Seeking to enforce this limitation in the United States, the Consortiums filed an application with the United States Patent and Trademark Office (“USPTO”) to register the word “GRUYERE” as a certification mark. Appellees, the U.S. Dairy Export Council, Atalanta Corporation, and Intercibus, Inc. (together, “the Opposers”), opposed this certification mark because they believe the term is generic and, therefore, ineligible for such protection. The USPTO’s Trademark Trial and Appeal Board (“TTAB”) agreed with the Opposers and held that “GRUYERE” could not be registered as a certification mark because it is generic. The Consortiums filed a complaint challenging the TTAB’s decision in the United States district court. The district court granted summary judgment for the Opposers on the same grounds as articulated in the TTAB’s decision.   The Fourth Circuit affirmed and concluded that that the term “GRUYERE” is generic as a matter of law. The court explained that the Consortiums have not brought evidence bearing on whether, at an earlier point in history, the term “GRUYERE” was in common use in the United States. But even assuming that was the case, this argument still fails. In sum, the Consortiums cannot overcome what the record makes clear: cheese consumers in the United States understand “GRUYERE” to refer to a type of cheese, which renders the term generic. View "Interprofession du Gruyere v. U.S. Dairy Export Council" on Justia Law