Justia Intellectual Property Opinion Summaries

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

Plaintiffs in this case—Sherman Nealy and Music Specialist, Inc.—filed this copyright action seeking, among other things, damages for infringement they allege occurred more than three years before they filed this lawsuit. The defendants—Warner Chappell Music, Inc. and Artist Publishing Group, LLC—contend that Plaintiffs cannot recover damages for anything that happened more than three years before they filed suit.  The district court certified the following question for interlocutory appellate review: whether damages in this copyright action are limited to a three-year lookback period as calculated from the date of the filing of the complaint.   The Eleventh Circuit answered that question in the negative. The court wrote that given that the plain text of the Copyright Act does not support the existence of a separate damages bar for an otherwise timely copyright claim, the court held that a copyright plaintiff with a timely claim under the discovery rule may recover retrospective relief for infringement that occurred more than three years prior to the filing of the lawsuit. View "Sherman Nealy, et al. v. Warner Chappell Music, Inc., et al." on Justia Law

Jazz holds an approved New Drug Application (NDA) for the narcolepsy drug Xyrem®, with the active ingredient, GHB, which exerts a heavily sedating effect and is prone to misuse; it is known as a date rape drug. The FDA conditioned approval of Jazz’s NDA upon the development of Risk Evaluation and Mitigation Strategies (REMS). The 963 patent relates to Jazz’s distribution system, which controls access to the drug through a central pharmacy and computer database, tracking prescriptions, patients, and prescribers. Jazz listed the 963 patent in the Orange Book as covering a method of using Xyrem. The patent’s claims expired in 2022. In 2020, Avadel submitted an NDA for the GHB-based drug FT218. Unlike Xyrem, FT218 is dosed once nightly. FT218’s REMS describe multiple pharmacies and databases for ensuring proper drug handling. Although Avadel had filed an NDA, not an Abbreviated NDA, the FDA required Avadel to file a certification that to the best of its knowledge, the 963 patent’s single-pharmacy system was invalid, unenforceable, or would not be infringed by its product.Jazz sued Avadel for infringement. Avadel sued the FDA for requiring certification; the suit was dismissed because 21 U.S.C. 355(c)(3)(D)(ii)(I) provided Avadel with a separate adequate remedy. Avadel responded to Jazz’s infringement assertions, seeking de-listing of the 963 patent. The Federal Circuit affirmed the district court order that Jazz request de-listing. The 963 patent claims a system and does not claim an approved method of use. View "Jazz Pharmaceuticals, Inc. v. Avadel CNS Pharmaceuticals, Inc" on Justia Law

Hawk’s patent, titled “high-quality, reduced data rate streaming video product and monitoring system,” relates to a method of viewing multiple simultaneously displayed and stored video images on a remote viewing device of a video surveillance system. Hawk sued Castle for patent infringement based on Castle’s use of security surveillance video operations in its grocery stores. Castle argued that the asserted claims were directed to ineligible subject matter and invalid under 35 U.S.C. 101.The Federal Circuit affirmed the dismissal of the suit. The patent claims were directed to the abstract idea of storing and displaying video and failed to provide an inventive step that transformed that abstract idea into a patent-eligible invention. The claims do not disclose performing any “special data conversion” or otherwise describe how the alleged goal of “conserving bandwidth while preserving data” is achieved. Nor do the claims (or specification) explain “what th[e] [claimed] parameters are or how they should be manipulated.” The claims, “read in light of the specification, do not show a technological improvement in video storage and display because the limitations can be implemented using generic computer elements.” The “specification and claims do not explain or show how the monitoring and storage is improved, except by using already existing computer and camera technology.” View "Hawk Technology Systems, LLC sued Appellee Castle Retail, LLC" on Justia Law