Justia Intellectual Property Opinion Summaries

OptiNose AS and OptiNose, Inc. (collectively, OptiNose) agreed to license its Exhalation Delivery Systems (“EDS”) technology to Currax Pharmaceuticals, LLC. The parties limited the License Agreement to a product which used a powder EDS device to deliver the migraine treatment drug sumatriptan into the nasal cavity. The product covered by the license, a powder EDS device and sumatriptan together, was trade-named ONZETRA(R) XSAIL(R). Currax had a limited right to sell the sumatriptan powder EDS device (the “Product”) in Canada, the United States, and Mexico. OptiNose retained the right to sell EDS devices: (1) with powders and liquids other than sumatriptan around the world; and (2) EDS devices with sumatriptan in every area other than those three countries. OptiNose also gave Currax the “first right” to “prosecute and maintain” certain patents related to the Product, listed in the License Agreement as the Product Patents. During Currax’s prosecution of the ’009 Patent Application, the U.S. Patent and Trademark Office (“USPTO”) rejected claims because they were not “patentably distinct” from the claims in another Product Patent. To overcome the patent office rejection, Currax needed to file a terminal disclaimer over the issued Product Patent. Currax needed a power of attorney from OptiNose to file a terminal disclaimer. OptiNose refused to provide it. Currax filed suit against OptiNose in the Court of Chancery, seeking an order of specific performance requiring OptiNose to grant it a power of attorney. OptiNose counterclaimed for a declaration that the License Agreement did not require it to provide a power of attorney. According to OptiNose, Currax’s right to prosecute Product Patents did not include a power of attorney, and, in any event, Currax could not file a terminal disclaimer without OptiNose’s advance approval, which it had not given. The Court of Chancery granted Currax’s motion for judgment on the pleadings, finding the License Agreement OptiNose to provide a power of attorney to prosecute the ’009 Application. On appeal, the parties focused primarily on OptiNose’s advance approval right, and whether a terminal disclaimer “relate[s] to or characterize[s] the Device component of the Patent or other OptiNose intellectual property.” The Delaware Supreme Court affirmed the Court of Chancery’s judgment that filing a terminal disclaimer in the ’009 Application prosecution was included in the rights OptiNose gave to Currax under the License Agreement. View "Optinose AS v. Currax Pharmaceuticals, LLC" on Justia Law

A 2019 Arizona statute prohibits auto dealer management system (DMS) providers from “tak[ing] any action by contract, technical means or otherwise to prohibit or limit a dealer’s ability to protect, store, copy, share or use” data the dealer has stored in its DMS. DMS providers may not impose charges “beyond any direct costs incurred” for database access. DMS providers may not prohibit the third parties contracted by the dealers “from integrating into the dealer’s data system,” nor may they otherwise “plac[e] an unreasonable restriction on integration.” DMS providers must “[a]dopt and make available a standardized framework for the exchange, integration, and sharing of data” with authorized integrators.The Ninth Circuit affirmed the denial of a preliminary injunction against the statute’s enforcement. There is no conflict preemption; the statute and the federal Copyright Act are not irreconcilable. The statute does not conflict with 17 U.S.C. 106(1), which grants the owner of a copyrighted work the exclusive right “to reproduce the copyrighted work in copies.” The plaintiffs forfeited their claim that the statute impaired their contracts with third-party vendors and did not show that the statute impaired their ability to discharge their contractual duty to keep dealer data confidential. The statute was reasonably drawn to serve important public purposes of promoting consumer data privacy and competition and amounted to neither a per se physical taking nor a regulatory taking. View "CDK Global LLC v. Brnovich" on Justia Law

In 2019, Mallet learned that Bundy was its newest competitor in the sale of baking release agents, the lubricants that allow baked goods to readily separate from the containers in which they are made. Bundy was well-known for other commercial baking products when it launched a new subsidiary, Synova, to sell baking release agents. Synova hired two Mallet employees, both of whom had substantial access to Mallet’s proprietary information. That information from Mallet helped Synova rapidly develop, market, and sell release agents to Mallet’s customers.Mallet sued, asserting the misappropriation of its trade secrets. The district court issued a preliminary injunction. restraining Bundy, Synova, and those employees from competing with Mallet. The Third Circuit vacated and remanded for further consideration of what, if any, equitable relief is warranted and what sum Mallet should be required to post in a bond as “security … proper to pay the costs and damages sustained by any party found to have been wrongfully enjoined or restrained.” A preliminary injunction predicated on trade secret misappropriation must adequately identify the allegedly misappropriated trade secrets. If the district court decides that preliminary injunctive relief is warranted, the injunction must be sufficiently specific in its terms and narrowly tailored in its scope. View "Mallet & Co., Inc. v. Lacayo" on Justia Law

The district court found HOTF’s patent, which relates to a “method and apparatus for the continuous preparation of heated water flow for use in hydraulic fracturing” (fracking), unenforceable due to inequitable conduct. The court found by clear and convincing evidence that the patent would not have been issued but for HOTF’s deliberate decision to withhold information from the Patent Office information about substantial on-sale and public uses of the claimed invention before the patent’s critical date, and that it withheld with an intent to deceive. The jury found that HOTF tortiously interfered with Energy’s business when it represented in bad faith that it held a valid patent. The court denied attorneys’ fees under 35 U.S.C. 285. The Federal Circuit remanded on that issue alone.On remand, the district court found the case to be exceptional and awarded attorneys’ fees. The Federal Circuit affirmed, citing findings that “HOTF litigated the case in an unreasonable manner by persisting in its positions,” that “[t]he number of undisclosed prior sales and the amounts HOTF received from those prior sales constitute affirmative egregious conduct” and that HOTF “pursued claims of infringement without any apparent attempt to minimize litigation costs” “despite [its] knowledge that its patent was invalid.” View "Energy Heating, LLC v. Heat On-The-Fly, LLC" on Justia Law

Mobility’s patent, titled “System, Apparatus, and Methods for Proactive Allocation of Wireless Communication Resources,” is “generally directed to the allocation of communication resources in a communications network.” The Patent Trial and Appeal Board determined that five claims of the patent were unpatentable as obvious.Mobility sought a remand under the Supreme Court's 2021 Arthrex decision, challenged the merits of the Board’s decision, and raised for the first time several constitutional challenges, including a challenge to the structure of the Board. Mobility argued that Board members have an interest in instituting AIA proceedings to generate fees to fund the agency and ensure future job stability and that individual administrative patent judges (APJs) have a personal financial interest in instituting AIA proceedings in order to earn better performance reviews and bonuses.Federal Circuit held that Mobility’s constitutional arguments are without merit. The President, not the agency, submits the budget, and Congress sets the USPTO budget and controls whether the USPTO has access to surplus funds. A remand of the “Appointments Clause” challenge is required under the Arthrex decision to allow the Acting Director to review the final written decision of the APJ panel pursuant to newly established USPTO procedures. View "Mobility Workx, LLC v. Unified Patents, LLC" on Justia Law

Traxcell sued Sprint and Verizon for infringement of four patents related to self-optimizing wireless networks and to navigation technology. All share a specification and a 2001 priority date. After claim construction and discovery, the district court granted summary judgment for Sprint and Verizon. Summary judgment was based on several grounds. One claim was not infringed because Traxcell had not met the “way” prong of the function-way-result test in asserting an infringing structural equivalent to a means-plus-function limitation nor had Traxcell shown a genuine dispute about either the “location” limitation or the “first computer” and “computer” limitations in other claims. The district court held one claim indefinite for failure to disclose sufficient structure for a means-plus-function limitation. Traxcell could not show that the accused technology determined a wireless device’s location on the network itself, as claimed, rather than on the device.The Federal Circuit affirmed, upholding the district court’s claim construction. Under that construction, Traxcell failed to show a genuine issue of material fact as to infringement and that several of Traxcell’s claims are indefinite. View "Traxcell Technologies, LLC v. Sprint Communications Co." on Justia Law

McKeon has sold “MACK’S” earplugs to retail consumers since the 1960s. In the 1980s, Honeywell's predecessor began marketing and selling MAX-brand earplugs to distributors. The brand names are phonetically identical. In 1995, McKeon sued. The parties entered a settlement agreement that the district court approved by consent decree. To prevent customer confusion, Honeywell agreed not to sell its MAX-brand earplugs into the “Retail Market” but could continue to sell its earplugs in “the Industrial Safety Market and elsewhere." The agreement and the consent decree never contemplated the internet. In 2017, McKeon complained about sales of MAX-brand earplugs on Amazon and other retail websites.The district court ruled in favor of McKeon. The Sixth Circuit affirmed and remanded. Laches is available to Honeywell as an affirmative defense but does not apply to these facts. Parties subject to consent decrees cannot scale their prohibited conduct over time, using minor undetected violations to justify later larger infringements. Honeywell did not establish that McKeon should have discovered the breaching conduct before Honeywell drastically increased online sales. McKeon’s interpretation of the consent decree is the better reading. Concluding that Amazon is a “retail establishment” makes sense given the parties’ intent. View "McKeon Products, Inc. v. Howard S. Leight & Associates, Inc." on Justia Law

In 2012, Samsung contacted Kannuu, an Australian start-up that develops media-related products, inquiring about Kannuu’s remote control search-and-navigation technology. The companies entered into a non-disclosure agreement (NDA) to protect confidential business information while engaging in discussions. The NDA explains: [N]othing contained in this Agreement will be construed as granting any rights to the receiving party, by license or otherwise, to any of the Confidential Information disclosed. A forum selection clause identified New York for purposes of choice of laws principles and as the venue for any proceedings. In 2013, the parties ceased communications without reaching an agreement.Six years later, Kannuu sued Samsung, alleging patent infringement and breach of the NDA. Samsung filed petitions for inter partes review, alleging that all claims of the asserted patents are unpatentable as obvious and not novel. Kannuu argued that Samsung violated the NDA’s forum selection clause in filing for such review. The Patent Trial and Appeal Board denied IPR for three patents (on the merits) but instituted review for two asserted patents. The Federal Circuit affirmed the denial of a preliminary injunction to compel Samsung to seek dismissal of the IPRs. IPR does not relate to the Agreement itself and is not subject to the NDA. View "Kannuu Pty Ltd. v. Samsung Electronics Co., Ltd." on Justia Law

The Federal Circuit reversed the district court's entry of judgment on the pleadings holding that the asserted claims of CosmoKey's U.S. Patent No. 9,246,903 are ineligible under 35 U.S.C. 101. The district court determined that the claims were directed to abstract ideas and fail to provide an inventive concept.The court concluded that the claims of the '903 patent are patent-eligible under the Alice step two determination for patent eligibility because they recite a specific improvement to a particular computer-implemented authentication technique. In this case, the abstract describes a method of authenticating the identity of a user performing a transaction at a terminal (e.g., a computer), including activating an authentication function on the user's mobile device. The court explained, as the specification itself makes clear, that the claims recite an inventive concept by requiring a specific set of ordered steps that go beyond the abstract idea identified by the district court and improve upon the prior art by providing a simple method that yields higher security. View "Cosmokey Solutions GMBH & Co. v. Duo Security LLC" on Justia Law

Acceleration Bay appealed the district court's decisions construing certain claim terms in Acceleration Bay's four asserted patents, U.S. Patent Nos. 6,701,344, 6,714,966, 6,910,069, and 6,920,497, and granting 2K Sports, Rockstar Games, and Take-Two Interactive Software's motion for summary judgment of non-infringement. In this case, the patents disclose a networking technology that allegedly improves upon pre-existing communication techniques because it is "suitable for the simultaneous sharing of information among a large number of the processes that are widely distributed."The Federal Circuit concluded that Acceleration Bay's appeal is moot with respect to the '344 and '966 patents, and thus dismissed the appeal in part for lack of jurisdiction. The court explained that Acceleration Bay has forfeited any challenge to the district court's grant of summary judgment of non-infringement on the basis that the accused products fail to satisfy the "mregular" limitation of the '344 and '966 patents' asserted claims.The court affirmed the district court's claim construction on the '069 patent and its grant of summary judgment of non-infringement as to the '069 and '497 patents. Even considering Acceleration Bay's arguments regarding the construction of the term "fully connected portal computer," the court concluded that the district court's grant of summary judgment would remain intact because the district court interpreted a separate term in the '069 patent's asserted claims to include the "m-regular" limitation. Finally, in regard to the '497 patent, the court rejected Accleration Bay's contention that it has asserted a viable "final assembler" theory of direct infringement based on Centrak, Inc. v. Sonitor Technologies, Inc., 915 F.3d 1360 (Fed. Cir. 2019). View "Acceleration Bay LLC v. 2K Sports, Inc." on Justia Law