Justia Intellectual Property Opinion Summaries

Oakwood hired Dr. Thanoo in 1997. As Oakwood's Senior Scientist, he signed confidentiality agreements. Thanoo designed Oakwood’s microsphere process technology. Oakwood invested more than $130 million and two decades in its Microsphere Project and developed the “Leuprolide Products,” which are bioequivalent to Lupron Depot®. Aurobindo contacted Oakwood to discuss collaboration. Some of Oakwood’s trade secret information was shared under a confidentiality agreement. Negotiations failed. Aurobindo hired Thanoo six months later and began developing microsphere-based injectable products that Oakwood alleges are “substantially similar to and competitive with Oakwood’s Microsphere Project." Oakwood asserts that the product could not have been developed within the rapid timeframe without Thanoo’s assistance and the use of Oakwood’s trade secret information.The Third Circuit vacated the dismissal of Oakwood's suit, asserting trade secret misappropriation, breach of contract, and tortious interference with contractual relations. Under the Defend Trade Secrets Act, 18 U.S.C. 1836(b), Oakwood sufficiently identified its trade secrets and sufficiently alleged that the defendants misappropriated those trade secrets. The “use” of a trade secret encompasses all the ways one can take advantage of trade secret information to obtain an economic benefit, competitive advantage, or other commercial value, or for an exploitative purpose, such as research or development. A trade secret plaintiff need not allege that its information was the only source by which a defendant might develop its product. Aurobindo's avoidance of substantial research and development costs that Oakwood has invested is recognized as "harm" in the DTSA. View "Oakwood Laboratories LLC v. Thanoo" on Justia Law

SpeedTrack’s 360 patent discloses a “computer filing system for accessing files and data according to user-designated criteria.” The patent explains that prior-art systems “employ a hierarchical filing structure” and “emulate[] commonly[ ]used paper filing systems” in that they “organize[] data into files (analogous to papers in a paper filing system) and directories (analogous to file folders and hanging files).” According to the patent, such systems could “become[] very cumbersome.” According to the patent, prior-art solutions presented additional drawbacks. The 360 patent discloses a method that uses “hybrid” folders, which “contain those files whose content overlaps more than one physical directory” and “allows total freedom from the restrictions imposed by hierarchical and other present-day computer filing systems.”SpeedTrack sued various retail website operators, alleging infringement of the patent. The Federal Circuit affirmed the stipulated judgment of noninfringement based on the district court’s construction of the term “hierarchical limitation.” View "SpeedTrack, Inc. v. Amazon.com, Inc." on Justia Law

Until 1995, a patent’s term was 17 years from the date of issuance, which incentivized certain patentees to delay by abandoning applications and filing continuing applications in their place to obtain patents at a financially desirable time. In 1995, changes in the law triggered a patent application rush. Hyatt, the named inventor on 399 patent applications, bulk-filed 381 applications during that "bubble," each a photocopy of an earlier application. Four applications relate to computer technologies, claim priority to applications filed in the 1970s and 1980s, and are atypically long and complex. Hyatt filed multiple amendments. From 2003 to 2012, the PTO stayed the examination of many of Hyatt’s applications pending litigation. The Board of Patent Appeals affirmed the rejection of the four applications.Hyatt filed suit under 35 U.S.C. 145. The district court ordered the PTO to issue the patents.The Federal Circuit vacated. Prosecution laches may “render a patent unenforceable when it has issued only after an unreasonable and unexplained delay in prosecution that constitutes an egregious misuse of the statutory patent system under a totality of the circumstances” and is a defense available to the PTO in an action to obtain a patent. The district court erred in concluding that the PTO failed to prove prosecution laches. Rather than analyze the evidence of Hyatt’s conduct, the court repeatedly placed blame on the PTO. The court held the issues invalidity for anticipation and lack of written description.in abeyance. View "Hyatt v. Hirshfeld" on Justia Law

Bio-Rad’s patents relate to the generation of microscopic droplets, contiguous fluid that is encapsulated within a different fluid, by using a microfluidic chip. Typically, the inner fluid is water-based, while the outer fluid is oil. The patents arise out of research conducted by inventors at QuantaLife. In 2011, Bio-Rad purchased QuantaLife, acquiring QuantaLife’s patent rights. The inventors became employees of Bio-Rad and executed assignments of their rights to applications that later issued as the 664, 682, and 635 patents. Soon after Bio-Rad acquired QuantaLife, three inventors left Bio-Rad to start 10X, which has developed technology and products in the field of microfluidics, with the goal of achieving DNA and RNA sequencing at the single-cell level. Bio-Rad alleged that 10X violated the Tariff Act, 19 U.S.C. 1337, by importing into the U.S. certain microfluidic chips. The Trade Commission concluded that 10X did not infringe the 664 patent by importing its “Chip GB” but infringed the 664, 682, and 635 patents by importing its “GEM Chips.” The Federal Circuit affirmed. The construction of the term “droplet generation region” is consistent with the intrinsic evidence; substantial evidence established that the use of 10X’s GEM chips directly infringes the asserted claims. Bio-Rad proved the elements of induced and contributory infringement of the 682 and 635 patents with respect to the GEM Chips. View "Bio-Rad Laboratories, Inc. v. United States International Trade Commission" on Justia Law

Becton petitioned for inter partes review of claims in Baxter’s patent, directed to “[s]ystems for preparing patient-specific doses and a method for telepharmacy in which data captured while following [a protocol associated with each received drug order and specifying a set of steps to fill the drug order] are provided to a remote site for review and approval by a pharmacist.” The Patent Trial and Appeal Board found that Becton had established that one of ordinary skill in the art would have been motivated to combine prior references and that Baxter’s “evidence of secondary considerations [was] weak” and concluded that none of the challenged claims were shown to be unpatentable as obvious.The Federal Circuit reversed. The Board’s determination that prior art did not teach the verification limitation is not supported by substantial evidence; a highlighting limitation would have been obvious to one of ordinary skill in the art in view of prior art. View "Becton, Dickinson & Co. v. Baxter Corp. Englewood" on Justia Law

Alliance and Coalition are nonprofit organizations that endorse political candidates in New Orleans. Alliance filed suit against Coalition, seeking to enjoin use of its trade name and logo for federal trademark infringement under the Lanham Act, state trademark infringement, and unfair trade practices. The district court subsequently joined Darleen Jacobs as a third party to the case.The Fifth Circuit affirmed the district court's award of attorney's fees to Alliance for federal trademark infringement under the Lanham Act. The court concluded that the district court's procedure for joining Jacobs met the demands of due process, and the district court did not abuse its discretion in holding her directly liable for the fee award. The court found it appropriate to extend the interpretation of the Patent Act fee-shifting provision to its interpretation of the Lanham Act and found that district courts do have the authority to award appellate fees under the Lanham Act. The court concluded that the district court's decision to award fees for further litigation of the attorney's fee award did not contravene the mandate rule; even if appellants are correct that Alliance's billing entries are flawed, the proper remedy is "a reduction of the award by a percentage intended to substitute for the exercise of billing judgment," which the district court did; and the district court considered each of appellants' objections to Alliance's fees motion. Finally, the court declined to address appellants' First Amendment argument, which was not addressed in Alliance I. View "Alliance for Good Government v. Coalition for Better Government" on Justia Law

Atlas Movers federally registered the “Atlas” mark for “transportation of household goods of others,” first using “Atlas” in 1948 when it formed Atlas Van Lines, providing transportation and logistics services, primarily moving household goods. Since 1970, its division, STG, has provided logistics services for non-household goods shipments. Atlas Movers eventually focused more on logistics, forming Atlas Relocation Services in 1995. In 2007, Atlas Movers began marketing its service as “Atlas Logistics.” and renamed its logistics company Atlas Logistics, which can ship, or arrange the shipment of, any commodity.Eaton manufactures and distributes steel. Eaton created Atlas Trucking in 1999, then expanded to ship goods other than steel and metal for companies in addition to its own. It developed Atlas Logistics in 2003 as an adjunct to Atlas Trucking. Eaton knew of Atlas Van Lines. Atlas Movers sued in 2017 for infringement. Eaton answered and counterclaimed that it owned the Atlas Logistics mark.The Sixth Circuit affirmed a judgment in favor of Atlas Movers, upholding findings that Atlas Movers marketed “Atlas” to an extent that the public recognized it, that the parties’ services are related because they engage in at least some of the same transportation services, that the marks were functionally identical, and that there was actual confusion. View "AWGI, LLC v. Atlas Trucking Co., LLC" on Justia Law

New Vision sued SG in the federal district court in Nevada. SG then filed Patent Trial and Appeal Board petitions. The Board declined to respect the forum selection agreement in the parties’ license agreement, which referred to “exclusive” jurisdiction in the appropriate federal or state court in the state of Nevada, and proceeded to a final decision, finding the claims at issue as well as proposed substitute claims, patent-ineligible under 35 U.S.C. 101.The Federal Circuit vacated and remanded the Board’s decisions for consideration of the forum selection clause in light of its 2019 “Arthrex” decision. Because Arthrex issued after the Board’s final-written decisions and after New Vision sought Board rehearing, New Vision has not waived its Arthrex challenge by raising it for the first time in its opening brief. The Board’s rejection of the parties’ choice of forum is subject to judicial review; section 324(e) does not bar review of Board decisions “separate . . . to the in[stitu]tion decision.” View "New Vision Gaming & Development, Inc. v. SG Gaming, Inc." on Justia Law

PerDiemCo, a Texas LLC, is the assignee of the patents, which relate to electronic logging devices. PerDiemCo’s current sole owner, officer, and employee, Babayi, lives and works in Washington, D.C. PerDiemCo rents office space in Texas, which Babayi has never visited. Trimble and ISE, Trimble’s wholly owned subsidiary, manufacture and sell GPS devices. Trimble, incorporated in Delaware, is headquartered in California. ISE is an Iowa LLC with an Iowa principal place of business.Babayi sent a letter to ISE accusing ISE of using technology covered by PerDiemCo’s patents, stating that PerDiemCo “actively licenc[es]” its patents and listed companies that had entered into nonexclusive licenses after the companies had “collectively spent tens of millions of dollars" on litigation. Babayi offered a nonexclusive license. ISE forwarded the letter to Trimble’s Chief IP Counsel, Brodsky, in Colorado, who explained that Trimble would be PerDiemCo’s contact. Babayi replied that PerDiemCo also believed that Trimble’s products infringed its patents. The parties communicated by letter, telephone, and email at least 22 times before Trimble and ISE sought a declaratory judgment of noninfringement in the Northern District of California. The district court held that it lacked specific personal jurisdiction over PerDiemCo. The Federal Circuit reversed. In patent litigation, communications threatening suit or proposing settlement or patent licenses can establish personal jurisdiction. A broad set of a defendant’s contacts with a forum are relevant to the minimum contacts analysis. Here, the minimum contacts or purposeful availment test was satisfied. View "Trimble Inc. v. PerDiemCo LLC" on Justia Law

Modern telecommunications systems using Voice over Internet Protocol (VoIP) offer clients optional features, such as caller-ID, call waiting, multi-line service, and different levels of service quality known as the “codec specification.” Uniloc’s 552 patent is directed to a system and method to police the use of those features, recognizing that the proliferation of intelligent client devices in communication networks requires providers to maintain control over the use of their networks’ features in order to continue generating revenue. To achieve that control, the patented system employs an enforcement mechanism within the provider’s core network through which clients send “signaling messages” for setting up their communication sessions.On inter partes review, The Patent Trial and Appeal Board found certain claims (not including claims 18-22) invalid for obviousness in view of the Kalmanek patent. The Federal Circuit affirmed, rejecting an argument that the Board’s construction of “intercepting” in the independent claims was erroneous; the claims encompass the situation in which a sending client device intentionally sends a signaling message to the intermediate network entity that performs the interception. Apple failed to show that claim 18 would have been obvious over Kalmanek. View "Uniloc 2017 LLC v. Apple Inc." on Justia Law