Justia Intellectual Property Opinion Summaries

Melanoscan’s patent, titled “Apparatus for Total Immersion Photography,” relates to the detection, diagnosis, and treatment of skin cancer as well as other diseases and cosmetic conditions of the visible human. The apparatus claimed as a “device” is an enclosure fitted with cameras and lights arranged in a manner that “allows for the imaging of total or subtotal non-occluded body surfaces in order to detect health and cosmetic conditions and involves the measurement and analysis of an optically depicted image of a patient’s surfaces.” Canfield petitioned the Patent Trial and Appeal Board for inter partes review (IPR) of multiple claims, asserting unpatentability on the ground of obviousness. The Board ruled that all of the challenged claims are patentable.The Federal Circuit reversed as to independent claims 1 and 51, and vacated and remanded as to the dependent claims in the petition. Claims 1 and 51 place the subject within the enclosure, as in the prior art, and place multiple cameras and lights within the enclosure, as in the prior art; the subject matter described in claims 1 and 51 would have been obvious to a person of ordinary skill in the field of the invention. View "Canfield Scientific, Inc. v. Melanoscan, LLC" on Justia Law

The Second Circuit reversed the district court's grant of final judgment for Mixpac on its claims of unfair competition, infringement of common law trademarks, and its claims under the Trademark Act of 1946 (Lanham Act) for trademark counterfeiting, infringement of registered marks, and false designation of origin. Mixpac and defendants are competitors in the U.S. market for mixing tips used by dentists to create impressions of teeth for dental procedures, such as crowns.The court disagreed with the district court's holding that Mixpac's trade dress—its use of yellow, teal, blue, pink, purple, brown, and white on mixing tips—is not functional. Instead, the court held that the use of these colors on mixing tips is functional, as the colors signify diameter and enable users to match a cartridge to the appropriate mixing tip. Accordingly, the court remanded for entry of final judgment in favor of defendants on the unfair competition, trademark infringement, trademark counterfeiting, and false designation of origin claims. The court declined to address defendants' counter claims and to address in the first instance Mixpac's civil contempt claim. View "Sulzer Mixpac AG v. A&N Trading Co., Ltd." on Justia Law

Metal Jeans, an apparel brand and owner of the non-stylized "METAL" trademark, filed an infringement claim against Metal Sport, a powerlifting brand with a similar but stylized mark. The district court denied both parties' merits motions because material facts remained in dispute, but granted Metal Sport's separate motion for summary judgment on whether Metal Jeans was barred from pressing its infringement claim by the equitable doctrine of unclean hands. In doing so, the district court rejected Metal Jeans' counter-defense that Metal Sport also acted with unclean hands.In a separate memorandum disposition filed simultaneously with this opinion, the Ninth Circuit concluded that the district court improperly granted summary judgment against Metal Jeans. The panel wrote here to resolve an issue of first impression: the standard of review the panel employs when a district court concludes that a party has acted with unclean hands. The panel held that the appropriate standard of review of a district court's determination to grant summary judgment on the affirmative defense of unclean hands is abuse of discretion. The panel remanded for further proceedings. View "Metal Jeans, Inc. v. Metal Sport, Inc." on Justia Law

The Synchronoss patents describe a system for synchronizing data across multiple systems or devices connected via the Internet and a “method for transferring media data to a network coupled apparatus.” The system generally involves one device or system that utilizes a first sync engine, a second device or system that utilizes a second sync engine, and a data store. In an infringement suit against Dropbox, the district court held that all asserted claims in the patent are either invalid under 35 U.S.C. 112, paragraph 2, or not infringed.The Federal Circuit affirmed the findings of invalidity and non-infringement and did not address Dropbox’s claims of ineligible subject matter. The asserted claims of one patent “are nonsensical.” Adopting Synchronoss’s proposal would require rewriting the claims. With respect to another patent, the claim term “user identifier module” does what the definiteness requirement prohibits; the term does not correspond to “adequate” structure in the specification that a person of ordinary skill in the art would be able to recognize and associate with the corresponding function in the claim. With respect to the third patent, Dropbox does not directly infringe by “using” Synchronoss’s claimed system. View "Synchronoss Technologies, Inc. v. Dropbox, Inc." on Justia Law

Crocs's Design Patent 789, titled “Footwear,” has a single claim for the “ornamental design for footwear.” Crocs sued Dawgs for infringement, Dawgs sought inter partes reexamination (IPE) under 35 U.S.C. 311. The district court stayed its proceedings. The examiner rejected the claim as anticipated, 35 U.S.C. 102(b). While an appeal to the Patent Trial and Appeal Board was pending, Dawgs filed for Chapter 11 bankruptcy. The bankruptcy court approved the sale of all of its assets to a new entity, Holdings, “not free and clear of any Claims Crocs . . . may hold for patent infringement occurring post-Closing Date by any person ... or any defenses Crocs may have in respect of any litigation claims that are sold.” The bankruptcy court authorized the distribution of the net sale proceeds and dismissed Dawgs’s bankruptcy case. Holdings assigned all rights, including explicitly the claims asserted by Dawgs in the infringement action and the IPE, to Mojave. Dawgs dissolved but continued to exist for limited purposes, including “prosecuting and defending suits" and "claims of any kind.”The Board declined to change the real-party-in-interest from the IPE requestor to Mojave, then reversed the examiner’s rejection of the patent’s claim. The Federal Circuit granted the motion to substitute. The assignments indicate that Mojave is Dawgs's successor-in-interest; as such, Mojave has standing. If the Board precludes substitution on the basis of a transfer in interest because of a late filing, it would defeat the important interest in having the proper party before the Board. View "Mojave Desert Holdings, LLC v. Crocs, Inc." on Justia Law

Elevated LDL cholesterol is linked to heart disease. LDL receptors remove LDL cholesterol from the bloodstream; the PCSK9 enzyme regulates LDL receptor degradation. Amgen’s 165 and 741 patents describe antibodies that purportedly bind to the PCSK9 protein and lower LDL levels by blocking PCSK9 from binding to LDL receptors. Amgen sued Sanofi, alleging infringement of multiple patents, including the 165 and 741 patents. Amgen and Sanofi stipulated to infringement of selected claims and tried issues of validity to a jury.The court granted judgment as a matter of law (JMOL) of nonobviousness and of no willful infringement. Following remand, a jury again found that Sanofi failed to prove that the asserted claims were invalid for lack of written description and enablement. The district court granted Sanofi’s Motion for JMOL for lack of enablement and denied the motion for lack of written description. The Federal Circuit affirmed. Undue experimentation would be required to practice the full scope of these claims, which encompasses millions of candidates claimed with respect to multiple specific functions. It would be necessary to first generate and then screen each candidate antibody to determine whether it meets the double-function claim limitations. View "Amgen Inc. v. Sanofi, Aventisub LLC" on Justia Law

The Infinity patents share a specification and involve using a fax machine as a printer or scanner for a personal computer. The indefiniteness issues revolve around the connection between the fax machine and the computer, termed a “passive link.” In a suit alleging that Oki infringed the patents, the district court found the patent claims indefinite.The Federal Circuit affirmed. Infinity has taken materially inconsistent positions regarding the extent of the claimed “passive link”— specifically, whether it ends at the I/O bus inside the computer or merely at the computer’s port; the endpoint of “passive link” is not reasonably certain and the term is indefinite. Because there is no reasonable certainty about where the “passive link” ends, there also cannot be reasonable certainty about where the “computer” begins. View "Infinity Computer Products, Inc. v. Oki Data Americas, Inc." on Justia Law

Dr. Chudik applied to the Patent and Trademark Office (PTO) for a patent on his “Guide for Shoulder Surgery” in 2006. The PTO examiner issued a second rejection in 2010. Rather than taking an appeal to the Patent Trial and Appeal Board (35 U.S.C. 134(a)), Chudik requested continued examination (section 132(b)). In 2014, the examiner again rejected his claims. Chudik appealed to the Board. Instead of filing an answer, the examiner reopened prosecution and rejected the claims as unpatentable on a different ground; that process repeated in 2016. In 2017, while Chudik’s fourth notice of appeal from an examiner rejection was pending, the examiner issued another rejection, which led to a notice of allowance after Chudik altered his claims. Chudik’s patent issued in 2018.The PTO awarded Chudik a patent term adjustment of 2,066 days (35 U.S.C. 154(b)) but rejected Chudik’s claim for an additional 655 days of “C-delay,” for the time his four notices of appeal were pending in the PTO. C-delay covers appellate review by the Board or a federal court in a case in which the patent was issued under a decision in the review reversing an adverse determination of patentability. The PTO concluded that, in light of the reopening of prosecution, the Board’s jurisdiction never attached and there was no Board or reviewing court reversal. The district court and Federal Circuit affirmed. C-delay for “appellate review” requires a reversal by the Board or a court. View "Chudik v. Hirshfeld" on Justia Law

Customer loyalty programs issue points that customers can redeem for goods and services. Maritz’s patent relates to a system and method for permitting a customer to redeem loyalty points without human intervention. A graphical user interface provides allows the participant to communicate with a web-based vendor system, such as an airline reservation system. An application programming interface interfaces with the GUI and the vendor system to facilitate information transfer between them.cxLoyalty petitioned for a covered business method (CBM) review of claims 1–15 of the patent. The Patent Trial and Appeal Board concluded that original claims 1–15 are ineligible for patenting under 35 U.S.C. 101 but that proposed substitute claims 16–23 are patent-eligible. cxLoyalty appealed as to the substitute claims; Maritz cross-appealed both the determination that the patent is eligible for CBM review and the ruling as to the original claims.The Federal Circuit dismissed Maritz’s challenge to CBM eligibility and held that both the original and substitute claims are directed to patent-ineligible subject matter. The threshold determination that a patent qualifies for CBM review is non-appealable under 35 U.S.C. 324(e). Representative claim 1 is directed to transfers of information relating to a longstanding commercial practice and is directed to an abstract idea. The claims amount to nothing more than applying an abstract idea using techniques that are, individually or as an ordered combination, well-understood, routine, and conventional. View "cxLoyalty, Inc. v. Maritz Holdings Inc." on Justia Law

OverDrive, a digital reading platform, belonged to International Digital Publishing Forum, a trade association dedicated to the development of electronic publishing standards. International’s members developed EPUB, the leading eBook format. International's intellectual-property policy, approved by all its members, states that International’s members retain any copyrights in their independent contributions to EPUB but grants International a license to “reproduce, adapt, distribute, perform, display, and create derivative works” of any copyrighted contributions to EPUB. International may sublicense others to do the same. By a vote of 88% to 12%, International agreed to transfer its assets to the Consortium and to grant the Consortium a license to use International's intellectual property to carry out Internationa;'s digital publishing activities. International would commence dissolution, after which its intellectual property rights would be owned by the Consortium. The Consortium began developing improvements to EPUB. A second agreement affirmed the first, explaining that the license included International’s sub-licensable rights to any copyrights its members retained.OverDrive sought a declaratory judgment that International had violated, and would violate in the future, its copyrights in EPUB. The district court granted International summary judgment. The Sixth Circuit affirmed. International validly licensed its intellectual property and it would be premature to resolve any claim about future transfers. Under the Copyright Act, 17 U.S.C. 106, OverDrive granted International the right to use any copyrights OverDrive had in EPUB. International an unrestricted right to grant sublicenses with respect to those copyrights. View "OverDrive Inc. v. Open E-Book Forum" on Justia Law