Justia Patents Opinion Summaries

ParkerVision, Inc. and Qualcomm Incorporated have been engaged in patent litigation for over a decade, primarily involving technology related to the conversion of electromagnetic signals in wireless devices. In 2014, ParkerVision brought suit in the United States District Court for the Middle District of Florida, alleging Qualcomm infringed two patents: one containing claims directed to down-conversion (receiver claims) and up-conversion (transmitter claims) of signals. The receiver claims in both patents were similar to claims previously litigated between the parties, while the transmitter claims were distinct.The district court initially granted summary judgment of non-infringement for both receiver and transmitter claims. ParkerVision appealed, and the United States Court of Appeals for the Federal Circuit vacated the summary judgment, remanding for further proceedings, including proper claim construction and reconsideration of expert testimony. On remand, after claim construction, the parties stipulated that Qualcomm’s products did not infringe the receiver claims. The district court granted partial summary judgment of non-infringement as to these receiver claims and, at ParkerVision’s request, entered a “final judgment” under Federal Rule of Civil Procedure 54(b), severing and staying the transmitter claims pending appeal.Upon review, the United States Court of Appeals for the Federal Circuit found that it lacked jurisdiction because the district court’s Rule 54(b) judgment was not final; it resolved only some claims within a single patent cause of action, while other claims of the same patent remained unresolved. The court clarified that patent infringement constitutes a single cause of action per patent, not per patent claim, and refused to exercise jurisdiction over the appeal. The court also denied ParkerVision’s request for reassignment to a different judge, finding no grounds under Eleventh Circuit law. The appeal was dismissed, and each party was ordered to bear its own costs. View "PARKERVISION, INC. v. QUALCOMM INCORPORATED " on Justia Law

Epic Tech, LLC holds a patent for an electronic sweepstakes system and sued Pen-Tech Associates, Inc. for infringing several claims of that patent. Prior to the lawsuit, the United States Patent and Trademark Office (PTO) had issued multiple office actions rejecting claims in related patent applications, citing unpatentability under § 101 after the Supreme Court’s decision in Alice Corp. Pty. Ltd. v. CLS Bank International. Epic Tech abandoned those related applications. Pen-Tech counterclaimed for a declaration that the asserted claims were invalid under § 101, referencing PTO rejections and a district court decision in another case, Epic Tech, LLC v. Fusion Skill, Inc., which had held claims in a related patent ineligible.The United States District Court for the Northern District of Georgia granted summary judgment for Pen-Tech, declaring the asserted claims invalid under § 101, and denied Epic Tech’s cross-motion for summary judgment. Before this ruling, Pen-Tech filed motions for Rule 11 sanctions and for attorneys’ fees and costs under several statutes and the court’s inherent authority, arguing that Epic Tech and its counsel should have known the claims were likely invalid and that the lawsuit was frivolous. The district court denied these motions, finding that neither Epic Tech nor its counsel acted unreasonably or frivolously, and that the case was not exceptional nor litigated in an unreasonable or vexatious manner.The United States Court of Appeals for the Federal Circuit reviewed the district court’s denial of sanctions and fees. It held that the district court’s order lacked sufficient explanation to permit meaningful appellate review, particularly regarding Pen-Tech’s theory that Epic Tech was on notice of potential invalidity. The Federal Circuit vacated the district court’s denial of sanctions and fees and remanded for further proceedings, without deciding whether Pen-Tech was ultimately entitled to sanctions or fees. View "EPIC TECH, LLC v. PEN-TECH ASSOCIATES, INC. " on Justia Law

A Swedish private equity firm specializing in veterinary products sought to acquire a company that manufactured orthopedic implants for animals. At the time of negotiations, the target company was involved in ongoing patent litigation initiated by a third party, which posed significant financial risk. To address this uncertainty, the parties included a broad indemnification provision in their agreement, requiring the sellers to cover losses “as a result of, or in connection with” the patent litigation. After the sale closed, the litigation expanded to include additional products and patents, culminating in a $70 million settlement and a license for one of the company’s products. The buyer financed the settlement with a loan. Most former owners settled indemnity claims, but the company’s founder did not, prompting the new owners to sue for enforcement of the indemnity.The Superior Court of the State of Delaware initially granted summary judgment to the buyers on certain defenses but otherwise denied both parties’ motions, proceeding to trial. Following trial, the court held that the founder was required to indemnify the buyers for damages arising from the patent litigation, but not for the cost of the patent license. It awarded only half of the requested attorneys’ fees for patent litigation, citing allocation challenges, and also denied recovery of fees incurred to enforce the indemnification provision. The court did, however, award prejudgment interest, including on the loan interest expense.On appeal, the Supreme Court of the State of Delaware affirmed in part and reversed in part. It held that the indemnification provision covered losses arising from post-transaction conduct and did not violate public policy, and that the implied covenant defense was inapplicable. The court found error in awarding prejudgment interest on the loan-interest expense, which resulted in a double recovery. For the cross-appeal, it held that the buyers were entitled to the license cost and the full amount of attorneys’ fees from the patent litigation, but not fees for enforcing the indemnification provision. The case was remanded for further proceedings. View "Gendreau vs Movora LLC" on Justia Law

NCS Multistage Inc. sued Nine Energy Service, Inc. in the United States District Court for the Western District of Texas, alleging that Nine’s BreakThru Casing Flotation Device infringed various claims of U.S. Patent No. 10,465,445. The patent concerns a float tool for use in oil and gas wellbores, specifically a tool design to reduce friction encountered when running casing to great depths. Central to the dispute were the meanings of the claim terms “internal diameter” and “casing string,” as well as whether certain prior art sales and disclosures anticipated the patent.The district court construed “internal diameter” to refer both to an inner surface and a measured diameter, and construed “casing string” as pipe customarily having an outer diameter of at least 4.5 inches. Following trial, a jury found in favor of NCS on infringement and no invalidity, and the district court entered judgment accordingly, including an award of damages. Nine appealed, challenging the claim constructions, the exclusion of certain prior art, and evidentiary rulings regarding discovery disclosures.The United States Court of Appeals for the Federal Circuit held that the district court erred in its constructions of “internal diameter” and “casing string.” The Federal Circuit determined that “internal diameter” means a measured diameter, not also an inner surface, and that “casing string” should not be limited by a specific size. The appellate court further ruled that, under the controlling law, a private sale of a device does not constitute a public disclosure for prior art purposes, making certain prior art relevant. The court vacated the district court’s judgments of infringement, no invalidity, and damages, and remanded for a new trial with instructions consistent with its opinion. Costs were awarded to Nine. View "NCS MULTISTAGE INC. v. NINE ENERGY SERVICE, INC. " on Justia Law

TexasLDPC Inc. held an exclusive license to several patents and copyrights relating to LDPC code technology, originally developed by Dr. Kiran Gunnam while at Texas A&M University (A&M). After attempts to commercialize and sublicense the technology failed, TexasLDPC shifted its business focus exclusively to enforcing its rights through litigation. TexasLDPC filed suit in the United States District Court for the District of Delaware against Broadcom Inc., LSI Corporation, and Avago Technologies U.S. Inc. for infringement, without joining A&M, the patent owner.The District Court for the District of Delaware dismissed the suit, holding first that TexasLDPC’s license agreement with A&M had automatically terminated when TexasLDPC ceased its business operations by focusing solely on enforcement. Second, the court found that even if the agreement had not terminated, TexasLDPC could not proceed without joining A&M, as the agreement did not convey “all substantial rights” in the patents and copyrights. The court also determined A&M was a necessary party under Federal Rule of Civil Procedure 19(a) due to its interests and sovereign immunity, and dismissed the federal claims.The United States Court of Appeals for the Federal Circuit reviewed the case. It held that TexasLDPC’s exclusive license agreement had not terminated, as the contract contemplated enforcement as a legitimate business operation. The court also determined that the agreement conveyed “all substantial rights” in the asserted patents to TexasLDPC, enabling TexasLDPC to sue for infringement in its own name without joining A&M. Furthermore, A&M was not a necessary party under Rule 19(a). The Federal Circuit reversed the district court’s dismissal of the action. View "TEXASLDPC INC. v. BROADCOM INC. " on Justia Law

The case concerns a dispute over patents related to spinal implant technology. The plaintiff, a company that owns three patents describing various spinal implant systems and related tools, sued a medical device manufacturer, alleging that several of the manufacturer’s products infringed its patents. At issue were claims from three patents: one describing a tool for manipulating and inserting a “universal, intervertebral bone fusion spacer,” another covering a “universal, intervertebral combination internal screw guide and fixation apparatus,” and a third involving an expandable spinal implant system. The meaning of the word “universal” in the claims of two patents was especially significant, as was the question of whether this term in the preambles of the claims was limiting.The United States District Court for the Eastern District of Pennsylvania construed “universal” to mean a device designed to be inserted between vertebrae in any region of the spine using any surgical approach. The district court determined that the preambles containing “universal” were limiting, and, based on the agreed construction, granted summary judgment of noninfringement to the defendant for the two patents in question. A jury later found no infringement of the third patent, and the district court denied the plaintiff’s motion for judgment as a matter of law, finding that substantial evidence supported the jury’s verdict.The United States Court of Appeals for the Federal Circuit reviewed the district court’s claim constructions, summary judgment, and denial of judgment as a matter of law. The appellate court held that the district court correctly found the preambles to be limiting and properly construed the term “universal.” It also concluded that substantial evidence supported the jury’s verdict of noninfringement regarding the third patent. Accordingly, the Federal Circuit affirmed the district court’s decisions. View "MOSKOWITZ FAMILY LLC v. GLOBUS MEDICAL, INC. " on Justia Law

Netlist, Inc. owned a patent related to computer memory systems, specifically methods for improving the performance and capacity of memory boards using dual in-line memory modules. The patent described memory modules with buffers that are normally disabled to electrically isolate the memory devices from the controller, but which can be selectively enabled during data operations. Samsung Electronics Co., Ltd. first filed a petition for inter partes review, challenging the patent’s claims as obvious over two prior art references: Ellsberry and Halbert. Micron Technology, Inc. and related entities filed a similar petition and were later joined to Samsung’s proceeding. While Samsung settled with Netlist and withdrew from the appeal, Micron remained as appellee.The Patent Trial and Appeal Board of the United States Patent and Trademark Office reviewed the matter and determined, by a preponderance of the evidence, that all challenged claims of Netlist’s patent were obvious in view of the cited prior art. The Board found that the references taught enabling and disabling data paths through buffers in accordance with a latency parameter, and further found that the prior art disclosed the structural and functional limitations recited in the claims. The Board also addressed and rejected various procedural arguments, including those based on the Administrative Procedure Act.Netlist appealed to the United States Court of Appeals for the Federal Circuit. The court reviewed the Board’s factual findings for substantial evidence and its legal conclusions de novo. The Federal Circuit found that the Board’s determinations were supported by substantial evidence and that it had adequately explained its reasoning. The court affirmed the Board’s conclusion that all challenged claims were unpatentable as obvious, rejecting Netlist’s arguments on both substantive and procedural grounds. Costs were awarded against Netlist. View "NETLIST, INC. v. MICRON TECHNOLOGY, INC. " on Justia Law

This case involves a dispute over several patents relating to digital communication systems that use non-uniform constellations to increase data transmission capacity compared to traditional, uniform constellations operating within similar signal-to-noise ratio (SNR) bands. The plaintiff, Constellation Designs, LLC, alleged that several LG entities infringed claims from four patents by manufacturing and selling televisions compatible with the ATSC 3.0 standard, specifically protocol A/322, which governs over-the-air television broadcasting. The patents at issue cover two primary types of claims: those that recite methods for optimizing constellations based on parallel decode (PD) capacity (“optimization claims”), and those that recite specific, non-uniform constellations (“constellation claims”).The United States District Court for the Eastern District of Texas granted summary judgment to Constellation on patent eligibility for all asserted claims, finding them directed to a technical solution to a technical problem. At trial, a jury found the asserted claims not invalid, found infringement by LG’s accused televisions, awarded damages, and found willful infringement. LG moved for judgment as a matter of law (JMOL) on non-infringement and no damages, and sought to exclude Constellation’s damages expert, but the district court denied these motions. The court then entered final judgment and ongoing royalties.On appeal, the United States Court of Appeals for the Federal Circuit vacated the summary judgment of eligibility for the optimization claims, holding that these claims were ineligible under 35 U.S.C. § 101 because they were directed to the abstract idea of “optimizing” a constellation for PD capacity without specifying how to achieve this result. The court affirmed the eligibility of the constellation claims, finding them directed to a concrete technological solution. The Federal Circuit also affirmed the denial of JMOL on non-infringement and no damages, and the denial of the motion to exclude Constellation’s damages expert. The case was remanded for further proceedings consistent with these rulings. View "CONSTELLATION DESIGNS, LLC v. LG ELECTRONICS, INC. " on Justia Law

Exelixis, Inc. developed Cabometyx®, a cancer treatment containing cabozantinib (L)-malate. After identifying and characterizing crystalline and amorphous forms of this compound, Exelixis obtained several related patents. MSN Laboratories Private Limited and MSN Pharmaceuticals, Inc. sought FDA approval for a generic version using a specific polymorph of cabozantinib (L)-malate and received their own patent for that form. Exelixis sued MSN in the United States District Court for the District of Delaware, alleging infringement of patents covering crystalline cabozantinib (L)-malate salts (the “Malate Salt Patents”) and a patent directed to pharmaceutical compositions with low levels of a genotoxic impurity (the ’349 patent).The District Court held a bench trial. MSN conceded infringement of the Malate Salt Patents but argued they were invalid for lack of written description under 35 U.S.C. § 112(a). For the ’349 patent, MSN contested both infringement and validity. The District Court found the Malate Salt Patents were not invalid, holding the written description requirement was met because the patents disclosed the chemical structure, formula, and crystalline nature of the claimed salts. The court analogized its analysis to GlaxoSmithKline LLC v. Banner Pharmacaps, Inc. For the ’349 patent, the court found no infringement and no invalidity, concluding that the evidence failed to show the prior art inherently disclosed the “essentially free” impurity limitation.The United States Court of Appeals for the Federal Circuit reviewed the case. It affirmed the District Court’s finding that the asserted claims of the ’439, ’440, and ’015 patents had adequate written description support. Regarding claim 3 of the ’349 patent, the Federal Circuit dismissed MSN’s appeal as moot after Exelixis dropped its cross-appeal and vacated the District Court’s judgment of nonobviousness of that claim. The main holdings were affirmance of written description support for the asserted Malate Salt Patents and dismissal and vacatur regarding claim 3 of the ’349 patent. View "EXELIXIS, INC. v. MSN LABORATORIES PRIVATE LTD. " on Justia Law

T-Mobile and KAIFI settled a patent infringement lawsuit involving claims of U.S. Patent No. 6,922,728, which covers Wi-Fi calling technology. As part of their settlement, T-Mobile agreed to make two payments: one immediate payment and another conditional payment, the latter to be made if any of the asserted patent claims “survived” an ex parte reexamination (EPR) at the United States Patent and Trademark Office. After the Patent Office confirmed the patentability of most of the asserted claims without amendment, T-Mobile refused to make the additional payment, arguing that the claims had not truly “survived” the EPR due to alleged changes in claim scope and supposed inequitable conduct by KAIFI during the reexamination.T-Mobile filed a declaratory judgment action in the United States District Court for the Eastern District of Texas, seeking a determination that it had not breached the settlement agreement by withholding the payment. The district court granted summary judgment for KAIFI, holding that the settlement agreement was clear: a claim “survives the EPR” if the Patent Office confirms its patentability in the Reexamination Certificate. The court found T-Mobile’s arguments about claim scope and inequitable conduct irrelevant to the payment obligation and ordered T-Mobile to make the additional payment.On appeal, the United States Court of Appeals for the Federal Circuit reviewed whether it had subject-matter jurisdiction. The court determined that the dispute centered on the interpretation of a contract governed by Texas law and did not necessarily involve a substantial question of federal patent law. Consequently, the court held that it lacked appellate jurisdiction and transferred the case to the United States Court of Appeals for the Fifth Circuit, which has jurisdiction over appeals from the Eastern District of Texas. View "T-MOBILE US, INC. v. KAIFI LLC " on Justia Law