Justia Patents Opinion Summaries
Facebook, Inc. v. Windy City Innovations, LLC
Windy CIty’s patents share a common specification and are generally related to methods for communicating over a computer-based network. Exactly one year after being served with Windy City’s infringement complaint, Facebook timely petitioned for inter partes review (IPR). Windy City had not yet identified the specific claims it was asserting in the infringement proceeding. The Patent Trial and Appeal Board instituted IPR. After Windy City identified the claims it was asserting in the infringement litigation, Facebook filed two additional petitions for IPR of additional claims and motions for joinder to the already instituted IPRs. The one-year time bar of 35 U.S.C. 315(b) had passed. The Board nonetheless instituted new IPRs and granted joinder, then held that Facebook had shown by a preponderance of the evidence that some of the challenged claims, including several claims only challenged in the later-joined proceedings, are unpatentable as obvious but had failed to show that others were unpatentable. The Federal Circuit vacated in part. The Board erred in allowing Facebook to join itself to a proceeding in which it was already a party and in allowing Facebook to add new claims to the IPRs through that joinder. The court held that the obviousness determinations on the originally instituted claims are supported by substantial evidence. View "Facebook, Inc. v. Windy City Innovations, LLC" on Justia Law
Illumina, Inc. v. Ariosa Diagnostics, Inc.
In 1996, two doctors discovered cell-free fetal DNA in maternal plasma and serum, previously discarded as medical waste. In 2001, they obtained a patent, claiming a method for detecting the small fraction of paternally inherited cell-free fetal DNA in the plasma and serum of a pregnant woman. In 2015, the Federal Circuit (Ariosa) held that the patent's claims were invalid under 35 U.S.C. 101, as directed to “matter that is naturally occurring.” The patents at issue are unrelated to the Ariosa patent and begin by acknowledging the "Ariosa" natural phenomenon, then identify a problem that was the subject of further research: there was no known way to distinguish and separate the tiny amount of fetal DNA from the vast amount of maternal DNA. The patents use an additional discovery to claim methods of preparing a fraction of cell-free DNA that is enriched in fetal DNA. The Federal Circuit concluded that the claims are patent-eligible. These inventors patented methods of preparing a DNA fraction. The claimed methods utilize the natural phenomenon that the inventors discovered by employing physical process steps to selectively remove larger fragments of cell-free DNA to enrich a mixture in cell-free fetal DNA. Those steps change the composition of the mixture, resulting in a DNA fraction that is different from the naturally-occurring fraction in the mother’s blood. View "Illumina, Inc. v. Ariosa Diagnostics, Inc." on Justia Law
Hafco Foundry & Machine Co. v. GMS Mine Repair & Maintenance, Inc.
Hafco’s patent, issued in 2013, covers a “Rock Dust Blower” used to distribute rock dust in areas such as coal mines, where rock dust is applied to interior surfaces, to control the explosive hazards of coal dust. Hafco contracted with GMS to serve as the distributor of Hafco’s blower for sale to mining customers. In 2015, Hafco terminated this arrangement, stating that performance was poor. GMS then produced a rock dust blower for sale to mining customers. Hafco sued for infringement. GMS filed an unsuccessful pretrial motion for patent invalidity. The jury found GMS liable for willful infringement and awarded damages of $123,650. The court entered a permanent injunction against infringement but remitted the damages award to zero, offering a new trial on damages. The Federal Circuit affirmed the judgment of infringement and the denial of GMS’ request for a new trial and remanded the case. The jury was correctly instructed that the question is how the ordinary observer would view the article as a whole. Given that there was no prior art introduced at trial, no attempt by GMS to introduce the prior art, and no proposed jury instruction on the issue, the purported exclusion of this instruction cannot be an error. View "Hafco Foundry & Machine Co. v. GMS Mine Repair & Maintenance, Inc." on Justia Law
Personalized Media Communications, LLC v. Apple Inc.
PMC’s patent is directed to methods for enhancing broadcast communications with user-specific data by embedding digital signals in those broadcast communications. The specification discloses a number of embodiments that include analog broadcast signals with embedded digital signals. On inter partes review, the Patent Trial and Appeal Board found certain claims unpatentable on anticipation and obviousness grounds. The Federal Circuit reversed as to certain claims and otherwise affirmed. The Board erred in construing the claim term “an encrypted digital information transmission including encrypted information” as including mixed digital and analog signals. The prosecution history indicates that the disputed claim term is limited to all-digital signals. View "Personalized Media Communications, LLC v. Apple Inc." on Justia Law
Communications Test Design, Inc. v. Contec, LLC
CTDI is a worldwide engineering, repair, and logistics company with its principal place of business in Pennsylvania. Since 2007, CTDI has developed, manufactured, and used its “Gen3” and “Gen5” test systems within the U.S. for testing set-top boxes and multimedia devices. The test systems were designed and developed at CTDI’s Pennsylvania facility. Contec “provides repair, test and reverse logistics for electronics hardware used in a broad range of markets.” Contec owns patents for the “Arrangement and Method for Managing Testing and Repair of Set-Top Boxes” and for a “Multimedia Device Test System.” The patented systems were designed and developed at Contec’s New York headquarters. Three of the six inventors of the patents reside in New York; another left Contec and works in CTDI’s, New York facility. CTDI sought a declaratory judgment in a Pennsylvania federal court that its test systems do not infringe Contec’s patents. Six days later, Contec sued CTDI for infringement in the Northern District of New York. The Pennsylvania court dismissed, finding that CTDI’s anticipatory filing was made in bad faith during active licensing discussions; the court found that equitable considerations warranted departure from the first-to-file rule. The Federal Circuit affirmed, finding that the district court did not abuse its broad discretion under the Declaratory Judgment Act, 28 U.S.C. 2201(a) and pursuant to the first-to-file rule. View "Communications Test Design, Inc. v. Contec, LLC" on Justia Law
Kaken Pharmaceutical Co., Ltd. v. Iancu
Kaken’s patent, titled “Method For Treating Onychomycosis,” describes and claims methods for topically treating fungal infections in human nails. On inter partes review under 35 U.S.C. 311–319, the Patent Trial and Appeal Board determined that all claims of the patent are unpatentable for obviousness. The Federal Circuit vacated. The Board erred in its claim construction of one claim limitation--“treating a subject having onychomycosis.” Kaken’s unambiguous statement that onychomycosis affects the nail plate, and the examiner’s concomitant action based on this statement, make clear that “treating onychomycosis” requires penetrating the nail plate to treat an infection inside the nail plate or in the nail bed under it. The Board’s obviousness analysis materially relied on its erroneous claim construction. View "Kaken Pharmaceutical Co., Ltd. v. Iancu" on Justia Law
Customedia Technologies, LLC v. Dish Network Corp.
Customedia’s patents, which share a specification, disclose comprehensive data management and processing systems that comprise a remote AccountTransaction Server (ATS) and a local host Data Case Management System and Audio/Video Processor Recorderplayer (VPR/DMS), e.g., a cable set-top box. Broadcasters and other content providers transmit advertising data via the ATS to a local VPR/DMS. That data be selectively recorded in programmable storage sections in the VPR/DMS according to a user’s preferences. These storage sections may be “reserved, rented, leased or purchased from end user[s], content providers, broadcasters, cable/satellite distributor, or other data communications companies administering the data products and services.” On Dish Network’s petition for review, the Patent Trial and Appeal Board found various claims ineligible under 35 U.S.C. 101 and other claims unpatentable under 35 U.S.C. 102. The Federal Circuit affirmed the ineligibility finding, applying the Supreme Court’s “Alice” holding that “[l]aws of nature, natural phenomena, and abstract ideas are not patent-eligible.” The claimed invention is at most an improvement to the abstract concept of targeted advertising wherein computers are merely used as a tool; the invocation of already-available computers that are not themselves plausibly asserted to be an advance amounts to a recitation of what is well-understood, routine, and conventional. View "Customedia Technologies, LLC v. Dish Network Corp." on Justia Law
GS CleanTech Corp. v. Adkins Energy LLC
The Patents-in-Suit are directed to the recovery of oil from a dry mill ethanol plant’s byproduct, thin stillage, for example, “evaporating the thin stillage to form a concentrate,” or syrup, and then “separating the oil from the concentrate using a disk stack centrifuge.” In an infringement suit, the district court determined that specified claims were invalid because of the on-sale bar, anticipation, obviousness, incorrect inventorship, inadequate written description, lack of enablement, and indefiniteness. The court concluded that, under the UCC, a signed proposal would have constituted a commercial contract and that a reasonable jury would not have concluded that the proposal was an offer to test its claimed invention as the Inventors knew the method could be successfully reduced to practice and had been reduced to practice. After an inequitable conduct bench trial, the court concluded that the patents were ready for patenting when the Inventors provided the 2003 Proposal and that CleanTech committed inequitable conduct: The "Inventors made a mistake” by offering the invention for sale in 2003, and later affirmatively hid that fact from the lawyers and the Patent Office. The Federal Circuit affirmed. The district court did not abuse its discretion in concluding that CleanTech and its lawyers made a deliberate decision to withhold material information with the specific intent to deceive the Patent Office. View "GS CleanTech Corp. v. Adkins Energy LLC" on Justia Law
Comcast Corp. v. International Trade Commission
The International Trade Commission (ITC) investigated a complaint under Tariff Act Section 337, alleging that Comcast’s customers directly infringe patents by using Comcast’s X1 system. The patents claim an interactive television program guide system for remote access to television programs. An ALJ found a violation, concluding that the X1 set-top boxes are imported by ARRIS and Technicolor and that Comcast is sufficiently involved with the design, manufacture, and importation of the products, such that it is an importer under Section 337. The ITC affirmed, stating that Comcast induced infringement and that Comcast "instructs, directs, or advises its customers on how to carry out direct infringement.” The ITC affirmed that ARRIS and Technicolor do not directly infringe because they do not provide a “remote access device” as required by the claims and do not contributorily infringe because the set-top boxes have substantial non-infringing uses. The ITC issued a limited exclusion order and cease and desist orders directed to Comcast. The Federal Circuit affirmed, rejecting Comcast’s arguments that its conduct is not actionable under Section 337 because Comcast’s inducing conduct “takes place entirely domestically, well after, and unrelated to," the importation and that Comcast does not itself import the articles. The ITC has authority (19 U.S.C. 1337(d)(1)) to issue an exclusion order that blocks the importation of articles manufactured and imported by ARRIS and Technicolor, despite its determination that they did not violate Section 337 and did not infringe the patents. View "Comcast Corp. v. International Trade Commission" on Justia Law
Arctic Cat Inc. v. Bombardier Recreational Products, Inc.
Arctic’s patents, directed to personal watercraft (PWC) steering systems, issued in 2004 and 2003, after Arctic stopped selling PWCs. In 2002, Arctic entered into a license agreement with Honda that expressly stated that Honda had no marking obligations. Honda began making and selling unmarked PWCs. Arctic asserted that Honda stopped selling unmarked products in 2013. Bombardier claimed that Honda continued to sell PWCs under the Arctic license until 2018. In 2014, Arctic sued Bombardier for infringement. The court held that Bombardier bore the burden of proving that Honda’s PWCs practiced the asserted claims and denied Bombardier’s motion to limit potential damages because of Honda’s sales of unmarked products. A jury awarded Arctic a royalty to begin in 2008 and found that Bombardier had willfully infringed the asserted claims. The Federal Circuit affirmed as to willfulness but vacated in part. Once an alleged infringer identifies products that it believes are unmarked patented articles subject to the 35 U.S.C. 287 notice requirements, the patentee bears the burden of proving that the products do not practice the claimed invention. On remand, Arctic conceded that it could not show that the Honda PWCs do not practice the asserted claims. The Federal Circuit affirmed summary judgment in favor of Bombardier. Section 287 continues to limit damages after a patentee or licensee ceases sales of unmarked products; willful infringement does not establish actual notice under section 287. View "Arctic Cat Inc. v. Bombardier Recreational Products, Inc." on Justia Law