Justia Patents Opinion Summaries

In 2016, Harvard filed a patent-infringement case against Micron, which is incorporated in Delaware and has its principal place of business in Idaho, alleging that venue in the District of Massachusetts was proper under 28 U.S.C. 1391(b); 1400. Micron moved to dismiss for failure to state a claim, but did not object to venue under Rule 12(b)(3). Months later, the Supreme Court interpreted 28 U.S.C. 1400(b) (TC Heartland decision): “a domestic corporation ‘resides’ only in its State of incorporation for purposes of the patent venue statute.” Micron then moved to dismiss or to transfer the case. The district court denied the motion, reasoning that, under Rule 12(g)(2) and (h)(1)(A), Micron had waived its venue defense by not objecting to venue in its first motion to dismiss. The Federal Circuit vacated and remanded. TC Heartland changed the controlling law: at the time of the initial motion to dismiss, the venue defense now raised by Micron was not “available,” making the waiver rule of Rule 12(g)(2) and (h)(1)(A) inapplicable. That waiver rule, however, is not the only basis on which a district court might reject a venue defense for non-merits reasons, such as by determining that the defense was not timely presented. A less bright-line, more discretionary framework applies even when Rule 12(g)(2) and hence Rule 12(h)(1)(A) does not. View "In re: Micron Technology, Inc." on Justia Law

Raytheon filed a patent infringement action against Cray in the Eastern District of Texas. Cray is a Washington corporation with its principal place of business there. It also maintains facilities in Minnesota, Wisconsin, California, and Texas. Although Cray does not rent or own any property in the Eastern District of Texas, it allowed Harless, a sales executive, and Testa, a senior territory manager, to work remotely from their homes in that district. Harless provided price quotations to customers, in communications that identified his home telephone number as his “office” telephone number with an Eastern District of Texas area code. Cray never paid Harless for the use of his home nor advertised or otherwise indicated that his home was a Cray place of business. Cray moved to transfer the suit. The district court denied a transfer. The Federal Circuit directed the transfer of the case, citing the Supreme Court’s 2017 holding, “TC Heartland, effectively reviving Section 1400(b) as the focus of venue in patent cases.” Section 1400(b) provides that “[a]ny civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business.” Cray does not maintain a regular and established place of business in the district. View "In re: Cray, Inc." on Justia Law

Inselberg is the inventor systems by which audiences interact with live events, such as concerts and football games. In 2010, his company received a $500,000 loan from Bisignano, who received security interest in the patents.Federal authorities brought criminal charges against Inselberg. He defaulted on the loan. Inselberg and Bisignano entered into an agreement that purported to convey the patent portfolio to Bisignano. , Bisignano became the CEO of First Data. In 2014, Inselberg began claiming that the assignment was invalid.and that First Data was infringing. Bisignano granted First Data a royalty-free license and sought a federal declaratory judgment regarding the validity of the license agreement and ownership of the patents, to preempt "an inevitable infringement action. Inselberg filed a complaint in New Jersey Superior Court, asserting only state law claims. Bisignano and First Data filed an answer with counterclaims, seeking declaratory judgments of noninfringement and invalidity, then removed the action to federal court. The Federal Circuit affirmed a dismissal for lack of jurisdiction. Inselberg’s claims were all state law property rights claims; the alleged patent law issues were “incidental and contingent.” It did not become a patent case merely because some of the damages might be measured based on “forgone royalties. Bisignano remains the owner of the patents unless a state court invalidates the assignment; the district court did not have jurisdiction to consider the matter. View "First Data Corp. v. Inselberg" on Justia Law

AIA sued Avid for infringement of patents directed to research technologies stemming from the discovery of a genetic mutation that is associated with early-onset familial Alzheimer’s disease. Mullan is named as the sole inventor of both patents. Avid responded that AIA lacked standing to assert the patents and that Sexton, AIA’s founder, and Mullan orchestrated a scheme to appropriate for themselves inventions from Imperial College in London and the University of South Florida. AIA claimed that Dr. Mullan was properly named as sole inventor and that his employer, USF, waived any ownership rights. The district court held a jury trial on standing, in which 12 witnesses testified and over 200 exhibits were introduced. The jury determined that USF did not knowingly and intentionally waive its ownership rights and that Dr. Hardy was a co-inventor; the court found AIA lacked standing and entered judgment for Avid. The Federal Circuit summarily affirmed. Avid sought attorney’s fees. The district court allowed the parties to submit briefing, evidence, and declarations and held a hearing, then awarded Avid $3,943,317.70 in fees. The Federal Circuit affirmed, rejecting AIA’s argument that the Seventh Amendment requires a jury trial to decide the facts forming the basis to award attorney’s fees under Patent Act section 285. The district court did not err by making factual findings not foreclosed by the jury’s verdict on standing; AIA’s due process rights were not violated. View "AIA America, Inc. v. Avid Radiopharmaceuticals" on Justia Law

AIA sued Avid for infringement of patents directed to research technologies stemming from the discovery of a genetic mutation that is associated with early-onset familial Alzheimer’s disease. Mullan is named as the sole inventor of both patents. Avid responded that AIA lacked standing to assert the patents and that Sexton, AIA’s founder, and Mullan orchestrated a scheme to appropriate for themselves inventions from Imperial College in London and the University of South Florida. AIA claimed that Dr. Mullan was properly named as sole inventor and that his employer, USF, waived any ownership rights. The district court held a jury trial on standing, in which 12 witnesses testified and over 200 exhibits were introduced. The jury determined that USF did not knowingly and intentionally waive its ownership rights and that Dr. Hardy was a co-inventor; the court found AIA lacked standing and entered judgment for Avid. The Federal Circuit summarily affirmed. Avid sought attorney’s fees. The district court allowed the parties to submit briefing, evidence, and declarations and held a hearing, then awarded Avid $3,943,317.70 in fees. The Federal Circuit affirmed, rejecting AIA’s argument that the Seventh Amendment requires a jury trial to decide the facts forming the basis to award attorney’s fees under Patent Act section 285. The district court did not err by making factual findings not foreclosed by the jury’s verdict on standing; AIA’s due process rights were not violated. View "AIA America, Inc. v. Avid Radiopharmaceuticals" on Justia Law

The Biologics Price Competition and Innovation Act, 42 U.S.C. 262, establishes a scheme for adjudicating claims of patent infringement in the FDA's approval of “biological products.” To obtain FDA approval, the sponsor of a new biological product must demonstrate that it is “safe, pure, and potent.” For a “biosimilar” product based on an approved “reference” product, a party may submit an abbreviated “subsection (k)” application that “piggybacks” on the showing made for an approved reference product but must provide the reference product's sponsor with its subsection (k) application and information that describes the manufacturing process. The parties then collaborate to identify patents for immediate litigation. The second phase is triggered by the applicant’s notice of commercial marketing and involves any patents that were included on the lists but not previously litigated. Hospira's subsection (k) application sought approval of a biosimilar of EPOGEN®, Amgen’s FDA-approved product, Although Amgen asserted that Hospira failed to disclose the composition of the cell-culture medium used during manufacturing, the parties began identifying patents. Amgen claimed that it could not assess the reasonableness of asserting infringement claims concerning other patents for culturing cells and moved to compel discovery on the composition of Hospira’s cell-culture medium in its suit on listed patents. The court denied Amgen’s motion, stating that the information had no relevance to the asserted patents. Amgen appealed that interlocutory order. The Federal Circuit dismissed, holding that it lacked jurisdiction under the collateral order doctrine and that Amgen failed to satisfy the prerequisites for mandamus. View "Amgen, Inc.. v. Hospira, Inc.." on Justia Law

The Biologics Price Competition and Innovation Act, 42 U.S.C. 262, establishes a scheme for adjudicating claims of patent infringement in the FDA's approval of “biological products.” To obtain FDA approval, the sponsor of a new biological product must demonstrate that it is “safe, pure, and potent.” For a “biosimilar” product based on an approved “reference” product, a party may submit an abbreviated “subsection (k)” application that “piggybacks” on the showing made for an approved reference product but must provide the reference product's sponsor with its subsection (k) application and information that describes the manufacturing process. The parties then collaborate to identify patents for immediate litigation. The second phase is triggered by the applicant’s notice of commercial marketing and involves any patents that were included on the lists but not previously litigated. Hospira's subsection (k) application sought approval of a biosimilar of EPOGEN®, Amgen’s FDA-approved product, Although Amgen asserted that Hospira failed to disclose the composition of the cell-culture medium used during manufacturing, the parties began identifying patents. Amgen claimed that it could not assess the reasonableness of asserting infringement claims concerning other patents for culturing cells and moved to compel discovery on the composition of Hospira’s cell-culture medium in its suit on listed patents. The court denied Amgen’s motion, stating that the information had no relevance to the asserted patents. Amgen appealed that interlocutory order. The Federal Circuit dismissed, holding that it lacked jurisdiction under the collateral order doctrine and that Amgen failed to satisfy the prerequisites for mandamus. View "Amgen, Inc.. v. Hospira, Inc.." on Justia Law

The District Court for the Northern District of Texas dismissed, for lack of personal jurisdiction, New World’s declaratory judgment complaint against FGTL, a wholly owned subsidiary of the automaker Ford Motor Company. FGTL had previously filed an infringement suit against New World in the Eastern District of Michigan. The Federal Circuit affirmed the dismissal of the declaratory judgment action. Both FGTL and the Ford Motor Company are incorporated in Delaware and headquartered in Michigan. FGTL does no business in Texas and neither maintains an office nor has any employees in Texas. FGTL does not make or sell automobiles or automotive products; it owns, manages, and licenses intellectual property for Ford. FTGL’s pertinent contacts with Texas are limited to the cease and desist letters. While those letters may be sufficient to constitute minimum contacts with the forum, they are not sufficient to satisfy the fairness part of the test for specific personal jurisdiction. View "New World International, Inc. v. Ford Global Technologies, LLC" on Justia Law

Rothschild alleged that ADS’s home security system infringed its 090 patent. Rothschild has filed numerous lawsuits against others alleging infringement of the 090 patent. ADS filed an answer and counterclaims and sent Rothschild an email alleging that the patent covered patent-ineligible subject matter (35 U.S.C. 1011) and that prior art anticipated claim 1 (35 U.S.C. 102(a)(1)). ADS offered to settle if Rothschild paid ADS $43,330 for attorney fees and costs. Rothschild rejected ADS’s offer. ADS moved for judgment on the pleadings, sending Rothschild an FRCP 11(c)(2) Safe Harbor Notice, with copies of a proposed Rule 11(b) motion for sanctions and prior art that purportedly anticipated the claim. Rothschild voluntarily moved to dismiss. ADS opposed and filed a cross-motion for attorney fees, arguing that Rothschild’s suit was objectively unreasonable because Rothschild knew or should have known that claim 1 covers patent-ineligible subject matter and was anticipated. The Federal Circuit reversed the holding that Rothschild had not engaged in conduct sufficient to make the litigation “exceptional” for purposes of section 285 attorney fees. Whether a party avoids or engages in sanctionable conduct under Rule 11(b) is not the appropriate benchmark; a court may award fees in the rare case in which a party’s unreasonable conduct—while not necessarily independently sanctionable—is so exceptional as to justify an award. View "Rothschild Connected Devices Innovations, LLC v. Guardian Protection Services, Inc." on Justia Law

Plaintiffs sued Nagel in Massachusetts Superior Court alleging 15 state-law claims. Nagel answered the complaint and filed 11 counterclaims under the Declaratory Judgment Act seeking declarations of non-infringement of several patents held by plaintiff Electromagnetics Corporation. Nagel also removed the case to the District of Massachusetts under 28 U.S.C. 1441, the general removal statute, and 28 U.S.C. 1454, the patent removal statute. The federal court remanded to state court, finding that it lacked subject-matter jurisdiction because plaintiffs’ state-law claims did not arise under federal law and Nagel’s patent counterclaims did not present a justiciable case or controversy under Article III. The Federal Circuit dismissed an appeal; 28 U.S.C. 1447(d) bars review of the district court’s decision to remand. To the extent the America Invents Act prefers that closely related state-law claims and patent-law counterclaims be heard together, it does not follow that the circuit courts have jurisdiction to review remand decisions that require such claims to be pursued in separate forums. “Absent a clear statutory command to the contrary, it is assumed that Congress is aware of the universality of th[e] practice of denying appellate review of remand orders when Congress creates a new ground for removal.” View "Preston v. Nagel" on Justia Law