Justia Patents Opinion Summaries

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

A jury found that Pulse directly infringed Halo’s patents with products that it shipped into the U.S. and induced others to infringe those patents with products delivered outside the U.S. that ultimately were imported into the U.S. in finished products; it was highly probable that Pulse’s infringement was willful; and the Halo patents were not invalid. The jury awarded Halo $1.5 million in royalty damages. The court held that Pulse had not willfully infringed and taxed costs. Halo did not seek interest. The Federal Circuit affirmed that Pulse’s infringement was not willful. In June 2015, in the district court, Halo sought an accounting for supplemental damages and awards of interest. The Supreme Court subsequently held that the enhanced damages test applied by the Federal Circuit was inconsistent with 35 U.S.C. 284. On remand, the Federal Circuit vacated the unenhanced damages award with respect to products delivered in the U.S. and remanded. In the meantime, the district court awarded Halo prejudgment and post-judgment interest and supplemental damages for direct infringement. In November 2016, the court entered a stipulation of satisfaction of judgment for the $1.5 million damages award, including costs, supplemental damages, and post-judgment interest, expressly excluding prejudgment interest, enhanced damages, and attorney fees. The Federal Circuit dismissed an appeal for lack of jurisdiction. There is no final decision because the district court has not specified the means for determining the amount of prejudgment interest. View "Halo Eelectronics, Inc. v. Pulse Electronics, Inc." on Justia Law

The patent venue statute, 28 U.S.C. 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.” In its 1957 “Fourco” decision, the Supreme Court concluded that for purposes of section 1400(b) a domestic corporation “resides” only in its state of incorporation, rejecting the argument that section 1400(b) incorporates the broader definition of corporate “residence” contained in the general venue statute, 28 U.S.C. 1391(c). Congress has not amended section 1400(b) since Fourco. Kraft filed a patent infringement suit in the District of Delaware against TC, a competitor, organized under Indiana law and headquartered in Indiana. TC ships the allegedly infringing products into Delaware. Reversing the district court and Federal Circuit, the Supreme Court held that, ss applied to domestic corporations, “reside[nce]” in section 1400(b) refers only to the state of incorporation. Section 1400(b) was enacted as a "stand alone" statute. Amendments to section 1391 did not modify the meaning of 1400(b) as interpreted by Fourco. View "TC Heartland LLC v. Kraft Foods Group Brands LLC" on Justia Law

The consolidated appeals involve allegations that the companies holding the patents for Lipitor and Effexor XR delayed entry into the market by generic versions of those drugs by engaging in an overarching monopolistic scheme that involved fraudulently procuring and enforcing the underlying patents and then entering into a reverse-payment settlement agreement with a generic manufacturer. In 2013, the Supreme Court recognized that reverse payment schemes can violate antitrust laws and that it is normally not necessary to litigate patent validity to answer the antitrust question. The district judge dismissed most of plaintiffs’ claims. The Third Circuit remanded after rejecting an argument that plaintiffs’ allegations required transfer of the appeals to the Federal Circuit, which has exclusive jurisdiction over appeals from civil actions “arising under” patent law, 28 U.S.C. 1295(a)(1). Not all cases presenting questions of patent law necessarily arise under patent law; here, patent law neither creates plaintiffs’ cause of action nor is a necessary element to any of plaintiffs’ well-pleaded claims. The court remanded one of the Lipitor appeals, brought by a group of California pharmacists and involving claims solely under California law, for jurisdictional discovery and determination of whether remand to state court was appropriate. View "In re: Lipitor Antitrust Litigation" on Justia Law

In 2003, SCA notified First Quality that its adult incontinence products infringed an SCA patent. First Quality responded that its patent antedated SCA’s patent and made it invalid. In 2004, SCA sought reexamination of its patent. In 2007, the Patent and Trademark Office confirmed the SCA patent’s validity. SCA sued for patent infringement in 2010. The district court granted First Quality summary judgment, citing equitable estoppel and laches. While SCA’s appeal was pending, the Supreme Court held that laches could not preclude a claim for damages incurred within the Copyright Act’s 3-year limitations period. The Federal Circuit nevertheless affirmed, based on Circuit precedent, which permitted laches to be asserted against a claim incurred within the Patent Act’s 6-year limitations period, 35 U.S.C. 286. The Supreme Court vacated. Laches cannot be invoked as a defense against a claim for damages brought within the limitations period. A statute of limitations reflects a congressional decision that timeliness is better judged by a hard and fast rule instead of a case-specific judicial determination. Applying laches within a statutory limitations period would give judges a “legislation-overriding” role that exceeds the Judiciary’s power and would clash with the gap-filling purpose for which the laches defense developed in the equity courts. View "SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC" on Justia Law

Xilinx a Delaware corporation headquartered in California, develops and markets programmable logic devices for electronics systems. Papst, organized and having its principal place of business in Germany, is a nonpracticing entity that does not manufacture or sell products. Papst’s website describes “a global patent licensing and monetization firm specialized in enforcing infringed patents with the goal to conclude a license agreement with the infringer.” Papst has repeatedly filed patent infringement suits in California federal courts. Before acquiring the patents-in-suit, Papst investigated potential infringers and targets for licensing, including 28 companies based, or having significant presence, in California. Papst sent a patent-infringement notice letter and a follow-up letter to Xilinx. Papst’s managing director, its senior counsel, and its Texas-based outside counsel, traveled to California to meet with Xilinx. No agreement was reached. Xilinx sought a declaratory judgment, in the Northern District of California, that Xilinx’s products do not infringe the patents-in-suit and that the patents are invalid. Papst filed an infringement suit against Xilinx in the District of Delaware asserting the same patents. The California court dismissed the declaratory judgment action for lack of personal jurisdiction. The Federal Circuit reversed; the court has specific personal jurisdiction over Papst. Considering the totality of circumstances, the court found “sufficient minimum contacts” and that the exercise of jurisdiction would not be unreasonable. View "Xilinx, Inc. v. Papst Licensing GMBH & Co. KG" on Justia Law

The 856 patent generally relates to “huMab4D5 ANTI-ErbB2 antibody-maytansinoid conjugates.” The claimed methods of treatment purport to combat a variety of cancers. ImmunoGen provided Genentech with a “worldwide exclusive license,” which Genentech uses to produce the drug Kadcyla®TM. Phigenix, “a for-profit discovery stage biotechnology, pharmaceutical, and biomedical research company” that focuses “on the use of novel molecular therapeutics” designed to fight cancer, sought inter partes review. The Patent Board found the asserted claims of the 856 patent nonobvious. The Federal Circuit dismissed an appeal for lack of standing, finding that Phigenix has not offered sufficient proof establishing that it has suffered an injury in fact. Phigenix does not contend that it faces risk of infringing the 856 patent, that it is an actual or prospective licensee of the patent, or that it otherwise plans to take any action that would implicate the patent. Phigenix only claimed that it has suffered an actual economic injury because the 856 patent increases competition between itself and ImmunoGen; “‘[i]ncreased competition represents a cognizable Article III injury,’” View "Phigenix, Inc. v. Immunogen, Inc." on Justia Law

United sued Tile Tech (TT), claiming infringement of its patent, entitled “Support Pedestal Having an Anchoring Washer for Securing Elevated Surface Tiles.” United served its first discovery requests. TT missed the deadline. United granted 20 additional days to respond. TT requested two additional extensions before serving responses, which were deficient. TT postponed a conference on the matter three times, then failed to respond by an agreed-upon date for supplementing its responses. After additional delays, United filed a Motion to Compel. TT never responded to the Motion, but served supplemental responses, still deficient, and later served a third supplement. The district court ordered TT to respond, imposed monetary sanctions, and warned that it would enter default judgment if TT did not comply by October 12. TT failed to respond. On October 12, United moved for default judgment. TT responded that it had not known the response deadline; that it had produced a set of supplemental responses; and that it required an expert opinion to fully respond, which would be forthcoming. On November 2, TT served supplemental responses, which disclosed its destruction of a previously undisclosed mold used to make one key component of the disputed support pedestal. United sought spoliation sanctions and added a claim for unfair competition, to which TT never responded. The Federal Circuit affirmed default judgment with relief for all of United’s claims, and a permanent injunction. View "United Construction Products, Inc. v. Tile Tech, Inc." on Justia Law

Bosch sued Cardiocom, alleging infringement of two patents. Cardiocom petitioned for inter partes review of those patents. The petitions were denied because Cardiocom failed to show a reasonable likelihood that any of the challenged claims was unpatentable. Medtronic (Cardiocom’s parent company) then filed petitions seeking inter partes review of the same patents, listing Medtronic as the sole real party in interest. Bosch argued that Medtronic had failed to name Cardiocom as a real party in interest as required by 35 U.S.C. 312(a)(2). The Patent Board granted additional discovery regarding Cardiocom’s status, then dismissed, “persuaded … that Medtronic [was] acting as a proxy for Cardiocom.” The Board cited evidence that Cardiocom was the defendant in the infringement suits, that Cardiocom had filed its own petitions for inter partes review, that Cardiocom communicated with Medtronic while Medtronic’s petitions were being prepared, and that Cardiocom paid some of the fees for preparing Medtronic’s petitions. In November 2015, the Federal Circuit dismissed Medtronic’s appeals for lack of jurisdiction and denied mandamus relief, but later recalled the mandate, following the Supreme Court’s 2016 Cuozzo decision. The court subsequently reaffirmed. The Board’s vacatur of its institution decisions and termination of the proceedings constitute decisions whether to institute inter partes review and are “final and nonappealable” under section 314(d). Nothing in Cuozzo is to the contrary. View "Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc." on Justia Law

AVC manufactures cooling systems for integrated circuits. Asetek’s patents are directed toward liquid computer cooling systems to cool integrated circuits. Asetek brought infringement lawsuits against other competitors and sent a letter accusing AVC of infringement, based on Asetek’s mistaken belief that AVC manufactured Liqmax 120s. AVC responded that it did not manufacture Liqmax 120s, but requested a meeting. Asetek responded that if AVC was not making Liqmax 120s there was no reason to meet; that it had unsuccessfully tried to cooperate with AVC previously; and that it does not license its patents. The letter stated, “Please be advised that Asetek believes that AVC is likely selling other infringing products” and that Asetek enforces its IP. A meeting ultimately occurred ; Asetek offered AVC a license at a royalty rate of 16%. AVC then filed suit alleging that AVC had designed and built certain liquid cooling products and seeking a declaration that its products did not infringe the Asetek patents and that those patents are invalid. Accepting Asetek’s assertion that it did not know that those products existed before AVC’s complaint, the district court dismissed for lack of subject matter jurisdiction. The Federal Circuit reversed. AVC alleged sufficient facts that, “under all the circumstances, show that there is a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.” View "Asia Vital Components Co. v. Asetek Danmark A/S" on Justia Law