Justia Patents Opinion Summaries

Dr. Arunachalam owns the 178 patent, which has been undergoing reexamination since November 2008. In 2014, the Patent Trial and Appeal Board affirmed the rejection of claims 9– 16, but designated a new ground of rejection for claim 16. Arunachalam elected to reopen prosecution of the claims, after which the examiner issued a final rejection in June 2015. Rather than appeal the examiner’s final rejection to the Board, Arunachalam appealed to the Federal Circuit, which dismissed for lack of jurisdiction to hear a non-final appeal from the Patent Office. A patent owner dissatisfied with an examiner’s rejection of a claim in reexamination may proceed with a two-step appeals process. First, pursuant to 35 U.S.C. 134(b) (2002), a patent owner in any reexamination proceeding may appeal from the final rejection of any claim by the primary examiner to the Board. If the patent owner is dissatisfied with the Board’s final decision, the patent owner may appeal the decision to the Federal Circuit, 35 U.S.C. 141. View "In re: Arunachalam" on Justia Law

Diamond sued the auto companies, alleging infringement of its patents. The district court dismissed the actions finding that agreements between Diamond and Sanyo, the original assignee of the patents-in-suit, did not confer patentee status on Diamond, allowing Diamond to sue without joining Sanyo. The court later held that nunc pro tunc agreements executed by Diamond and Sanyo after its decision in Diamond did not affect its determination. The Federal Circuit affirmed. The original agreements did not convey all of the substantial rights in the patents to Diamond. Precedent bars consideration of the subsequent agreements. View "Diamond Coating Techs., LLC v. Hyundai Motor Am." on Justia Law

Heartland, an LLC organized and existing under Indiana law is headquartered in Indiana. Kraft, organized and existing under Delaware law, has its principal place of business in Illinois. Kraft filed suit in the U.S. District Court for the District of Delaware alleging that Heartland’s liquid water enhancer products infringe Kraft’s patents. Heartland moved to dismiss for lack of personal jurisdiction or to transfer venue to the Southern District of Indiana. Heartland alleged that it is not registered to do business in Delaware, has no local presence there, has not entered into any supply contracts in Delaware or called on any accounts there to solicit sales, but admitted it ships orders of the accused products into Delaware. In 2013, these shipments, 44,707 cases of the product, generated at least $331,000 in revenue, and were about 2% of Heartland’s total sales of the accused products. The Magistrate Judge determined that it had specific personal jurisdiction over Heartland for claims involving the accused products and rejected Heartland’s arguments that 2011 amendments to 28 U.S.C. 1391 negated precedent governing venue for infringement suits. The district court denied Heartland’s motions. The Federal Circuit denied Heartland’s petition for mandamus to either dismiss or transfer the suit. View "In re: TC Heartland LLC" on Justia Law

Rembrandt sued, alleging that JJVC’s Acuvue Advance® and Oasys® contact lenses infringed Rembrandt’s patent. Rembrandt relied on expert testimony from Dr. Beebe, who presented test results, to prove that the accused lenses met the “surface layer” and “soft” claim limitations. During cross-examination, Beebe drastically changed his testimony regarding his testing methodology. JJVC relied on expert testimony from Dr. Bielawski that its lenses did not meet the “surface layer” limitation, but did not present expert testimony concerning the “soft” limitation. In his testimony, Bielawski impugned Beebe’s credibility. The court ultimately struck Beebe’s testimony regarding the testing and granted judgment as a matter of law that Rembrandt failed to prove that the accused lenses were “soft.” The Federal Circuit affirmed. After trial, Rembrandt received information suggesting that Bielawski testified falsely. Although the court denied Rembrandt’s request for post-trial discovery, Rembrandt received much of what it sought from Bielawski’s employer, the University of Texas, through an open records request. The parties no longer dispute that Bielawski testified falsely on material issues. The Federal Circuit reversed the district court’s denial of a motion for a new trial. The district court erred in requiring proof that JJVC or its counsel was complicit in Bielawski’s false testimony. View "Rembrandt Vision Techs., L.P. v. Johnson & Johnson Vision Care, Inc." on Justia Law

MPHJ’s 381 patent, entitled “Distributed Computer Architecture and Process for Virtual Copying,” issued in 2004 and discloses a method and system that “extend[] the notion of copying . . . to a process that involves paper being scanned from a device at one location and copied to a device at another location.” “What makes Virtual Copier as simple as its physical counterpart . . . is the fact that it replicates the identical motions that a user who is making a copy using a physical photocopier goes through.” On inter partes review initiated by HP, the Patent Trial and Appeal Board found certain claims not patentable as anticipated and one claim (13) not unpatentable as anticipated. The Federal Circuit affirmed, rejecting HP’s argument that the PTO should have reviewed claim 13 to determine whether it was unpatentable as obvious. The court stated that it cannot review the decision not to institute. View "HP Inc. v. MPHJ Tech. Inv., LLC" on Justia Law

MPHJ’s 381 patent, entitled “Distributed Computer Architecture and Process for Virtual Copying,” issued in 2004 and discloses a method and system that “extend[] the notion of copying . . . to a process that involves paper being scanned from a device at one location and copied to a device at another location.” “What makes Virtual Copier as simple as its physical counterpart . . . is the fact that it replicates the identical motions that a user who is making a copy using a physical photocopier goes through.” On inter partes review initiated by HP, the Patent Trial and Appeal Board found certain claims not patentable as anticipated and one claim (13) not unpatentable as anticipated. The Federal Circuit affirmed, rejecting HP’s argument that the PTO should have reviewed claim 13 to determine whether it was unpatentable as obvious. The court stated that it cannot review the decision not to institute. View "HP Inc. v. MPHJ Tech. Inv., LLC" on Justia Law

Cardpool sued for infringement of its patent entitled “System and Method for Brand Name Gift Card Exchange.” Plastic Jungle’s defenses were obviousness, 35 U.S.C. 103, and that the claimed subject matter was patent-ineligible under 35 U.S.C. 101. The court agreed as to ineligibility and dismissed. Before an appeal was decided, Cardpool sought ex parte reexamination, 35 U.S.C. 304. Before reexamination was completed, the Federal Circuit affirmed without opinion the judgment of ineligibility under section 101. The PTO issued a Reexamination Certificate in 2014, finding amended claims and new claims patentable under section 103. The Federal Circuit then granted rehearing, vacated its summary affirmance of section 101 invalidity, and remanded to the district court, but declined to vacate the invalidity judgment. The district court declined the parties’ joint request for vacatur of its invalidity determination, stating that no Article III court had reviewed the Cardpool reexamined claims. The Federal CIrcuit affirmed: the denial was within the district court’s discretion and the premise of the motion was both speculative and inaccurate. The district court’s final judgment as to an original group of claims does not automatically render that judgment res judicata as to new claims granted upon reexamination. View "Cardpool, Inc. v. Plastic Jungle, Inc." on Justia Law

In consolidated cases, patent-holder plaintiffs market drugs and have patents in the FDA’s Approved Drug Products with Therapeutic Equivalence Evaluations publication (Orange Book), 21 U.S.C. 355(b)(1). Mylan filed Abbreviated New Drug Applications (ANDA), 21 U.S.C. 355(j), seeking FDA approval to market generic versions of the drugs, certifying that the Orange Book patents are invalid or would not be infringed by the proposed drugs. The plaintiffs sued in Delaware under 35 U.S.C. 271(e)(2)(A). Mylan is incorporated in, and has its principal place of business in, West Virginia and submitted its ANDAs in Maryland; it intends to direct sales into Delaware, among other places, once it has FDA approval. Mylan sent notices to the plaintiffs in New York, Ireland, Delaware and Sweden. One plaintiff is incorporated in Delaware, the U.S. subsidiary of another has its principal place of business in Delaware. Both have sued others for infringement in Delaware. Each district court concluded that Delaware had sufficient contacts related to the subject of these cases to exercise specific personal jurisdiction over Mylan. The judges disagreed about whether Delaware could exercise general personal jurisdiction (independent of suit-related contacts) on the ground that Mylan consented to jurisdiction in registering to do business. Each declined to dismiss. The Federal Circuit affirmed on the issue of specific jurisdiction, declining to address general personal jurisdiction. View "Acorda Therapeutics, Inc. v. Mylan Pharma., Inc." on Justia Law

Halo, a Hong Kong company that designs and sells high-end modern furniture, owns two U.S. design patents, 13 U.S. copyrights, and one U.S. common law trademark, all relating to its furniture designs. Halo’s common law trademark, ODEON, is used in association with at least four of its designs. Halo sells its furniture in the U.S., including through its own retail stores. Comptoir, a Canadian corporation, also designs and markets high-end furniture that is manufactured in China, Vietnam, and India. Comptoir’s furniture is imported and sold to U.S. consumers directly at furniture shows and through distributors, including in Illinois. Halo sued, alleging infringement and violation of Illinois consumer fraud and deceptive business practices statutes. The district court dismissed on forum non conveniens grounds, finding that the balance of interests favored Canada and that Canada, where the defendants reside, was an adequate forum. The Federal Circuit reversed. The policies underlying U.S. copyright, patent, and trademark laws would be defeated if a domestic forum to adjudicate the rights they convey was denied without a sufficient showing of the adequacy of the alternative foreign jurisdiction; the Federal Court of Canada would not provide any “potential avenue for redress for the subject matter” of Halo’s dispute. View "Halo Creative & Design, Ltd. v. Comptoir des Indes Inc." on Justia Law

Queen’s University at Kingston, Canada, owns patents directed to Attentive User Interfaces, which allow devices to change their behavior based on the attentiveness of a user—for example, pausing or starting a video based on a user’s eye-contact with the device. Queen’s sued, alleging that Samsung’s SmartPause feature infringed those patents. Throughout fact discovery, Queen’s University refused to produce certain documents. It produced privilege logs that withheld documents based on its assertion of a privilege relating to communications with its patent agents. A magistrate granted Samsung’s motion to compel, finding that the communications between Queen’s University employees and their non-attorney patent agents are not subject to the attorney-client privilege and that a separate patent-agent privilege does not exist. The district court declined to certify the issue for interlocutory appeal, but agreed to stay the production of the documents at issue pending a petition for writ of mandamus. The Federal Circuit granted that petition, finding that, consistent with Federal Rule of Evidence 501, a patent-agent privilege is justified “in the light of reason and experience” and extends to communications with non-attorney patent agents when those agents are acting within the agent’s authorized practice of law before the Patent Office. View "In Re: Queen's Univ. at Kingston" on Justia Law