Justia Patents Opinion Summaries

United owns three patents that recite systems for using a landline telephone connection for both voice communication and data transmission. They are directed to the use of exchanges that combine the voice and data components of the signal for transmission over the telephone line, and filters that separate those components so that they can be received as separate voice and data signals by a user. In 2002, United’s predecessor sued EarthLink, charging direct infringement because EarthLink offered its customers an Internet connection service based on a broadband digital communications technology, Asymmetrical Digital Subscriber Line (ADSL). EarthLink argued that the accused ADSL system did not include a “telephone device” as required by all asserted claims. The jury returned a general verdict of non-infringement. The Federal Circuit affirmed without opinion. In 2011, United sued CenturyTel and Qwest for infringing the same claims of the three patents. The district court dismissed on collateral estoppel grounds, noting that United did not articulate how the defendants’ systems were different from the systems that were the subjects of the Earthlink trial other than that the defendants’ services included telephone devices. The Federal Circuit reversed, reasoning that the earlier verdict could have been based on several grounds. View "United Access Techs., LLC v. CenturyTel Broadband Servs., LLC" on Justia Law

Teva’s patent covers a multiple sclerosis drug. When Sandoz tried to market a generic version of the drug, Teva sued for infringement. Sandoz countered that the patent was invalid because a claim that the active ingredient had “a molecular weight of 5 to 9 kilodaltons” was indefinite under 35 U. S. C. 112, for not stating which of three methods was used to determine that weight. The district court upheld the patent. Reversing, the Federal Circuit reviewed all aspects of claim construction de novo, including the determination of subsidiary facts. The Supreme Court vacated. When reviewing a district court’s resolution of subsidiary factual matters made during construction of a patent claim, the Federal Circuit must apply a “clear error,” not a de novo, standard of review. FRCP 52(a)(6) states: a court of appeals must not set aside “[f]indings of fact” unless they are “clearly erroneous.” Clear error review is particularly important in patent cases because a district judge has more opportunity to gain “familiarity with specific scientific problems and principles” than an appeals judge who must read a written transcript. When reviewing only evidence intrinsic to the patent, the judge’s determination is a determination of law, and the court of appeals will review that construction de novo; where the court needs to consult disputed extrinsic evidence to understand, for example, background science, courts need to make subsidiary factual findings about the extrinsic evidence. The ultimate construction of the claim is a legal conclusion subject to de novo review, but to overturn resolution of an underlying factual dispute, the appellate court must find that the judge, in respect to those findings, committed clear error. Here, the district court made a factual finding, crediting Teva’s expert’s account about how a skilled artisan would understand molecular weights. When the Federal Circuit reviewed the decision, it failed to accept that explanation without finding that the determination was “clearly erroneous.” View "Teva Pharma. USA, Inc. v. Sandoz, Inc." on Justia Law

In 2005, NeuroRepair retained Nath Law Group for prosecution of patent applications. NeuroRepair became dissatisfied and requested that Nath transfer its files to another law firm to continue prosecution before the USPTO. Nath withdrew from representation of NeuroRepair before the USPTO, but continued to assist NeuroRepair with other matters. NeuroRepair filed suit in 2009, alleging professional negligence, breach of fiduciary duty, breach of written contract, breach of oral contract, breach of implied covenant of good faith and fair dealing, negligent misrepresentation, and false promise. Nath removed the case to federal court on the ground that it was “a civil action relating to patents.” After judgment in Nath’s favor in 2012, NeuroRepair appealed, challenging the court’s subject matter jurisdiction in light of the Supreme Court’s 2013 pronouncement in Gunn v. Minto. The Federal Circuit vacated, with instructions to remand to California state court; no federal issue is necessarily raised, because any federal issues raised are not substantial in the relevant sense. Federal court resolution of malpractice claims that do not raise substantial issues of federal law would usurp the important role of state courts in regulating the practice of law within their boundaries, disrupting the federal-state balance approved by Congress. View "NeoroRepair, Inc. v. Nath Law Grp." on Justia Law

ABB designs, produces, and sells exhaust-gas turbochargers and turbocharger parts, primarily for use in large, ocean-going vessels and in power plants. In 2012, ABB filed suit, accusing TurboUSA, Inc., and TurboNed Service B.V. of infringing two of ABB’s turbocharger-related patents. Claiming that the infringement was willful, ABB alleged that its former employee had improperly obtained and transferred to TurboUSA confidential information relating to ABB parts embodying its patented inventions. After filing its original complaint, ABB received information that, it alleges, suggested that Hans Franken, who worked for ABB until 1986 and is TurboNed’s former owner and TurboUSA’s current indirect owner, and his son Willem, who is TurboUSA’s current president, collaborated in the covert misappropriation of ABB’s trade secrets concerning the design, manufacture, servicing, and pricing of ABB’s turbochargers and parts, and added claims of misappropriation of trade secrets under Fla. Stat. 688.001–688.009 and of civil conspiracy to misappropriate trade secrets. Before discovery, the district court dismissed for failure to state a claim. The Federal Circuit reversed, concluding that the court relied on judgments about the merits that go beyond what is authorized at the complaint stage. View "ABB Turbo Sys. AG v. TurboUSA, Inc." on Justia Law

Versata sued Callidus, alleging infringement the 326, 304, and 024 patents, concerning management and tracking of sales information by a financial services company. Seven months after briefing on motions to dismiss or to transfer, the district court denied both. Callidus answered and counterclaimed, asserting its own patents against Versata and stated that it would seek post-grant review of Versata’s patents under the Transitional Program for Covered Business Method (CBM) Patents under the America Invents Act, 125 Stat. 284, 329–31. The district court declined to consider a stay until the Patent Trial and Appeal Board (PTAB) decided to institute CBM review. PTAB instituted CBM review for each patent, finding each challenged claim more likely than not directed to unpatentable subject matter. Callidus renewed its motion. The court granted a stay as to the 326 patent but denied it as to the other patents. The Federal Circuit reversed, finding that the court “clearly erred” in evaluating the burden-of-litigation factor exclusively through a backward-looking lens. The correct test focuses prospectively on the impact of the stay on the litigation, not on the past actions of the parties. Framed appropriately, it is clear that a stay will reduce the future burdens of litigation. View "Versata Software, Inc. v. Callidus Software, Inc." on Justia Law

AntiCancer, Inc. owns patents for technology related to the imaging of gene expression using a green fluorescent protein linked to a gene promoter. The fluorescent protein is derived from a species of green-glowing jellyfish, Aequorea victoria. The patented inventions are described as useful for drug discovery and evaluation in cancer control and treatment. The district court entered summary judgment of noninfringement, not on the substantive merits of any issue, but on a procedural aspect at the threshold of the litigation arising from application of the Patent Local Rules of the Southern District of California. The court imposed a fee-shifting sanction as a condition of permitting AntiCancer to supplement the Preliminary Infringement Contentions that found to be defective under Patent Local Rule 3.1. The Federal Circuit vacated the condition and remanded. Considering the language and purposes of the Local Rule, and the record of what Anti-Cancer disclosed in its Contentions and the limited, specific criticisms of the Contentions’ sufficiency, there was no reasonable basis for making the finding of bad faith that would be required to sustain the fees sanction. View "Anticancer Inc. v. Pfizer, Inc." on Justia Law

P&G owns patents that claim systems or methods for whitening teeth. P&G sued TT, alleging infringement of the three patents; in another district, Clio, which manufactured the accused products, sought a declaratory judgment action against P&G, alleging that the patents were invalid, unenforceable, or not infringed. In its declaratory-judgment action. P&G amended its complaint in the Ohio action to add Clio as a defendant. When TT and Clio then moved for a stay or a transfer to New Jersey, the Ohio district court denied both motions. The New Jersey district court dismissed Clio’s declaratory-judgment action there without prejudice. Clio then timely petitioned the PTO to institute inter partes reviews of the patents under 35 U.S.C. 311-319. P&G responded, arguing that Clio’s earlier declaratory judgment action involving the same three patents, though it had been voluntarily dismissed, barred the institution of inter partes reviews under section 315(a). The Patent Trial and Appeal Board disagreed and granted all three petitions, because 35 U.S.C. 315(a)(1) states: “An inter partes review may not be instituted if, before the date on which the petition for such a review is filed, the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent.” P&G sought a writ of mandamus under 28 U.S.C. 1651. The Federal Circuit denied the petition, stating that mandamus action is not available. View "In re: Procter & Gamble Co." on Justia Law

In 2010, St. Jude sued Volcano, alleging infringement of five patents. Volcano counterclaimed, asserting infringement of the 994 patent. More than two years later, the district court, based on the stipulations of the parties, dismissed all claims relating to the 994 patent. Six months after the dismissal, St. Jude sought inter partes review of the 994 patent. The Director of the U.S. Patent & Trademark Office, through the Board, denied the petition, stating that a counterclaim alleging infringement constitutes a “complaint alleging infringement of the patent” under 35 U.S.C. 315(b), which bars institution of an inter partes review of a patent if the petitioner was served with a complaint alleging infringement of the patent more than one year before filing the petition. Accordingly, the 2010 counterclaim against St. Jude barred the Director from instituting an inter partes review. The Federal Circuit dismissed, based on the structure of the inter partes review provisions, on the language of section 314(d) within that structure, and on its jurisdictional statute read in light of those provisions.View "St. Jude Medical, Cardiology Div., Inc. v. Volcano Corp." on Justia Law

Vaillancourt obtained ownership of the 221 patent from his mother through an assignment recorded with the PTO in 2011. Vaillancourt represents that the assignment took effect in 2005. In 2010, BD requested an inter partes reexamination of the 221 patent. During the reexamination proceedings, Vaillancourt added claims 21 through 37 to the original 20 claims. The patent examiner rejected all 37 claims. While an appeal was pending, Vaillancourt assigned to VLV “the entire right, title and interest in and to” the 221 patent, “including full and exclusive rights to sue upon and otherwise enforce” the patent. VLV sued BD for infringement in its own name and did not join Vaillancourt. The Board subsequently affirmed all of the examiner’s rejections. Despite no longer being the owner of the patent, Vaillancourt unsuccessfully requested rehearing in his own name. Vaillancourt appealed to the Federal Circuit, identifying himself in the notice of appeal as both the patent owner and appellant. BD moved to dismiss for lack of jurisdiction. The Federal Circuit ultimately dismissed for lack of standing.View "Vaillancourt v. Becton Dickinson & Co." on Justia Law

AVS filed a patent infringement suit in the Eastern District of Texas, five months after AVS was incorporated in the Western District of Texas. AVS is a subsidiary of a patent-licensing company Acacia and shares an office in the Eastern District of Texas with other Acacia subsidiaries of Acacia. Some of the patents at issue are in the same family as patents that were the subject of cases previously litigated in the Eastern District of Michigan. A few months later, Toyota and Gulf States moved to sever claims against Gulf States; to transfer the claims against Toyota to the Eastern District of Michigan under 28 U.S.C. 1404(a); and to stay claims against Gulf States s pending resolution of the transferred case. Gulf States is located in Houston, Texas (the Southern District of Texas), and is an independent distributor of Toyota vehicles in five states. The district court denied the motions. The Federal Circuit vacated. Nothing favors the transferor forum, but several factors favor the transferee forum. Toyota has a clear right to transfer. View "In re: Toyota Motor Corp." on Justia Law