Justia Patents Opinion Summaries

Oyster sued, alleging that Ciena infringed several patents. Ciena petitioned the Patent Trial and Appeal Board for inter partes review of the asserted patents. The district court stayed the litigation. The Board concluded that Ciena had failed to demonstrate by a preponderance of the evidence that any of the challenged claims were unpatentable.The Federal Circuit denied Ciena’s motion to vacate the decision. Ciena forfeited its argument that the members of the Board panel that issued the decision were not appointed in compliance with the Appointments Clause. Ciena requested that the Board adjudicate its petition and affirmatively sought a ruling from the Board members, regardless of how they were appointed. Ciena was content to have the assigned Board judges adjudicate its invalidity challenges until the Board ruled against it. View "Ciena Corp. v. Oyster Optics, LLC" on Justia Law

Inter partes review (IPR) permits a patent challenger to ask the U.S. Patent and Trademark Office to reconsider the validity of earlier granted patent claims. If a request comes more than a year after a patent infringement lawsuit against the requesting party, IPR “may not be instituted,” 35 U.S.C. 315(b). The agency’s determination of whether to institute IPR is “final and nonappealable” under section 314(d).Thryv sought IPR of Click-to-Call’s patent. The Patent Trial and Appeal Board rejected Click-to-Call’s argument that the suit was untimely, instituted review, and canceled 13 of the patent’s claims as obvious or lacking novelty. Treating the Board’s application of section 315(b) as judicially reviewable, the Federal Circuit concluded that the petition was untimely and vacated the Board’s decision.The Supreme Court vacated. Section 314(d) precludes judicial review of the agency’s application of section 315(b)’s time prescription. A challenge based on section 315(b) constitutes an appeal of the agency’s decision “to institute” an IPR. Allowing section 315(b) appeals would unwind agency proceedings determining patentability and leave bad patents enforceable. Section 314(d)’s text does not limit the review bar to section 314(a)’s question of whether the petitioner has a reasonable likelihood of prevailing. Click-to-Call’s contention is, essentially, that the agency should have refused to institute IPR. View "Thryv, Inc. v. Click-To-Call Technologies, LP" on Justia Law

Intellisoft sued Acer in California state court, asserting state law claims, including misappropriation of trade secrets. After more than three years of litigation, Acer sought to plead a patent inventorship counterclaim under federal law and thereafter removed the action to a federal district court, which denied Intellisoft’s motion to remand and later entered final judgment in favor of Acer.The Federal Circuit reversed. Removal was not proper under 28 U.S.C. 1441. Acer’s arguments do not establish that Intellisoft’s trade secret claim necessarily raised patent law issues. Intellisoft did not need to establish patent infringement to prove trade secrets misappropriation. A plaintiff’s reliance on a patent as evidence to support its state law claims does not necessarily require the resolution of a substantial patent question. Removal was not proper under section 1454, which requires that the claim supporting removal must be contained in an operative pleading. Acer’s cross-complaint was not operative, the counterclaim was never “asserted” under section 1454. View "Intellisoft, Ltd. v. Acer America Corp." on Justia Law

Myco believed its competitor, BlephEx, made false and misleading statements about Myco’s product and whether it infringed BlephEx’s patent, entitled “Method and Device for Treating an Ocular Disorder.” The district court preliminarily enjoined BlephEx from making allegations of patent infringement and from threatening litigation against Myco’s potential customers.The Federal Circuit reversed. Federal law requires a showing of bad faith before a patentee can be enjoined from communicating his patent rights. A showing of “bad faith” must be supported by a finding that the claims asserted were objectively baseless. There was no adequate basis to conclude that allegations of patent infringement would be false or misleading. Even if the injunction were narrowly tailored to allegations of infringement and threats of litigation against Myco’s potential customers, the “medical practitioner immunity” provision of 35 U.S.C. 287(c) does not blanketly preclude a patent owner from stating that a medical practitioner’s performance of a medical activity infringes a patent. Myco asked the court to assume, without any supporting evidence, that a doctor would have interpreted general statements as an accusation of patent infringement and a threat of litigation against the doctor herself. View "Myco Industries, Inc. v. Blephex, LLC" on Justia Law

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

Serta filed a patent infringement action against Casper, citing the 173, 763, and 935 patents. Those patents cover mattresses that include a channel and methods for forming it. These mattresses can have varying areas of firmness by inserting reinforcement of various types into their channels that can be located at regions where additional support is desired. Casper filed three motions for summary judgment directed to non-infringement of Casper’s accused mattresses, accused methods of manufacturing, and redesigned mattresses. While Casper’s summary judgment motions were pending, the parties executed a settlement agreement and advised the district court of the settlement. The district court nevertheless granted Casper’s summary judgment motions of non-infringement. It later denied Serta’s motions to vacate the summary judgment order and to enforce the settlement agreement. The Federal Circuit vacated and remanded with instructions to enforce the settlement agreement. There is no contention that the settlement or the relief sought by Serta is unlawful or contrary to public policy. There is also no dispute that the parties executed the agreement before the district court issued the summary judgment order; Casper has admitted that the agreement was binding. The settlement agreement mooted the case even though it included terms that required future performance. View "Serta Simmons Bedding, LLC v. Casper Sleep Inc." on Justia Law

SIT sued Google for patent infringement in the Eastern District of Texas. Under 28 U.S.C. 1400(b), “[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.” Under Supreme Court precedent, “a domestic corporation ‘resides’ only in its state of incorporation for purposes of the patent venue statute; the Federal Circuit has held that a “regular and established place of business” must be: “a physical place in the district”; “regular and established”; and “the place of the defendant.” Google provides video and advertising services to residents of the Eastern District of Texas through the Internet. Google Global Cache (GGC) servers function as local caches for Google’s data. Google contracts with internet service providers within the district to host Google’s GGC servers. The GGC servers cache only a small portion of content that is popular with nearby users but can serve that content with shorter wait times than Google’s central server infrastructure due to their physical proximity to the ISP’s users. No Google employee installed, performed maintenance on, or physically accessed any of the GGC servers. The district court denied Google’s motion to dismiss. The Federal Circuit ordered that the case be dismissed or transferred. A “regular and established place of business” requires the regular, physical presence of an employee or other agent of the defendant conducting the defendant’s business at the alleged “place of business.” View "In Re: Google LLC" on Justia Law

Audio’s patent describes a system for organizing audio files, by subject matter, into “program segments.” ’The system arranges the segments through a “session schedule” and allows a user to navigate through the schedule in various ways. Audio sued CBS, alleging infringement. Later that year, a third party sought inter partes review (IPR) of the patent under 35 U.S.C. 311–319. The Patent Trial and Appeal Board instituted review but the district court case proceeded to trial, with the issues limited to infringement and invalidity of claims 31–34. A jury found that CBS had infringed claims 31–34 and failed to establish by clear and convincing evidence that those claims were invalid. The jury awarded Audio $1,300,000. The Board issued a final written decision in the IPR, concluding that claims 31–35 are unpatentable. The district court stayed entry of its judgment until completion of direct review of the Board’s decision. The Federal Circuit affirmed the Board’s decision. The district court then entered a judgment in favor of CBS. The Federal Circuit affirmed, rejecting Audio’s argument that the courts lacked jurisdiction. To the extent that Audio challenged the district court’s determination of the consequences of the affirmed final written decision for the proper disposition of this case, Audio conceded that governing precedent required judgment for CBS. View "Personal Audio, LLC v. CBS Corp." on Justia Law

In “Arthrex,” the Federal Circuit concluded that the appointments of Administrative Patent Judges (APJs) violated the Appointments Clause and vacated a decision made by a panel of APJs. Customedia sought to assert the same challenge. The Federal Circuit denied a motion to vacate, finding that Customedia forfeited its Appointments Clause challenge. Arguments not raised in the opening brief are waived. Appointments Clause challenges are not jurisdictional and must be properly raised on appeal. Customedia did not raise any semblance of an Appointments Clause challenge in its opening brief or raise this challenge in a motion filed prior to its opening brief. View "Customedia Technologies,, LLC v. Dish Network Corp." on Justia Law

Inspired Development sued KidsEmbrace for breach of contract and other related state law claims in federal district court on the basis of diversity jurisdiction under 28 U.S.C. 1332(a). The dispute involved the purported breach of a patent-licensing agreement by failure to pay outstanding royalties. The district court granted summary judgment in KidsEmbrace’s favor on certain claims. On appeal, the Eleventh Circuit discovered that diversity jurisdiction did not exist. The district court concluded on remand that it retained jurisdiction over the suit based on federal question jurisdiction. The Eleventh Circuit transferred the case to the Federal Circuit, which vacated and remanded for dismissal. The parties’ claims did not arise under the patent laws pursuant to 28 U.S.C. 1338(a). No claims allege a cause of action created by federal patent law. This is a state law contract case for past due royalties. Inspired Development need not demonstrate that KidsEmbrace actually practiced the licensed patents, and the question of infringement is not a “necessary element” of the claim. Finding a federal question here merely because this contract implicates a run-of-the-mill question of infringement or validity would undoubtedly impact the wider balance between state and federal courts. View "Inspired Development Group v. Inspired Products Group, LLC" on Justia Law