Justia Patents Opinion Summaries

R+L claimed infringement of the 078 patent, which generally relates to an improved method of consolidating freight into trailers to optimize delivery efficiencies for the loads in each trailer. While the case was pending, R+L filed for ex parte reexamination of the patent. Although the patent survived, R+L added language to all of the claims at issue. Because the district court determined that the new claims were not substantially identical to the initial claims of the 078 patent, and because there was no dispute that Qualcomm ceased its allegedly infringing activity before the reexamination certificate issued, R+L stipulated to final judgment, dismissing its infringement claim against Qualcomm. R+L appealed the determination that the amendments made during reexamination resulted in a substantive change in claim scope. The Federal Circuit affirmed, finding that amended claim 1 is not “substantially identical” to original claim under 35 U.S.C. 252, so R+L is not entitled to infringement damages prior to issuance of the reexamination certificate. View "R+L Carriers, Inc.. v. Qualcomm, Inc." on Justia Law

Konig’s SRI Employment Agreement, stated: I agree ….To promptly disclose… all discoveries, improvements, and inventions, including software … during … my employment, and … to effect transfer of ownership … to SRI . . . . I understand that termination of this employment shall not release me from my obligations. While employed by SRI, Konig started generating documents relating to a personalized information services idea called “Personal Web” and formed a company, Utopy. Konig left SRI and filed a provisional patent application in 1999; the 040 patent issued in 2005. In 2001, Konig asked an SRI scientist to test the Utopy products. The 040 patent was eventually assigned to PUM. Konig filed another patent application in 2008. PUM was the assignee; the 276 patent issued in 2010. In 2009, PUM sued Google, asserting infringement. PUM provided interrogatory responses that asserted that the conception of the inventions was while Konig was still at SRI. Google had acquired “any rights” that SRI had and counterclaimed breach of contract. The court stated that no reasonable juror could have found that the injury was “inherently unknowable,” applied the three-year limitations period for contracts claims, and granted PUM judgment on the counterclaim. The court also entered judgment of invalidity and noninfringement. The Federal Circuit affirmed, noting that the claim construction had no effect on the outcome and declining to issue an advisory opinion. View "Personalized User Model, LLP v. Google, Inc." on Justia Law

In April 2011, while its patent application was pending with the USPTO, U.S. Water Services, which “sell[s] water treatment and purification equipment, materials, and services,” especially “to ethanol process technologies,” sued its competitor, ChemTreat, for misappropriation of trade secrets. In October 2011, the USPTO issued the 244 patent covering a method to reduce the formation of insoluble scale deposits during the production of ethanol using enzyme, phytase, in its “pHytOUT® system.”Three days before U.S. Water and ChemTreat settled the misappropriation claim, ChemTreat filed counterclaims requesting declaratory judgments of noninfringement and invalidity of the 244 patent. The suit was filed before the Leahy-Smith America Invents Act, 125 Stat. 284, took effect, so the counterclaims independently did not establish appellate jurisdiction for the Federal Circuit. The district court granted ChemTreat summary judgment as to the noninfringement counterclaim and dismissed the invalidity counterclaim. The Eighth Circuit affirmed. Evaluating the “totality of [the] circumstances,” the district court did not err in finding the misappropriation action, together with U.S. Water’s statements to its customers and supplier, produced an objective, “reasonable apprehension of suit,” and did not err in concluding declaratory judgment subject matter jurisdiction existed. The decision did not constitute an advisory opinion. View "U.S. Water Servs., Inc. v. ChemTreat, Inc." on Justia Law

Marvel Entertainment’s corporate predecessor agreed to purchase Kimble’s patent for a Spider-Man toy in exchange for a lump sum plus a 3% royalty on future sales. The agreement set no end date for royalties. As the patent neared the end of its statutory 20-year term, Marvel discovered Brulotte v. Thys Co., in which the Supreme Court held that a patentee cannot continue to receive royalties for sales made after his patent expires and sought a declaratory judgment that it could stop paying Kimble royalties. The district court granted relief. The Ninth Circuit and Supreme Court affirmed, adhering to Brulotte. A patent typically expires 20 years from its application date. 35 U S.C. 154(a)(2). At that point, the unrestricted right to make or use the article passes to the public. The Brulotte rule may prevent some parties from entering into deals they desire, but parties can often find ways to achieve similar outcomes. Congress, moreover, has had multiple opportunities to reverse Brulotte and has even rejected bills that would have replaced Brulotte’s per se rule with the rule of reason standard. Congress, not the Court, gets to make patent policy. View "Kimble v. Marvel Entertainment, LLC" on Justia Law

A jury found that Samsung smartphones infringed and diluted Apple’s patents and trade dresses amd awarded Apple $290,456,793. The Federal Circuit affirmed the verdict on the design patent infringements, the validity of two utility patent claims, and the damages awarded for the design and utility patent infringements, but reversed findings that the asserted trade dresses are protectable. Apple claimed elements from its iPhone 3G and 3GS products to define an asserted unregistered trade dress: a rectangular product with four evenly rounded corners; a flat, clear surface covering the front of the product; a display screen under the clear surface; substantial black borders above and below the display screen and narrower black borders on either side of the screen; and when the device is on, a row of small dots on the display screen, a matrix of colorful square icons with evenly rounded corners within the display screen, and an unchanging bottom dock of colorful square icons with evenly rounded corners set off from the display’s other icons. The registered trade dress claims the design details in each of the 16 icons on the iPhone’s home screen framed by the iPhone’s rounded-rectangular shape with silver edges and a black background. View "Apple, Inc. v. Samsung Elecs. Co., Inc." on Justia Law

Rapid-prototyping “additive technology” creates parts by building layer upon layer of plastics, metals, or ceramics. Subtractive technology starts with a block and cuts away layers. Additive technology include SL, fused deposition modeling, laser sintering, 3D printing, direct metal laser sintering, and digital light processing. 3DS is the sole U.S. supplier of SL machines, which use an ultraviolet laser to trace a cross section of an object on a vat of liquid polymer resin. The laser solidifies the resin it touches, while untouched, areas remain liquid. After one cross-section has solidified, the newly formed layer is lowered below the surface of the resin. The process is repeated until the object is completed. Users of SL machines often own many machines with varying sizes, speeds, and accuracy levels. 3DS began equipping some of its SL machines with wireless technology that allows a receiver to communicate with a transmitter on the cap of a resin bottle. A software-based lockout feature shuts the machine off upon detection of a resin not approved by 3DD. 3DS has approved two of Desotech’s resins and entered into negotiations for approval of additional resins. After negotiations broke down, Desotech sued, alleging tying, unreasonable restraint of trade, and attempted monopolization under the Sherman Act; tying under the Clayton Act; patent infringement; and violations of the Illinois Antitrust and Uniform Deceptive Trade Practices Acts. The district court granted 3DS summary judgment on the antitrust claims and certain state-law claims. The parties stipulated to dismissal of the remaining claims. The Federal Circuit affirmed.View "DSM Desotech Inc. v. 3D Sys. Corp." on Justia Law

Trebro’s patents involve sod harvesters: vehicles with knives that cut sod pieces from the ground, conveyor belts to transport the pieces, and mechanisms to stack them on a pallet. FireFly’s accused product is the ProSlab 150. Trebro also sells sod harvesters, including the SC2010 Slab. FireFly did not contest priority on the claims. While the preliminary injunction motion was pending, FireFly requested ex parte reexamination of thepatent, based primarily on two patents invented by the same individuals. After ordering reexamination, the U.S. Patent and Trademark Office terminated the proceeding because neither of the patents qualified as prior art because they were not considered invented] by “others’ under 35 U.S.C. 102(a) or (e) and because each was published within the one year grace period. The district court denied a preliminary injunction. The Federal Circuit vacated and remanded, noting a record that strongly suggests a likelihood of success on the merits and a likelihood of irreparable harm. The court reasoned that the nature of the market is such that money damages would likely be inadequate and that the fact that Trebro does not presently practice the patent does not detract from its likely irreparable harm.View "Trebro Mfg., Inc. v. Firefly Equip., LLC" on Justia Law

ISE asserted infringement of its patent, “Automated Exchange for Trading Derivative Securities,” directed to an automated exchange for trading options contracts that allocates trades among market professionals and assures liquidity. It distinguishes an “automated” exchange from the traditional, floor-based “open outcry” system for trading options contracts. The Chicago Board Options Exchange’s accused product, the “Chicago Board Options Exchange,” uses the Hybrid Trading System, which includes a fully screen-based trading system called “CBOEdirect” integrated with traditional, open outcry trading. On appeal, the Federal Circuit construed the term “automated exchange” as “a system for executing trades of financial instruments that is fully computerized, such that it does not include matching or allocating through the use of open-outcry” and found that the patentee disavowed all manual or partially automated systems of trading. On remand, ISE stipulated to noninfringement because it concluded that the district court’s pretrial rulings, including a statement that “it will be a jury question whether CBOEdirect is a stand alone automated exchange alongside a floor-based system or whether it is a system that includes matching or allocating through open outcry,” prevented it from proving that the accused product met the “automated exchange” limitation. The Federal Circuit affirmed the judgment of noninfringement, but reversed a finding that one claim was indefinite.View "Chicago Bd. Options Exch., Inc. v. Int'l Secs., LLC" on Justia Law

Calcar’s patents share a common specification, are derived from a priority application filed in 1997, and describe and claim a multimedia system to access vehicle information and control vehicle functions. Calcar accused Honda’s computerized navigation systems of infringement. Calcar claimed that the accused systems included additional infringing features beyond providing travel directions. Honda sought a finding of inequitable conduct, based on the actions of Calcar’s founder, Obradovich. Among coinventors, Obradovich was responsible for the patent application. Honda alleged that he deliberately withheld prior art that was material to patentability; Obradovich disclosed the existence of the 1996 Acura RL navigation system, but did not disclose additional information that would have led the PTO to deny the patent as anticipated or rendered obvious. When that system was introduced, Calcar Published “Quick Tips” booklets with condensed information from a car’s owner’s manual. In developing a guide for the 96RL, Obradovich drove the car and operated the navigation system. Calcar personnel took photographs of the system and owner’s manual. Obradovich acknowledged that the system was the basis of Calcar’s inventions. Honda argued that the operational details that he did not disclose were those that were the claimed in the patents at issue: the use of the system to display the status of vehicle functions and to search for information about the vehicle. The district court granted Honda’s inequitable conduct motion and found the patents unenforceable. The Federal Circuit affirmed. View "Am. Calcar, Inc. v. Am. Honda Motor Co." on Justia Law

uPI and Richtek design and sell DC-DC controllers that convert direct current from one voltage to another, and are embodied in chips for downstream devices such as computer motherboards. uPI was founded by former Richtek employees; its chips are imported into the U.S. either directly or as incorporated in downstream devices. Richtek complained to the International Trade Commission that uPI misappropriated Richtek’s trade secrets and infringed Richtek’s U.S. patents, in violation of the Tariff Act, 19 U.S.C. 1337. uPI offered to enter into a consent order and to cease importation of products produced using or containing Richtek’s trade secrets or infringing Richtek’s patents. Over Richtek’s objection, the ALJ entered the consent order substantially as drafted by uPI. The Commission terminated the investigation. A year later Richtek filed an Enforcement Complaint. An ALJ distinguished between products that were accused in the prior investigation and products allegedly developed and produced after entry of the Consent Order, finding violations as to the formerly accused products and that the post- Consent Order products infringed two patents, but were independently developed and not produced using Richtek’s trade secrets. The Commission affirmed with respect to the formerly accused products and reversed in part with respect to the post-Order products. The Federal Circuit affirmed concerning the formerly accused products, but reversed the ruling of no violation as to the post-Consent Order products.View "UPI Semiconductor Corp. v. Int'l Trade Comm'n" on Justia Law