Justia Patents Opinion Summaries

MRC owns the 488 patent, claiming an ornamental design for a football jersey for a dog, and the 487 patent, which claims a similar baseball jersey. Cohen is the named inventor and principal shareholder of MRC and assigned his rights to that company. Hunter is a retailer of licensed sports consumer products, including pet jerseys and previously purchased pet jerseys for dogs from Cohen through companies with which he was affiliated. Cohen claims that in 2009 he designed another pet jersey, known as the “V3” jersey, which later became the subject of the 488 patent. Hunter began purchasing the V3 jersey in 2009. In 2010, Cohen filed a patent application for the V3 jersey and the baseball equivalent that became the subject of the 487 patent. Cohen informed Hunter that he no longer intended to do business with Hunter because Hunter was having difficulty making payments. Hunter sought proposals from other companies to manufacture and supply it with pet jerseys like the V3 and contracted with CDI. MRC sued Hunter and CDI for willful infringement. The district court granted summary judgment in favor of Hunter and CDI, finding both patents invalid as obvious under 35 U.S.C. 103(a). The Federal Circuit affirmed.View "MRC Innovations, Inc. v. Hunter Mfg., LLP" on Justia Law

In 2006, Allen and Gillman agreed to adapt Allen’s electronic payment system, then used in the automotive industry, to process health care claims. Their contracts provided that Allen’s company, StoneEagle, owned the new system technology. StoneEagle licensed the technology to Talon, which was responsible for marketing. Allen applied for a patent on the system, listing himself as the sole inventor. Gillman had some role in drafting the application and in the application process. Although not listed as an inventor, Gillman had an ownership interest in the patent application until at least July 2010, when he assigned his interest to StoneEagle. The patent issued in September 2010. By 2011, the relationship had soured. StoneEagle sought a declaratory judgment that Allen was the sole inventor and owner of the patent and asserted state law trade secret misappropriation claims. The court issued a preliminary injunction prohibiting use or disclosure of StoneEagle’s trade secrets and confidential information. StoneEagle terminated the license agreement, but Talon and Gillman allegedly started a competing venture. The district court denied a contempt order and clairifed the injunction. The Federal Circuit remanded with instructions to dismiss, finding that the court lacked jurisdiction over the case when StoneEagle initiated the lawsuit because it did not did not allege an actual controversy concerning inventorship.View "Stoneeagle Servs., Inc. v. Gillman" on Justia Law

Hauge and his former employer, ERI, disputed ownership of intellectual property rights related to “pressure exchangers,” a type of energy recovery device used in reverse osmosis. In 2001 they entered into an Agreement. The district court adopted the Agreement, holding that ERI was to be the sole owner of three U.S. patents and one pending patent application. After expiration of the Agreement’s non-compete clause, in 2004, Hauge filed a patent application, titled “Pressure Exchanger,” and a utility application. The patent issued in 2007, describing “[a] pressure exchanger for transferring pressure energy from a high-pressure fluid stream to low-pressure fluid stream.” In 2009, Hauge’s new company, Isobarix, unsuccessfully attempted to reach a new agreement with ERI. Isobarix began selling a pressure exchanger, called “XPR.” Hauge entered into a consulting agreement with two ERI employees. ERI sought an Order to Show Cause, in 2012, submitting an expert’s declaration that Isobarix was using pressure exchanger technology from pre-March 19, 2001 in design and manufacture of XPR, which is “virtually identical to the ERI pressure exchanger” in operation. The court entered a Contempt Order, finding that allowing Hauge to develop new products using technology he assigned to ERI solely because the new inventions post-date the Agreement would render the Agreement useless. The Federal Circuit vacated, finding that Hauge did not violate the “four corners” of the 2001 Order.View "Energy Recovery, Inc. v. Hauge" on Justia Law

Danisco and Novozymes compete as suppliers of Rapid Starch Liquefaction products, genetically modified industrial enzymes that convert plant-based material into ethanol. They have patents that claim α-amylase enzymes, genetically engineered through substitution of amino acids in the peptide sequence to improve liquefaction performance. Novozymes has sued Danisco several times. Once Novozymes amended a pending patent application to claim one of Danisco’s new products, and sued Danisco the same day that the patent issued. Danisco owns the 240 patent, issued 2011 and claiming priority from a 2008 provisional application, claiming a variation for increased viscosity reduction in a starch liquefaction assay; it is the active ingredient in Danisco’s RSL products. After the PTO issued a Notice of Allowance, Novozymes amended a pending application to claim the enzyme, and contested entitlement to priority, arguing that its amended claim covered the same invention as the 240 patent. After Danisco’s 240 patent issued, Novozymes requested continued examination and made comments about its refusal to “acquiesce.” Upon issuance of Novozymes’s 573 patent, Danisco sought declaratory judgments that its products did not infringe and that the 573 patent was invalid, or that its 240 patent had priority under 35 U.S.C. 291. The district dismissed, acknowledging that Novozymes’s 573 patent presented a substantial risk to Danisco, but that Danisco’s action was filed before Novozymes could take action to enforce its rights. The Federal Circuit reversed, holding that the totality of the circumstances established a justiciable controversy. View "Danisco U.S. Inc. v. Novozymes A/S, Inc." on Justia Law

Ancora’s patent, entitled “Method of Restricting Software Operation within a License Limitation,” describes a method of preventing unauthorized software use by checking whether a program is operating within its license and taking remedial action if it is not. Methods for checking license coverage of software were known at the time of application, but some were vulnerable to hacking, while others were expensive and inconvenient to distribute. The specification claims to overcome those problems by using memory space associated with the computer’s basic input/output system (BIOS), rather than other space, to store encrypted license information for the verification process. While the contents of BIOS space may be modified, the level of expertise needed to do so is unusually high, and the risk of accidentally rendering the computer inoperable is too high for the ordinary hacker. The method eliminates the expense and inconvenience of using additional hardware. Ancora sued, alleging that products running Apple’s iOS operating system infringed the patent. Ancora stipulated to non-infringement under the district court’s construction of the claim term “program” and appealed that construction. Apple cross-appealed. The Federal Circuit reverses the construction of “program” as limited to application programs, affirmed a conclusion that the terms “volatile memory” and “non-volatile memory” are not indefinite, and remanded.View "Ancora Tech., Inc. v. Apple, Inc." on Justia Law

Align’s Invisalign System, an alternative to conventional braces, uses a series of clear dental aligners that are worn sequentially over time to adjust the position of a patient’s teeth. The aligners must be custom-designed for the patient’s unique teeth. Align’s asserted patents are directed to methods and treatment plans using digital data sets. In 2005, Align’s founder and former CEO founded OrthoClear and used former Align employees to manufacture dental aligners. Align filed a complaint with the International Trade Commission, alleging that OrthoClear violated 19 U.S.C. 1337 by importing, selling for importation, or selling within the U.S., aligners that infringe Align’s patents, and by misappropriating Align’s trade secrets. A 2006 settlement required OrthoClear to assign its entire intellectual property portfolio to Align. The Commission entered the Consent Order and terminated the investigation. Suspecting that OrthoClear and others were violating the Consent Order, Align sought an enforcement proceeding. Rather than issuing an “initial determination,” the ALJ issued an order, denied a motion to terminate and scheduled a trial. The Commission concluded that the order constituted an “initial determination,” subject to its review, reversed, and terminated the enforcement proceeding, finding that the accused digital data sets were not covered by the scope of the consent order. The Federal Circuit vacated, finding that the Commission erred in reviewing the order. View "Align Tech., Inc. v. Int'l Trade Comm'n" on Justia Law

Stauffer, pro se, filed a qui tam action against Brooks Brothers under the then-version of the false-marking statute, 35 U.S.C. 292, claiming that Brooks Brothers marked its bow ties with expired patent numbers. In 2011, while the action was pending, the President signed into law the America Invents Act, 125 Stat. 284A, which eliminated the false-marking statute’s qui tam provision, so that only a “person who has suffered a competitive injury” may bring a claim. The AIA also expressly states that marking a product with an expired patent is not a false-marking violation and that the amendments apply to all pending cases. Stauffer argued that the AIA amendments were unconstitutional because they amounted to a pardon by Congress, violating the doctrine of separation of powers, and also violated the common-law principle that prohibits use of a pardon to vitiate a qui tam action once the action has commenced. The district court dismissed for lack of standing. The Federal Circuit affirmed, finding that the amendments did not constitute a pardon and that even if the law had not changed, Stauffer might have lost his lawsuit, and, therefore, could not have acquired a private-property interest in his share of the statutory penalty. View "Stauffer v. Brooks Brothers, Inc." on Justia Law

Defendant appealed the district court's remand to state court. Plaintiff moved to dismiss the case. At issue was whether the district court has jurisdiction over an inventorship dispute where the contested patent has not yet been issued. The court concluded that, regardless of whether the removed complaint included an inventorship dispute, that dispute was inadequate to establish the district court's jurisdiction because the allegations indicated that no patent had issued; by raising a timely objection to removal, plaintiff properly preserved its jurisdictional argument; and because removal was improper and the case had not yet been tried on the merits, binding precedent dictated that the court remand the case to state court. Accordingly, the court affirmed the district court's remand order as amended and dismissed plaintiff's motion and cross-motion. View "Camsoft Data Sys., Inc. v. Southern Electronics Supply, et al." on Justia Law

Augme sued Yahoo! alleging infringement of certain claims of two patents that disclose adding functionality, such as media or advertisements, to a web page. Yahoo! counterclaimed that Augme and World Talk Radio infringed certain claims of its patent. After claim construction, the court granted Yahoo! summary judgment of noninfringement and held that certain means-plus-function terms in claims 19 and 20 of Augme’s patent were indefinite. The parties stipulated to infringement of the asserted claims of Yahoo!’s patent based on the court’s claim construction. The Federal Circuit affirmed that Yahoo!’s accused systems do not infringe the Augme patents either literally or under the doctrine of equivalents and that certain claims are indefinite. The court also upheld the district court’s construction of the claim term “server hostname.”View "Augme Techs, Inc. v. Yahoo! Inc." on Justia Law

In 1987, Krauser, a periodontist, designed a dental implant system. He paid BHI’s predecessor to produce drawings and prototypes. In1991, the parties entered into a written agreement that specified that Krauser would develop new products for the company to produce and sell and that the drawings were “property of [BHI].” Krauser was entitled to royalties. Krauser obtained a patent covering one component of the system and listing Krauser as the inventor. The company subsequently secured patents covering dental implant systems, naming Shaw as the sole inventor. Krauser sued the company and Shaw for a declaration of ownership rights and for copyright and patent infringement. While the suits were pending, the company filed for bankruptcy, and Krauser filed claims in bankruptcy court. In a settlement agreement, Krauser granted the company a 10-year patent license and “all rights . . . [to] the dental implant system currently being manufactured.” The bankruptcy court approved the agreement. Later, several patents on dental implant systems issued to BHI. None listed Krauser as an inventor. Krauser alleged that BHI failed to pay the full amount of royalties or submit to required audits and claimed default. The district court granted BHI summary judgment, construing the settlement to apply only to implants being manufactured in 1996, not implants manufactured at the time of litigation, and finding that Krauser had no ownership rights. The Eleventh Circuit transferred the case “[b]ecause the Federal Circuit has exclusive appellate jurisdiction … relating to patents.” The Federal Circuit transferred the case back, noting that Krauser had dropped his claim of inventorship. View "Krauser v. Biohorizons, Inc." on Justia Law