Justia Patents Opinion Summaries

Bass, a professor of biochemistry at UUtah, studies RNA interference (RNAi), a phenomenon in which RNA plays a role in silencing expression of individual genes. Her employment contract assigns all patent rights arising from her work to UUtah. Tuschl, a researcher employed by UMass, is also active in RNAi research. Bass claims that Tuschl’s patents disclosed and claimed her conception. UUtah believes that Bass is the sole or a joint inventor of the Tuschl patents. UUtah asked assignees of those patents to cooperate in petitioning the U.S Patent and Trademark Office to correct the inventorship by adding Bass as an inventor. Defendants declined and UUtah filed suit under 35 U.S.C. 256. UMass moved to dismiss, arguing that because UUtah and UMass were both arms of the state, the dispute fell within the exclusive original jurisdiction of the Supreme Court. UUtah amended its complaint, replacing UMass with four UMass officials. The district court rejected jurisdictional, failure to join an indispensable party (UMass), and sovereign immunity arguments, reasoning that relief under section 256 is prospective in nature, not retroactive remedy and that correction of inventorship was not a core sovereign interest sufficient to make this a dispute between states. The Federal Circuit affirmed. View "Univ of Utah v. Max-Planck-Gesellschaft Zur Forderung der Wissenschaften E.V." on Justia Law

Taurus sued DaimlerChrysler, alleging that external websites infringed its patent for “a computer system for managing product knowledge related to products offered for sale by a selling entity.” Daimler Chrysler asserted license and release defenses, asserted a breach of contract counterclaim, and filed a contract claim against third-party defendants (including Orion), which, it claimed violated a 2006 patent licensing agreement between DaimlerChrysler and Orion, to settle prior patent infringement suits. The district court entered summary judgment, finding that the accused websites did not infringe any asserted claims and that certain claims were invalid as anticipated by prior art. The district court found the DaimlerChrysler suit to be exceptional under 35 U.S.C. 285, and awarded damages of $1,644,906.12, for costs incurred in Chrysler’s defense. With respect to remaining issues, the district court: found that certain third parties were alter egos and declined to dismiss for lack of jurisdiction; held that the 2006 agreement did not provide a release to the infringement alleged in the patent suit; held that issues of fact remained as to whether certain third parties had breached a warranty in the 2006 agreement; held that Orion had breached the warranty; and imposed sanctions on Orion and another for pre-trial witness tampering (those parties were not permitted to present evidence to support their defense that Chrysler did not rely on the warranty). The Federal Circuit affirmed, except with respect to attorney fees. View "Taurus IP, LLC v. DaimlerChrysler Corp." on Justia Law

Plaintiff sued Marvel for patent infringement and breach of contract, claiming that it had used his ideas in developing a Spider-Man role-playing toy called the "Web Blaster" without compensating him. The parties subsequently agreed to settle the case while appeals were pending and executed a Settlement Agreement. Thereafter, Marvel entered into a licensing agreement with Hasbro giving it the right to produce the Web Blaster. At issue was the calculation of royalties for subsequent iterations of the Web Blaster. The court joined its sister circuits in holding, pursuant to Brulotte v. Thys Co., that a so-called "hybrid" licensing agreement encompassing inseparable patent and non-patent rights was unenforceable beyond the expiration date of the underlying patent, unless the agreement provided a discounted rate for the non-patent rights or some other clear indication that the royalty at issue was in no way subject to patent leverage. Accordingly, the court affirmed the district court's grant of summary judgment in favor of Marvel, concluding that plaintiff could not recover royalties under the Settlement Agreement beyond the expiration date of the patent at issue. View "Kimble v. Marvel Enter., Inc." on Justia Law

This case involved disputes over licensing agreements for, inter alia, the RS 3400 blood irradiation device. At issue was whether the Federal Circuit has exclusive jurisdiction to hear an appeal of a breach of contract claim that would require the resolution of a claim of patent infringement for the complainant to succeed. The court concluded that it did not have appellate jurisdiction and resolved dispositive issues in favor of Rad Source, leaving a single dispositive issue for certification: When a licensee enters into a contract to transfer all of its interests in a license agreement for an entire term of a license agreement, save one day, but remains liable to the licensor under the license agreement, is the contract an assignment of the license agreement, or is the contract a sublicense? View "MDS (Canada) Inc., et al. v. Rad Source Technologies, Inc." on Justia Law

AHG employed the inventors of the patents, which issued in 1991 and 1992 and are titled “Process for Distribution of Pieces such as Rivets, and Apparatus for carrying out the Process.” The patents claim priority to a French application filed in 1988, and relate to the dispensing of objects such as rivets through a pressurized tube with grooves along its inner surface, to provide a rapid and smooth supply of properly positioned rivets for such uses as the assembly of metal parts of aircraft. The invention “permits dispensing a very great number of pieces without risk of jamming in the tube and with a precise guiding permitting maintaining the alignment of the axes of the pieces.” AHG sued Brötje, asserting patent infringement, trade dress infringement, unfair competition, and intentional interference with prospective economic advantage. The district court ruled that the claims are invalid for failure to disclose the best mode of carrying out the invention, as required by 35 U.S.C. 112, but rejected Broetje’s argument that AHG abandoned the 339 patent by failing to pay the issue fee. The Federal Circuit reversed the judgment of invalidity, affirmed that the patent was not abandoned, and remanded for determination of remaining issues. View "Ateliers de la Haute-Garonne v. Broetje Auto. USA, Inc." on Justia Law

Alexsam owns the 608 patent, which discloses a system for activating and using “multifunction card[s].” These cards include prepaid phone cards, used to pay for long-distance telephone calls, and electronic gift certificate cards. Such cards are typically distributed to retailers and displayed in stores in an inactive state, in order to deter theft, and are activated and assigned a cash value at the check-out counter. The claims at issue are drawn to a system for activating multifunction cards using a point-of-sale terminal, such as a cash register or a freestanding credit card reader. The district court held that certain of IDT’s systems infringed claims in the 608 patent and that these claims were not invalid, but that certain other systems were licensed under the claims. The Federal Circuit affirmed the judgment of no invalidity, reversed the jury’s finding of infringement with regard to IDT’s Walgreens and EWI systems, and affirmed the judgment of infringement with regard to IDT’s miscellaneous systems based on the district court’s discovery sanction. The court affirmed the judgment of noninfringement with regard to IDT’s SafeNet systems based on the license defense. View "Alexsam, Inc. v. IDT Corp." on Justia Law

The 753 patent is directed to a heart rate monitor that purports to improve upon the prior art by effectively eliminating noise signals during the process of detecting a user’s heart rate. According to the patent, prior art monitors did not eliminate signals given off by skeletal muscles (EMG signals), which are brought about when users move their arms or squeeze the monitor with their fingers. Biosig, the assignee of the 753 patent, brought a patent infringement action against Nautilus. After claim construction of the disputed term ”space relationship,” the district court declared the patent invalid. The Federal Circuit reversed and remanded, finding the claims at issue not invalid for indefiniteness. View "Biosig Instruments, Inc. v. Nautilus, Inc." on Justia Law

In an infringement suit, the district court declared Minton’s patent invalid under the “on sale” bar since he had leased his interactive securities trading system to a brokerage more than one year before the patent application, 35 U. S. C. 102(b). Seeking reconsideration, Minton argued for the first time that the lease was part of testing and fell within the “experimental use” exception to the bar. The Federal Circuit affirmed denial of the motion, concluding that the argument was waived. Minton sued for legal malpractice in Texas state court. His former attorneys argued that Minton’s claims would have failed even if the experimental-use argument had been timely raised. The trial court agreed. Minton then claimed that the court lacked jurisdiction under 28 U. S. C. 1338(a), which provides for exclusive federal jurisdiction over any case “arising under any Act of Congress relating to patents.” The Texas Court of Appeals rejected Minton’s argument and determined that Minton failed to establish experimental use. The state’s highest court reversed. The Supreme Court reversed, holding that Section 338(a) does not deprive state courts of subject matter jurisdiction over Minton’s malpractice claim. Federal law does not create that claim, so it can arise under federal patent law only if it necessarily raises a stated federal issue, actually disputed and substantial, which may be entertained without disturbing an approved balance of federal and state judicial responsibilities. Resolution of a federal patent question is “necessary” to Minton’s case and the issue is “actually disputed,” but it does not carry the necessary significance. No matter the resolution of the hypothetical “case within a case,” the result of the prior patent litigation will not change. Nor will allowing state courts to resolve these cases undermine development of a uniform body of patent law. View "Gunn v. Minton" on Justia Law

This appeal arose out of a contract dispute between Verint and Tekelec where Tekelec sought a right to payment stemming from a patent dispute between two corporate entities not directly involved in this appeal. The district court awarded summary judgment to Tekelec and denied Verint's cross-motion for summary judgment. The court rejected Verint's claims that Tekelc lacked constitutional standing to enforce its right to the payments at issue. Because the court concluded that Verint's fixed, contractual payment obligations under the Blue Pumpkin/IEX Agreement unambiguously fell outside of the scope of the subsequent Verint/NICE Settlement's boilerplate Non-Accrual Clause, the court need not consider Tekelec's alternative argument that the disputed payments accrued prior to the effective date of the Verint/NICE Settlement. Accordingly, the court affirmed the judgment. View "Tekelec, Inc. v. Verint Systems, Inc." on Justia Law

The 314 patent, its continuation, the 492 patent, and the 639 patent, relate to electronic commerce; products are offered and purchased through computers interconnected by a network. The patents arise from a software system called “Transact,” developed in 1996 by Open Market. In 2001 Open Market was sold, with the Transact software and patents, to Divine, which was unable to provide support for the complex product and declared bankruptcy. Soverain acquired the Transact software and patents, then sued seven online retailers for patent infringement. The defendants, except Newegg, took paid up licenses to the patents. Newegg declined to pay, stating that its system is materially different and that the patents are invalid if given the scope asserted by Soverain: similar electronic commerce systems were known before the system; the Transact software was generally abandoned; and Newegg’s system, based on the different principle of using “cookies” on the buyer’s computer to collect shopping data, is outside of the claims. The district court awarded Soverain damages and an ongoing royalty and held that the claims were not invalid as obvious. The Federal Circuit reversed in part, holding that claims in the all of the patents are invalid for obviousness. View "Soverain Software, LLC v. Newegg, Inc." on Justia Law