Justia Patents Opinion Summaries

Licensees entered into a licensing agreement with Safeblood Tech for the exclusive rights to market patented technology overseas. After learning that they could not register the patents in other countries, Licensees sued Safeblood for breach of contract and sued Safeblood, its officers, and patent inventor for fraud, constructive fraud, and violations of the Arkansas Deceptive Trade Practices Act (ADTPA), Ark. Code 4-88-101 to -115. The district court dismissed the fraud claims at summary judgment. The remaining claims proceeded to trial and a jury found for Licensees, awarding them $786,000 in contract damages and no damages for violations of the ADTPA. The district court awarded Licensees $144,150.40 in prejudgment interest. The Eighth Circuit reversed as to the common-law fraud claim and the award of prejudgment interest, but otherwise affirmed. Licensees produced sufficient evidence that the inventor made a false statement of fact; the district court did not abuse its discretion when it gave the jury a diminution-in-product-value instruction; and Licensees waived their inconsistent-verdict argument. View "Yazdianpour v. Safeblood Techs., Inc." 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

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

Nooren owns patent 044, entitled “Use of a Preparation for Insulation/Sealing and Coating Purposes and Method for Sealing Manhole Covers,” which discloses a composition for insulating and protecting substrates, such as manhole covers, underground tanks, pipes, and cable sleeves, from corrosion, water ingress, and mechanical stresses. The patent is licensed exclusively to Stopaq, a Dutch company that designs and manufactures coatings and sealants that exhibit both viscous and elastic properties (visco-elasticity) and are designed for corrosion protection and waterproofing. Kleiss, a Dutch company, manufactures similar products that prevent corrosion and protect against leaks, which are distributed in the U.S. by Amcorr. Kleiss and Amcorr sought a declaratory judgment in the Netherlands that their products did not infringe the 044 patent. Nooren filed suit in the U.S., alleging infringement. The parties agreed to focus on the phrase “a filler comprising a plurality of fractions each comprising different size particles, and wherein said different fractions have different particle size distributions” in the only independent claim in the patent. The court granted summary judgment of noninfringement in favor of Amcorr. The Federal Circuit vacated, holding that the district court erred in at least on claim construction. View "Frans Nooren Afdichtingssystem v. Stopaq Amcorr Inc." on Justia Law

Cross Match claimed that Suprema and Mentalix violated 19 U.S.C. 1337(a)(1)(B)(i) by importing articles that infringe or are used to infringe its patents. The International Trade Commission entered a limited exclusion order barring importation of certain optical scanning devices, finding that Mentalix directly infringed a method claim by using its own software with imported Suprema scanners and found that Suprema induced that infringement and that certain of Suprema’s imported optical scanners directly infringe other claims of the 993 patent. The Commission found no infringement of the 562 patent. The Commission held that Suprema and Mentalix failed to prove that the 993 patent was invalid as obvious over two prior art patents. The Federal Circuit vacated and remanded for revision of the order to bar only a subset of the scanners. An exclusion order based on a section 1337(a)(1)(B)(i) violation may not be predicated on a theory of induced infringement under 35 U.S.C. 271(b) where direct infringement does not occur until after importation of the articles the exclusion order would bar. View "Suprema, inc. v. Int'l Trade Comm'n" on Justia Law

In 2010, Microsoft filed a complaint in the U.S. International Trade Commission, alleging that Motorola had violated the Tariff Act of 1930, 19 U.S.C. 1337, by importing mobile phones and tablets that infringe several Microsoft patents. The Commission instituted an investigation and, after an evidentiary hearing, the ALJ found that the accused Motorola products did not infringe the 054, 762, 376, or 133 patents and that Microsoft had failed to prove that the mobile devices on which it relied actually implemented those patents. The Commission upheld the ALJ’s findings, finding that Microsoft failed to prove that the Microsoft-supported products on which it relied for its domestic-industry showing actually practiced the patents. The Federal Circuit reversed in part, first affirming that Motorola does not infringe the 054 patent and that Microsoft failed to prove that a domestic industry exists for products protected by the 762 and 376 patents. With respect to the 133 patent the Commission relied on incorrect claim constructions in finding no infringement, the only basis for its finding no violation, for the main group of accused products. The court affirmed the noninfringement finding for the accused alternative design. View "Microsoft Corp. v. Int'l Trade Comm'n" on Justia Law

MPS and O2 Micro compete in the market for integrated circuit products that control LCD and LED lighting. O2 had filed several prior patent infringement claims against MPS and its customers. MPS sought a declaratory judgment of noninfringement and invalidity with respect to four related O2 patents (the 519 family). After O2 learned of the suit, O2 filed a complaint with the International Trade Commission (ITC), under section 337 of the Tariff Act, against MPS and its customers, claiming that their imports infringed the 519 patents and the 382 patent. In the court action, O2 counterclaimed for infringement, added MPS customers, as counter-defendants, and moved to stay proceedings. The court denied the motion. O2 later withdrew assertions concerning the 519 family from both proceedings and covenanted not to sue MPS or its customers for infringement of those patents. O2 insisted that the 382 patent was entitled to a 1998 conception date and filed verified interrogatories attesting to that. O2’s story ultimately unraveled and it “sought to mask its proffer of false testimony.” Ultimately, the court ruled that the earliest invention date was 1999: O2 signed a covenant not to sue with respect to the patent. The district court later dismissed all claims with prejudice and granted fees and costs, based on an exceptional case finding on O2’s “vexatious litigation strategy, litigation misconduct and unprofessional behavior.” The Federal Circuit affirmed. View "Monolithic Power Sys., Inc. v. O2 Micro Int'l, Ltd." on Justia Law

In 2006 InterDigital granted LG a license to certain patents concerning devices capable of wireless voice or data communications, including devices designed to operate in accordance with second-generation (2G) wireless standards and devices designed to operate in accordance with third-generation (3G) wireless standards. After the contract terminated, InterDigital filed a complaint with the International Trade Commission, claiming violation of the Tariff Act, 19 U.S.C. 1337, by importing devices that infringed patents relating to 3G wireless technology. The ITC terminated the investigation as to LG, based on an arbitration clause in the contract. The Federal Circuit reversed, holding that there was no plausible argument that the case arose from the patent license contract between the companies. View "InterDigital Commc'ns, LLC v. Int'l Trade Comm'n" on Justia Law

Forrester and Wheelabrator are competitors in the market for phosphate-based treatment systems for stabilizing heavy metals in waste such as incinerator ash, to prevent heavy metals from leaching into drinking water sources. Wheelabrator calls its treatment system “WES-PHix” and has obtained several related U.S. patents. Forrester calls its system “FESI-BOND” and has also obtained patents. In 2001, Wheelabrator entered into a license agreement that granted Bio Max the exclusive right to use and sublicense WES-PHix® in Taiwan. Bio Max sublicensed WESPHix to Kobin, which used WES-PHix at its Taipei plant. Forrester learned that Kobin was dissatisfied with WES-PHix due to the odor it generated. Forrester developed a variation on its system, addressing the odor problem, and persuaded Kobin to license FESI-BOND for use at its plant. Wheelabrator sent a letter asserting that Kobin was in breach of its WES-PHix sublicense agreement and threatening legal action. Kobin stopped purchasing from Forrester and entered into a new sublicense with Wheelabrator. Forrester filed suit alleging violation of the New Hampshire Consumer Protection Act; tortious interference with a contractual relationship; tortious interference with Forrester’s prospective advantage; and trade secret misappropriation. The district court denied remand and granted summary judgment for Wheelabrator. The Federal Circuit vacated, with instructions to remand to state court. View "Forrester Envt.l Servs., Inc. v. Wheelabrator Techs.,Inc." on Justia Law

Motiva’s patent, issued in 2007 and titled “Human Movement Measurement System,” generally relates to a “system for ... testing and training a user to manipulate the position of ... transponders while being guided by interactive and sensory feedback . . . for the purpose of functional movement assessment for exercise and physical rehabilitation.” Motiva accused Nintendo’s Wii video game system of infringement. The district court stayed the case pending patent reexamination. Motiva then filed a complaint with the International Trade Commission, asserting that the Wii infringed the patent, so that its importation violated the Tariff Act. After the Commission began its investigation, Nintendo moved for summary determination under Section 337, which prohibits importation of articles that infringe a valid and enforceable U.S. patent if “an industry in the United States, relating to the articles protected by the patent ... exists or is in the process of being established.” 19 U.S.C. 1337(a)(2). According to Nintendo, there were no commercialized products incorporating Motiva’s patented technology, and Motiva’s activity aimed at developing a domestic industry consisted solely of the litigation. The administrative law judge agreed. The Federal Circuit affirmed. View "Motiva, LLC v. Int'l Trade Comm'n" on Justia Law