Justia Patents Opinion Summaries

Rothschild alleged that ADS’s home security system infringed its 090 patent. Rothschild has filed numerous lawsuits against others alleging infringement of the 090 patent. ADS filed an answer and counterclaims and sent Rothschild an email alleging that the patent covered patent-ineligible subject matter (35 U.S.C. 1011) and that prior art anticipated claim 1 (35 U.S.C. 102(a)(1)). ADS offered to settle if Rothschild paid ADS $43,330 for attorney fees and costs. Rothschild rejected ADS’s offer. ADS moved for judgment on the pleadings, sending Rothschild an FRCP 11(c)(2) Safe Harbor Notice, with copies of a proposed Rule 11(b) motion for sanctions and prior art that purportedly anticipated the claim. Rothschild voluntarily moved to dismiss. ADS opposed and filed a cross-motion for attorney fees, arguing that Rothschild’s suit was objectively unreasonable because Rothschild knew or should have known that claim 1 covers patent-ineligible subject matter and was anticipated. The Federal Circuit reversed the holding that Rothschild had not engaged in conduct sufficient to make the litigation “exceptional” for purposes of section 285 attorney fees. Whether a party avoids or engages in sanctionable conduct under Rule 11(b) is not the appropriate benchmark; a court may award fees in the rare case in which a party’s unreasonable conduct—while not necessarily independently sanctionable—is so exceptional as to justify an award. View "Rothschild Connected Devices Innovations, LLC v. Guardian Protection Services, Inc." on Justia Law

District court properly awarded “exceptional case” legal fees. In 2005, Dow filed an infringement action against NOVA, which argued that its product did not infringe and that Dow lacked standing because it had transferred ownership of the patents. In 2010, the district court entered judgment against NOVA for $61 million. The Federal Circuit affirmed. In a separate appeal from an award of supplemental damages, the Federal Circuit found the asserted claims invalid as indefinite under the Supreme Court’s intervening “Nautilus” standard, but did not disturb the 2010 judgment relating to preverdict infringement. NOVA became aware of evidence allegedly showing that Dow had committed fraud in obtaining the 2010 judgment but was time-barred from moving to set aside that judgment. In 2013, NOVA filed a separate action in equity for relief from the 2010 judgment, asserting misrepresentation of Dow’s ownership of the asserted patents, based on the testimony of a former Dow employee in an unrelated tax case and on the testimony of Dow’s expert, about testing on the accused product during separate Canadian litigation. The Federal Circuit affirmed dismissal. The district court awarded Dow $2.5 million under 35 U.S.C. 285, which allows courts to award “reasonable attorney fees to the prevailing party” in “exceptional cases.” The court noted the weakness of NOVA’s litigating position and the manner in which NOVA pursued the case. The Federal Circuit affirmed. View "Nova Chemicals Corp. v. Dow Chemical Co." on Justia Law

The Tuschl patents relate to RNA interference, a process for “silencing” genes from expressing the proteins they encode, which may be useful in treating various diseases. In 2000, before the invention was reduced to practice, Dr. Tuschl published an article describing the discoveries. Weeks later, Dr. Bass published a mini-review that focused on Tuschl’s article and included her own hypotheses about enzymatic processes that may be responsible for the RNAi activity reported in Tuschl’s article. Tuschl read Bass’ article and recognized and successfully tested her hypothesis. Bass’ mini-review was cited as prior art during prosecution of the Tuschl patents, each of which issued. Bass sued for correction of ownership, claiming that Bass should be named as either a sole or joint inventor of the patents. During depositions, Bass made admissions undermining allegations that Bass reduced the Tuschl invention to practice and that Bass collaborated with the inventors. On the eve of the deadline for dispositive motions, Bass withdrew the sole inventorship claims, but not the joint inventorship claim. The district court rejected the joint inventorship claims on summary judgment, finding no evidence of collaboration between Bass and the Tuschl inventors. The district court declined a request for eight million dollars in attorney fees under 35 U.S.C. 285, The Federal Circuit affirmed, finding that the case was not objectively unreasonable when all reasonable inferences were drawn in Bass's favor. View "University of Utah v. Max-Planck-Gesellschaft" on Justia Law

The patents-in-suit relate to soybeans genetically engineered to tolerate herbicide, and, particularly, to the Bayer-developed dmmg gene. The parties disagreed over the scope of Bayer’s license of the patents to MS Tech, specifically, whether the license granted MS Tech a broad license to commercialize and sublicense the soybean technology. MS Tech had sublicensed to Dow. When Bayer sued Dow for infringement, Dow raised that sublicense as an affirmative defense. The district court entered summary judgment in favor of Dow; the Federal Circuit affirmed. The district court then awarded Dow attorney fees under 35 U.S.C. 285, declaring this an "exceptional case.” The Federal Circuit affirmed, noting Bayer’s weak positions on the merits and litigation conduct. “Bayer’s own witnesses as well as key documents contradicted Bayer’s contorted reading of the contract.” Bayer’s arguments were “fallacious” because they were “implausible” and “made no business sense” in light of the facts surrounding the agreements and their negotiation. View "Bayer Cropscience AG v. Dow Agrosciences LLC" on Justia Law

Schlumberger hired Rutherford in 2006. She was promoted to Director of Intellectual Property and later to Deputy General Counsel for Intellectual Property. Rutherford managed a copyright lawsuit and evaluated legal risks involving Petrel, Schlumberger’s software platform for three-dimensional modeling of oil wells. One competitor’s product analyzed during this project was Austin’s RECON software (the 319 patent). After seven years, Rutherford left Schlumberger. She began working as Senior Vice President and Associate General Counsel at Acacia, which began discussions to acquire the 319 patent. Petrel was discussed as a potential target of patent infringement litigation. Rutherford participated in the decision to hire CEP as outside counsel for all 319-patent-related litigation. Dynamic was formed to hold the 319 patent. Dynamic filed several lawsuits, including one accusing Petrel of infringement. On Schlumberger’s motion, the court disqualified Rutherford, other Acacia in-house counsel, and CEP from representing Dynamic in the case. Schlumberger also sued Rutherford in Texas state court, presenting evidence that she retained confidential, privileged information to provide to Acacia. The Texas court dismissed all but a breach-of-contract claim and sanctioned Schlumberger for bringing the suit. The federal district court found that Rutherford’s work at Schlumberger was substantially related to her work at Acacia; that the evidence of her involvement created an irrebuttable presumption that she acquired confidential information requiring her disqualification; that the acquired knowledge should be imputed to all Acacia attorneys for purposes of Dynamic’s suit; and that disqualification extended to CEP. Because the pleadings were drafted by disqualified counsel, the court dismissed Dynamic’s claims without prejudice. The Federal Circuit affirmed, citing the ABA Model Rules and the Texas Disciplinary Rules. View "Dynamic 3D Geosolutions LLC v. Schlumberger Ltd." on Justia Law

Seed Company Limited, a Japanese company, is led by Shigeru Tamai. Tamai invented a dispenser of correctional tape enabling users to correct printed documents by rolling white tape over errors. Seed and Tamai applied for patents but the application was denied because of legal counsel’s noncompliance with Patent Office regulations when filing a motion related to the application. As a result of the error, another inventor obtained the patent for the same invention. Seed and Tamai filed a legal malpractice suit against counsel. The district court subsequently granted summary judgment for defendants. The court concluded that the statute of limitations had elapsed with respect to the malpractice claims against one group of defendants - those who ceased working on behalf of Seed and Tamai when the law firm engaged in the representation split into two firms. With regard to the remaining defendants - those who continued to represent Seed and Tamai after the breakup of the firm - the court found that the statute of limitations poses no bar to the malpractice action. On the merits of the claims against those defendants, the court concluded that there is a genuine dispute of material fact about whether the alleged error is one of professional judgment, and whether defendants exercised reasonable care in making the judgment. Accordingly, the court reversed and remanded as to this issue. View "Seed Co. Ltd. v. Westerman" on Justia Law

Queen’s University at Kingston, Canada, owns patents directed to Attentive User Interfaces, which allow devices to change their behavior based on the attentiveness of a user—for example, pausing or starting a video based on a user’s eye-contact with the device. Queen’s sued, alleging that Samsung’s SmartPause feature infringed those patents. Throughout fact discovery, Queen’s University refused to produce certain documents. It produced privilege logs that withheld documents based on its assertion of a privilege relating to communications with its patent agents. A magistrate granted Samsung’s motion to compel, finding that the communications between Queen’s University employees and their non-attorney patent agents are not subject to the attorney-client privilege and that a separate patent-agent privilege does not exist. The district court declined to certify the issue for interlocutory appeal, but agreed to stay the production of the documents at issue pending a petition for writ of mandamus. The Federal Circuit granted that petition, finding that, consistent with Federal Rule of Evidence 501, a patent-agent privilege is justified “in the light of reason and experience” and extends to communications with non-attorney patent agents when those agents are acting within the agent’s authorized practice of law before the Patent Office. View "In Re: Queen's Univ. at Kingston" on Justia Law

3M and TransWeb manufacture respirator filters, consisting of “nonwoven fibrous webs.” 3M sued Transweb for infringement of several patents. TransWeb sought a declaratory judgment of invalidity and non-infringement. A jury found the patents to be invalid based on TransWeb’s prior public use of the patented method. In accordance with an advisory verdict from the jury, the district court found the patents unenforceable due to inequitable conduct. An inventor for the patents and a 3M in-house attorney acted with specific intent to deceive the patent office as to the TransWeb materials. The district court awarded approximately $26 million to TransWeb, including trebled attorney fees as antitrust damages. The Federal Circuit affirmed, finding sufficient corroborating evidence to support the finding of prior public use by TransWeb, and that attorney fees are an appropriate basis for damages under the antitrust laws in this context. TransWeb’s attorney fees appropriately flow from the unlawful aspect of 3M’s antitrust violation and are an antitrust injury that can properly serve as the basis for antitrust damages. View "Transweb, LLC v. 3M Innovative Props. Co." on Justia Law

Lumen’s 073 patent is directed to facilitating multilateral decision-making by matching parties, using preference data from two classes of parties. FTB operates a search website with a comparison feature, “AssistMe,” that provides personalized product and service recommendations by asking the user questions about attributes of the desired product or service. Lumen alleged infringement. FTB repeatedly informed Lumen that FTB’s accused feature did not involve bilateral or multilateral preference matching. Before receiving any discovery, Lumen served preliminary infringement contentions, including a chart identifying the allegedly infringing features of AssistMe. The district court granted FTB judgment on the pleadings, holding that the patent’s claims are directed to an abstract idea and invalid for failure to claim patent-eligible subject matter under 35 U.S.C. 101. The court found claim construction unnecessary and awarded attorney fees. Finding the case exceptional under 35 U.S.C. 285, the court stated “basic” pre-suit investigation would have shown that AssistMe only used one party's preference data. The court explained factors that supported enhancing the lodestar amount, including “the need to deter the plaintiff’s predatory strategy, the plaintiff’s desire to extract a nuisance settlement, the plaintiff’s threats to make the litigation expensive, and the frivolous nature of the plaintiff’s claims.” The Federal Circuit affirmed the "exceptional" finding, but remanded for proper explanation of the calculation of fees. View "Lumen View Tech., LLC v. Findthebest.Com, Inc" on Justia Law

Tesco sued NOV for infringement of patents that involve an apparatus and method for handling sections of pipe used for lining a well-bore. NOV filed an answer, counterclaims, a request for attorney’s fees, and motions to compel requesting information about documents to show what occurred during the six months before the on-sale bar date. Ultimately, based on non-production of an original brochure, the court sanctioned Tesco by reversing the burden of proof on validity, setting the burden at a preponderance of evidence. The jury concluded that NOV infringed the relevant claims, found certain of those claims to be not invalid, and found that the brochure was not enabling. During post-trial discovery on the brochure. NOV filed “post-trial summary judgment motions of invalidity” (35 U.S.C. 102(b) and 103) based on what it asserts was disclosed in the brochure. The court granted NOV’s motion for obviousness, relying on an obvious-to-try analysis, set a trial date for the exceptional case counterclaim, and, later, issued an order sua sponte dismissing the case with prejudice under its inherent authority, finding that certain testimony was “contrary to the representations Tesco made to the Court during trial,” stating that the attorneys’ conduct was “entirely out of character ... serious and has had significant and costly ramifications.” The parties, including the attorneys, later entered into a settlement resolving all outstanding issues, and signed releases. The attorneys contend that, despite the settlement, the harm to their reputation from the court’s opinion justified continued jurisdiction. The Federal Circuit dismissed, finding no remaining case or controversy. View "Tesco Corp. v. Nat'l Oilwell Varco, L.P." on Justia Law