Justia Patents Opinion Summaries

Roy McAlister invented and patented technologies related to clean fuels and incorporated McAlister Technologies, L.L.C. (MT) to hold and license these patents. In 2009, MT entered into a licensing agreement with Advanced Green Technologies, L.L.C. (AGT), which later retained Loeb & Loeb, L.L.P. for patent matters. Conflicts arose, leading McAlister to terminate the agreement, alleging AGT's breach. McAlister and MT claimed that Loeb & Loeb's actions clouded their patents, causing prospective licensees to back out, resulting in lost profits.The Superior Court in Maricopa County granted summary judgment in favor of Loeb & Loeb on the lost profit damages, finding the plaintiffs' evidence speculative and lacking reasonable certainty. The court excluded the plaintiffs' expert testimony on damages and ruled against them on claims for trespass to chattel, slander of title, and aiding and abetting, but allowed claims for breach of fiduciary duty and negligent supervision to proceed. Plaintiffs conceded no triable damages remained and stipulated to final judgment against them.The Arizona Court of Appeals affirmed the exclusion of the expert testimony and the summary judgment on most lost profit claims but reversed on a $5 million initial payment claim, remanding for further proceedings. It also reversed the summary judgment on trespass to chattel and slander of title claims.The Arizona Supreme Court reviewed the case, focusing on the lost profit damages and trespass to chattel claim. It concluded that the plaintiffs failed to prove the lost profit damages with reasonable certainty, as material terms of the prospective licensing agreement were unresolved. Consequently, the court affirmed the summary judgment in favor of Loeb & Loeb on the lost profit damages and trespass to chattel claim, vacating the relevant parts of the Court of Appeals' decision. The case was remanded to the Superior Court for further proceedings on the slander of title claim. View "McAlister v. Loeb" on Justia Law

Top Brand and Cozy Comfort are competitors in the market for oversized hooded sweatshirts. Cozy Comfort owns a design patent (D788 patent) and two trademarks for "THE COMFY" related to blanket throws. Top Brand sought a declaratory judgment of noninfringement of the design patent, while Cozy Comfort counterclaimed for infringement of both the design patent and trademarks. The jury found in favor of Cozy Comfort, determining that Top Brand had infringed both the design patent and the trademarks, and awarded Cozy Comfort $15.4 million for patent infringement and $3.08 million for trademark infringement.The United States District Court for the District of Arizona denied Top Brand's motion for judgment as a matter of law (JMOL) and entered judgment based on the jury's verdict. Top Brand then appealed to the United States Court of Appeals for the Federal Circuit.The Federal Circuit held that the principles of prosecution history disclaimer apply to design patents. The court found that Top Brand was entitled to JMOL of noninfringement of the design patent because the accused design fell within the scope of the subject matter surrendered during prosecution. The court also concluded that substantial evidence did not support the jury’s verdict of trademark infringement. Consequently, the Federal Circuit reversed the district court’s denial of JMOL and found in favor of Top Brand on both the design patent and trademark infringement claims. View "Top Brand LLC v. Cozy Comfort Co." on Justia Law

Shockwave Medical, Inc. owns U.S. Patent No. 8,956,371, which is directed to a method for treating atherosclerosis using intravascular lithotripsy (IVL). Cardiovascular Systems, Inc. (CSI) filed an inter partes review (IPR) petition challenging all 17 claims of the '371 patent as obvious over various prior art combinations. The Patent Trial and Appeal Board (Board) found claims 1-4 and 6-17 unpatentable as obvious but upheld the patentability of claim 5.The Board's decision was appealed by Shockwave regarding claims 1-4 and 6-17, and cross-appealed by CSI regarding claim 5. The United States Court of Appeals for the Federal Circuit reviewed the case. Shockwave argued that the Board improperly relied on applicant admitted prior art (AAPA) and erred in its claim construction and factual findings. CSI argued that the Board failed to consider the combined teachings of the prior art in its analysis of claim 5.The Federal Circuit affirmed the Board's determination that claims 1-4 and 6-17 were unpatentable as obvious. The court found that the Board properly used AAPA as evidence of general background knowledge and that the Board's claim construction and factual findings were supported by substantial evidence. The court also found that Shockwave's secondary considerations evidence did not outweigh the evidence of obviousness.Regarding CSI's cross-appeal, the Federal Circuit reversed the Board's determination that claim 5 was not shown to be unpatentable. The court found that the Board failed to consider the combined teachings of the prior art and that the placement of electrodes as claimed in claim 5 would have been a routine design choice for an ordinarily skilled artisan.In conclusion, the Federal Circuit affirmed the Board's decision on claims 1-4 and 6-17 and reversed the decision on claim 5, finding it unpatentable as obvious. View "Shockwave Medical, Inc. v. Cardiovascular Systems, Inc." on Justia Law

Brainchild Surgical Devices, LLC, a medical device developer, entered into a contract with CPA Global Limited for patent renewal services. Brainchild alleged that CPA overcharged it by marking up fees beyond the actual costs and sued for breach of contract and fraud. The district court excluded Brainchild’s expert witnesses, granted summary judgment for CPA on the breach of contract claim, dismissed the fraud claim, and denied leave to amend the fraud claim.The United States District Court for the Eastern District of Virginia dismissed Brainchild’s fraud claim for lack of particularity and denied leave to amend. The court granted summary judgment for CPA on the breach of contract claim, finding that Brainchild’s theories were inconsistent with the contract’s terms. The court excluded Brainchild’s expert witnesses, David Cass and John Keogh, for offering legal conclusions and lacking qualifications.The United States Court of Appeals for the Fourth Circuit reviewed the case. The court affirmed the district court’s exclusion of Cass’ testimony due to lack of qualification and improper legal conclusions. The court also affirmed the exclusion of Keogh’s testimony for failing to disclose the bases of his opinions and offering legal conclusions but reversed the decision to disqualify him based on confidential information. The court agreed with the district court that Brainchild’s pass-through cost and implied covenant of good faith theories failed to overcome summary judgment. However, the court reversed the summary judgment for CPA on the theory that CPA applied Country Charges unrelated to the required personnel, infrastructure, and third parties for renewals in particular jurisdictions. The case was remanded for further proceedings on this theory. The court also affirmed the denial of leave to amend the fraud claim. View "Brainchild Surgical Devices, LLC v. CPA Global Limited" on Justia Law

Janssen Pharmaceuticals, Inc. and Janssen Pharmaceutica NV (collectively, Janssen) sued Teva Pharmaceuticals USA, Inc. (Teva) in 2018, alleging infringement of Janssen’s U.S. Patent No. 9,439,906, which describes dosing regimens for long-acting injectable antipsychotic medications. Teva admitted to infringement but contested the patent’s validity, arguing that all claims were invalid for obviousness and some for indefiniteness.The United States District Court for the District of New Jersey held a bench trial and ruled that Teva had not proven the claims invalid. Teva appealed, and the United States Court of Appeals for the Federal Circuit affirmed the district court’s rejection of the indefiniteness challenge but vacated the obviousness ruling, remanding for further proceedings. On remand, the district court again found that Teva had not proven the claims invalid for obviousness, leading to Teva’s current appeal.The United States Court of Appeals for the Federal Circuit reviewed the case and affirmed the district court’s decision. The court held that Teva did not prove by clear and convincing evidence that a skilled artisan would have been motivated to combine or modify the prior art to achieve the claimed invention with a reasonable expectation of success. The court also rejected Teva’s argument for a presumption of obviousness based on overlapping ranges, finding that the specific combination of dosages and timing in the claimed regimen was not sufficiently addressed by the prior art. The court upheld the district court’s findings on the lack of motivation to combine references and the lack of reasonable expectation of success, as well as the non-obviousness of the claims related to renal impairment and particle size. View "JANSSEN PHARMACEUTICALS, INC. v. TEVA PHARMACEUTICALS USA, INC. " on Justia Law

Egenera, Inc. alleged that Cisco Systems, Inc. infringed its U.S. Patent No. 7,231,430, which describes a digitalized processing platform for deploying virtual systems through configuration commands. The patent aims to improve conventional server systems by allowing virtual management of processing resources without physical rewiring. Egenera claimed that Cisco's Unified Computing System (UCS) infringed claims 1, 3-5, and 7-8 of the patent. The district court granted summary judgment of noninfringement for claims 1 and 5 and, following a jury trial, entered judgment of noninfringement for claims 3 and 7.The United States District Court for the District of Massachusetts found that Cisco's UCS did not infringe the asserted claims. The court granted summary judgment of noninfringement for claims 1 and 5, concluding that the UCS CPUs did not emulate Ethernet functionality as required by the claims. The jury found noninfringement for claims 3 and 7, and the district court denied Egenera's post-trial motions for judgment as a matter of law (JMOL) or a new trial.The United States Court of Appeals for the Federal Circuit reviewed the case and affirmed the district court's decisions. The appellate court agreed that Egenera failed to present sufficient evidence to show that the UCS CPUs emulated Ethernet functionality, as required by claims 1 and 5. The court also found that substantial evidence supported the jury's verdict of noninfringement for claims 3 and 7, particularly regarding the network topology limitation. Additionally, the appellate court upheld the district court's denial of Egenera's motion for a new trial, finding no abuse of discretion in the court's handling of jury instructions, evidentiary rulings, and closing arguments. View "EGENERA, INC. v. CISCO SYSTEMS, INC. " on Justia Law

Eye Therapies, LLC owns the '742 patent, which describes a method to reduce eye redness using a low-concentration dose of brimonidine. The independent claims of the patent specify that the method consists essentially of administering brimonidine at certain concentrations. During patent prosecution, the examiner initially rejected the claims for being anticipated by prior art, specifically U.S. Patent No. 6,242,442 (Dean), which disclosed the use of brimonidine in combination with another active ingredient, brinzolamide. The applicant amended the claims to replace "comprising" with "consisting essentially of" and argued that the claimed methods did not require any other active ingredients besides brimonidine. The examiner allowed the amended claims based on this representation.The Patent Trial and Appeal Board (PTAB) instituted an inter partes review on petition by Slayback Pharma, LLC and concluded that all challenged claims were unpatentable. The Board interpreted the phrase "consisting essentially of" to allow the inclusion of additional active ingredients that do not materially affect the basic and novel properties of the invention. Based on this construction, the Board found that the prior art taught or suggested each limitation of the challenged claims and that a person of ordinary skill in the art would have had a reasonable expectation of success in combining the references.The United States Court of Appeals for the Federal Circuit reviewed the case and reversed the Board's claim construction. The court held that the phrase "consisting essentially of" in the '742 patent should be interpreted to exclude the use of active ingredients other than brimonidine, based on the prosecution history. The court vacated the Board's obviousness finding and remanded the case for further proceedings consistent with the corrected claim construction. View "EYE THERAPIES, LLC v. SLAYBACK PHARMA LLC " on Justia Law

Future Link Systems, LLC entered into a license agreement with MediaTek, Inc. in 2019, which stipulated that MediaTek would pay Future Link a lump sum if Future Link filed a lawsuit against Realtek Semiconductor Corporation. Future Link subsequently filed a complaint with the International Trade Commission (ITC) accusing Realtek of patent infringement. During the litigation, Future Link settled with a third party and informed Realtek, leading Realtek to file a motion for sanctions against Future Link before the administrative law judge (ALJ).The ALJ expressed concerns about the legality of the agreement between Future Link and MediaTek but ultimately denied Realtek's motion for sanctions, concluding that the agreement did not influence Future Link's decision to file the complaint. Future Link then withdrew its complaint and moved to terminate the investigation, which the ALJ granted. The ITC terminated the investigation when no petition for review was filed. Realtek petitioned the ITC to review the ALJ's order denying sanctions, but the ITC declined and terminated the sanctions proceeding.Realtek appealed to the United States Court of Appeals for the Federal Circuit, seeking an order for Future Link to pay a fine to the Commission. The Federal Circuit concluded that it lacked jurisdiction to hear Realtek's appeal, as the Commission's decision on sanctions was not a "final determination" under 19 U.S.C. § 1337(c) that would affect the exclusion or non-exclusion of articles from entry. The court dismissed the appeal, noting that jurisdiction over such matters likely lies with the district courts, not the Federal Circuit. View "Realtek Semiconductor Corp. v. International Trade Commission" on Justia Law

Optis Cellular Technology, LLC, Optis Wireless Technology, LLC, PanOptis Patent Management, LLC, Unwired Planet International Limited, and Unwired Planet, LLC (collectively, “Optis”) sued Apple Inc. (“Apple”) for patent infringement in the U.S. District Court for the Eastern District of Texas. Optis asserted that various Apple products implementing the LTE standard infringed five of its standard-essential patents. The jury found Apple infringed certain claims of the asserted patents and awarded $506,200,000 in damages. Apple moved for a new trial, arguing the jury did not hear evidence regarding Optis’s obligation to license the patents on FRAND terms. The district court granted a new trial on damages, and the jury awarded $300,000,000 in the retrial.The United States Court of Appeals for the Federal Circuit reviewed the case. The court vacated both the infringement and second damages judgments, remanding for a new trial on infringement and damages. The court dismissed Optis’s cross-appeal to reinstate the original damages verdict. The court also reversed the district court’s findings that claims 6 and 7 of the ’332 patent are not directed to an abstract idea under 35 U.S.C. § 101 and that claim 1 of the ’557 patent does not invoke 35 U.S.C. § 112 ¶ 6. The court affirmed the district court’s construction of claim 8 of the ’833 patent. Additionally, the court concluded that the district court abused its discretion by admitting the Apple-Qualcomm settlement agreement and related expert testimony into evidence.The Federal Circuit held that the single infringement question on the verdict form violated Apple’s right to a unanimous verdict, as it did not ensure all jurors agreed on the same patent being infringed. The court also determined that claims 6 and 7 of the ’332 patent are directed to an abstract idea and remanded for further analysis under Alice step two. The court found that “selecting unit” in claim 1 of the ’557 patent invokes § 112 ¶ 6 and remanded for further proceedings. View "OPTIS WIRELESS TECHNOLOGY, LLC v. APPLE INC. " on Justia Law

United Services Automobile Association (USAA) owns U.S. Patent No. 10,402,638, which is directed to remote check deposit technology. The patent describes a system where a customer uses a personal mobile device to take a picture of a check and transmit the image to a financial institution. The system includes steps for error checking and optical character recognition (OCR) to ensure the check image is of sufficient quality. USAA sued PNC Bank, N.A. for infringement of this and other patents.The United States District Court for the Eastern District of Texas granted USAA’s motion for summary judgment, finding the asserted claims patent-eligible under 35 U.S.C. § 101. The court denied PNC’s cross-motion for summary judgment. A jury trial followed, where the jury found no invalidity and that PNC had infringed USAA’s patents. PNC appealed the district court’s summary judgment ruling on § 101.The United States Court of Appeals for the Federal Circuit reviewed the case and reversed the district court’s decision. The Federal Circuit held that the asserted claim of the ’638 patent is directed to the abstract idea of depositing a check using a handheld mobile device and does not contain an inventive concept sufficient to transform the abstract idea into a patent-eligible application. The court concluded that the claim recites routine data collection and analysis steps implemented by a generic device, which is insufficient for patent eligibility under § 101. Consequently, the Federal Circuit reversed the district court’s grant of summary judgment and did not address USAA’s cross-appeal regarding damages testimony. View "UNITED SERVICES AUTOMOBILE ASSOCIATION v. PNC BANK N.A. " on Justia Law