Justia Patents Opinion Summaries

Prolitec, Inc. owned U.S. Patent No. 7,712,268 (“‘683 patent”). The ‘683 patent had only two apparatus claims. The United States Patent and trademark Office, Patent Trial and Appeal Board found that the two claims were unpatentable as anticipated and additionally as obvious. The Board also denied Prolitec’s motion to amend. Proletic appealed, and the Director of the United States Patent and Trademark Office intervened for the limited purpose of addressing the Board’s regulations and practices regarding motions to amend. The Federal Circuit affirmed the Board’s findings that the two claims in the ‘683 patent were anticipated and the Board’s denial of Prolitec’s motion to amend, holding that the Board’s ultimate claim constructions were not in error and that the Board’s finding that both claims in the ’683 patent were anticipated was supported by substantial evidence. View "Prolitec, Inc. v. Scentair Techs., Inc." on Justia Law

Commonwealth Scientific and Industrial Research Organization (CSIRO) filed the instant suit for infringement of CSIRO’s U.S. Patent No. 5,487,069 (“’069 patent”) against Cicso Systems, Inc. The district court accepted a joint stipulation that Cisco would not contest infringement or validity. After a bench trial on damages, the district court awarded entered judgment for CSIRO in the amount of $16,243,067. Cisco appealed, challenging the district court’s damages award. The Federal Circuit vacated the district court’s judgment and remanded for the district court to revise its damages award, holding (1) the methodology employed by the district court in this case was not contrary to damages law; but (2) the district court erred in not accounting for the ‘069 patent’s standard-essential status and in its reasons for discounting a relevant license agreement. Remanded for the district court to revise its damages award. View "Commonwealth Scientific & Indus. Research Org. v. Cisco Sys., Inc." on Justia Law

Expro Americas, LLC ("Expro") filed a complaint seeking, inter alia, a temporary restraining order and preliminary injunction against Eddie Walters, a former Expro employee, and H&H Welding, LLC. Expro offered "oil and gas well and pipeline services," including providing "specially designed flaring products and services to pipeline transmission companies and refineries along the Gulf Coast." Expro's six-inch, trailer-mounted flare stacks were at the heart of this dispute. Eddie Walters was an Expro employee until August 5, 2013. Thereafter, Walters was employed by Clean Combustion, a competitor of Expro's that was created in 2013 by former Expro employees. Expro filed its application for a restraining order against H&H and Walters, alleging that both defendants stole the design for its flare stack. Expro specifically alleged that "[t]he information used to design and create the trailer-mounted flaring system is a ‘trade secret' of Expro's." Furthermore, it alleged breach of contract against H&H, claiming that the terms of Expro's purchase orders with H&H contained a "Proprietary Rights" section "in which H&H ‘warrants to keep all design, information, blueprints and engineering data with respect to the Goods confidential and to not make use of but to assign to Expro each invention, improvement and discovery relating thereto (whether or not patentable) conceived or reduced to practice in the performance of the Purchase Order by any person employed by or working under the directions of the Supplier Group.'" The trial court granted the restraining order, but after conducting an evidentiary hearing, the chancellor dissolved the temporary restraining order and found no facts to justify the issuance of a preliminary injunction. The chancellor awarded the defendants attorneys' fees and expenses in excess of the $5,000 injunction bond that Expro had posted. After determining that Expro's suit against H&H was meritless, the chancellor sua sponte dismissed H&H from the suit with prejudice. Expro appealed, and the Supreme Court affirmed in part and reversed in part. The Court found that the chancellor did not err by awarding the defendants attorneys' fees and expenses, because Expro's application for a preliminary injunction was frivolous and was made in bad faith. However, the Court found the chancellor misapplied Mississippi Rules of Civil Procedure Rule 4, and therefore erred by dismissing H&H from the suit with prejudice. View "Expro Americas, LLC v. Walters" on Justia Law

MCM Portfolio LLC owns U.S. Patent No. 7,162,549 (the ‘549 patent). Hewlett-Packard Co. (HP) filed a petition requesting inter partes review of claims 7, 11, 19, and 21 of the ‘549 patent. The Patent Trial and Appeal Board determined that there was a reasonable likelihood that HP would prevail with respect to at least one of the challenged claims based on obviousness and rejected MCM’s argument that it could not institute inter partes review under 35 U.S.C. 315(b). Thereafter, the Board issued a final decision concluding that the challenged claims would have been obvious. MCM appealed. The Federal Circuit affirmed, holding (1) the Court lacks jurisdiction to review the Board’s decision that the institution of inter partes review was not barred by 35 U.S.C. 315(b); (2) on the merits, inter partes review does not violate Article III or MCM’s right to a trial by jury under the Seventh Amendment; and (3) the Board correctly found that claims 7, 11, 19, and 21 of the ‘549 patent would have been obvious. View "MCM Portfolio LLC v. Hewlett-Packard Co." on Justia Law

In CardSoft v. VeriFone, Inc., the Federal Circuit reversed the district court’s decision in favor of CardSoft. The district court adopted CardSoft’s proposed construction for the claim term “vertical machine." Applying the district court’s construction, a jury determined that certain VeriFone devices infringed claim 11 of the 6,934,945 patent and claim 1 of the 7,302,683 patent. The federal circuit concluded that the district court erred in its construction of “vertical machine” and that CardSoft waived any argument of infringement under the correct construction. The Supreme Court vacated and remanded the CardSoft decision, determining that the Federal Circuit must review a district court’s ultimate interpretation of a claim term as well as its interpretations of “evidence intrinsic to the patent” de novo and its subsidiary factual findings about extrinsic evidence for clear error. The Federal Circuit again reversed the district court’s construction of the term “virtual machine,” holding (1) the district court’s construction is entitled to de novo review because the case does not involve the factual findings to which the Court owes deference under Teva; and (2) the district court erred by failing to give “virtual machine” its ordinary and customary meaning, and CardSoft waived any argument of infringement under the correct construction. View "CardSoft, LLC v. VeriFone, Inc." on Justia Law

Straight Path IP Group owns U.S. Patent No. 6,108,704 (“the ’704 patent”), entitled Point-to-Point Internet Protocol, which describes protocols for establishing communication links through a network. Sipnet EU S.R.O. filed a petition for inter partes review of the ‘704 patent, requesting cancellation of claims 1-7 and 32-42, as anticipated by and obvious over several prior-art references. The Patent Trial and Appeal Board conducted the review and reached a final decision canceling the challenged claims based on determinations of anticipation and obviousness. The Federal Circuit reversed, holding that the Board adopted a claim construction in arriving at its decision that was erroneous, even under the broadest-reasonable-interpretation standard. Remanded for further proceedings under the correct construction. View "Straight Path IP Group, Inc. v. Sipnet EU S.R.O." on Justia Law

In 2009, a jury found Akamai’s 703 patent not invalid and directly infringed by Limelight, but the court entered judgment as a matter of law overturning the infringement verdict on the basis of divided infringement. After several rounds of appeals and remands, culminating with the en Federal Circuit’s reversal of the district court’s JMOL determination on the divided infringement issue, the Federal Circuit concluded that the district court did not err in its claim constructions of the terms “tagging” and “optimal” and appropriately instructed the jury and did not err in allowing Akamai to present a theory by its lost profits expert. The court ordered reinstatement of the jury’s original verdict and damages award. View "Akamai Techs., Inc. v. Limelight Networks, Inc." on Justia Law

Verinata and Ariosa compete in the field of noninvasive prenatal diagnostics, including testing for fetal chromosomal abnormalities. Verinata owns the 430 patent, which describes methods of noninvasive prenatal testing for the presence of fetal chromosomal abnormalities, particularly “aneuploidy,” i.e., the presence of an abnormal number of copies of a chromosome. Ariosa petitioned the Patent Trial and Appeal Board for inter partes review and challenged the claims for obviousness under 35 U.S.C. 103. The Board concluded that Ariosa had not met its burden of proving that claims 1–18 and 19–30 would have been obvious.The Federal Circuit vacated and remanded because the Board’s language suggests it did not sufficiently consider a 2008 patent that discloses a method of determining fetal aneuploidy by isolating fetal cells, not cell-free DNA. View "Ariosa Diagnostics v. Verinata Health, Inc." on Justia Law

Netlist’s 537 patent, entitled “Memory Module with a Circuit Providing Load Isolation and Memory Domain Translation” has a 2006 application date and relates to computer system memory modules, which Netlist designs and manufactures. The invention improves the performance or capacity of the memory modules. Inphi sought inter partes reexamination in 2010. The examiner rejected claims 1–9, 12–31, and 34–44 as obvious in view of the prior art. To overcome the rejection, Netlist amended its claims, narrowing them. Thereafter, the examiner withdrew the rejection of the claims and issued a final decision. The Patent Trial and Appeal Board affirmed, rejecting an argument that the amendment, which introduced a negative claim limitation, failed to satisfy the written description requirement of 35 U.S.C. 112, paragraph 1. The Federal Circuit affirmed, holding that the Board’s determination that the negative claim limitation met the requirements of section 112, paragraph 1 was supported by substantial evidence; properly described, alternative features are sufficient to satisfy the written description standard of section 112, paragraph 1 for negative claim limitations. View "Inphi Corp. v. Netlist, Inc." on Justia Law

Cubist Pharmaceuticals owns five follow-on patents that relate to the antibiotic daptomycin, which it sells under the name Cubicin. Hospira sought authorization to sell a generic version of Cubist’s daptomycin product, which led Cubist to file suit charging Hospira with patent infringement (Hatch-Waxman Act, 21 U.S.C. 355 and 35 U.S.C. 156 and 271(e)(2). The district court held, and the Federal Circuit affirmed, that some of the asserted claims of four of Cubist’s patents were invalid for anticipation and all the asserted claims of those patents sdfd invalid for obviousness. As for the fifth patent, the court held the two asserted claims not invalid and ruled that Hospira’s proposed products infringed those claims. View "Cubist Pharma., Inc. v. Hospira, Inc." on Justia Law