Justia Patents Opinion Summaries

Hyatt is the named inventor on at least 75 issued patents and nearly 400 pending applications, all filed before June 8, 1995. Each pending application incorporates by reference, and claims the benefit of priority from, a network of applications dating back to the 1970s. The PTO estimated that the applications include 45,000 independent claims and 115,000 total claims when combined, but consist of only 12 distinct specifications. In 2013, the PTO began to issue “Requirements,” corresponding to Hyatt’s “families” of applications having a common specification, requiring Hyatt to select claims from that family for prosecution, not to exceed 600, absent a showing that more are necessary, and identify the earliest applicable priority date and supporting disclosure for each selected claim. Each Requirement is entered in the prosecution history of a particular application, but also contains information about other applications in that family. Requirements attached to pending applications that are not parents to issued patents will remain confidential. A few issued patents claim priority from a pending application, so that Requirements in their history will become publicly available, disclosing otherwise-confidential information. Hyatt sought to expunge the confidential information, citing 35 U.S.C. 122(a), which provides that the PTO keep applications confidential unless “necessary to carry out the provisions of an Act of Congress or in such special circumstances as may be determined by the Director.” The Director denied the petitions. The Federal Circuit affirmed summary judgment in favor of the PTO, agreeing there was no genuine dispute that the “extraordinary” nature and prosecution history of Hyatt’s applications constituted “special circumstances.” View "Hyatt v. Lee" on Justia Law

The 017 patent relates to heating, ventilation, and air conditioning (HVAC) systems and explains that prior art thermostats for forced-air HVAC systems typically have two modes of operation for the system fan. The first is for operating the fan only when there is a call for heating or cooling from the thermostat, as necessary to distribute air from the heating or cooling elements to the space to be conditioned (“auto” mode). Some prior art thermostats include settings for continuous system fan operation regardless of a call for heating or cooling. The 017 patent claims an apparatus for running an HVAC system fan intermittently during periods when there is no call for heating or cooling. In a suit for infringement, a jury found the asserted claims not invalid by reason of obviousness and infringed by Emerson’s “Big Blue” thermostats. Based on a royalty rate of $2.25 per unit, the jury awarded damages of $311,379 on sales of 138,891 thermostats. The Federal Circuit reversed the judgment of noninvalidity, vacated the judgment of infringement, and remanded for dismissal. The asserted claims were obvious in light of prior art. View "ABT Sys., LLC v. Emerson Elec. Co." on Justia Law

Konig’s SRI Employment Agreement, stated: I agree ….To promptly disclose… all discoveries, improvements, and inventions, including software … during … my employment, and … to effect transfer of ownership … to SRI . . . . I understand that termination of this employment shall not release me from my obligations. While employed by SRI, Konig started generating documents relating to a personalized information services idea called “Personal Web” and formed a company, Utopy. Konig left SRI and filed a provisional patent application in 1999; the 040 patent issued in 2005. In 2001, Konig asked an SRI scientist to test the Utopy products. The 040 patent was eventually assigned to PUM. Konig filed another patent application in 2008. PUM was the assignee; the 276 patent issued in 2010. In 2009, PUM sued Google, asserting infringement. PUM provided interrogatory responses that asserted that the conception of the inventions was while Konig was still at SRI. Google had acquired “any rights” that SRI had and counterclaimed breach of contract. The court stated that no reasonable juror could have found that the injury was “inherently unknowable,” applied the three-year limitations period for contracts claims, and granted PUM judgment on the counterclaim. The court also entered judgment of invalidity and noninfringement. The Federal Circuit affirmed, noting that the claim construction had no effect on the outcome and declining to issue an advisory opinion. View "Personalized User Model, LLP v. Google, Inc." on Justia Law

JVC sued Nero for contributory and induced infringement of JVC patents directed to uses of DVD and Blu-ray optical discs, based on Nero’s sale of software to end users of DVD and Blu-ray discs, who allegedly directly infringe the patents. JVC argued that each patent is essential to playing, copying, and recording data on an optical disc compliant with the DVD or Blu-ray standard. The Nero software must practice the patents because the Nero software is used in conjunction with standards-compliant DVD or Blu-ray optical discs. The district court held, on summary judgment, that JVC is “barred from asserting claims of direct infringement against end users for use of Nero software with DVD and Blu-ray optical discs made or sold by a party whose products have been expressly released from claims of infringement by JVC with regard to the Patents.” Absent direct infringement, Nero cannot be liable for indirect infringement. The Federal Circuit agreed that, on JVC’s theory and proffered evidence of infringement, summary judgment of non-infringement was properly granted. View "JVC Kenwood Corp. v. Nero, Inc." on Justia Law

In 2006, Akamai alleged that Limelight infringed several patents, including the 703 patent, which claims methods for delivering content over the Internet. At trial, the parties agreed that Limelight’s customers—not Limelight— perform the “tagging” and “serving” steps in the claimed methods. The judge instructed the jury that Limelight is responsible for its customers’ performance of the tagging and serving method steps if Limelight directs or controls its customers’ activities. The jury found that Limelight infringed claims 19, 20, 21, and 34, but the court held, as a matter of law, that there could be no liability. After a remand by the Supreme Court, the Federal Circuit, en banc, reversed and unanimously set forth the law of divided infringement under 35 U.S.C. 271(a). The jury heard substantial evidence from which it could find that Limelight directs or controls its customers’ performance of each remaining method step, such that all steps of the method are attributable to Limelight. Limelight conditions its customers’ use of its content delivery network upon its customers’ performance of the tagging and serving steps, and establishes the manner or timing of its customers’ performance. View "Akamai Techs., Inc. v. Limelight Networks, Inc." on Justia Law

In 2010, Keranos sued 49 parties for infringing three patents by using a specific type of flash memory technology developed by SST, called “SuperFlash,” that implements a split-gate flash memory design. Keranos, which was formed weeks earlier, obtained the rights to the asserted patents from UMC, through an “Exclusive Patent License and Royalty Agreement.” UMC continued to hold the legal title to the asserted patents, all of which expired in 2006-2008. Keranos did not join UMC as co-plaintiff. SST and certain defendants then sued Keranos, UMC, and others, seeking declaratory judgments of noninfringement and invalidity of the same patents. The cases were consolidated into two cases. Following a joint Markman hearing, the district court regrouped the defendants into two new cases: case 00017 pitting Keranos, UMC, and individuals against the manufacturers of the accused products, and case 00018, pitting Keranos against the alleged customers of the accused products who incorporated those products into larger products for sale. The Federal Circuit agreed with the district court that Keranos has standing to sue for infringement of the asserted patents, but vacated and remanded for consideration of Keranos’s motions for leave to amend infringement contentions based on the local patent rules. View "Keranos, LLC v. Silicon Storage Tech., Inc." on Justia Law

Power Integrations’ 876 patent is entitled “Frequency Jittering Control for Varying the Switching Frequency of a Power Supply.” It is directed to a technique for reducing electromagnetic interference by jittering the switching frequency of a switched mode power supply. The Board of Patent Appeals and Interferences affirmed rejection of claims 1, 17, 18, and 19 as anticipated under 35 U.S.C. 102(b). The Federal Circuit vacated, noting previous litigation concerning the claims. The board fundamentally misconstrued Power Integrations’ principal claim construction argument and failed to provide a full and reasoned explanation of its decision to reject claim 1. While the board is not generally bound by a previous judicial interpretation of a disputed claim term, the board erred in failing to address the district court’s previous interpretation of the term “coupled.” View "Power Integrations, Inc. v. Lee" on Justia Law

Cross Match claimed that defendants 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. In 2013, the Federal Circuit first vacated and remanded for revision of the order to bar only a subset of the scanners, reasoning that an exclusion order 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. In doing so, the panel effectively eliminated trade relief under Section 337 for induced infringement and potentially for all types of infringement of method claims. The Federal Circuit later granted en banc rehearing and upheld the Commission’s position. Because Section 337 does not answer the question, the Commission’s interpretation of Section 337 is entitled to Chevron deference. The Commission’s interpretation is reasonable because it is consistent with Section 337 and Congress’ mandate to the Commission to safeguard United States commercial interests at the border. View "Suprema, Inc. v. Int'l Trade Comm'n" on Justia Law

Ethicon’s patents are directed to surgical instruments that use ultrasonic energy created by blades vibrating at high frequencies to cut tissue and blood vessels and use heat generated from friction to coagulate and seal blood vessels and prevent bleeding. Ethicon manufactures and sells such ultrasonic surgical instruments. Covidien launched a competing line. Ethicon sued, alleging infringement. After Markman proceedings and the close of discovery, the court entered summary judgment of invalidity and/or noninfringement of the asserted claims. The Federal Circuit reversed on invalidity of the 501 patent for indefiniteness; the specification provides sufficient guidance to a person of ordinary skill in the art as to the scope of asserted claims. The court vacated summary judgment of noninfringement of the 275 patent because the court improperly resolved genuine disputes of material fact in favor of Covidien instead of Ethicon, the non-movant. The court reversed the grant of invalidity of the design patents based on functionality. The district court evaluated the claimed designs using too high a level of abstraction, focusing on unclaimed utilitarian aspects of the underlying article instead of claimed ornamental designs of that article. The court affirmed summary judgment of noninfringement of the design patents. After the functional aspects of the claimed designs are properly excluded from the analysis, the claimed ornamental designs are plainly dissimilar from Covidien’s. View "Ethicon Endo-Surgery, Inc. v. Covidien, Inc." on Justia Law

Carnegie Mellon University sued Marvell for infringing two patents related to hard-disk drives. A jury found for CMU on infringement and validity, and awarded roughly $1.17 billion as a reasonable royalty for the infringing acts, using a rate of 50 cents for each of certain semiconductor chips sold by Marvell for use in hard-disk drives. The district court used that rate to extend the award to the date of judgment, awarded a 23-percent enhancement of the past-damages award based on Marvell’s willfulness (found by the jury and the court), and entered a judgment of $1.54 billion for past infringement and a continuing royalty at 50 cents per Marvell-sold chip. The Federal Circuit affirmed as to infringement and validity and rejection of Marvell’s laches defense to pre-suit damages, but reversed the grant of enhanced damages under the governing willfulness standard, which does not require that Marvell have had a reasonable defense in mind when it committed its past infringement. The royalty properly embraces Marvell-sold chips that, though made and delivered abroad, were imported into the U.S. A new trial is required as to Marvell chips made and delivered abroad but never imported into the U.S. View "Carnegie Mellon Univ. v. Marvell Tech. Grp.,Ltd." on Justia Law