Justia Patents Opinion Summaries

Dome owns a patent for making contact-lens materials that are rigid and gas permeable. On reexamination, the U.S. Patent and Trademark Office found that the claimed method at issue was obvious and therefore unpatentable. The district court found that a person of ordinary skill would have been motivated to combine the prior art and that the prior art did not teach away from the claimed invention, so that the claims were unpatentable under 35 U.S.C. 103. The court found that Dome’s proffered evidence of objective indicia did not indicate nonobviousness. The Federal Circuit affirmed. View "Dome Patent L.P. v. Lee" on Justia Law

In 2005, Dow sued NOVA, alleging infringement of claims of patents covering ethylene polymer compositions (a type of plastic) with improved modulus, yield strength, impact strength, and tear strength. These polymers can be made into films that can be down-gauged (made thinner) without losing strength. A jury found the asserted claims to be infringed and not invalid. The Federal Circuit affirmed, holding that the asserted claims were not indefinite. The district court granted supplemental damages in the form of lost profits and reasonable royalties and denied Dow’s request for enhanced damages. Subsequently, the Supreme Court decided Nautilus v. Biosig Instruments (2014), establishing a new standard: “a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention. The Federal Circuit then held that the intervening change resulting from Nautilus provides an exception to the doctrine of law of the case or issue preclusion. Reviewing the supplemental damages award, the court evaluated the indefiniteness of the claims under the Nautilus standard, held that the claims are indefinite, and reversed the award of supplemental damages. View "Dow Chem. Co. v. NOVA Chems. Corp." on Justia Law

Inline’s patented products are plastic food containers with tamper-evident and tamper-resistant features. The containers have a hinged plastic bridge between the top and bottom portions of the container, the bridge having a frangible section that must be severed in order to open the container, so that tampering or opening of the container is readily evident. Inline sued EasyPak for infringement. Following claim construction, Inline moved for entry of final judgment of non-infringement of its 003 patent, on the premise that the claims as construed are not infringed and granted EasyPak a covenant not to sue on the 680 patent. The district court then entered final judgment of non-infringement of the 003 patent, dismissed without prejudice EasyPak’s declaratory judgment counterclaims for invalidity, and dismissed Inline’s count for infringement of the 680 patent with prejudice. The Federal Circuit vacated, holding that the terms “frangible section” and “tamper evident bridge” were incorrectly construed with respect to the 003 patent. The district court erred in limiting the claims to a specific embodiment, for the invention as claimed is supported by the patent’s broader disclosure. View "Inline Plastics Corp.. v. Easypak, LLC" on Justia Law

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