Justia Patents Opinion Summaries

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

Glaucoma is an eye disease associated with elevated intraocular pressure (IOP). Treatments that effectively reduce IOP can slow the progression of the disease. In 2001, the FDA approved Lumigan 0.03%®, a topical solution developed by Allergan, for treating open angle glaucoma and ocular hypertension. Although Lumigan 0.03% was effective at lowering IOP, it also caused frequent, severe hyperemia. Many patients stopped using it without consulting their physicians, causing gradual vision loss. Allergan explored alternative formulations and developed Lumigan® 0.01%, which has a three-fold lower bimatoprost concentration than Lumigan 0.03%, and a four-fold higher concentration of a preservative for inhibiting bacterial growth. In 2010, the FDA approved Allergan’s New Drug Application for Lumigan 0.01% for the same approved uses as Lumigan 0.03%. Allergan’s patents are listed in the FDA’s Approved Drug Products with Therapeutic Equivalence Evaluations (Orange Book) as claiming Lumigan 0.01% and its approved uses. Generic manufacturers submitted Abbreviated New Drug Applications to the FDA, for generic versions of Lumigan 0.01% before expiration of the patents. Allergan sued, asserting infringement. The district court held, and the Federal Circuit affirmed that, the patents were not shown to be invalid for obviousness under 35 U.S.C. 103, and that claims of two patents were not shown to be invalid for lack of an adequate written description under 35 U.S.C. 112. View "Allergan, Inc. v. Sandoz, Inc." on Justia Law

Microsoft, a third-party beneficiary to Motorola’s reasonable and non-discriminatory (RAND) commitments, filed suit against Motorola for breach of its obligation to offer RAND licenses to its patents in good faith. Motorola filed infringement actions in a variety of fora to enjoin Microsoft from using its patents without a license. As a preliminary matter, the court rejected Motorola's challenge to its jurisdiction, concluding that there was no error or manifest injustice that would justify disrupting the court's and the Federal Circuit's prior determinations that it has jurisdiction. Further, there is no other exception to the law-of-the-case doctrine applicable. On the merits, the court rejected Motorola's challenge that the district court lacked the legal authority to decide the RAND rate issue in a bench trial, severing it from the ultimate breach of contract issue tried to the jury. Motorola also challenged the district court’s legal analysis in determining the RAND rate was contrary to Federal Circuit precedent. As to Motorola's first challenge, the court concluded that Motorola was quite aware, when it agreed with Microsoft in June to a RAND determination bench trial, that the RAND determination was being made to set the stage for the breach of contract trial. Nor did Motorola ever withdraw its affirmative stipulation to a bench trial for that purpose. Therefore, the court did not consider whether, absent consent, a jury should have made the RAND determination. In regards to Motorola's second challenge, the court reiterated that this is not a patent law action and that the Federal Circuit's patent law methodology can serve as a guidance in contracts cases on questions of patent valuation. In this case, the district court's analysis properly adapted that guidance. The court rejected Motorola's remaining arguments, concluding that the district court's factual findings were properly admitted at the jury trial, the jury's verdict was supported by substantial evidence, and its damages award was proper. Accordingly, the court affirmed the judgment. View "Microsoft, Corp. v. Motorola, Inc." on Justia Law

Manufacturers of circuit boards used in electronic devices, use circuit board testers before the boards are integrated into finished products. Many testers require an interface plate, which is a plastic grid with holes that permit connections between the tester and the circuit board. In order to align circuit boards during testing, it is advantageous to mark certain holes on the interface plate. Prior art methods of marking interface plates included placing Mylar masks on the surface of the interface plate, painting the surface of interface plates, and making shallow drill marks on interface plates. The Circuit Check patents claim systems and methods related to marking interface plates. Circuit Check sued QXQ alleging that QXQ’s interface plates infringed its patents. QXQ stipulated to infringement and the parties stipulated that three references describing interface plate marking techniques were prior art to the patents. The jury found the asserted claims not invalid for obviousness, found that the infringement was willful, and awarded damages. The court entered judgment as a matter of law that the asserted claims are invalid as obvious. The Federal Circuit reversed, finding the verdict that the disputed references were not analogous to be supported by substantial evidence. View "Circuit Check, Inc. v. QXQ Inc." on Justia Law

In April 2011, while its patent application was pending with the USPTO, U.S. Water Services, which “sell[s] water treatment and purification equipment, materials, and services,” especially “to ethanol process technologies,” sued its competitor, ChemTreat, for misappropriation of trade secrets. In October 2011, the USPTO issued the 244 patent covering a method to reduce the formation of insoluble scale deposits during the production of ethanol using enzyme, phytase, in its “pHytOUT® system.”Three days before U.S. Water and ChemTreat settled the misappropriation claim, ChemTreat filed counterclaims requesting declaratory judgments of noninfringement and invalidity of the 244 patent. The suit was filed before the Leahy-Smith America Invents Act, 125 Stat. 284, took effect, so the counterclaims independently did not establish appellate jurisdiction for the Federal Circuit. The district court granted ChemTreat summary judgment as to the noninfringement counterclaim and dismissed the invalidity counterclaim. The Eighth Circuit affirmed. Evaluating the “totality of [the] circumstances,” the district court did not err in finding the misappropriation action, together with U.S. Water’s statements to its customers and supplier, produced an objective, “reasonable apprehension of suit,” and did not err in concluding declaratory judgment subject matter jurisdiction existed. The decision did not constitute an advisory opinion. View "U.S. Water Servs., Inc. v. ChemTreat, Inc." on Justia Law

Under the Biologics Price Competition and Innovation Act (BPCIA), 124 Stat. 119, an abbreviated biologics license application (aBLA) requires proof that a product is “biosimilar” to an approved reference product, plus information regarding the FDA’s determination that the reference product is safe. ABLA approval may not take effect until 12 years after licensing of the reference product. BPCIA allows patent infringement suits before approval: the applicant provides confidential access to its aBLA within 20 days after the FDA accepts its application. The parties negotiate a list of patents that would be subject to an immediate infringement action. Under subsection 262(l), the applicant gives notice at least 180 days before commercial marketing, to allow a suit for preliminary injunction. If the applicant discloses information, neither may bring suit based on non-listed patents before notice of commercial marketing. Amgen has marketed Neupogen® since 1991. Sandoz filed an aBLA, for a Neupogen biosimilar. Sandoz notified Amgen that intended to launch its biosimilar upon approval and that it “opted not to provide” its aBLA, so that Amgen was entitled to sue under section 262(l). In 2015, the FDA approved Sandoz’s aBLA. Sandoz gave a “further notice” of commercial marketing. Amgen sued, asserting state law claims of unfair competition based on BPCIA violations; conversion for wrongful use of Amgen’s approved license; and patent infringement. The court held that BPCIA permits an applicant not to disclose its aBLA; that such a decision alone does not permit the reference product owner to obtain relief; and that the applicant may give notice of commercial marketing before FDA approval. The Federal Circuit affirmed dismissal of Amgen’s state law claims, but otherwise vacated and directed the court to consider the patent infringement claims. View "Amgen, Inc. v. Sandoz, Inc." on Justia Law

Firepass owns the 752 patent, directed to using hypoxic compositions for preventing and extinguishing fires and sued Airbus for infringement. Airbus requested inter partes reexamination of the patent, proposing that certain claims were anticipated under 35 U.S.C. 102 by the “Kotliar” patent and by the "Vulnerability Methodology and Protective Measures for Aircraft Fire and Explosion Hazards,” Report. The PTO granted Airbus’s request in part, finding that Kotliar presented a substantial new question of patentability, but that the report did not present a substantial new question. The Examiner ultimately rejected claims 91–94 under 35 U.S.C. 112, for lack of written description. The Board reversed, finding that the claims were supported by an adequate written description, but dismissed Airbus’s cross-appeal relating to the same claims, finding that “the statutory authority for third-party requester appeals is . . . expressly limited to the review of examiner final decisions that are ‘favorable to the patentability’ of a claim," and that “determination of a ‘[l]ack of a substantial new question of patentability is not a favorable decision on patentability.’” The Federal Circuit vacated. Once the Director ordered inter partes reexamination it was section 1.948(a), not a determination of a substantial new question of patentability, that governed the limitations on Airbus’s submission of prior art. View "Airbus S.A.S. v. Firepass Corp." on Justia Law

Attorney John Cogswell appealed the imposition of a Rule 11 sanction. Acting on behalf of Predator International, Inc., Cogswell filed a lawsuit in April 2009 against Gamo Outdoor USA, Inc. and Industrias El Gamo, S.A. (collectively, Gamo). The original complaint alleged patent infringement and other claims. When it appeared that Lee Phillips, a co-inventor of the patent at issue, was asserting that he still owned half the patent, Cogswell moved to dismiss the infringement claim, explaining that Predator would litigate ownership in state court with the expectation of reviving the patent-infringement claim once it had established its ownership. The state litigation expanded after Gamo purchased Phillips’s interest in the patent. Cogswell then moved in federal court to supplement Predator’s complaint with a challenge to Gamo’s claimed interest in the patent and moved to amend the complaint by reviving the patent-infringement claim. The district court denied the motion. Eventually the district court imposed a Rule 11 sanction on Cogswell for filing the motion to supplement and amend Predator’s complaint, justifying the sanction on grounds that he was forum shopping on the claims he wished to add, his motion came too long after he had learned of Gamo’s purchase of Phillips’s interest in the patent, and nothing had changed to justify his reinstating the patent-infringement claim. The Tenth Circuit reversed: the motion to supplement and amend was not unwarranted under existing law. View "Predator International v. Gamo Outdoor" on Justia Law