Justia Patents Opinion Summaries

Akamai is the exclusive licensee of a patent that claims a method of delivering electronic data using a content delivery network (CDN). Limelight also operates a CDN and carries out several of the steps claimed in the patent, but its customers, rather than Limelight itself, perform a step of the patent known as “tagging.” Under Federal Circuit case law, liability for direct infringement under 35 U.S.C. 271(a) requires performance of all steps of a method patent to be attributable to a single party. The district court concluded that Limelight could not have directly infringed the patent at issue because performance of the tagging step could not be attributed to it. The en banc Federal Circuit reversed, holding that a defendant who performed some steps of a method patent and encouraged others to perform the rest could be liable for inducement of infringement even if no one was liable for direct infringement. The Supreme Court reversed. A defendant is not liable for inducing infringement under section 271(b) when no one has directly infringed. The Federal Circuit’s contrary view would deprive section 271(b) of ascertainable standards and require the courts to develop parallel bodies of infringement law. Citing section 271(f), the Court stated that Congress knows how to impose inducement liability predicated on noninfringing conduct when it wishes to do so. Though a would-be infringer could evade liability by dividing performance of a method patent’s steps with another whose conduct cannot be attributed to the defendant, a desire to avoid this consequence does not justify fundamentally altering the rules of inducement liability clearly required by the Patent Act’s text and structure. View "Limelight Networks, Inc. v. Akamai Techs, Inc." on Justia Law

The Patent Act authorizes district courts to award attorney’s fees to prevailing parties in “exceptional cases,” 35 U.S.C. 285. In Brooks Furniture, the Federal Circuit defined an “exceptional case” as one which either involves “material inappropriate conduct” or is both “objectively baseless” and “brought in subjective bad faith” as shown by clear and convincing evidence. ICON sued Octane for patent infringement. The district court granted summary judgment to Octane, but denied attorney’s fees under section 285. The Federal Circuit affirmed. The Supreme Court reversed, finding the Brooks Furniture framework “unduly rigid’ in light of the statutory grant of discretion to district courts. Section 285 imposes only one constraint on the award of attorney’s fees, limiting it to “exceptional” cases. Because the Patent Act does not define “exceptional,” the term should be given it ordinary meaning: “uncommon,” “rare,” or “not ordinary.” An “exceptional” case is simply one that stands out from others with respect to the substantive strength of a party’s litigating position (considering both governing law and the facts) or the unreasonable manner in which the case was litigated. District courts may determine whether a case is “exceptional” in the case-by-case exercise of their discretion, considering the totality of the circumstances. The Brooks Furniture standard was so demanding that it appeared to render section 285 superfluous of the courts’ inherent power to award fees in cases involving misconduct or bad faith. Section 285 imposes no specific evidentiary burden. View "Octane Fitness, LLC v. ICON Health & Fitness, Inc." on Justia Law

The Patent Act provides: “The court in exceptional cases may award reasonable attorney fees to the prevailing party,” 35 U.S.C. 285. The Federal Circuit has interpreted section 285 as authorizing fee awards only “when there has been some material inappropriate conduct,” or when it is both “brought in subjective bad faith” and “objectively baseless.” A health insurance company obtained a declaratory judgment that a patent was invalid and not infringed. The district court found the case “exceptional” and awarded attorney fees of $4,694,727.40, $209,626.56 in expenses, and $375,400.05 in expert fees. The court found a pattern of “vexatious” and “deceitful” conduct by the defendant in attempting to force other companies to purchase licenses, even after its own experts determined that its claims lacked merit. The Federal Circuit reviewed the determination de novo and reversed in part. A unanimous Supreme Court vacated. All aspects of a district court’s exceptional-case determination should be reviewed for abuse of discretion. That determination is based on statutory text that emphasizes that the district court is better positioned to make the “multifarious and novel” determination, which is not susceptible to “useful generalization” of the sort that de novo review provides, and is “likely to profit from the experience that an abuse-of discretion rule will permit to develop.” The word “exceptional” should be given its ordinary meaning: “one that stands out from others with respect to the substantive strength of a party’s litigating position (considering both the governing law and the facts of the case) or the unreasonable manner in which the case was litigated,” considering the totality of the circumstances. View "Highmark Inc. v. Allcare Health Mgmt. Sys., Inc." on Justia Law

Core Wireless sued Apple for patent infringement in the Eastern District of Texas. Core, a Luxembourg company with one employee, is a wholly-owned subsidiary of MOSAID, a Canadian corporation. Core Wireless shares office space with a division MOSAID in Plano, Texas. Apple is a California corporation with a principal place of business in Cupertino, California. The heart of the patent dispute involves baseband processing chips installed in the accused product, which are supplied by California companies, Qualcomm and Intel. Apple moved to transfer the case to the Northern District of California. The district court denied the motion, emphasizing the lack of specificity in Apple’s assertions as to why the transfer factors favored California. Apple then sought to supplement the record. The district court denied the motion, noting that “[t]here is no indication that all of this relevant information was not accessible at the time Apple had filed its transfer motion.” Apple sought a writ of mandamus instructing the district court to vacate its orders. The Federal Circuit denied the petition, finding no abuse of discretion. View "In re: Apple Inc." on Justia Law

Elcommerce.com owns a patent directed to a system and method of monitoring a supply chain of components to coordinate and stabilize the supply of components from various producers. Elcommerce charged SAP with patent infringement. SAP counterclaimed that the patent was invalid, unenforceable, and not infringed. The district court construed claims and entered summary judgment that certain asserted system claims were invalid for indefiniteness under 35 U.S.C. 112. The parties stipulated that the claim construction precluded finding that SAP infringes any of the asserted method claims. The Federal Circuit affirmed construction of the claim terms “independent supply chain sites,” “scanning for,” “detecting,” and “monitoring for changed supply-related data information,” and the resulting stipulation of non-infringement of the method claims. The court vacated the ruling of invalidity of the system claims as based on an incorrect evidentiary premise. SAP incorrectly informed the court that Federal Circuit precedent makes consideration of evidence of the knowledge and understanding of the relevant technology by persons of skill in the field of the invention unnecessary and declined to provide evidence of how such persons would view the description of “structure, materials, or acts” in the specification for performance of the several functions claimed. Invalidity must be proven by clear and convincing evidence . View "Elcommerce.com, Inc. v. SAP AG & SAP Am., Inc." on Justia Law

Dutasteride is useful in the treatment of androgen responsive diseases. Androgens are a class of hormones; testosterone is the major circulating androgen. Androgens are implicated in diseases including benign prostatic hyperplasia, prostate cancer, acne, male pattern baldness and hirsutism. In some target tissues, including prostate and skin tissue, testosterone produces certain effects by first being converted to dihydrotestosterone. Dutasteride inhibits the enzymes that catalyze the conversion, mitigating some of testosterone’s physiological effects. GSK markets Avodart® and Jalyn™, which contain dutasteride and are FDA-approved to treat benign prostatic hyperplasia. GSK’s patent covers dutasteride and any “pharmaceutically acceptable solvate thereof.” Defendants filed Abbreviated New Drug Applications under 21 U.S.C. 355(j), seeking FDA approval to market generic versions of the drugs. As authorized by 35 U.S.C. 271(e)(2), GSK sued for infringement. Defendants stipulated to infringement, but alleged that the asserted claims were invalid for anticipation, lack of utility, lack of enablement, and inadequacy of the written description. The district court construed “solvate” (of dutasteride), acknowledging considerable extrinsic evidence that, in the pharmaceutical field, “solvate” is limited to crystalline complexes, no matter how created, but concluded that the specification of this particular patent directly contradicted any such narrow usage. The Federal Circuit affirmed without addressing claim construction because no matter which construction is adopted, the term “solvate” involves no performance propertyView "GlaxoSmithKline LLC v. Banner Pharmacaps, Inc." on Justia Law

Starhome owns the 487 patent, titled “System and Methods for Global Access to Services for Mobile Telephone Subscribers,” aimed at solving a problem that arises when mobile phone users are in a network other than their home network (roaming). For example, in a home network, a mobile phone user might dial a short code, such as “121,” to access voice mail. While roaming, a network may not recognize the code, resulting in an error message. The 487 patent demonstrates a system providing roaming services and employing an “intelligent gateway” that contains information about multiple home networks, including short-code translation tables, subscriber profile data, and roaming patterns. Starhome sued AT&T. The court construed the term “intelligent gateway” to mean “a network element that transfers information to and from a mobile network and another network external to the mobile network” and the parties stipulated to a judgment of noninfringement. The Federal Circuit affirmed.View "Starhome GmbH v. AT&T Mobility, LLC" on Justia Law

Nooren owns patent 044, entitled “Use of a Preparation for Insulation/Sealing and Coating Purposes and Method for Sealing Manhole Covers,” which discloses a composition for insulating and protecting substrates, such as manhole covers, underground tanks, pipes, and cable sleeves, from corrosion, water ingress, and mechanical stresses. The patent is licensed exclusively to Stopaq, a Dutch company that designs and manufactures coatings and sealants that exhibit both viscous and elastic properties (visco-elasticity) and are designed for corrosion protection and waterproofing. Kleiss, a Dutch company, manufactures similar products that prevent corrosion and protect against leaks, which are distributed in the U.S. by Amcorr. Kleiss and Amcorr sought a declaratory judgment in the Netherlands that their products did not infringe the 044 patent. Nooren filed suit in the U.S., alleging infringement. The parties agreed to focus on the phrase “a filler comprising a plurality of fractions each comprising different size particles, and wherein said different fractions have different particle size distributions” in the only independent claim in the patent. The court granted summary judgment of noninfringement in favor of Amcorr. The Federal Circuit vacated, holding that the district court erred in at least on claim construction. View "Frans Nooren Afdichtingssystem v. Stopaq Amcorr Inc." on Justia Law

The Federal Circuit previously held that patent claim construction receives de novo determination on appeal. Such review is conducted on the administrative record and any additional information in the record of the district court, and is without deference to the ruling of the district court. The court had applied that standard to this case and, reversing the district court, held that the claim term “voltage source means” is a means-plus-function term requiring corresponding structure in the specification. The court held the claims invalid for indefiniteness. After granting rehearing, en banc, the Federal Circuit applied the principles of stare decisis, and confirmed the Cybor standard of de novo review. The court stated that after 15 years of experience with Cybor, it concluded that it should retain plenary review of claim construction, to provide national uniformity, consistency, and finality to the meaning and scope of patent claims. View "Lighting Ballast Control, LLC v. Philips Elec. N. Am. Corp." on Justia Law

Takeda owns patents that claim the formulation for the brand-name drug Prevacid® SoluTab,™ which contains the active ingredient lansoprazole, a proton pump inhibitor used to treat acid reflux. It is the only proton pump inhibitor available as an orally disintegrable tablet. A patient allows the tablet to disintegrate in his mouth, leaving behind thousands of granules which the patient swallows. The stated objective of the 994 patent is a formulation with granules small enough to avoid a feeling of roughness in the patient’s mouth upon disintegration. In 2010, Zydus filed an abbreviated new drug application (ANDA) with the FDA, seeking to manufacture a generic version of Prevacid® SoluTab.™ Takeda filed suit, alleging that the ANDA product infringed claims of several patents. Only claim 1 of the 994 patent remains at issue. Zydus counterclaimed, alleging that claim 1 was invalid for failure to comply with 35 U.S.C. 112. The district court construed the claim term “fine granules having an average particle diameter of 400 μm or less,” accepting Takeda’s argument that the term should be construed to include a deviation of ±10%, based on a “universally accepted” 10% standard of error for particle size measurements. The Federal Circuit reversed the finding of infringement and found no invalidity. View "Takeda Pharm. Co., Ltd. v. Zydus Pharm. USA, Inc." on Justia Law