Justia Patents Opinion Summaries

Douglas and Buyers manufacture snowplow assemblies for mounting on the front of a truck. Douglas commands about 60 percent of the market; Buyers entered the market in 2007, selling less expensive assemblies. By 2010, Buyers had a market share of about five percent. Douglas’s 700 patent claims a snowplow assembly that can be mounted on a vehicle and removed as a single unit. Patented features allow the user to remove heavy portions of the assembly from the vehicle when the plow is not in use, reducing stress on the vehicle’s suspension. The inventive mounting frame does not extend beyond the bumper upon removal of the snowplow assembly, reducing the likelihood the mounting frame will inadvertently cause damage. Douglas alleged infringement against Buyers. The district court granted summary judgment of non-infringement of the 700 patent. A jury found two other patents valid and infringed, but the court denied Douglas a permanent injunction and assigned an ongoing royalty. The Federal Circuit reversed with respect to the 700 patent, finding that the court applied an erroneous claim construction of “connected to”; remanded for entry of a permanent injunction with respect to another patent; and vacated the ongoing royalty rate. View "Douglas Dynamics, LLC v. Buyers Prods.Co." on Justia Law

Alexsam owns the 608 patent, which discloses a system for activating and using “multifunction card[s].” These cards include prepaid phone cards, used to pay for long-distance telephone calls, and electronic gift certificate cards. Such cards are typically distributed to retailers and displayed in stores in an inactive state, in order to deter theft, and are activated and assigned a cash value at the check-out counter. The claims at issue are drawn to a system for activating multifunction cards using a point-of-sale terminal, such as a cash register or a freestanding credit card reader. The district court held that certain of IDT’s systems infringed claims in the 608 patent and that these claims were not invalid, but that certain other systems were licensed under the claims. The Federal Circuit affirmed the judgment of no invalidity, reversed the jury’s finding of infringement with regard to IDT’s Walgreens and EWI systems, and affirmed the judgment of infringement with regard to IDT’s miscellaneous systems based on the district court’s discovery sanction. The court affirmed the judgment of noninfringement with regard to IDT’s SafeNet systems based on the license defense. View "Alexsam, Inc. v. IDT Corp." on Justia Law

Piperidine derivatives are commonly used as active ingredients in antihistamines. D’Ambra, AMRI’s president, found the prior art processes for making piperidine derivatives inefficient and overcame the deficiencies by synthesizing piperidine derivatives using piperidine and cyclopropylketone (CPK) intermediates at an earlier stage in the reaction. The processes developed by Dr. D’Ambra have the stated advantage of more readily separating out a substantially pure piperidine derivative end product, if desired. Sanofi-Aventis, the exclusive licensee of AMRI’s 703 patent, uses the processes to produce large quantities of fexofenadine, which is the active ingredient in its antihistamines marketed under the brand name Allegra® and Allegra-D® 24 Hour. The parties stipulated to a noninfringement judgment following the district court’s Markman opinion, which consolidated numerous patent infringement cases and construed terms of the 703 patent, among others. The Federal Circuit reversed and remanded, holding that the district court erred in construing “substantially pure.” View "Aventis Pharma, Inc. v. Amino Chem., Ltd." on Justia Law

Sunovion and Dey plaintiffs were simultaneously developing pharmaceutical products to treat chronic obstructive pulmonary disease by storing the compound formoterol in an aqueous solution and administering it through a nebulizer. Sunovion filed a patent application, followed by an application to test its products in human subjects. It then received a patent and held clinical trials, before ultimately releasing a commercial product. Dey likewise filed a series of patent applications, received several patents, ran human subject trials, and released a commercial product. Dey’s patent applications were filed after Sunovion’s, and its patents were issued after consideration of Sunovion’s patent. When Dey sued Sunovion for patent infringement, the district court held that some of Dey’s patents were invalid because a Sunovion clinical trial in which Sunovion tested its own product constituted anticipated Dey’s inventions and a prior public use within the meaning of 35 U.S.C. 102(b). The Federal Circuit reversed. Sunovion has not shown that it is entitled to summary judgment based on its assertion that its use of formulations meeting the limitations of Dey’s later-issued patents constituted a public use of Dey’s inventions within the meaning of section 102(b). View "Dey,L.P. v. Sunovion Pharma, Inc." on Justia Law

Forrester and Wheelabrator are competitors in the market for phosphate-based treatment systems for stabilizing heavy metals in waste such as incinerator ash, to prevent heavy metals from leaching into drinking water sources. Wheelabrator calls its treatment system “WES-PHix” and has obtained several related U.S. patents. Forrester calls its system “FESI-BOND” and has also obtained patents. In 2001, Wheelabrator entered into a license agreement that granted Bio Max the exclusive right to use and sublicense WES-PHix® in Taiwan. Bio Max sublicensed WESPHix to Kobin, which used WES-PHix at its Taipei plant. Forrester learned that Kobin was dissatisfied with WES-PHix due to the odor it generated. Forrester developed a variation on its system, addressing the odor problem, and persuaded Kobin to license FESI-BOND for use at its plant. Wheelabrator sent a letter asserting that Kobin was in breach of its WES-PHix sublicense agreement and threatening legal action. Kobin stopped purchasing from Forrester and entered into a new sublicense with Wheelabrator. Forrester filed suit alleging violation of the New Hampshire Consumer Protection Act; tortious interference with a contractual relationship; tortious interference with Forrester’s prospective advantage; and trade secret misappropriation. The district court denied remand and granted summary judgment for Wheelabrator. The Federal Circuit vacated, with instructions to remand to state court. View "Forrester Envt.l Servs., Inc. v. Wheelabrator Techs.,Inc." on Justia Law

Motiva’s patent, issued in 2007 and titled “Human Movement Measurement System,” generally relates to a “system for ... testing and training a user to manipulate the position of ... transponders while being guided by interactive and sensory feedback . . . for the purpose of functional movement assessment for exercise and physical rehabilitation.” Motiva accused Nintendo’s Wii video game system of infringement. The district court stayed the case pending patent reexamination. Motiva then filed a complaint with the International Trade Commission, asserting that the Wii infringed the patent, so that its importation violated the Tariff Act. After the Commission began its investigation, Nintendo moved for summary determination under Section 337, which prohibits importation of articles that infringe a valid and enforceable U.S. patent if “an industry in the United States, relating to the articles protected by the patent ... exists or is in the process of being established.” 19 U.S.C. 1337(a)(2). According to Nintendo, there were no commercialized products incorporating Motiva’s patented technology, and Motiva’s activity aimed at developing a domestic industry consisted solely of the litigation. The administrative law judge agreed. The Federal Circuit affirmed. View "Motiva, LLC v. Int'l Trade Comm'n" on Justia Law

Monsanto invented and patented Roundup Ready soybean seeds, which contain a genetic alteration that allows them to survive exposure to the herbicide glyphosate. It sells the seeds subject to a licensing agreement that permits farmers to plant the purchased seed in only one growing season. Growers may consume or sell the resulting crops, but may not save any of the harvested soybeans for replanting. Bowman purchased Roundup Ready soybean seed for his first crop of each growing season. To reduce costs for his riskier late-season planting, Bowman purchased soybeans intended for consumption; planted them; treated the plants with glyphosate, killing all plants without the Roundup Ready trait; harvested the resulting soybeans that contained that trait; and saved some of these harvested seeds to use in his late-season planting the next season. After discovering this practice, Monsanto sued for patent infringement. Bowman raised the defense of patent exhaustion, which gives the purchaser of a patented article, or any subsequent owner, the right to use or resell that article. The district court rejected Bowman’s defense; the Federal Circuit affirmed. In a unanimous decision, the Supreme Court affirmed. Patent exhaustion does not permit a farmer to reproduce patented seeds through planting and harvesting without permission. Under the patent exhaustion doctrine, the initial authorized sale terminates all patent rights to the patented item and confers on the purchaser, or any subsequent owner, the right to use or sell the thing, but the doctrine restricts the patentee’s rights only as to the “particular article” sold. It leaves untouched the patentee’s ability to prevent a buyer from making new copies. By planting and harvesting patented seeds, Bowman made additional copies of Monsanto’s patented invention, which falls outside the protections of patent exhaustion. If Bowman were granted an exception, patents on seeds would retain little value. View "Bowman v. Monsanto Co." on Justia Law

Alice Corporation owns three patents covering a computerized trading platform for exchanging obligations in which a trusted third party settles obligations between a first and second party so as to eliminate “settlement risk.” Settlement risk is the risk that only one party’s obligation will be paid, leaving the other party without its principal. The trusted third party eliminates this risk by either exchanging both parties’ obligations or exchanging neither obligation. CLS sought a declaration of invalidity; Alice counterclaimed infringement. The district court ruled in favor of CLS, holding that each asserted claim of the four patents is invalid for failure to claim patent eligible subject matter. In 2012, the Federal Circuit reversed, finding that the system, method, and media claims were directed to practical applications of invention falling within the categories of patent eligible subject matter defined by 35 U.S.C. 101. Upon consideration en banc, a majority of the court affirmed the district court’s holding that the asserted system, method and computer-readable media claims are not directed to eligible subject matter under 35 U.S.C. 101. View "CLS Bank, Int'l v Alice Corp. Pty. Ltd." on Justia Law

In 1985, Behringwerke filed a U.S. patent application directed to the use of DNA sequences (enhancers) identified in human cytomegalovirus. An enhancer, when introduced into a cell that produces a drug, can enable the cell to produce the drug at a much higher rate. In 1992, Behringwerke and Genentech entered into a licensing agreement related to enhancers that matured into the patents-in-suit; for fixed annual payments, Genentech could practice the patents for research purposes. Genentech was to pay a royalty on sales of commercially marketable goods incorporating a “Licensed Product.” The Agreement, governed by German law, required that disputes be settled by arbitration. Behringwerke sold its pharmaceutical business to Sanofi, but the Agreement and patent rights stayed with Hoechst; both are German entities. In 2008, Sanofi sued Genentech for infringement based on sales of the allegedly infringing drugs Rituxan and Avastin, which Genentech had not identified as licensed products. Hoechst demanded arbitration before a European arbitrator. The district court found no infringement. The Federal Circuit affirmed. Arbitration continued. On remand, Genentech sought to enjoin Sanofi from continuing the foreign arbitration. The district court denied the motion, finding that Hoechst is a party to the arbitration, but not a party to the litigation and that an injunction would frustrate policies favoring enforcement of forum selection clauses, and would not be in the interest of international comity. The arbitrator determined that German substantive law, not U.S. patent law, would be used, that a drug could be a licensed article even though it did not contain the patented enhancers, if those enhancers were used in its manufacture, and that Genentech was liable for damages. The Federal Circuit affirmed that Genentech was not entitled to an injunction. View "Sanofi-Aventis Deutschland, GMBH v. Genentech, Inc." on Justia Law

Uship’s patents are directed to systems and methods of processing packages for shipment. According to the shared specification, the invention fills the need “for a system which accepts and stores items for subsequent pick-up by a commercial carrier.” The claims at issue recite “[a] method of mailing parcels and envelopes using an automated shipping machine” in the preamble. The claims comprise several similar or identical steps, including “receiving payment information from a customer”; “receiving package type information identifying a parcel . . . to be mailed”; “printing a shipping label”; and “validating receipt of said parcel . . . as the parcel . . . for which said . . . label was printed.” In Uship’s infringement action, the Court of Federal Claims found that “only an automated machine can perform” the validating step. On reconsideration, the court explained that its construction was based on both the specification and the prosecution history. After claim construction, the parties stipulated to a judgment of noninfringement. The Federal Circuit affirmed. View "Uship Intellectual Props., LLC v. United States" on Justia Law