Justia Patents Opinion Summaries

The rejected patent claim is one of several that describe a system for sending information (electronic mail) from an originating processor (personal computer) to a destination processor (mobile computer) using an intermediary (radio frequency receiver). Prior art systems required connection to a public switched phone line and were limited by difficulty in locating a phone jack. The Board of Patent Appeals affirmed the rejection, construing the term "destination processor," to mean the "particular end node device to which the intended user recipient of electronic mail has immediate and direct physical access when accessing and viewing electronic mail;" determining that the applicant was not entitled to claim priority; and finding that the claim was anticipated by prior art. The Federal Circuit affirmed. The Board properly relied on the written description in construing "destination processor." Nothing in 35 U.S.C. 301 prohibits an examiner from determining, on re-examination, whether a priority date was properly claimed during the original examination; such a determination was proper in this case because the examiner did not consider priority during the original prosecution. View "In re NTP, Inc." on Justia Law

The seven rejected patent claims describe a system for sending information (such as electronic mail) from an originating processor (i.e., a personal computer) to a destination processor (i.e., a mobile computer) using an intermediary (a radio frequency receiver). Prior art systems required connection to a public switched phone line and were limited by difficulty in locating a phone jack. The inventors set out to solve this problem by introducing a radio frequency network. The Board of Patent Appeals affirmed. The Federal Circuit vacated in part, reversed in part and remanded. The Board’s construction of the term "electronic mail [message]" was unreasonably broad, but the Board correctly found that the applicant failed to "swear behind" certain references (37 C.F.R. 1.131) and corroborate its claim that the system was reduced to practice prior to the "critical date" on which it appeared in print. View "In re NTP, Inc." on Justia Law

The district court held that medical organizations, researchers, genetic counselors, and patients had standing under the Declaratory Judgment Act to challenge patent claims to "isolated" DNA molecules and granted summary judgment that all of the challenged claims were drawn to non-patentable subject matter under 35 U.S.C. 101. The Federal Circuit affirmed with respect to standing and reversed, in part, on the merits. Section 101 does not prohibit patent of molecules that do not exist in nature. A method claim to screening potential cancer therapeutics via changes in cell growth rates is patentable; it is not directed to a patent-ineligible scientific principle. The district court correctly determined that method claims directed to "comparing" or "analyzing" DNA sequences are patent ineligible; the claims include no transformative steps and cover only patent-ineligible abstract, mental steps. View "Ass'n for Molecular Pathology v. U.S. Patent & Trademark Office" on Justia Law

The district court construed the terms "document," "file,"extract," and "template" in patents relating to document processing systems, entered a finding of non-infringement, and awarded $489,150.48 in attorney fees and costs and $141,984.70 in sanctions for violation of Rule 11. The Federal Circuit affirmed.The district court properly made an "exceptional case" finding, based on plaintiff's litigation misconduct and baseless infringement action, and awarded attorney fees and sanctions. View "Eon-Net LP v. Flagstar Bancorp" on Justia Law

Plaintiff claimed that several of defendant's brands of toilet paper infringed on its trademark design. The district court entered summary judgment, holding that toilet paper embossed patterns are functional and cannot be protected as a registered trademark under the Lanham Act, 15 U.S.C. 1115(b)(8). The Seventh Circuit affirmed. Plaintiff patented the design, claiming it to be functional and can only claim the protection of a patent, not that of a trademark. The "central advance" claimed in the utility patents is embossing a quilt-like diamond lattice filled with signature designs that improves perceived softness and bulk, and reduces nesting and ridging. This is the same essential feature claimed in the trademarks. View "Georgia-Pacific Consumer Prods. v. Kimberly-Clark Corp." on Justia Law

The 2004 application was directed to a method and system of friction welding; in friction welding, a first part is rotated rapidly and brought into contact with a second part so that the heat generated between the parts fuses them. This causes material from the parts to be displaced or upset, reducing the combined lengths of the welded parts. The invention of the application is designed to decrease the variation in upset between parts from repeated use of the welding machinery by modulating the torque applied to the rotating first part. The application had 34 claims. The examiner rejected claims 1–24 and 30–34 for obviousness over three prior art references. The Board held that claims 1, 8, 17, and 23 would have been obvious and affirmed rejection of claim 30. The Federal Circuit affirmed. The Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art. View "In re Lovin" on Justia Law

Plaintiff, a pharmaceutical company, owns a patent that claims conjugated estrogen pharmaceutical compositions for use in hormone replacement therapies. Plaintiff alleged infringement of the patent based on defendant's Abbreviated New Drug Application for a generic version of plaintiff's hormone replacement therapy product, arguing the doctrine of equivalents. The district court entered summary judgment for defendant. The Federal Circuit affirmed. Plaintiff failed to rebut the presumption of prosecution history estoppel based on unforeseeability. The doctrine of prosecution history estoppel prevents a patent owner from recapturing, through the doctrine of equivalents, subject matter surrendered to acquire the patent. Because plaintiff narrowed the scope of the patent's claims in response to a prior art rejection, a presumption of prosecution history estoppel applies. View "Duramed Pharm., Inc. v. Paddock Labs, Inc." on Justia Law

This suit stemmed from the efforts of plaintiff and its owner and founder to obtain a patent for an invention related to personalized postage stamps and the suit involved state law claims of fraud and breach of fiduciary duty in connection with a patent application. Plaintiff appealed the district court's grant of summary judgment in favor of defendants, holding that there was no genuine issue of material fact as to whether plaintiff's claims were time-barred such that defendants were entitled to judgment as a matter of law and that in the alternative, there was no genuine issue of material fact as to the causation elements of plaintiff's claims. The court held that this case raised issues of patent law, and those issues were substantial because of the special federal interest in developing a uniform body of patent law in the Federal Circuit as recognized in Scherbatskoy v. Halliburton Co. and expressed by Congress's grant of exclusive appellate jurisdiction over patent cases to that court. Therefore, the court held that it lacked jurisdiction over the appeal and transferred the suit to the United States Court of Appeals for the Federal Circuit pursuant to 28 U.S.C. 1631. View "USPPS, Ltd. v. Avery Dennison Corp., et al." on Justia Law

A 2007 patent litigation settlement agreement included a covenant not to sue that stated that it applied to customers of the defendants, who were intended beneficiaries, and a governing law/venue provision specifying New Mexico. In September 2010, plaintiff filed a complaint with the International Trade Commission alleging infringement by defendant and its U.S. distributors and filed a complaint in the Northern District of California alleging infringement of the same two patents, which issued after the settlement agreement but are continuations depending from the applications that were at issue in the settlement. The New Mexico district court entered a preliminary injunction, enforcing the forum selection clause. Plaintiff dismissed its ITC and California claims. The Federal Circuit affirmed the entry of the injunction; the issues relate to and arise out of the settlement agreement district court correctly applied the factors of irreparable harm, balance of hardships, and public interest. View "Gen. Protecht Grp., Inc. v. Leviton Mfg. Co." on Justia Law

A jury found infringement of certain claims of plaintiff's patents, relating to retractable syringes, which are medical syringes that feature a needle that retracts into the syringe body after the syringe is used, and found that the asserted patents were not invalid for anticipation or obviousness. The federal circuit affirmed in part and reversed in part.court erred in its construction of the claim term "body;" in light of the specifications, that term refers to a one-piece structure. View "Retractable Techs., Inc. v. Becton Dickinson & Co." on Justia Law