Justia Patents Opinion Summaries

Global Health Solutions LLC and Marc Selner each filed patent applications in August 2017 for a method of preparing a wound treatment ointment containing nanodroplets of an aqueous biocide suspended in petrolatum jelly without emulsifiers. Selner filed his application four days before GHS, making him the first-filer under the America Invents Act (AIA) “first-inventor-to-file” system. GHS alleged that its founder, Bradley Burnam, conceived the invention and communicated it to Selner, who then derived the invention and filed first. Both parties agreed that their applications claimed the same invention, and the dispute centered on who conceived the invention and when.The United States Patent and Trademark Office, Patent Trial and Appeal Board (the Board) instituted a derivation proceeding. After reviewing evidence, including contemporaneous emails, the Board found that Burnam communicated the invention to Selner by 4:04 p.m. on February 14, 2014, but also found that Selner had independently conceived the invention earlier that same day, by 12:55 p.m. The Board determined that Selner did not derive the invention from Burnam and ruled in favor of Selner. GHS appealed, arguing that the Board erred in its evidentiary rulings, burden of proof allocation, and failure to require reduction to practice for conception, and also requested that Burnam be named a co-inventor.The United States Court of Appeals for the Federal Circuit reviewed the Board’s legal conclusions de novo and factual findings for substantial evidence. The court held that the Board’s focus on “first-to-invent” was harmless error, as Selner’s independent conception was dispositive under the AIA. The court found no reversible error in the Board’s evidentiary rulings, burden allocation, or treatment of reduction to practice. The court also held that GHS failed to properly preserve its request for correction of inventorship. The Board’s judgment for Selner was affirmed. View "GLOBAL HEALTH SOLUTIONS LLC v. SELNER " on Justia Law

The case concerns two patents related to methods for preparing DNA samples for sequencing, owned by Laboratory Corporation of America Holdings, Labcorp Genetics, Inc., and The General Hospital Corporation. The patents describe techniques for enriching specific regions of DNA to make sequencing more efficient, using various types of primers and adaptors. The dispute centers on whether certain DNA preparation kits sold by Qiagen and its affiliates infringe these patents, specifically regarding the design and function of the primers used in Qiagen’s kits.After the plaintiffs filed suit in the United States District Court for the District of Delaware, alleging infringement of both patents, the case proceeded to a jury trial. The jury found that Qiagen willfully infringed the asserted claims of both patents—under the doctrine of equivalents for one patent and literally for the other—and awarded the plaintiffs approximately $4.7 million in damages. The district court denied Qiagen’s renewed motion for judgment as a matter of law (JMOL) on non-infringement, invalidity, and damages, and also denied Qiagen’s alternative request for a new trial.On appeal, the United States Court of Appeals for the Federal Circuit reviewed the district court’s denial of JMOL de novo. The Federal Circuit held that there was insufficient evidence to support the jury’s findings of infringement for either patent. The court determined that the district court erred in allowing the jury to interpret the claim term “identical” as “identical to a portion,” and found that the evidence did not support infringement under the doctrine of equivalents or literal infringement as required by the patent claims and their constructions. As a result, the Federal Circuit reversed the district court’s denial of JMOL of non-infringement for both patents, and remanded with instructions to grant JMOL of non-infringement. View "LABORATORY CORPORATION OF AMERICA HOLDINGS v. QIAGEN SCIENCES, LLC " on Justia Law

The dispute centers on a patent for a system that automates the adjustment of selectorized dumbbells using an electric motor. The patent describes a dumbbell with stacks of weight plates on each side, a handle, and a movable selector that, when positioned, couples different numbers of plates to the handle. The innovation lies in using an electric motor, operatively connected to the selector, to move it into the desired position based on user input, thereby automating the weight selection process and addressing safety and convenience issues present in prior manual systems.The United States District Court for the District of Utah reviewed the case after the defendant moved to dismiss the complaint, arguing that the asserted patent claims were ineligible under 35 U.S.C. § 101. The district court applied the Supreme Court’s two-step framework for patent eligibility and determined that all but one claim (claim 19) were directed to an abstract idea and implemented using generic components, thus failing the eligibility test. The court granted the motion to dismiss as to claims 1–18 and 20, but denied it for claim 19, finding that the parties had not sufficiently addressed its eligibility.On appeal, the United States Court of Appeals for the Federal Circuit reviewed the district court’s decision de novo. The Federal Circuit held that the relevant claims were not directed to an abstract idea but instead to a specific mechanical improvement in selectorized dumbbells. The court found that the claims recited a sufficiently specific structure and method, including the use of an electric motor to automate weight selection, and thus did not preempt all forms of automated weight adjustment. The Federal Circuit reversed the district court’s dismissal of claims 1–18 and 20 and remanded the case for further proceedings. View "POWERBLOCK HOLDINGS, INC. v. IFIT, INC. " on Justia Law

The dispute centers on allegations by Mondis Technology Ltd. and related entities that LG Electronics Inc. and its U.S. subsidiary infringed claims 14 and 15 of U.S. Patent No. 7,475,180. The patent describes a display unit, such as a computer monitor, that stores identification numbers in memory to control access by external devices. The key issue was whether the patent’s written description supported a claim limitation requiring an “identification number for identifying at least a type of said display unit,” as opposed to identifying a specific unit.After Mondis filed suit in the Eastern District of Texas, the case was transferred to the United States District Court for the District of New Jersey and stayed for patent reexamination. When some claims survived, litigation resumed on claims 14 and 15. A jury found the claims not invalid and infringed, awarding damages to Mondis. The district court denied LG’s motion for judgment as a matter of law (JMOL) on invalidity, relying on the presumption of validity and the jury’s ability to weigh expert testimony. The court vacated the initial damages award and ordered a retrial, after which a reduced damages award was entered. Both parties appealed.The United States Court of Appeals for the Federal Circuit reviewed the district court’s denial of JMOL. The appellate court held that no reasonable jury could find the patent’s written description adequately supported the claim limitation requiring identification of a type of display unit. The court found that the patent only disclosed identification of specific units, not types, and that neither expert testimony nor the prosecution history provided substantial evidence to the contrary. The Federal Circuit reversed the district court’s judgment, held claims 14 and 15 invalid for lack of written description, and ordered judgment for LG. All other issues were deemed moot. View "Mondis Technology Ltd. v. LG Electronics Inc." on Justia Law

FMC Corporation owns U.S. Patent Nos. 9,107,416 and 9,596,857, which relate to insecticidal and miticidal compositions. FMC sued Sharda USA, LLC for patent infringement, alleging that Sharda's product, WINNER, infringed on these patents. The patents claim compositions comprising bifenthrin and a cyano-pyrethroid, with specific weight ratios. FMC sought a preliminary injunction to prevent Sharda from importing, marketing, selling, or distributing WINNER.The United States District Court for the Eastern District of Pennsylvania initially denied FMC's motion for a temporary restraining order and preliminary injunction. However, the court issued a claim construction of the term "composition," limiting it to stable compositions based on disclosures in the provisional application and a related patent. FMC renewed its motion, and the district court granted a temporary restraining order, which converted into a preliminary injunction. The court rejected Sharda's invalidity defenses, including anticipation and obviousness, based on the construed definition of "composition."The United States Court of Appeals for the Federal Circuit reviewed the case. The court found that the district court erred in its construction of "composition" by limiting it to stable compositions, as the asserted patents did not include the stability disclosures present in the provisional application and related patent. The Federal Circuit held that "composition" should be given its plain and ordinary meaning. Consequently, the court found that the district court's anticipation and obviousness analyses were flawed due to the erroneous claim construction.The Federal Circuit vacated the preliminary injunction and remanded the case for further proceedings, instructing the district court to reconsider Sharda's invalidity defenses under the correct claim construction. The court emphasized that Sharda only needed to raise a substantial question of invalidity to defeat the preliminary injunction. View "FMC CORPORATION v. SHARDA USA, LLC " on Justia Law

Super Lighting sued CH Lighting for infringing three patents related to LED tube lamps. CH Lighting conceded infringement of two patents before trial. The district court excluded CH Lighting's evidence on the validity of these two patents and granted Super Lighting's motion for judgment as a matter of law (JMOL) that the patents were not invalid. A jury found the third patent infringed and not invalid, awarding damages for all three patents. CH Lighting appealed.The United States District Court for the Western District of Texas initially reviewed the case. The court excluded evidence from CH Lighting regarding the validity of the two patents and granted JMOL in favor of Super Lighting. The jury found the third patent infringed and awarded damages. CH Lighting's motions for JMOL on invalidity and for a new trial were denied, and the court doubled the damages award.The United States Court of Appeals for the Federal Circuit reviewed the case. The court found that the district court erred in granting JMOL on the validity of the two patents because it improperly excluded CH Lighting's evidence. The court held that a new trial was required to determine the validity of these patents. The court also found that substantial evidence supported the jury's verdicts of infringement and no invalidity for the third patent. Additionally, the court instructed the district court to reassess the reliability of Super Lighting's damages expert's testimony under Rule 702 of the Federal Rules of Evidence. Consequently, the court affirmed in part, reversed in part, vacated in part, and remanded the case for further proceedings. View "JIAXING SUPER LIGHTING ELECTRIC APPLIANCE, CO. v. CH LIGHTING TECHNOLOGY CO., LTD. " on Justia Law

Acorda Therapeutics, Inc. developed Ampyra®, a drug for multiple sclerosis, and had a licensing agreement with Alkermes PLC, which owned a patent for Ampyra’s active ingredient. The patent expired in July 2018, but Acorda continued to make royalty payments to Alkermes until July 2020, when it began making payments under protest. Acorda initiated arbitration in July 2020, seeking a declaration that the royalty provisions were unenforceable post-patent expiration and a refund of royalties paid since July 2018.The arbitration tribunal agreed that the royalty provisions were unenforceable but ruled that Acorda could only recoup payments made under formal protest. Acorda then petitioned the United States District Court for the Southern District of New York to confirm the tribunal’s rulings except for the denial of recoupment of unprotested payments. The district court rejected Acorda’s arguments, which were based on the tribunal’s alleged “manifest disregard” of federal patent law and a non-patent-law principle, and confirmed the award in full.Acorda appealed to the United States Court of Appeals for the Federal Circuit, seeking to reverse the district court’s denial of the 2018–2020 recoupment. The Federal Circuit concluded that it lacked jurisdiction over the appeal because Acorda’s petition did not necessarily raise a federal patent law issue. The court determined that the petition’s request for confirmation did not require a determination of federal patent law, and the request for modification presented alternative grounds, one of which did not involve patent law. Consequently, the Federal Circuit transferred the case to the United States Court of Appeals for the Second Circuit. View "Acorda Therapeutics, Inc. v. Alkermes PLC" on Justia Law

IGT owns an expired U.S. Patent No. 7,168,089, which addresses secure communication in gaming environments. In 2003, Zynga's predecessor copied claims from IGT's application into its own, leading to an interference declared by the Board of Patent Appeals and Interferences in 2010. Zynga moved for judgment that IGT's claims were unpatentable for obviousness, but the Board dismissed this motion as moot, terminating the interference because Zynga's claims lacked written description support.In 2021, Zynga petitioned for an inter partes review (IPR) of certain claims of IGT's patent, alleging obviousness based on new prior-art references. IGT argued that interference estoppel barred Zynga's challenge. The Patent Trial and Appeal Board (PTAB) instituted the IPR, rejecting the estoppel argument, and the Director of the PTO affirmed this decision. The PTAB ultimately found all challenged claims unpatentable for obviousness.The United States Court of Appeals for the Federal Circuit reviewed the case. The court held that the PTAB's decision not to apply interference estoppel was unreviewable under 35 U.S.C. § 314(d), as it was closely tied to the decision to institute the IPR. The court also found no "shenanigans" or legal errors in the PTAB's decision. On the merits, the court affirmed the PTAB's findings that the prior art taught the claimed elements, including the "software authorization agent" and the required messages for authorizing gaming software transfers. The court concluded that substantial evidence supported the PTAB's findings and affirmed the decision. View "IGT v. Zynga, Inc." on Justia Law

Roy McAlister invented and patented technologies related to clean fuels and incorporated McAlister Technologies, L.L.C. (MT) to hold and license these patents. In 2009, MT entered into a licensing agreement with Advanced Green Technologies, L.L.C. (AGT), which later retained Loeb & Loeb, L.L.P. for patent matters. Conflicts arose, leading McAlister to terminate the agreement, alleging AGT's breach. McAlister and MT claimed that Loeb & Loeb's actions clouded their patents, causing prospective licensees to back out, resulting in lost profits.The Superior Court in Maricopa County granted summary judgment in favor of Loeb & Loeb on the lost profit damages, finding the plaintiffs' evidence speculative and lacking reasonable certainty. The court excluded the plaintiffs' expert testimony on damages and ruled against them on claims for trespass to chattel, slander of title, and aiding and abetting, but allowed claims for breach of fiduciary duty and negligent supervision to proceed. Plaintiffs conceded no triable damages remained and stipulated to final judgment against them.The Arizona Court of Appeals affirmed the exclusion of the expert testimony and the summary judgment on most lost profit claims but reversed on a $5 million initial payment claim, remanding for further proceedings. It also reversed the summary judgment on trespass to chattel and slander of title claims.The Arizona Supreme Court reviewed the case, focusing on the lost profit damages and trespass to chattel claim. It concluded that the plaintiffs failed to prove the lost profit damages with reasonable certainty, as material terms of the prospective licensing agreement were unresolved. Consequently, the court affirmed the summary judgment in favor of Loeb & Loeb on the lost profit damages and trespass to chattel claim, vacating the relevant parts of the Court of Appeals' decision. The case was remanded to the Superior Court for further proceedings on the slander of title claim. View "McAlister v. Loeb" on Justia Law

Top Brand and Cozy Comfort are competitors in the market for oversized hooded sweatshirts. Cozy Comfort owns a design patent (D788 patent) and two trademarks for "THE COMFY" related to blanket throws. Top Brand sought a declaratory judgment of noninfringement of the design patent, while Cozy Comfort counterclaimed for infringement of both the design patent and trademarks. The jury found in favor of Cozy Comfort, determining that Top Brand had infringed both the design patent and the trademarks, and awarded Cozy Comfort $15.4 million for patent infringement and $3.08 million for trademark infringement.The United States District Court for the District of Arizona denied Top Brand's motion for judgment as a matter of law (JMOL) and entered judgment based on the jury's verdict. Top Brand then appealed to the United States Court of Appeals for the Federal Circuit.The Federal Circuit held that the principles of prosecution history disclaimer apply to design patents. The court found that Top Brand was entitled to JMOL of noninfringement of the design patent because the accused design fell within the scope of the subject matter surrendered during prosecution. The court also concluded that substantial evidence did not support the jury’s verdict of trademark infringement. Consequently, the Federal Circuit reversed the district court’s denial of JMOL and found in favor of Top Brand on both the design patent and trademark infringement claims. View "Top Brand LLC v. Cozy Comfort Co." on Justia Law