Justia Patents Opinion Summaries

In an inter partes review proceeding (IPR), Arthrex disclaimed all the subject claims before the Patent and Appeal Board issued an institution decision. The Board entered an adverse judgment. The Federal Circuit affirmed, holding that the decision is appealable and that the Board’s interpretation is consistent with the regulation. The court did not address whether the regulation is authorized by the statute or whether it was properly promulgated. While 37 C.F.R. 42.107(e) states that no IPR "will be instituted based on disclaimed claims,” 37 C.F.R. 42.73(b) provides: A party may request judgment against itself at any time... Actions construed to be a request for adverse judgment include: (1) Disclaimer of the involved application or patent; (2) Cancellation or disclaimer of a claim such that the party has no remaining claim in the trial; (3) Concession of unpatentability or derivation of the contested subject matter; and (4) Abandonment of the contest. Although Arthrex stated that it was not requesting an adverse judgment, the rules permit the Board to construe a statutory disclaimer of all challenged claims as a request for adverse judgment, even when the disclaimer occurs before the Board has entered a decision, The court noted that the adverse judgment has an estoppel effect and that Arthrex had two pending continuation patent applications that have since issued as patents. View "Arthrex, Inc. v. Smith & Nephew, Inc." on Justia Law

The Patent Trial and Appeal Board, in an ex parte reexamination of Janssen’s 471 patent, affirmed the rejection of claims 1–7 as unpatentable under the doctrine of obviousness-type double patenting, which is intended to prevent the extension of the term of a patent by prohibiting the issuance of the claims of a second patent that are not patentably distinct from the claims of the first patent. The Federal Circuit affirmed, rejecting Janssen’s argument that obviousness-type double patenting is not applicable under the safe-harbor provision of 35 U.S.C. 121. The safe harbor, “protects only divisional applications (or the original application) and patents issued on such applications.” A patent owner cannot retroactively bring its challenged patent within the scope of the safe-harbor provision by amendment in a reexamination proceeding. Once the 471 patent issued on the 093 application, which, at the time of issuance included new matter not disclosed in the original application and so was a properly designated a continuation-in-part, the 471 patent was barred from safe-harbor protections. Janssen cannot establish that the PTO is “solely responsible” for any alleged delay associated with the 471 claims, so the two-way test for double patenting does not apply. View "In re: Janssen Biotech, Inc." on Justia Law

Flexuspine sued Globus for infringement. Globus asserted noninfringement and invalidity. After Inter Partes Review and claim construction, the court dismissed several claims and counterclaims and granted Globus summary judgment of noninfringement with respect to one patent. Before trial, Flexuspine submitted a proposed verdict form including a “stop instruction” that conditioned the submission of invalidity on an affirmative finding of infringement. The court's intended final jury instructions and final verdict form adopted Flexuspine’s proposed form, with the stop instruction. During a formal charge conference, the court reviewed the final instructions. Neither party objected to a question concerning invalidity or the stop instruction. The court specifically inquired as to the propriety of the instruction. After the jury returned a verdict, the court determined that the jury had not filled out the verdict form correctly. The jury answered “no” to Question 1 regarding infringement but did not heed the stop instruction and continued, indicating the claims were invalid and submitting “0” for the damages. Neither party objected to sending the jury back to re-execute the form. The second verdict found the claims not infringed and left the other questions unanswered. Globus then lodged its first formal objection. The Federal Circuit affirmed that Globus did not infringe without addressing invalidity; denial of Globus’s Rule 59(e) motion requesting that the judgment include the jury’s invalidity verdict; and dismissal of Globus’s invalidity counterclaims without prejudice. View "Flexuspine, Inc. v. Gobus Medical, Inc." on Justia Law

Exmark sued Briggs & Stratton for infringement of a patent directed to a lawn mower having improved flow control baffles. .The court entered summary judgment that claim 1 was not invalid because the claim survived multiple reexaminations involving the same prior art and denied summary judgment of indefiniteness with respect to claim 1. A jury found that Briggs willfully infringed and awarded $24,280,330 in compensatory damages, which the court doubled as enhanced damages for willful infringement. The Federal Circuit vacated in part. The district court erred by determining invalidity solely on the fact that claim 1 survived multiple reexaminations; erred in denying a new trial on damages because Exmark’s damages expert failed to provide an adequate explanation for a 5% royalty rate for the patented feature relative to other conventional features of the accused products; and abused its discretion by limiting the evidence relevant to damages to prior art that had been commercialized, The district court's willfulness ruling did not comport with the Supreme Court’s 2016 decision in Halo Electronics, mandating that willfulness is to be determined by the jury regardless of whether Briggs’ defenses were objectively reasonable. The Federal Circuit affirmed the denial of summary judgment that claim 1 is indefinite and denial of Briggs’ laches defense. View "Exmark Manufacturing Co., Inc. v. Briggs & Stratton Power Group, LLC" on Justia Law

The patent, entitled “Full Duplex Single Clip Video Codec” lists co-inventors, Woo, Li, and Hsiun, and was created while they were Infochips employees. Infochips’ “receivables,” pledged as security, were seized by LM when Infochips went out of business in 1993; in 1995, LM sold Infochips’s assets to Woo. Woo assigned his interest in the patent to AVC. In 1995, AVC filed the patent's parent application. Woo and Li assigned their interests to AVC. Hsiun refused to do so. The PTO permitted AVC to prosecute the application without that assignment. AVC claimed that it obtained Hsiun’s interests by Hsiun's 1992 Employment Agreement with Infochips. The patent was issued to AVC, which later dissolved, after purporting to transfer its assets to its successors (Advanced Video). In 2011, Advanced Video filed patent infringement lawsuits. The district court found that AVC had not complied with Delaware statutes governing dissolved corporations and that no patent rights had transferred to Advanced Video. The cases were dismissed. The state court appointed a Receiver to transfer AVC's patent rights to Advanced Video. After the transfer, Advanced Video filed new infringement lawsuits, arguing that its acquisition of Hsiun’s interest was effected by the Employment Agreement’s “will assign,” trust and quitclaim provisions. The court rejected the argument and, because Hsiun was not a party to the suit, dismissed for lack of standing. The Federal Circuit affirmed. Hsiun never actually assigned her rights, despite her promises to do so. View "Advanced Video Technologies, LLC v. HTC Corp." on Justia Law

Finjan sued Blue Coat for infringement of patents directed to identifying and protecting against malware. Certain claims recite a system and method for providing computer security by attaching a security profile to a downloadable; others recite a system and method for providing computer security at a network gateway by comparing security profiles associated with requested files to the security policies of requesting users. Others recite a “policy-based cache manager” that indicates the allowability of cached files under a plurality of user security policies and relate to a system and method for using “mobile code runtime monitoring” to protect against malicious downloadables. A jury awarded Finjan $39.5 million for infringement, including $24 million for the 844 patent. The court concluded that the 844 patent is directed to patent-eligible subject matter under 35 U.S.C. 101. The Federal Circuit affirmed in part, upholding the subject matter eligibility determination as to the 844 patent and the jury’s finding of infringement of the 844 and 731 patents. Blue Coat was entitled to judgment of noninfringement for the 968 patent because the accused products do not perform the claimed “policy index” limitation. With respect to damages, the court affirmed the award for the 731 and 633 patents, vacated the award for the 968 patent, and, as to the 844 patent, agreed with Blue Coat that Finjan failed to apportion damages to the infringing functionality. View "Finjan, Inc. v. Blue Coat Systems, Inc." on Justia Law

The 215 patent is directed to improving the efficiency by which messages are sent from a receiver to a sender in a telecommunications system to advise the sender that errors occurred in a particular message. In inter partes review, the Patent Trial and Appeal Board found that various claims were anticipated. The Federal Circuit initially affirmed, holding that whether the petition for review was time-barred was not subject to judicial review. On rehearing, en banc, the Federal Circuit remanded. The Patent and Trademark Office is prohibited from instituting inter partes review if the petition requesting that review is filed more than one year after the petitioner, real party in interest, or privy of the petitioner is served with a complaint for patent infringement, 35 U.S.C. 315(b); under section 314(d) the determination “whether to institute an inter partes review under this section shall be final and nonappealable.” The court, noting the strong presumption in favor of judicial review of agency actions, found no clear and convincing indication of congressional intent to prohibit review of time-bar determinations under section 315(b). In finding such rulings appealable, the court overruled its own precedent. View "Wi-Fi One, LLC v. Broadcom Corp." on Justia Law

Monsanto’s patent, titled “Soybean Seed and Oil Compositions and Methods of Making Same,” claims a two-step process for crossing (mating) two parent soybean lines to produce soybean seeds with a modified fatty acid profile. The patent describes “the combination of transgenes that provide both moderate oleic acid levels and low saturated fat levels with soybean germplasm that contains mutations in soybean genes that confer low linolenic acid phenotypes.” After granting DuPont’s request for inter partes review, the Patent Trial and Appeal Board affirmed the rejection of several claims as anticipated, 35 U.S.C. 102(b), and one as obvious over prior art (Booth). The Federal Circuit affirmed. The PTAB “reasonably interpreted” Booth’s parent line containing 4% linolenic acid “to be within the scope of ‘about 3%,’” as recited in claim 1 of the patent. Substantial evidence supported the finding that Booth “necessarily includes” step (b) of the asserted claims. View "Monsanto Technology LLC v. E.I. DuPont de Nemours" on Justia Law

The patent, entitled “Real Time Video Communications System,” discloses “tools and techniques for providing video calling solutions” and relates to real-time video conferencing where two or more users communicate, over a network, in a conference that includes video and audio of each participant. In three separate inter partes review proceedings, the Patent Trial and Appeal Board found that Microsoft failed to show by a preponderance of the evidence that the challenged claims were anticipated, 35 U.S.C. 102, or obvious. The Federal Circuit affirmed, finding the decision supported by substantial evidence and upholding the Board's claim constructions. View "Microsoft Corp. v. Biscotti, Inc." on Justia Law

Bosch’s patent, titled “Remote Tire Monitoring System,” relates to a handheld tool for activating remote tire pressure monitoring system (RTMS) tire sensors and communicating with a vehicle’s RTMS receiving unit. The RTMS receiving unit can then use that information to alert the driver of a specific tire characteristic such as low tire pressure. Different manufacturers use different types of devices and/or signals for activating RTMS tire sensors, including magnets, valve core depressors, continuous wave signals, and modulated signals, and use different methods to transmit data to the receiving unit. The patent’s claimed activation tool is intended to work with all of these known RTMS architectures. The Patent Trial and Appeal Board granted inter partes review (IPR). Bosch filed a patent owner response and a “contingent” motion to amend, seeking to substitute amended claims for original claims in the event that the Board found the challenged claims unpatentable. The Board found all challenged claims unpatentable and denied Bosch’s contingent motion to amend. The Federal Circuit affirmed the Board’s finding of unpatentability of claims 1, 4–15, and 20–22, under 35 U.S.C. 103, and vacated its denial of Bosch’s motion to amend as to proposed substitute claims 23–38, with respect to which the Board improperly assigned the burden of proof to Bosch. View "Bosch Automotive Service Solutions, LLC v. Matal" on Justia Law