Justia Patents Opinion Summaries

Tropp’s patents are directed to the use of dual-access locks in airline luggage inspection. Tropp’s system permits the Transportation Security Administration (TSA) to unlock, inspect, and relock checked baggage. Sentry administers a similar system and has license agreements with lock and luggage manufacturers. Under an Agreement with TSA, Sentry provides TSA with passkeys for distribution to field locations. TSA takes no responsibility for damage to baggage secured with Sentry locks but will make good faith efforts to distribute and use the passkeys. TSA does not endorse any particular system. Following earlier appeals, the district court granted summary judgment, finding that Sentry and its licensees did not infringe Tropp’s patents under 35 U.S.C. 271(a). The Federal Circuit vacated. A reasonable jury could conclude that TSA’s performance of the final two claim steps is attributable to Sentry such that Sentry is liable for direct infringement. Although the partnership-like relationship between Sentry and TSA is unique, the court should have considered evidence that TSA, hoping to obtain access to certain benefits, can only do so if it performs certain steps identified by Sentry, under terms prescribed by Sentry. Sentry can stop or limit TSA’s ability to practice the final two steps by terminating the Agreement, discontinuing its practice of replacing passkeys that are damaged or lost or changing the design of future locks such that the TSA keys no longer work. View "Travel Sentry, Inc. v. Tropp" on Justia Law

The Patent Trial and Appeal Board instituted inter partes review of the 174 Patent, which is directed to methods and apparatuses for a radio communications system where a subscriber station, i.e., a mobile device, is assigned a plurality of codes for transmitting messages. The Board found that the claims were not obvious or anticipated in prior art, The Federal Circuit affirmed, rejecting an argument that the Board’s application of the term “message” improperly excluded embodiments of “transmissions of data at intervals specified in a UMTS [Universal Mobile Telecommunications System] system,” specifically by excluding single frame Enhanced Dedicated Uplink Channel messages. Substantial evidence supported the patentability determination. View "HTC Corp. v. Cellular Communications Equipment, LLC" on Justia Law

The Biologics Price Competition and Innovation Act (BPCIA), governs abbreviated biologics license applications (aBLAs) based on the licensing of a reference product. BPCIA allows patent infringement suits before approval: the applicant provides confidential access to its aBLA. The parties negotiate a list of patents for an immediate infringement action. Under subsection 262(l), the applicant gives notice at least 180 days before commercial marketing, to allow a suit for preliminary injunction. If the applicant discloses information, neither may bring suit based on non-listed patents before notice of commercial marketing. Amgen has marketed Neupogen® since 1991. Sandoz filed an aBLA, for a Neupogen biosimilar. Sandoz notified Amgen that intended to launch its biosimilar upon approval and would not provide its aBLA. In 2015, the FDA approved Sandoz’s aBLA. Sandoz gave notice of commercial marketing. Amgen sued, asserting state law claims of unfair competition based on BPCIA violations; conversion; and patent infringement. The court held that BPCIA permits an applicant not to disclose its aBLA and that the applicant may give notice of commercial marketing before FDA approval. The Federal Circuit affirmed dismissal of Amgen’s state law claims, but directed the court to consider the patent infringement claims. The Supreme Court held that an injunction under federal law is not available to enforce 42 U.S.C. 262(l)(2)(A) and a biosimilar applicant may provide the notice required by 262(l)(8)(A) either before or after FDA approval to start the 180-day clock. The Federal Circuit then affirmed dismissal of the state law claims; Sandoz did not forfeit its preemption defense and the BPCIA preempts state law remedies for failure to comply with section 262(l)(2)(A). View "Amgen Inc. v. Sandoz" on Justia Law

IH’s patent relates to a method of purchasing goods at a local point-of-sale system from a remote seller. IH sued Bed Bath & Beyond for infringement. Two months later, the district court granted BBB summary judgment, concluding that the Supreme Court’s intervening decision, Alice Corp. v. CLS Bank, rendered the asserted claims invalid under 35 U.S.C. 101 because the asserted claims are directed to the abstract idea of “local processing of payments for remotely purchased goods.” The Federal Circuit affirmed. BBB moved for an award of attorney fees under 35 U.S.C. 285, arguing that, once Alice issued, IH should have reevaluated its case and dismissed the action. The district court granted BBB’s fees motion, holding that, “following the Alice decision, IH’s claims were objectively without merit,” and awarded BBB its attorney fees beginning from the date of the Alice decision, including fees incurred during the section 101 appeal. The Federal Circuit affirmed. IH’s claims were “dubious even before the Alice decision” and Alice was a significant change in the law as applied to the facts of this particular case. View "Inventor Holdings, LLC v. Bed Bath & Beyond, Inc." on Justia Law

Arctic Cat sued BRP for infringement of the 969 and 545 patents, which disclose a thrust steering system for personal watercraft propelled by jet stream. The district court rejected, as a matter of law, BRP’s argument that the asserted claims would have been obvious (35 U.S.C. 103), that Arctic Cat failed to mark patented products, that the jury’s royalty award was based on improper expert testimony, and that BRP did not willfully infringe the asserted claims. The court awarded treble damages and an ongoing royalty. The Federal Circuit affirmed as to obviousness, the jury’s royalty rate, willfulness, the awards of treble damages and an ongoing royalty. Substantial evidence of industry recognition and “long-felt need” supported a conclusion that a skilled artisan would not have “anticipated success” with the claimed combination. The court vacated as to marking, 35 U.S.C. 287(a), and remanded for further consideration limited to that issue. View "Arctic Cat Inc. v. Bombardier Recreational Products, Inc." on Justia Law

Addressing appeals in three companion cases from inter partes reviews by the U.S. Patent and Trademark Office Patent Trial and Appeal Board, the Federal Circuit affirmed the “Iron Dome” and “DISH” Final Written Decisions but reversed the Board’s determination on obviousness in the “Hulu” decision. The patent at issue describes methods and systems for “user-directed transfer of an on-going software-based session from one device to another device.” Substantial evidence supported the Board’s findings that five claims of the patent were anticipated and multiple claims would have been obvious over the combination of prior art. View "CRFD Research, Inc. v. Matal" on Justia Law

Presidio alleged infringement of its patent, which claims a multilayer capacitor design and teaches a multilayer integrated network of capacitors electrically connected in series and in parallel. While the suit was pending, ATC sought an ex parte reexamination of the patent in light of new prior art. The examiner rejected the claims as anticipated and obvious. Presidio amended the claims. The Patent and Trademark Office issued a reexamination certificate for the patent. Based on the amended claims, a jury found direct infringement and induced infringement of six claims by the accused products and that Presidio had proven by clear and convincing evidence that ATC’s infringement of the asserted claims was willful. The jury awarded Presidio $2,166,654 in lost profit damages and issued an advisory verdict that ATC failed to prove by clear and convincing evidence that claim 1 was indefinite. The district court upheld the findings, in favor of Presidio, but denied Presidio’s motion for enhanced damages. The Federal Circuit affirmed that the claims are not indefinite, that enhanced damages were appropriate, and that ATC is entitled to absolute intervening rights because a substantive amendment was made during reexamination but held that the evidence did not support an award of lost profits, vacated an injunction, and remanded for determination of a reasonable royalty. View "Presidio Components, Inc. v. American Technical Ceramics Corp." on Justia Law

BASF’s patent describes and claims systems for performing catalytic conversion of nitrogen oxides (NOx) in an exhaust gas stream, with a partly-dual-layer arrangement of coatings on a substrate over which exhaust gas passes—a coat along the full length of the substrate containing “a material composition B effective to catalyze selective catalytic reduction (SCR) of NOx”; and beneath part of that coat, on the outlet end of the gas passage, a partial-substrate undercoat containing “a material composition A effective for catalyzing NH3 oxidation” (ammonia oxidation, or AMOx). BASF sued its competitor for infringement. The district court held that the “effective for catalyzing”/“effective to catalyze” language was indefinite and entered judgment of invalidity. The Federal Circuit reversed. Under the Supreme Court’s decision in “Nautilus,” the question is: would the “composition . . . effective to catalyze” language, understood in light of the rest of the patent and the knowledge of the ordinary skilled artisan, have given a person of ordinary skill in the art a reasonably certain understanding of what compositions are covered? The district court’s reasoning supplied no basis to answer that question in defendant’s favor; the inference of indefiniteness simply from the scope finding is legally incorrect: “breadth is not indefiniteness.” View "BASF Corp. v. Johnson Matthey Inc." on Justia Law

In 2016, Harvard filed a patent-infringement case against Micron, which is incorporated in Delaware and has its principal place of business in Idaho, alleging that venue in the District of Massachusetts was proper under 28 U.S.C. 1391(b); 1400. Micron moved to dismiss for failure to state a claim, but did not object to venue under Rule 12(b)(3). Months later, the Supreme Court interpreted 28 U.S.C. 1400(b) (TC Heartland decision): “a domestic corporation ‘resides’ only in its State of incorporation for purposes of the patent venue statute.” Micron then moved to dismiss or to transfer the case. The district court denied the motion, reasoning that, under Rule 12(g)(2) and (h)(1)(A), Micron had waived its venue defense by not objecting to venue in its first motion to dismiss. The Federal Circuit vacated and remanded. TC Heartland changed the controlling law: at the time of the initial motion to dismiss, the venue defense now raised by Micron was not “available,” making the waiver rule of Rule 12(g)(2) and (h)(1)(A) inapplicable. That waiver rule, however, is not the only basis on which a district court might reject a venue defense for non-merits reasons, such as by determining that the defense was not timely presented. A less bright-line, more discretionary framework applies even when Rule 12(g)(2) and hence Rule 12(h)(1)(A) does not. View "In re: Micron Technology, Inc." on Justia Law

LifeTech sold genetic testing kits to detect the presence of “short tandem repeat” (STR) sequences of DNA. Its “STR kits,” were assembled in the United Kingdom and consisted of five components. At least one component was supplied from the U.S. Promega, the exclusive licensee of the U.S. “Tautz patent,” which expired in 2015 and claimed methods and kits for analyzing DNA to determine the identity and kinship of organisms, sued LifeTech for infringement. In 2014, the Federal Circuit held that a multi-component product assembled overseas could infringe a U.S. patent under 35 U.S.C. 271(f)(1)1 when only a single component is supplied from the U.S. The Supreme Court reversed, holding that section 271(f)(1) does not cover the supply of a single component of a multicomponent invention. On remand, the Federal Circuit first reaffirmed: that the asserted claims of four Promega patents were invalid for failure to comply with the enablement requirement, 35 U.S.C. 112; that certain of LifeTech’s alleged acts of infringement were not licensed under a license agreement between LifeTech and Promega; and that LifeTech was not required to “actively induce” a third party to combine the components of the accused products to be liable under section 271(f)(1)--that requirement could be met if LifeTech had the specific intent to combine the components itself. The court then reinstated the district court’s grant of judgment as a matter of law that Promega failed to prove infringement under 35 U.S.C. 271(a)3; 271(f)(1). View "Promega Corp v. Life Technologies, Inc." on Justia Law