Justia Patents Opinion SummariesArticles Posted in U.S. Court of Appeals for the Federal Circuit
Preston v. Nagel
Plaintiffs sued Nagel in Massachusetts Superior Court alleging 15 state-law claims. Nagel answered the complaint and filed 11 counterclaims under the Declaratory Judgment Act seeking declarations of non-infringement of several patents held by plaintiff Electromagnetics Corporation. Nagel also removed the case to the District of Massachusetts under 28 U.S.C. 1441, the general removal statute, and 28 U.S.C. 1454, the patent removal statute. The federal court remanded to state court, finding that it lacked subject-matter jurisdiction because plaintiffs’ state-law claims did not arise under federal law and Nagel’s patent counterclaims did not present a justiciable case or controversy under Article III. The Federal Circuit dismissed an appeal; 28 U.S.C. 1447(d) bars review of the district court’s decision to remand. To the extent the America Invents Act prefers that closely related state-law claims and patent-law counterclaims be heard together, it does not follow that the circuit courts have jurisdiction to review remand decisions that require such claims to be pursued in separate forums. “Absent a clear statutory command to the contrary, it is assumed that Congress is aware of the universality of th[e] practice of denying appellate review of remand orders when Congress creates a new ground for removal.” View "Preston v. Nagel" on Justia Law
Halo Eelectronics, Inc. v. Pulse Electronics, Inc.
A jury found that Pulse directly infringed Halo’s patents with products that it shipped into the U.S. and induced others to infringe those patents with products delivered outside the U.S. that ultimately were imported into the U.S. in finished products; it was highly probable that Pulse’s infringement was willful; and the Halo patents were not invalid. The jury awarded Halo $1.5 million in royalty damages. The court held that Pulse had not willfully infringed and taxed costs. Halo did not seek interest. The Federal Circuit affirmed that Pulse’s infringement was not willful. In June 2015, in the district court, Halo sought an accounting for supplemental damages and awards of interest. The Supreme Court subsequently held that the enhanced damages test applied by the Federal Circuit was inconsistent with 35 U.S.C. 284. On remand, the Federal Circuit vacated the unenhanced damages award with respect to products delivered in the U.S. and remanded. In the meantime, the district court awarded Halo prejudgment and post-judgment interest and supplemental damages for direct infringement. In November 2016, the court entered a stipulation of satisfaction of judgment for the $1.5 million damages award, including costs, supplemental damages, and post-judgment interest, expressly excluding prejudgment interest, enhanced damages, and attorney fees. The Federal Circuit dismissed an appeal for lack of jurisdiction. There is no final decision because the district court has not specified the means for determining the amount of prejudgment interest. View "Halo Eelectronics, Inc. v. Pulse Electronics, Inc." on Justia Law
Rivera v. International Trade Commission
The 320 patent describes single-brew coffee machines, such as the Keurig® system, and purports to address the incompatibility between pod-based and cartridge-based systems. The invention “more particularly relates to an adaptor assembly configured to effect operative compatibility between a single serve beverage brewer and beverage pods.” None of the claims as issued included any reference to a “pod,” “pod adaptor assembly,” or “brewing chamber for a beverage pod.” Instead, the relevant claims call for “a container . . . adapted to hold brewing material.” In 2014, Rivera filed a complaint with the International Trade Commission, alleging that Solofill was importing beverage capsules that infringed the patent, in violation of 19 U.S.C. 1337. Solofill’s K2 and K3 beverage capsules are made to fit into a Keurig® brewer, and include an integrated mesh filter surrounding a space designed to accept loose coffee grounds. An ALJ found no violation of section 337, The Commission affirmed, finding asserted claims invalid for lack of written description, and others invalid as anticipated. The Federal Circuit affirmed, agreeing that the claims were invalid for lack of written description. View "Rivera v. International Trade Commission" on Justia Law
Mylan Institutional LLC v. Aurobindo Pharma Ltd.
Apicore owns, and Mylan Is the exclusive licensee of, the 992, 616, and 050 patents, which relate to isosulfan blue (ISB), a triarylmethane dye used to map lymph nodes. The 992 and 616 patents (together, “the process patents”) are directed to a process for preparing ISB by reacting isoleuco acid with silver oxide in a polar solvent, followed by reaction with a sodium solution. In response to Aurobindo’s FDA application to market a generic version of Myland’s drug, Lymphazurin®, Apricore and Myland obtained a preliminary injunction precluding Aurobindo from making, using, selling, offering to sell, and importing the accused ISB product that allegedly infringes the patents. The Federal Circuit affirmed. While the district court’s “equivalents analysis” was deficient and there remains a substantial question concerning infringement, so that the court’s grant of a preliminary injunction based on the process patents constituted an abuse of discretion, the injunction stands under the 050 patent. View "Mylan Institutional LLC v. Aurobindo Pharma Ltd." on Justia Law
Arcelormittal v. AK Steel Corp.
In 2010, ArcelorMittal sued (050 case), alleging infringement of the 805 patent. A jury found that Defendants did not infringe and that the asserted claims were invalid as anticipated and obvious. The Federal Circuit reversed the court’s claim construction and concluded that, as a matter of law, the claims were not anticipated. In 2013, the Patent Office reissued the 805 patent as the RE153 patent. ArcelorMittal filed the 685 and 686 infringement suits based on events occurring after the reissuance and moved to amend its 050 complaint to substitute allegations of infringement of the RE153 patent. The court entered summary judgment, finding that claims 1–23 had been improperly broadened, and denied the motion to amend as moot. The Federal Circuit affirmed the invalidity of RE 153 claims 1–23, but reversed as to claims 24 and 25. On remand, the court granted defendants summary judgment of invalidity on RE 153 claims 24 and 25, denied ArcelorMittal’s motion to dismiss the 050 case for lack of subject matter jurisdiction, and granted ArcelorMittal’s motion to amend its 685 complaint. The Federal Circuit affirmed. The district court possessed subject matter jurisdiction to grant summary judgment, properly followed the mandate on remand, and properly exercised its discretion to deny ArcelorMittal’s request for new discovery. View "Arcelormittal v. AK Steel Corp." on Justia Law
Rovalma, S.A. v. Bohler-Edelstahl GMBH & Co. KG
Patent Board did not adequately explain why it accepted patent holder’s claim construction, but nonetheless found the claims unpatentable. Rovalma’s patent describes and claims methods for making steels with certain desired thermal conductivities. Böhler petitioned the Patent Trial and Appeal Board for an inter partes review of claims 1–4 of the patent. The Board instituted a review, rejected Böhler’s construction of the claims, and adopted Rovalma’s construction. Böhler had not submitted arguments or evidence for unpatentability based on Rovalma’s construction. Nevertheless, the Board determined that Rovalma’s own submissions demonstrated that the claims, construed as Rovalma urged, would have been obvious to a relevant skilled artisan over the same prior art that Böhler invoked. The Federal Circuit vacated, stating that the Board did not set forth its reasoning in sufficient detail for determination what inferences it drew from Rovalma’s submissions, making it impossible to determine whether the Board’s decision was substantively supported and procedurally proper. View "Rovalma, S.A. v. Bohler-Edelstahl GMBH & Co. KG" on Justia Law
Aylus Networks, Inc. v. Apple Inc.
Statements made by the patent owner during an inter partes review (IPR) proceeding, whether before or after an institution decision, can be relied upon to support a finding of prosecution disclaimer. Aylus’s patent “provides systems and methods for implementing digital home networks having a control point located on a wide area network.” It teaches various network architectures for streaming and displaying media content using combinations of networked components. The Patent Office initiated IPR on two claims while Aylus’s infringement suit was pending. In its response to Apple’s request for IPR, Aylus made statements that the court subsequently characterized as constituting “clear and unmistakable surrender” of certain methods. The district court entered summary judgment, finding that Apple’s AirPlay feature did not infringe the patent. The Federal Circuit affirmed, upholding construction of the limitation “wherein the CPP logic is invoked to negotiate media content delivery between the MS and the MR” to “require that only the CPP logic is invoked to negotiate media content delivery between the MS and the MR, in contrast to claims 1 and 20 which require both the CP and CPP to negotiate media content delivery.” Aylus’s statements during IPR were a clear and unmistakable disavowal of claim scope. View "Aylus Networks, Inc. v. Apple Inc." on Justia Law
Nova Chemicals Corp. v. Dow Chemical Co.
District court properly awarded “exceptional case” legal fees. In 2005, Dow filed an infringement action against NOVA, which argued that its product did not infringe and that Dow lacked standing because it had transferred ownership of the patents. In 2010, the district court entered judgment against NOVA for $61 million. The Federal Circuit affirmed. In a separate appeal from an award of supplemental damages, the Federal Circuit found the asserted claims invalid as indefinite under the Supreme Court’s intervening “Nautilus” standard, but did not disturb the 2010 judgment relating to preverdict infringement. NOVA became aware of evidence allegedly showing that Dow had committed fraud in obtaining the 2010 judgment but was time-barred from moving to set aside that judgment. In 2013, NOVA filed a separate action in equity for relief from the 2010 judgment, asserting misrepresentation of Dow’s ownership of the asserted patents, based on the testimony of a former Dow employee in an unrelated tax case and on the testimony of Dow’s expert, about testing on the accused product during separate Canadian litigation. The Federal Circuit affirmed dismissal. The district court awarded Dow $2.5 million under 35 U.S.C. 285, which allows courts to award “reasonable attorney fees to the prevailing party” in “exceptional cases.” The court noted the weakness of NOVA’s litigating position and the manner in which NOVA pursued the case. The Federal Circuit affirmed. View "Nova Chemicals Corp. v. Dow Chemical Co." on Justia Law
In re: AT&T Intellectual Property II
AT&T’s patent is directed to a method of compressing and transmitting transform coefficients in a manner that does not rely on scanning the coefficients in any particular order; all of the coefficients in a block are transmitted at once. Days before the America Invents Act inter partes review procedures went into effect, LG requested inter partes reexamination of the patent, alleging anticipation. Before the PTO decided whether to initiate reexamination, LG asked the PTO to suspend its rule prohibiting a requester from filing documents between requesting inter partes reexamination and the PTO’s initial office action on the merits so that it could file a second request, requesting denial of its initial request. LG did not withdraw, nor did it withdraw its reexamination request. The PTO granted LG’s initial request and declined to suspend the rules. The examiner found new grounds of rejection. While discussions between AT&T and the examiner were ongoing, LG withdrew. The examiner suspended the prohibition against interviews during inter partes reexamination proceedings. Before any amendment, the examiner issued an Action Closing Prosecution that explained a different basis for finding the patent anticipated. The Board and the Federal Circuit affirmed. The Board did not exceed its statutory authority when instituting the reexamination and substantial evidence supported the finding of anticipation. View "In re: AT&T Intellectual Property II" on Justia Law
Cisco Systems, Inc. v. Cirrex Systems, LLC
Claims in patent relating to fiber optic communication signals were unpatentable for lack of written description support. Cirrex’s 082 patent is directed to the field of fiber optic communication signals that use light energy made up of multiple different wavelengths within one fiber optic cable. Cisco requested inter partes reexamination of the patent. The Patent and Trademark Office found certain claims patentable and rejected other claims for lack of written description support. The Board affirmed. The Federal Circuit affirmed in part and reversed in part, finding that, under the correct claim construction for the equalization and discrete attenuation claims, all the claims on appeal unpatentable for lack of written description support. View "Cisco Systems, Inc. v. Cirrex Systems, LLC" on Justia Law