Justia Patents Opinion Summaries

ACS's patent relates to “creels” for supplying yarn and other stranded materials to a manufacturing process. ACS sued Shaw for infringement, but voluntarily dismissed the suit without prejudice. Within one year of service of the complaint (35 U.S.C. 315(b)), Shaw sought inter partes review (IPR), proposing 15 grounds of rejection. Most of the grounds were directed to the non-interposing claims, but two grounds alleged that interposing claims would have been obvious over German patents and another alleged that interposing claims were anticipated by a U.S. patent (Payne). Ultimately, the Patent Board found that Shaw had not shown by a preponderance of the evidence that the interposing claims were unpatentable based on the instituted grounds, but had shown by a preponderance of the evidence that the non-interposing claims were unpatentable based on the instituted grounds. The Federal Circuit affirmed in part, agreeing that dismissals without prejudice leave the parties as though the action had never been brought and finding that it lacked jurisdiction to review the Board’s decision not to institute IPR on the Payne-based ground, including its decision not to consider the Payne-based ground in its final decision. The court vacated in part, finding the Board’s decision as to “tube Q” ambiguous at best, and remanding for fact findings. View "Shaw Indus. Group v. Automated Creel Sys., Inc." on Justia Law

MAG Aerospace alleged that B/E Aerospace infringed its patents for quick-repair vacuum toilets, such as those commonly found on commercial aircrafts. The district court granted summary judgment of noninfringement on all patents and ruled that the doctrine of assignor estoppel barred B/E from arguing that the asserted patents are invalid. The Federal Circuit affirmed, upholding the district court’s finding that B/E’s toilet bowl cannot be replaced “toollessly” as required by one challenged patent; its construction of “outturned flange supported by the top of the support structure;” and its finding concerning “valve sets.” One of the inventors of the patents-in-suit, Pondelick, now works for B/E. Pondelick assigned the patents to his former employer, who in turn assigned them to MAG. The district court correctly concluded that Pondelick was in privity with B/E so that assignor estoppel applies to bar B/E from attacking the validity of the patents. View "MAG Aerospace Indus., Inc v. B/E Aerospace, Inc." on Justia Law

Cree’s 175 patent, filed in 1996, is entitled “Solid State White Light Emitter and Display Using Same.” The claims at issue are directed to the production of white light through the “down-conversion” of blue light from light-emitting diodes (LEDs”. Downconversion is the process in which high-energy (shorter wavelength) light is absorbed by a material and then reemitted as lower energy (longer wavelength) light. By choosing the particular absorbing material, light at a desired wavelength (and thus a desired color) can be produced. During ex parte reexamination, an examiner rejected six claims as obvious under multiple combinations of prior art references. The Board upheld the rejection. The Federal Circuit affirmed, rejecting arguments based on licensing of the patent and press releases. The court noted the lack of evidence that the commercial success was caused by the subject matter of the 175 patent as distinct from the prior art. View "In re: Cree, Inc." on Justia Law

In consolidated cases, patent-holder plaintiffs market drugs and have patents in the FDA’s Approved Drug Products with Therapeutic Equivalence Evaluations publication (Orange Book), 21 U.S.C. 355(b)(1). Mylan filed Abbreviated New Drug Applications (ANDA), 21 U.S.C. 355(j), seeking FDA approval to market generic versions of the drugs, certifying that the Orange Book patents are invalid or would not be infringed by the proposed drugs. The plaintiffs sued in Delaware under 35 U.S.C. 271(e)(2)(A). Mylan is incorporated in, and has its principal place of business in, West Virginia and submitted its ANDAs in Maryland; it intends to direct sales into Delaware, among other places, once it has FDA approval. Mylan sent notices to the plaintiffs in New York, Ireland, Delaware and Sweden. One plaintiff is incorporated in Delaware, the U.S. subsidiary of another has its principal place of business in Delaware. Both have sued others for infringement in Delaware. Each district court concluded that Delaware had sufficient contacts related to the subject of these cases to exercise specific personal jurisdiction over Mylan. The judges disagreed about whether Delaware could exercise general personal jurisdiction (independent of suit-related contacts) on the ground that Mylan consented to jurisdiction in registering to do business. Each declined to dismiss. The Federal Circuit affirmed on the issue of specific jurisdiction, declining to address general personal jurisdiction. View "Acorda Therapeutics, Inc. v. Mylan Pharma., Inc." on Justia Law

Acceleron’s 021 patent discloses a computer network appliance containing a number of hot-swappable components, meaning that those components can be removed and replaced without turning off or resetting the computer system as a whole. The Patent Trial and Appeal Board instituted inter partes review of the patent based on Dell’s petition under 35 U.S.C. 311 and confirmed the validity of claims 14–17 and 34–36, while cancelling claims 3 and 20 as anticipated. The Federal Circuit vacated cancellation of claim 20 and remanded for reconsideration of anticipation under the correct claim construction of “a microcontroller module and a dedicated ethernet path, wherein the dedicated ethernet path is separate from a switched fast ethernet connection and provides the microcontroller module with a connection to remotely poll the CPU module, the power module and the ethernet switch module.” The court also vacated cancellation of claim 3, remanding for reconsideration of anticipation as appropriate. The court otherwise affirmed, rejecting Dell’s challenge to the Board’s finding that the key prior-art reference fails to disclose a particular claim element. View "Dell, Inc. v. Acceleron, LLC." on Justia Law

Halo, a Hong Kong company that designs and sells high-end modern furniture, owns two U.S. design patents, 13 U.S. copyrights, and one U.S. common law trademark, all relating to its furniture designs. Halo’s common law trademark, ODEON, is used in association with at least four of its designs. Halo sells its furniture in the U.S., including through its own retail stores. Comptoir, a Canadian corporation, also designs and markets high-end furniture that is manufactured in China, Vietnam, and India. Comptoir’s furniture is imported and sold to U.S. consumers directly at furniture shows and through distributors, including in Illinois. Halo sued, alleging infringement and violation of Illinois consumer fraud and deceptive business practices statutes. The district court dismissed on forum non conveniens grounds, finding that the balance of interests favored Canada and that Canada, where the defendants reside, was an adequate forum. The Federal Circuit reversed. The policies underlying U.S. copyright, patent, and trademark laws would be defeated if a domestic forum to adjudicate the rights they convey was denied without a sufficient showing of the adequacy of the alternative foreign jurisdiction; the Federal Court of Canada would not provide any “potential avenue for redress for the subject matter” of Halo’s dispute. View "Halo Creative & Design, Ltd. v. Comptoir des Indes Inc." on Justia Law

Queen’s University at Kingston, Canada, owns patents directed to Attentive User Interfaces, which allow devices to change their behavior based on the attentiveness of a user—for example, pausing or starting a video based on a user’s eye-contact with the device. Queen’s sued, alleging that Samsung’s SmartPause feature infringed those patents. Throughout fact discovery, Queen’s University refused to produce certain documents. It produced privilege logs that withheld documents based on its assertion of a privilege relating to communications with its patent agents. A magistrate granted Samsung’s motion to compel, finding that the communications between Queen’s University employees and their non-attorney patent agents are not subject to the attorney-client privilege and that a separate patent-agent privilege does not exist. The district court declined to certify the issue for interlocutory appeal, but agreed to stay the production of the documents at issue pending a petition for writ of mandamus. The Federal Circuit granted that petition, finding that, consistent with Federal Rule of Evidence 501, a patent-agent privilege is justified “in the light of reason and experience” and extends to communications with non-attorney patent agents when those agents are acting within the agent’s authorized practice of law before the Patent Office. View "In Re: Queen's Univ. at Kingston" on Justia Law

ltimatePointer’s patent, entitled “Easily Deployable Interactive Direct-Pointing System and Presentation Control System and Calibration Method Therefor,” describes a handheld pointing device that can be used to control the cursor on a projected computer screen, thereby improving a presenter’s ability to control the cursor while making a presentation to an audience. The district court entered summary judgment that Nintendo did not infringe five claims of the patent and that four claims were invalid as indefinite. The Federal Circuit affirmed the judgment of noninfringement, stating that the lower court did not err in construing the term “handheld device.” The court reversed the determination of indefiniteness; the claims do not recite functionality divorced from the cited structure and do not reflect an attempt to claim both an apparatus and a method, but instead claim an apparatus with particular capabilities. View "Ultimatepointer, L.L.C. v. Nintendo Co., Ltd." on Justia Law

Avid’s patent is directed to a “system for decompressing consecutive streams of compressed video data to provide a continuous, uninterrupted decompressed video data output stream.” Many computers store video in a compressed form. One well-known compression format is MPEG. Instead of storing every video frame in full, MPEG stores only changes in one frame to the next. Before compressed video files can be played, they must be decompressed. Methods to compress and decompress videos were well known at the time of the patent application. The patent discloses that these prior art methods often generated blank frames between first and second videos when playing multiple compressed videos back-to-back due to system latency and purports to teach a system that allows play of compressed video streams one after the other without creating blank frames or a video-less gap when switching between streams by using multiple decompression buffers. The Patent Trial and Appeal Board instituted inter partes review on a subset of the grounds in Harmonic’s petition and determined that the instituted ground did not render claims of the patent unpatentable. The Federal Circuit affirmed confirmation of claims 11–16 over the instituted ground and concluded that it lacked jurisdiction to review the Board’s institution decision. View "Harmonic, Inc. v. Avid Tech., Inc.." on Justia Law

The Blue Calypso Patents are all related and describe a peer-to-peer advertising system that uses mobile communication devices. At the request of Groupon, the Patent Trial and Appeal Board instituted Covered Business Method (CBM) review of the Blue Calypso Patents under the Leahy-Smith America Invents Act (AIA).The Board found certain claims unpatentable under either 35 U.S.C. 102, 103, or 112. The Federal Circuit affirmed that the patents are CBM patents that do not claim a technological invention and that certain claims were anticipated, but reversed the Board’s conclusion that the claim terms “endorsement tag” and “token,” as used in the 516 patent lack written description support. View "Blue Calypso, LLC. v. Groupon, Inc." on Justia Law