Justia Patents Opinion Summaries

The Patent Trial and Appeal Board granted SAMSF’s motion to cancel certain claims prior to its review of SAMSF’s patents relating to administering the “natural” stereoisomer of 5-methyl-tetrahydrofolic acid (L-5-MTHF) and other vitamins to treat symptoms associated with folate deficiency, which causes health issues, including cardiovascular disease, neurological disorders, birth defects, and skeletal disorders. The Federal Circuit affirmed the Board’s conclusion of obviousness under 35 U.S.C. 103. The court prior rejected SAMSF’s arguments art taught away from its claimed use of a reduced folate to treat folate deficiency, and that objective indicia of non-obviousness further demonstrated the validity of its patents. Although the Board erred in its assessment of the evidence of licensing, its other factual findings were supported by substantial evidence. View "S. Ala. Med. Sci. Found. v. Gnosis, S.P.A." on Justia Law

At the request of Gnosis, the Patent Trial and Appeal Board instituted inter partes review of claims of Merck’s patent, which relates to methods of using folates to lower levels of homocysteine in the human body. Homocysteine is an amino acid that, when present in excessive quantities, can cause severe cardiovascular, ocular, neurological, and skeletal disorders. Merck filed a response and a motion to cancel claims 1–3, 5, 6, and 13, which the Board granted. The Board only reviewed the patentability of dependent claims 8, 9, 11, 12, 14, 15, and 19–22 and found them invalid for obviousness, 35 U.S.C. 103, in light of prior art. The Federal Circuit affirmed, finding that the Board’s factual findings to the contrary were supported by substantial evidence and rejecting Merck’s arguments that the prior art taught away from the claimed method and that objective indicia of non-obviousness further support the patentability of the claims. View "Merck & Cie v. Gnosis, S.P.A." on Justia Law

DiStefano’s patent application claims a method that enables an individual to design a web page without having to “learn HTML or to interact extensively with a web page designer.” Its primary embodiment includes a graphical user interface with a primary display screen and an overlaid design plate that has menu buttons to assist in editing and a design place to edit web assets, such as Java applets, scripts, stock art, background images, and textures. Web assets can come from a web asset database, be uploaded directly by users, or be obtained from independent websites. When the user finishes editing a web asset, it is dragged from the design plate onto the website. The Patent Trial and Appeal Board rejected claims under 35 U.S.C. 102, for anticipation. The Federal Circuit vacated, rejecting application of the printed matter analysis and a conclusion that “web assets’ origination from third party authors and the user cannot patentably distinguish (i.e., cannot breathe novelty into) the claimed method, particularly because the web assets’ origins have no functional relationship to the claimed method.” Although selected web assets likely communicate some information, the content of the information is not claimed; the information’s “origin,” is not part of informational content. Nothing in the claim calls for origin identification to be inserted into the content of the web asset. View "In re: DiStefano" on Justia Law

SightSound’s patents disclose methods for sale and distribution of digital audio and video signals, requiring: connection, by telecommunications lines, between a party’s memory and a second party’s memory; selling digital signals to the second party for a fee through telecommunications lines; transmitting the signal from the first memory to the second memory by telecommunications lines; and storing the signal in the second memory. Apple sought covered business method (CBM) review under the America Invents Act, 125 Stat. 284, arguing that claims were invalid as anticipated under 35 U.S.C. 102. The Patent Board determined that the patents are CBM patents because they recite an activity that is “financial in nature,” and do not include novel, non-obvious technological features, then determined that there was a reasonable likelihood that the claims were anticipated or obvious by disclosures relating to a 1980s CompuSonics computer system. The petitions did not specifically allege obviousness over CompuSonics. The Board granted SightSound additional time and authorized sur-replies and new declaration testimony on the issue of obviousness, then rejected SightSound’s contention that the term “second memory” is limited to non-removable media and held seven claims invalid as obvious. The Federal Circuit found that it lacked jurisdiction to review the decision to consider issues not explicitly raised in the petitions, but affirmed that the patents are CBM patents and the final decision with respect to claim construction and obviousness. View "Sightsound Techs., LLC v. Apple Inc." on Justia Law

Unwired Planet sued the defendants for infringement, then initiated an action with the International Trade Commission (ITC). The district court stayed its litigation pending resolution of the ITC proceedings. After receiving an unfavorable claim construction ruling from an Administrative Law Judge, Unwired Planet obtained dismissal of the ITC investigation. The court lifted its stay. Unwired Planet indicated that if it adopted a construction of the disputed claim term that matched the ITC construction, Unwired Planet would concede non-infringement. The court adopted a construction that closely tracked that employed by the ALJ, noting in a footnote that its construction excluding devices employing “computer modules” did not exclude devices employing “microprocessors.” Believing that difference to be material, Unwired Planet did not stipulate to non-infringement. The court denied the defendants’ motion for summary judgment, finding it was unclear whether the accused products actually fell within the claims as construed, because the distinction between devices operating with microprocessors and those operating with computer modules was unclear. Unwired Planet then stipulated to non-infringement. The district court entered final judgment of non-infringement. The Federal Circuit affirmed, upholding construction of the term “mobile device” as “a portable wireless two-way communication device that does not contain a computer module.” View "Openwave Sys., Inc. v. Apple, Inc." on Justia Law

Prolitec, Inc. owned U.S. Patent No. 7,712,268 (“‘683 patent”). The ‘683 patent had only two apparatus claims. The United States Patent and trademark Office, Patent Trial and Appeal Board found that the two claims were unpatentable as anticipated and additionally as obvious. The Board also denied Prolitec’s motion to amend. Proletic appealed, and the Director of the United States Patent and Trademark Office intervened for the limited purpose of addressing the Board’s regulations and practices regarding motions to amend. The Federal Circuit affirmed the Board’s findings that the two claims in the ‘683 patent were anticipated and the Board’s denial of Prolitec’s motion to amend, holding that the Board’s ultimate claim constructions were not in error and that the Board’s finding that both claims in the ’683 patent were anticipated was supported by substantial evidence. View "Prolitec, Inc. v. Scentair Techs., Inc." on Justia Law

Commonwealth Scientific and Industrial Research Organization (CSIRO) filed the instant suit for infringement of CSIRO’s U.S. Patent No. 5,487,069 (“’069 patent”) against Cicso Systems, Inc. The district court accepted a joint stipulation that Cisco would not contest infringement or validity. After a bench trial on damages, the district court awarded entered judgment for CSIRO in the amount of $16,243,067. Cisco appealed, challenging the district court’s damages award. The Federal Circuit vacated the district court’s judgment and remanded for the district court to revise its damages award, holding (1) the methodology employed by the district court in this case was not contrary to damages law; but (2) the district court erred in not accounting for the ‘069 patent’s standard-essential status and in its reasons for discounting a relevant license agreement. Remanded for the district court to revise its damages award. View "Commonwealth Scientific & Indus. Research Org. v. Cisco Sys., Inc." on Justia Law

MCM Portfolio LLC owns U.S. Patent No. 7,162,549 (the ‘549 patent). Hewlett-Packard Co. (HP) filed a petition requesting inter partes review of claims 7, 11, 19, and 21 of the ‘549 patent. The Patent Trial and Appeal Board determined that there was a reasonable likelihood that HP would prevail with respect to at least one of the challenged claims based on obviousness and rejected MCM’s argument that it could not institute inter partes review under 35 U.S.C. 315(b). Thereafter, the Board issued a final decision concluding that the challenged claims would have been obvious. MCM appealed. The Federal Circuit affirmed, holding (1) the Court lacks jurisdiction to review the Board’s decision that the institution of inter partes review was not barred by 35 U.S.C. 315(b); (2) on the merits, inter partes review does not violate Article III or MCM’s right to a trial by jury under the Seventh Amendment; and (3) the Board correctly found that claims 7, 11, 19, and 21 of the ‘549 patent would have been obvious. View "MCM Portfolio LLC v. Hewlett-Packard Co." on Justia Law

In CardSoft v. VeriFone, Inc., the Federal Circuit reversed the district court’s decision in favor of CardSoft. The district court adopted CardSoft’s proposed construction for the claim term “vertical machine." Applying the district court’s construction, a jury determined that certain VeriFone devices infringed claim 11 of the 6,934,945 patent and claim 1 of the 7,302,683 patent. The federal circuit concluded that the district court erred in its construction of “vertical machine” and that CardSoft waived any argument of infringement under the correct construction. The Supreme Court vacated and remanded the CardSoft decision, determining that the Federal Circuit must review a district court’s ultimate interpretation of a claim term as well as its interpretations of “evidence intrinsic to the patent” de novo and its subsidiary factual findings about extrinsic evidence for clear error. The Federal Circuit again reversed the district court’s construction of the term “virtual machine,” holding (1) the district court’s construction is entitled to de novo review because the case does not involve the factual findings to which the Court owes deference under Teva; and (2) the district court erred by failing to give “virtual machine” its ordinary and customary meaning, and CardSoft waived any argument of infringement under the correct construction. View "CardSoft, LLC v. VeriFone, Inc." on Justia Law

Straight Path IP Group owns U.S. Patent No. 6,108,704 (“the ’704 patent”), entitled Point-to-Point Internet Protocol, which describes protocols for establishing communication links through a network. Sipnet EU S.R.O. filed a petition for inter partes review of the ‘704 patent, requesting cancellation of claims 1-7 and 32-42, as anticipated by and obvious over several prior-art references. The Patent Trial and Appeal Board conducted the review and reached a final decision canceling the challenged claims based on determinations of anticipation and obviousness. The Federal Circuit reversed, holding that the Board adopted a claim construction in arriving at its decision that was erroneous, even under the broadest-reasonable-interpretation standard. Remanded for further proceedings under the correct construction. View "Straight Path IP Group, Inc. v. Sipnet EU S.R.O." on Justia Law