Justia Patents Opinion Summaries

Amkor initiated an International Trade Commission investigation, based on the importation, sale for importation, and sale within the U.S. after importation of certain encapsulated integrated circuit devices that allegedly infringed patent claims The Commission determined that the patent was invalid under 35 U.S.C. 102(g)(2). The Federal Circuit reversed. Evidence establishing that there might have been a prior conception is not sufficient to meet the clear and convincing burden needed to invalidate a patent. View "Amkor Tech., Inc. v. Int'l Trade Comm'n" on Justia Law

Under 35 U.S.C. 251, a patentee may, within two years of the issuance of a patent, seek a broadening reissue of that patent if the patentee originally claimed “less than he had a right to claim,” but, under the rule against recapture, is precluded from regaining subject matter surrendered in an effort to obtain allowance of the original claims. The district court held that two claims in the reissued 370 patent were invalid under the rule against recapture. The specifications of the370 patent and its predecessor, the 585 patent, are substantially identical and disclose improvements to electronic memory devices, EEPROM circuits, in which “the presence or absence of charge on a floating gate electrode indicates a binary one or zero.” In an EEPROM, charge is transferred to and from the floating gate electrode through a tunneling oxide layer that acts as an insulator when not actively tunneling. However, traditional tunneling oxide layers formed by thermal oxide growth are susceptible to pin-hole defects as well as compressive stress. The improved tunneling oxide layer disclosed in the patents reduces defects and stress, and thereby improves, among other things, processing yields, reliability, and the useful life of EEPROM memory. The Federal Circuit affirmed. View "Greenliant Sys., Inc. v. Xicor, L.L.C." on Justia Law

WhitServe, owned by Whitmyer, an inventor and a practicing patent attorney holds four patents, namely: “Onsite Backup for Internet-Based Data Processing,” “System Automating Delivery of Professional Services,” “System for Delivering Professional Services Over the Internet,”; and “Web Site Providing Professional Services.” Whitserve sued CPi, which helps other businesses pay their patent maintenance fees on time, alleging infringement by CPi’s system, which are used by a CPi customer, such as a law firm, to generate and send reminders to its clients of upcoming patent or trademark annuity or maintenance fee deadlines. A jury found that CPi failed to prove any claims invalid, that CPi’s systems infringed the patents, that CPi’s infringement was willful, and that WhitServe was entitled to $8,378,145 in damages. The court denied WhitServe’s request for a permanent injunction and did not address a request for a compulsory license. WhitServe’s requests for enhanced damages and attorneys’ fees, prejudgment interest, prejudgment remedy, and disclosure were denied. The Federal Circuit affirmed the finding of infringement, the finding of no anticipation of most, but not all, claims, and denial of fees and sanctions. The case was remanded for a new trial on damages. View "Whitserve, L.L.C. v Computer Packages, Inc." on Justia Law

The district court held that medical organizations, researchers, genetic counselors, and patients had standing under the Declaratory Judgment Act to challenge patent claims to "isolated" DNA molecules and granted summary judgment that all of the challenged claims were drawn to non-patentable subject matter under 35 U.S.C. 101. On remand for consideration under Mayo Collaborative Services v. Prometheus, Inc., 132 S. Ct. 1289 (2012), the Federal Circuit affirmed with respect to standing and reversed, in part, on the merits. The court reversed a holding that composition claims to “isolated” DNA molecules cover patent-ineligible products of nature under section 101 because each of the claimed molecules represents a nonnaturally occurring composition of matter. The court also reversed a holding that a method claim to screening potential cancer therapeutics via changes in cell growth rates of transformed cells is directed to a patent-ineligible scientific principle. The court affirmed that method claims directed to “comparing” or “analyzing” DNA sequences are patent ineligible; such claims include no transformative steps and cover only patent-ineligible abstract, mental steps View "Ass'n for Moleculat Pathology v. U.S. Patent & Trademark Office" on Justia Law

Brady, the sole inventor of the 087 and 122 patents, was, from 1986-1996, an independent sales representative for Bodum, a company that designs and sells housewares products, including coffee makers, milk frothers, and other kitchen products. He conceived of a frother using aeration instead of steam in the mid-1990s, introduced it at a 1996 trade show, and began selling frothers through his company BonJour. In 1996, Brady filed a patent application directed to a “Method for Frothing Liquids,” which became the 087 Patent, issued in 1998. While the application was pending, Brady filed a continuation application that later became the 122 patent, that issued in 1999. In 2005 Brady sold Bonjour and the patents to Meyer. Meyer sued Bodum for infringement. The district court granted Meyer summary judgment after prohibiting Bodum from: introducing and relying on prior art; presenting testimony relating to that prior art; and introducing evidence to support inequitable conduct claims. The jury determined that the patents were not invalid, found that Bodum’s infringement was willful, and awarded Meyer damages of $50,000. The court awarded Meyer attorney fees of $906,487.56. The federal circuit reversed. View "Meyer Intellectual Props., Ltd. v. Bodum, Inc." on Justia Law

The patent, “Method of Operating a Memory Having a Variable Data Output Length and Programmable Register” is one of a family of patents that claim priority to the 898 Application, which has a priority date of 1990, and, therefore, is now expired. In 2005, Rambus sued Hynix and several other chip manufacturers, including Micron, alleging infringement of several patents in the 898 family. After the district court entered judgment finding infringement, Hynix sought ex parte reexamination of certain claims of the patent. During reexamination, the examiner construed the term “memory device” broadly as a “device[] that allows for the electronic storage and retrieval of information.” Under this construction, the examiner rejected claim 18 as anticipated. The Board of Patent Appeals and Interferences and the Federal Circuit affirmed. Substantial evidence supports the PTO’s determination Claim 18, as correctly construed reads on the “memory module” in the prior art iAPX 432 Interconnect Architecture Reference Manual published by Intel Corp. in 1982. View "In re Rambus, Inc." on Justia Law

MIT is the assignee of the 922 patent and MagSil is the exclusive licensee. The patent application was filed in 1995; it issued in 1997. The patent claims read-write sensors for computer hard disk drive storage systems. Hard disk drives store digital data in microscopic magnetic patterns on the surface of spinning platters, or disks, inside the drive. The patent claims both a method of manufacturing a tri-layer tunnel junction and the junction itself. MagSil filed suit in 2008 against several defendants, alleging that their disk drive products infringed the patent. The district court found the asserted claims invalid as a matter of law for lack of enablement. The Federal Circuit affirmed. The specification must contain sufficient disclosure to enable an ordinarily skilled artisan to make and use the entire scope of the claimed invention at the time of filing. The specification containing the broad claims at issue, does not contain sufficient disclosure to present “even a remote possibility” that an ordinarily skilled artisan could have achieved the modern dimensions of this art.View "Magsil Corp. v. Hitachi Global Storage Techs." on Justia Law

Wake Forest is the owner of asserted patents, and KCI are the exclusive licensees of the patents, which claim methods and apparatuses for treating difficult-to-heal wounds by applying suction or negative pressure. In response to S&N’s 2008 announcement that it was launching a new foam-based negative pressure wound treatment product, Wake Forest and KCI asserted that S&N infringes two apparatus claims of the patent and induces infringement of four method claims. Rejecting the jury’s findings of non-obviousness, the district court found obviousness, based on prior art, and rejected infringement claims. The Federal Circuit reversed and remanded. The objective evidence strongly supported the jury’s findings under the first three Graham factors and cut against the view that the claimed inventions were an obvious combination of known elements from the prior art. View "Kinetic Concepts, Inc. v. Smith & Nephew, Inc." on Justia Law

Apotex submitted an Abbreviated New Drug Application (ANDA) to the FDA seeking approval to market a generic version of the anti-allergy eye drop Patanol. Alcon, which markets Patanol, sued Apotex for patent infringement under 35 U.S.C. 271(e)(2)(A). Alcon asserted claims 1-8 of the patent, which is listed in the Approved Drug Products with Therapeutic Equivalence Evaluations (Orange Book) entry for Patanol. The district court held that claims would not have been obvious over the prior art and were not invalid. The Federal Circuit affirmed in part. Objective evidence indicated that claims 4 and 8 would not have been obvious. Patanol’s achieving nearly 70% market share within two years of its launch, demonstrates that “the commercial success was caused by the merits of the invention as distinct from the prior art.” The remaining claims were, however, obvious. A person of ordinary skill in the art at the time of invention would have been motivated to use olopatadine to treat human eye allergies as claimed for its established antihistaminic efficacy. View "Alcon Research, Ltd. v. Apotex, Inc." on Justia Law

Allcare owns a patent directed to “managed health care systems” used to interconnect and integrate physicians, medical care facilities, patients, insurance companies, and financial institutions, particularly with respect to utilization review, the process of determining whether a health insurer should approve a particular treatment for a patient. In general, the patent’s claims cover a method of determining whether utilization review is necessary in a particular instance, and whether a recommended treatment is appropriate. If utilization review is required, the method prevents authorization and payment until the appropriateness of the treatment has been determined and the treatment has been approved. The district court held that the patent was not infringed by Highmark, found the case exceptional under 35 U.S.C. 285 and awarded attorneys’ fees and costs to Highmark. The Federal Circuit affirmed the finding that Allcare’s allegations of infringement of claim 102 rendered the case exceptional, but reversed a finding that other claims and actions supported an exceptional case finding. Remand was necessary to determine the amount of fees apportionable to each of the issues. View "Highmark, Inc. v. Allcare Health Mgmt. Sys. Inc." on Justia Law