Justia Patents Opinion SummariesArticles Posted in U.S. Federal Circuit Court of Appeals
Tempo Lighting, Inc. v. Tivoli, LLC
Tivoli owns the 446 patent, which relates to a stair-step lighting apparatus that uses a reflective strip of material to alert users to the edge of a step in darkened or low-light environments. Tivoli sued Tempo for patent infringement in 2004. Tempo later requested inter partes reexamination by the Patent and Trademark Office, which granted the request and issued the first Office Action in 2005, rejecting all the claims. The district court stayed the litigation pending the outcome of the reexamination, which progressed slowly. The examiner closed prosecution in 2009, maintaining the rejections and the construction of “inert to light.” The appeals board reversed the rejection of certain claims. The Federal Circuit vacated, holding that the decision lacked the support of substantial evidence and that the board erred in concluding that Tempo waived certain View "Tempo Lighting, Inc. v. Tivoli, LLC" on Justia Law
EnOcean GmbH v. Face Int’l Corp.
EnOcean owns a patent application that claims a self-powered switch, which can be used to turn on and off lights, appliances, and other devices without a battery or connection to an electrical outlet. The named inventors originally filed a patent application disclosing the switch in Germany in 2000; in 2001 they filed a Patent Cooperation Treaty (PCT) international application with a similar disclosure. The Board of Patent Appeals and Interferences declared an interference in 2010 between EnOcean and Face, the real party of interest in a U.S. Patent that also claims a self-powered switch. The Board found the Face claims were unpatentable under 35 U.S.C. 103 based on prior art. Face did not appeal. The Board then applied a presumption that EnOcean’s claims were unpatentable for the same reasons. EnOcean’s argument for rebutting the presumption required determination that EnOcean’s claims could benefit from the filing dates of its German and PCT applications, eliminating a reference from prior art. The Board accorded no benefit of priority to the claims and found all of EnOcean’s claims unpatentable under section 103. The Federal Circuit vacated in part, finding that the Board erred in treating certain EnOcean claims as means-plus-function claims and in finding that certain EnOcean claim limitations lack support in its priority German and PCT applications. View "EnOcean GmbH v. Face Int'l Corp." on Justia Law
Medtronic Corevalve, LLC v. Edwards Lifesciences Corp.
Medtronic sued Edwards for infringement of six claims of it 281 patent, entitled “Prosthetic Valve for Transluminal Delivery,” issued in 2011. Filed on January 5, 2009, the 281 patent descends from U.S., international, and French patent applications. On its face, it claims priority to French Application No. 99/14462 filed on November 17, 1999. That application is not relevant to the claims asserted against Edwards, so the pertinent priority chain has its genesis in a French application filed on October 31, 2000. During litigation, Edwards became aware that the 281 patent’s priority chain suffered from several defects for failure to comply with 35 U.S.C. 119 and 120. Edwards moved for partial summary judgment that these defects limited the priority date of the asserted claims to no earlier than April 10, 2003, the date on which U.S. Patent Application Serial 4 was filed. The district court granted the motion. The Federal Circuit affirmed. Because Medtronic failed to specifically reference each earlier-filed application in intervening applications in the chain of priority for the patent, the district court was correct to limit the priority date of the patent to no earlier than April 10, 2003 and find the asserted claims invalid as anticipated. View "Medtronic Corevalve, LLC v. Edwards Lifesciences Corp." on Justia Law
Novartis AG v. Lee
In 1999, Congress provided for extensions of patent terms to compensate for certain application-processing delays caused by the Patent and Trademark Office; 35 U.S.C. 154(b)(1) makes a “Guarantee of no more than 3-year application pendency,” The statute provides that “the term of the patent shall be extended 1 day for each day” that the PTO does not meet certain response deadlines, for each day after the PTO fails to issue the patent within three years, subject to exclusions, and for each day of delay due to an interference, secrecy order, or successful applicant appeal. Novartis challenged PTO determinations of how much time to add to the otherwise-applicable term 18 of its patents. The district court dismissed claims regarding 15 patents as untimely. For the other three, the court rejected the PTO’s construction of the statutory provision. The Federal Circuit affirmed with respect to timeliness, but held the PTO was partly correct and partly incorrect in its interpretation of section 154(b)(1)(B). Novartis was entitled to most, but not all, of three patent term adjustment. View "Novartis AG v. Lee" on Justia Law
Proveris Scientific Corp. v. Innovasystems, Inc.
Proveris owns the 400 patent, for a mechanism to evaluate aerosol spray plumes. The apparatus evaluates delivery of drugs by inhalers or nasal sprays, by triggering a spray and collecting data on the plume with an illumination device and an imaging device. Innova made and sold the Optical Spray Analyzer (OSA). Proveris sued, alleging that OSA infringed the 400 patent. Innova conceded infringement of certain claims (including claim 3), but disputed infringement of others. The district court ruled in favor of Proveris on invalidity. A jury found that Innova did not infringe the disputed claims and that no damages had been proven. Based on the conceded infringement, the district court enjoined Innova from making or selling OSA. Innova modified OSA and began selling the new Aerosol Drug Spray Analyzer (ADSA). Proveris filed a contempt motion. Innova argued that OSA allowed a user to identify what range of images he wanted to analyze before activating the spray, while ADSA requires the user to first activate the spray and later determine what he wants to analyze. The district court ruled that, because Innova could have raised claim construction issues in the underlying infringement action, the court would not construe claim 3; Innova could not raise new invalidity arguments in contempt proceedings. The court entered a contempt order against Innova, found that the violation had been willful, and ordered disgorgement of profits. The Federal Circuit vacated, holding that the court erred in failing to construe the disputed claim language. View "Proveris Scientific Corp. v. Innovasystems, Inc." on Justia Law
In re: Giannelli
Giannelli filed the 261 application, entitled “Rowing Machine,” in 2003, disclosing an exercise machine on which a user can perform a rowing motion against a selected resistance, to strengthen the back muscles. The examiner rejected claims as obvious (35 U.S.C. 103(a)) in light of another patent. The Patent Trial and Appeal Board affirmed. The Federal Circuit reversed, stating that physical capability alone does not render obvious that which is contraindicated. It is not obvious to modify a machine with handles designed to be pushed to one with handles adapted to be pulled. View "In re: Giannelli" on Justia Law
In re: Enhanced Sec. Research LLC
ESR’s 236 patent, as amended, claims a computer security device and method for preventing unauthorized individuals from obtaining access to a local computer network. Its specification describes an “intelligent network security device” (INSD), capable of balancing the desire for network security against the need for network accessibility. The INSD protects a local network by: monitoring the data packets flowing into and out of the network in order to detect suspicious patterns of communications; assigning weighted values to any threatening activity it detects; and blocking communications based on their assigned weight using a firewall. A third party requested reexamination of the original patent and the PTO considered prior art. The examiner rejected certain claims as obvious. The Patent Trial and Appeal Board and the Federal Circuit affirmed. View "In re: Enhanced Sec. Research LLC" on Justia Law
Nazomi Commc’ns, Inc. v. Nokia Corp.
The central processing unit (CPU) enables a computing device to execute instructions contained in software. For software to run on CPU, it must be compiled or translated from high-level programming language, written in a human-readable syntax (source code), into machine-readable form (machine code), which is processor-specific. Particular compilers can only translate programs into machine code for particular processors. Java is programming language that allows developers to write programs that can run on different processors without being recompiled for each system by using a single compiler that translates Java programs into “bytecodes” instead of processor-specific machine code. Java bytecodes do not run directly on the CPU, but on a Java Virtual Machine (JVM) that translates them into processor-specific machine code. Programs written in Java can run on any platform and any operating system. Computing devices also vary in how they store data in memory. Machine code or “instruction sets” may be “stack-based” or “register-based.” Although most modern processors use a register-based approach, Java bytecodes are stack-based. A device using a register-based processor can run Java programs using a JVM that translates into register-based instructions, but it takes longer. Nazomi has two patents that address the issue, describing a hardware-based JVM capable of processing stack-based instructions, that also can run legacy (register-based) applications without using the JVM. Defendants are manufacturers that incorporate processors into their products. Nazomi sued, alleging patent infringement. The district court granted defendants summary judgment, construing the asserted claims to require a hardware and software combination capable of processing both register-based and stack-based instructions; without the enabling certain software, the hardware at issue cannot process stack-based instructions. Defendants’ apparatuses do not include that software. The Federal Circuit affirmed. View "Nazomi Commc'ns, Inc. v. Nokia Corp." on Justia Law
Pacific Coast Marine v. Malibu Boats, LLC
Pacific Coast applied for a design patent, claiming an “ornamental design of a marine windshield with a frame, a tapered corner post with vent holes and without said vent holes, and with a hatch and without said hatch.” Accompanying figures depicted embodiments with different vent hole configurations and showed designs that included and excluded a hatch on the front of the windshield. The examiner determined that the multiple embodiments represented five “patentably distinct groups of designs” and issued a restriction requirement, identifying five distinct groups of designs as windshields. The applicant was required to elect a single group for the pending application, but was entitled to file additional applications for each remaining group and elected “Group I,” depicting four vent holes and a hatch. The amended application issued as the 070 patent in 2007, claiming “[t]he ornamental design for a marine windshield, as shown and described.” Pacific Coast sued Malibu Boats, alleging infringement. The district court granted Malibu Boats summary judgment, finding that prosecution history estoppel barred the infringement claim. The Federal Circuit reversed, agreeing that the principles of prosecution history estoppel apply to design patents, but finding that the accused infringing design was not within the scope of the subject matter surrendered during prosecution. View "Pacific Coast Marine v. Malibu Boats, LLC" on Justia Law
Allergan, Inc. v. Athena Cosmetics, Inc.
The products at issue in this appeal are formulations of Athena’s RevitaLash, all of which contain a prostaglandin derivative as an active ingredient. The FDA has not taken enforcement action against, or otherwise regulated, the products. Allergan sells a product called Latisse, which also contains a prostaglandin derivative. Latisse is an FDA-approved prescription drug used for the treatment of a condition that affects eyelash growth. Allergan sued Athena for patent infringement and a violation of the Unfair Competition Law (UCL), California Business and Professions Code 17200 by violating California’s Health and Safety Code 1115501 by “marketing, selling, and distributing [its] hair and/or eyelash growth products without [a new drug] application approved by the FDA or California State Department of Health Services.” The district court rejected Athena’s claim that the Federal Food, Drug, and Cosmetic Act preempts Allergan’s UCL claim and granted Allergan an injunction on its claim that the products at issue qualify as new drugs that lack the requisite approval. The Federal Circuit vacated and remanded. The FDCA did not preempt Allergan’s UCL claim and there is no genuine dispute that the products are drugs under California law, but the injunction was overbroad. View "Allergan, Inc. v. Athena Cosmetics, Inc." on Justia Law