Justia Patents Opinion SummariesArticles Posted in US Court of Appeals for the Federal Circuit
PROMPTU SYSTEMS CORPORATION v. COMCAST CORPORATION
Promptu Systems Corp. sued Comcast Corp. alleging that Comcast infringed on its U.S. Patent Nos. 7,047,196 and 7,260,538. The patents cover a method of using speech recognition services in combination with cable television or video delivery. The case was litigated in the United States District Court for the Eastern District of Pennsylvania. The district court adopted claim constructions that were mostly in line with Comcast's proposals. As a result, Promptu and Comcast agreed to dismiss Promptu's patent-infringement claim and state-law claims with prejudice. Promptu also agreed to a final judgment of no infringement by Comcast of the ’196 and ’538 patents, based on the claim constructions adopted by the district court.Promptu appealed the judgment, challenging several of the underlying claim constructions. The United States Court of Appeals for the Federal Circuit found that the district court incorrectly construed certain claim terms and therefore vacated the judgment and remanded the case for further proceedings. The court held that the district court's constructions of the terms "back channel," "multiplicity of received identified speech channels," "speech recognition system coupled to a wireline node," and "centralized processing station" were not accurate. The court provided detailed analysis and reasoning for these conclusions. The court did not rule on the merits of the infringement claims, but instead remanded the case for further proceedings based on the corrected claim constructions. View "PROMPTU SYSTEMS CORPORATION v. COMCAST CORPORATION " on Justia Law
RAI Strategic Holdings, Inc. v. Philip Morris Products S.A.
This case concerns a patent dispute between RAI Strategic Holdings, Inc. (RAI) and Philip Morris Products S.A. (Philip Morris) about an electrically powered smoking article. The United States Court of Appeals for the Federal Circuit affirmed in part, vacated in part, and remanded the decision of the Patent Trial and Appeal Board (Board).RAI owns a patent for electrically powered smoking articles that heat tobacco or other substances without significant combustion. Philip Morris filed a petition to review the patent, asserting that the claims were invalid due to a lack of written description and obviousness over prior art. The Board agreed with Philip Morris and held certain claims of the patent unpatentable.On appeal, RAI argued that the Board erred by finding that some claims lacked adequate written description support and that other claims were obvious. The Court of Appeals agreed with RAI regarding the written-description issue. It found that the patent specification did provide adequate written description support for the disputed claims, as it disclosed the end points of the claimed range and there were no inconsistent statements regarding the range. Thus, the Court of Appeals vacated the Board's decision on this issue and remanded for further consideration.However, the Court of Appeals affirmed the Board’s decision regarding the obviousness issue. It found substantial evidence to support the Board's finding that a person of ordinary skill in the art would have been motivated to combine prior art references, making the claims obvious. Specifically, the Court found that the Board reasonably concluded that a skilled artisan would have been motivated to replace the heating element in Robinson's smoking article with the heating element taught by Greim. Therefore, the Court affirmed the Board’s finding that these claims were unpatentable as obvious. View "RAI Strategic Holdings, Inc. v. Philip Morris Products S.A." on Justia Law
University of South Florida Board of Trustees v. United States
In this case, the University of South Florida Board of Trustees (USF) sued the United States, claiming that the latter infringed a patent owned by USF regarding genetically modified mice for Alzheimer's Disease research. The USF contended that The Jackson Laboratory, with the government's authorization and consent, had been producing and using mice covered by the patent for the government. The government countered the claim by asserting it had a license to practice the patent under a provision of the Bayh-Dole Act, which addresses patent rights in work funded by the federal government. The United States Court of Appeals for the Federal Circuit determined that the provision does apply and therefore affirmed the judgment of noninfringement. The court confirmed that the April 1997 work, the first actual reduction to practice of the invention, was "in the performance of work under a funding agreement." The court also rejected USF's contention that a funding agreement must be in place at the time of the relevant work, clarifying that the Act can cover work already performed before a funding agreement is executed or becomes effective. View "University of South Florida Board of Trustees v. United States" on Justia Law
WEBER, INC. v. PROVISUR TECHNOLOGIES, INC.
In a patent dispute between Weber, Inc. and Provisur Technologies, Inc. before the United States Court of Appeals for the Federal Circuit, Weber appealed two final written decisions from the Patent Trial and Appeal Board. The Board had determined that Weber failed to establish the unpatentability of the claims of Provisur’s patents relating to high-speed mechanical slicers used in food-processing plants. The Board found that Weber’s operating manuals were not prior art printed publications and that the prior art did not disclose two challenged claim terms. The Court of Appeals reversed the Board's determinations that Weber's operating manuals do not qualify as printed publications and that the prior art does not disclose the "disposed over" and "stop gate" limitations. The court then vacated the Board's conclusions that Weber failed to establish unpatentability of the challenged claims, and remanded the case for further proceedings. View "WEBER, INC. v. PROVISUR TECHNOLOGIES, INC. " on Justia Law
GOOGLE LLC v. ECOFACTOR, INC.
The appellants, Google LLC and ecobee, Inc. had appealed from a decision of the United States Patent and Trademark Office’s Patent Trial and Appeal Board. The Board had found that the challenged claims of U.S. Patent No. 8,498,753, owned by EcoFactor, Inc., were not unpatentable. Google argued that the Board had made an erroneous claim construction of a limitation in Claim 1 and that Google had not been given notice or an opportunity to address the Board’s construction, thereby violating the Administrative Procedure Act. The United States Court of Appeals for the Federal Circuit held that the Board had indeed construed Claim 1 and that its construction was erroneous. The court vacated the Board’s decision and remanded the case for further proceedings under the correct construction of the [1m] limitation in Claim 1. View "GOOGLE LLC v. ECOFACTOR, INC. " on Justia Law
ROKU, INC. v. ITC
In this case, the United States Court of Appeals for the Federal Circuit reviewed the findings of the International Trade Commission (ITC) which ruled in favor of Universal Electronics, Inc. (Universal) in a patent dispute with Roku, Inc. The patent at issue, U.S. Patent No. 10,593,196, related to a "universal control engine" that helps different types of media devices communicate with each other using various communication protocols. Universal had accused Roku of importing certain TV products that infringed this patent.The court affirmed the ITC's findings on three key issues:1. Ownership Rights: Roku had argued that Universal lacked standing to assert the patent because it did not own all rights to the patent at the time it filed its complaint. However, the court found that Universal did indeed possess ownership rights based on a 2012 agreement which constituted a present conveyance of patent rights.2. Domestic Industry Requirement: The court found that Universal satisfied the economic prong of the domestic industry requirement by proving a substantial investment in engineering and research and development to exploit the patent. Roku had argued that the Commission erred by not requiring Universal to allocate its domestic industry expenses to a specific domestic industry product, but the court disagreed.3. Non-Obviousness of Patent: The court affirmed the ITC's determination that Roku failed to establish a prima facie case that the challenged claims were unpatentable as obvious. The court found that the combination of two prior art references did not disclose all elements of the patent claim in question. Additionally, the court found that Roku failed to present clear and convincing evidence of a motivation to combine the prior art references.Based on these findings, the court affirmed the ITC's decision, thereby ruling in favor of Universal Electronics, Inc. View "ROKU, INC. v. ITC " on Justia Law
CYWEE GROUP LTD. v. ZTE (USA), INC.
In this case, CyWee Group Ltd. appealed a decision made by the U.S. Patent Trial and Appeal Board (the "Board") that found unpatentable claims 1, 4–5, 14–17, and 19 of U.S. Patent No. 8,441,438, which is directed to a three-dimensional (3D) pointing device. The appeal also involved CyWee’s revised motion to amend its claims. The main arguments of CyWee's appeal were that the Board erred by allowing LG Electronics Inc., an intervenor in the case, to oppose CyWee’s motion to amend and that the Board erred in denying the revised motion to amend.The United States Court of Appeals for the Federal Circuit affirmed the Board's decision. The court found no error in the Board’s decision to allow LG to oppose the revised motion to amend, despite LG joining the case as a passive 'understudy'. The court also found substantial evidence to support the Board's conclusion that a skilled artisan would combine the prior art references in the case. The court rejected CyWee's argument that it was denied meaningful Director review, in line with precedent set in previous cases. View "CYWEE GROUP LTD. v. ZTE (USA), INC. " on Justia Law
PACIFIC BIOSCIENCES OF CALIFORNIA, INC. v. PERSONAL GENOMICS TAIWAN, INC.
The United States Court of Appeals for the Federal Circuit affirmed the decisions from the United States Patent and Trademark Office, Patent Trial and Appeal Board in a patent dispute between Pacific Biosciences of California, Inc. (PacBio) and Personal Genomics Taiwan, Inc. (PGI). The core dispute revolved around the interpretation of the term "identifying a single biomolecule" in the claims of PGI’s U.S. Patent No. 7,767,441. The Board interpreted the term to mean that the apparatus must be capable of ascertaining the identity of one single, individual biomolecule by examining only that biomolecule. On appeal, the court affirmed the Board’s interpretation. PacBio challenged the Board’s finding that the Hassibi reference did not disclose “identifying a single biomolecule” under the claim construction, while PGI challenged the Board’s finding that the Choumane reference did disclose “identifying a single biomolecule” under that construction. The court found substantial evidence supporting the Board’s findings for both references and affirmed the decisions. PacBio and PGI bear their own costs. View "PACIFIC BIOSCIENCES OF CALIFORNIA, INC. v. PERSONAL GENOMICS TAIWAN, INC. " on Justia Law
DEXCOM, INC. v. ABBOTT DIABETES CARE, INC.
This case revolves around an interlocutory appeal from a consolidated case between Abbott Diabetes Care, Inc., Abbott Diabetes Care Sales Corp. (collectively, “Abbott”), and DexCom, Inc. at the United States District Court for the District of Delaware. DexCom had sued Abbott for infringing its patents, leading Abbott to petition for inter partes review of the asserted patents before the Patent Trial and Appeal Board. DexCom sought a preliminary injunction to prevent Abbott from proceeding with the inter partes review proceedings based on a forum selection clause in a settlement and license agreement between the parties. DexCom appealed the district court’s denial of the preliminary injunction.The United States Court of Appeals for the Federal Circuit affirmed the district court's decision, holding that the district court did not abuse its discretion in denying the preliminary injunction. The court found that the forum selection clause in the settlement and license agreement did not preclude the filing of inter partes review petitions after the Covenant Period because it allowed them during the Covenant Period. Therefore, DexCom could not succeed on its breach-of-contract counterclaim, making it ineligible for a preliminary injunction. View "DEXCOM, INC. v. ABBOTT DIABETES CARE, INC. " on Justia Law
K-FEE SYSTEM GMBH v. NESPRESSO USA, INC.
In the patent infringement case between K-fee System GmbH and Nespresso USA, Inc., the United States Court of Appeals for the Federal Circuit reversed the district court’s decision. K-fee owns three patents related to coffee-machine portion capsules that display information to prevent their use in incompatible machines. The company alleged that Nespresso infringed these patents. The district court had interpreted the term "barcode" in K-fee's patents to exclude "bit codes," or codes made up of two binary symbols. Based on this interpretation, the court granted Nespresso’s motion for summary judgment of non-infringement.On appeal, the Federal Circuit disagreed with the district court’s interpretation of “barcode.” The court found that a "barcode" is defined by its visual appearance as a lineup of bars with varying widths, and that this definition can include bit codes. The court determined that the district court had erred in its claim construction of "barcode," and consequently, in its grant of summary judgment of non-infringement based on that construction. The case was remanded for further proceedings in line with this interpretation. View "K-FEE SYSTEM GMBH v. NESPRESSO USA, INC. " on Justia Law