Justia Patents Opinion Summaries

Magnum’s 413 patent is directed to the use of hydraulic fracturing (fracking) to extract natural gas and oil from natural shale formations. During fracking, a “wellbore” is drilled; a fluid mixture is injected down the wellbore into the shale at high pressure to release the gas or oil. Downhole plugs, put in place by a setting tool, divide the wellbore into separate sections. The 413 patent describes a mechanism for releasing the setting tool from the downhole plug by use of an insert having a “lower shear or shearable mechanism.” On inter partes review, the Patent Trial and Appeal Board found all challenged claims of the 413 patent obvious under 35 U.S.C. 103. The Federal Circuit reversed. The Board erred in shifting the burden of proof on obviousness from the petitioner to the patent owner and failed to articulate a sufficient rationale for why a skilled artisan would have sought to combine the asserted prior art to achieve the claimed invention. The Board’s factual findings regarding the alleged motivation to combine lacked substantial evidence. View "In re: Magnum Oil Tools Int'l, Ltd." on Justia Law

Unwired brought an infringement suit against Apple on several patents. The inventions at issue relate to: extending speech recognition capabilities to mobile devices with limited resources by relying on network-based resources; providing new or updated features and services to a mobile phone through a process called provisioning; improved technology for identifying the location of a wireless station, such as a cell phone or pager; and secure data transmissions over wireless networks. The district court construed 10 claim terms and granted summary judgment of noninfringement. The Federal Circuit vacated as to three patents and affirmed as to another. The court noted that indirect infringement requires knowledge of the underlying direct infringement—not merely the knowledge of the existence of the patent. View "Unwired Planet, LLC v. Apple Inc." on Justia Law

Westerbeke and Kohler manufacture and sell marine generators (gen-sets). The exhaust from prior art gen-sets was vented out of the boat, but the National Institute for Occupational Safety and Health found that carbon monoxide levels in the swim areas of some boats were at or above levels that are immediately dangerous to life and health. The Westerbeke patents, which claim priority to 2003, are directed to marine engine systems that reduce carbon monoxide, using chemical catalysts, which work better at higher temperatures. Regulations for marine gen-sets require that exposed engine and exhaust system surface temperatures be kept low. Typical marine engines use seawater to cool exhaust gases and keep surface temperatures low. At a 2004 boat show, Westerbeke introduced its low–carbon monoxide gen-set (Safe-CO), incorporating the technology of the patents, and explained the technology to Kohler representatives. A year later, Kohler launched its own low–carbon monoxide gen-sets. In an ensuing suit, a jury found that Kohler had infringed and had failed to prove that any claims were invalid for obviousness or for lack of written description, calculated damages of $9,641,206, and found that Kohler’s infringement was willful. The court denied a permanent injunction, reduced the damages to $3,775,418, granted enhanced damages under 35 U.S.C. 284, found the case exceptional under 35 U.S.C. 285, and awarded attorney fees. The Federal Circuit affirmed, but remanded for reconsideration of a permanent injunction. View "WBIP, LLC v. Kohler Co." on Justia Law

SkyHawke sued Deca for infringement of the 498 patent. Deca requested inter partes reexamination. The court stayed the litigation pending the outcome. The Patent Office granted reexamination, finding substantial new questions of patentability for claims 5-8. The examiner initially rejected all claims based on several grounds of obviousness, but subsequently reversed, confirming the patentability of all of the claims. The Patent Trial and Appeal Board affirmed, with a lengthy analysis of the meaning of the phrase “means . . . for determining a distance” recited in claim 5. The Board identified particular algorithms in the 498 patent as providing the corresponding structure for that claim element, as required for a means-plus-function claim, 35 U.S.C. 112, and concluded that none of the prior art references disclosed the algorithmic structure corresponding to that of claim 5. Skyhawke appealed, arguing that the Board decision should be affirmed but that the claim construction should be corrected. The Federal Circuit dismissed, citing the prudential rule that the prevailing party in a lower tribunal cannot ordinarily seek relief in the appellate court. SkyHawke will have the opportunity to argue its preferred claim construction to the district court, and can appeal an unfavorable claim construction if necessary. View "Skyhawke Techs., LLC v. Deca Int'l Corp." on Justia Law

Hepatocytes, a type of liver cell, are useful for testing, diagnostic, and treatment purposes. Fresh hepatocytes can only be obtained from liver resections or non-transplantable livers of organ donors; their lifespan is short. Supply is erratic. Before the 929 patent, scientists developed “cryopreservation” techniques, but the process could damage the hepatocytes and was unsuitable for multi-donor hepatocyte pools. Prevailing wisdom was that hepatocytes could be frozen only once before being used or discarded. The 929 parent's inventors discovered that some hepatocytes can survive multiple freeze-thaw cycles and developed an improved process: subjecting thawed cells to density gradient fractionation to separate viable from non-viable cells; recovering the viable cells; and refreezing the viable cells. After refreezing only the viable cells, the preserved hepatocyte preparations can be thawed and used later without unacceptable loss of viability. Hepatocyte samples from single donors can be pooled into a composite preparation that can be refrozen for later use. In an infringement suit, the court found the patent invalid under 35 U.S.C. 101, as directed to a patent-ineligible law of nature—that hepatocytes can survive multiple freeze-thaw cycles—and that the patented process lacks the requisite inventive concept. The Federal Circuit vacated. That each of the individual steps (freezing, thawing, and separating) were known independently in the art does not make the claim unpatentable; patent-eligibility does not turn on ease of execution or obviousness of application. View "Rapid Litig. Mgmt. v. Cellzdirect, Inc." on Justia Law

Apotex applied to the FDA, under the Biologics Price Competition and Innovation Act of 2009, for permission to begin marketing a product allegedly “biosimilar” to Amgen’s FDA-approved Neulasta®. Apotex and Amgen proceeded under the Act’s process for exchanging information and channeling litigation about patents relevant to the application. In this suit, Amgen alleged that Apotex’s proposed marketing would infringe an Amgen patent. On Amgen’s motion, the district court preliminarily enjoined Apotex from entering the market unless it has given Amgen notice after receiving the requested FDA license and then waited 180 days, pursuant to 42 U.S.C. 262(l)(8)(A). The Federal Circuit affirmed. The Act’s commercial-marketing provision is mandatory, with the 180-day period beginning only upon post-licensure notice, and an injunction was proper to enforce the provision against even a biosimilar product​ applicant that did engage in the statutory process for exchanging patent information and channeling patent litigation. View "Amgen Inc. v. Apotex Inc." on Justia Law

Plaintiffs filed suit alleging that defendant fraudulently obtained his federal trademark registration for the PUDGIE’S mark in connection with restaurants that principally serve pizza, pasta, and submarine sandwiches. The district court granted summary judgment to plaintiffs. In this case, the district court correctly concluded that no material issue of fact existed as to whether defendant knowingly made false, material representations in his application where the specimen he included with his application exhibited that the PUDGIE'S mark originally came from another source. The court concluded that no genuine issue of material fact exists as to whether defendant knew that other entities had rights to use the mark in the very manner in which he sought to use the mark, and whether he intended to mislead the PTO by attesting otherwise in his trademark application. Accordingly, the court affirmed the judgment. View "MPC Franchise, LLC v. Tarntino" on Justia Law

In January, 2000, Immersion filed an application (846 patent) with the U.S. Patent and Trademark Office, disclosing a mechanism for providing haptic feedback to electronic device users. Immersion filed an International Application that published as WO 109 in July, 2001. The two written descriptions are materially identical. The WO 109 publication invalidates claims to its disclosed subject matter unless those claims were entitled to an effective filing date before July 26, 2002, 35 U.S.C. 102(b). On August 6, 2002, the day the 846 patent issued, Immersion filed the application for the 875 patent, which shared its description. Immersion asserted a January 2000 effective filing date (846 patent’s application date), citing 35 U.S.C. 120, under which, “[a]n application for patent for an invention disclosed adequately … in an application previously filed ... shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application.” This timing benefit shrinks the universe of “prior” art for determining validity. The district court held that the 875 application was not “filed before the patenting” of the 846 application because they were filed on the same day, so that the 875 patent’s filing date was August 6, 2002, rendering the patent invalid because the WO 109 publication was published more than one year earlier. The Federal Circuit reversed: an application may be “filed before the patenting” of the earlier application when both legal acts, filing and patenting, occur on the same day. View "Immersion Corp. v. HTC Corp." on Justia Law

A third party may ask the Patent and Trademark Office (PTO) for inter partes review to reexamine claims in an issued patent and to cancel any claim found to be unpatentable in light of prior art; the decision “whether to institute an inter partes review . . . shall be final and non-appealable,” 35 U.S.C. 314(d). PTO is authorized to issue regulations governing inter partes review. One such regulation provides that, during inter partes review, a patent claim “shall be given its broadest reasonable construction in light of the specification of the patent in which it appears.” Garmin sought inter partes review of Cuozzo’s patent, asserting that claim 17 was obvious in light of prior patents. PTO reexamined claims 17, 10 and 14, finding those claims to be logically linked to the challenge; concluded that the claims were obvious in light of prior art; and canceled the claims. The Federal Circuit and Supreme Court affirmed. Section 314(d) bars a challenge to the decision to institute review. The “strong presumption” favoring judicial review is overcome by clear and convincing indications that Congress intended to bar review of the determination “to initiate an inter partes review under this section,” or where the challenge consists of questions closely tied to statutes related to that determination. Cuozzo’s claim does not implicate a constitutional question, nor present other questions beyond “this section.” The regulation requiring the broadest reasonable construction standard is a reasonable exercise of PTO's rulemaking authority, which is not limited to procedural regulations. The purpose of inter partes review is not only to resolve disputes among parties, but also to protect the public’s “paramount interest in seeing that patent monopolies . . . are kept within their legitimate scope.” Congress did not dictate what standard should apply in inter partes review. The broadest reasonable construction standard helps ensure precision in drafting claims and prevents a patent from tying up too much knowledge; PTO has used the standard for more than 100 years. View "Cuozzo Speed Techs., LLC v. Lee" on Justia Law

Allied’s patent, “Multiple Tool Attachment System,” is directed to heavy machinery construction and demolition tools, such as metal cutting shears, plate shears, concrete crushers, and grapples, that can be attached to a universal body. Traditionally, such tools were separate. The system has a “quick change feature” for easy conversion to each of several tools. Genesis sought inter partes reexamination, asserting the patent was unpatentable because it was anticipated and obvious over prior art. During reexamination, Allied amended claims and added new claims. A U.S. Patent and Trademark Office examiner allowed the amended claims and confirmed patentability. The Patent Trial and Appeals Board concluded that seven claims would have been obvious and allowed Allied to reopen prosecution. Allied submitted a second round of amendments. The examiner found the amendments did not overcome the PTAB’s ground of rejection. The PTAB affirmed, finding that prior art “teaches one of ordinary skill in the art the desirability of simplifying disassembly of jaws, and discloses a mechanism for doing so,” and that a person of ordinary skill in the art could have modified prior art to provide for a “wide range of angular movement.” The Federal Circuit affirmed, stating that substantial evidence supported a finding of motivation to combine prior art references. View "Allied Erecting & Dismantling Co., Inc. v. Genesis Attachments, LLC" on Justia Law