Justia Patents Opinion Summaries

Firepass owns the 752 patent, directed to using hypoxic compositions for preventing and extinguishing fires and sued Airbus for infringement. Airbus requested inter partes reexamination of the patent, proposing that certain claims were anticipated under 35 U.S.C. 102 by the “Kotliar” patent and by the "Vulnerability Methodology and Protective Measures for Aircraft Fire and Explosion Hazards,” Report. The PTO granted Airbus’s request in part, finding that Kotliar presented a substantial new question of patentability, but that the report did not present a substantial new question. The Examiner ultimately rejected claims 91–94 under 35 U.S.C. 112, for lack of written description. The Board reversed, finding that the claims were supported by an adequate written description, but dismissed Airbus’s cross-appeal relating to the same claims, finding that “the statutory authority for third-party requester appeals is . . . expressly limited to the review of examiner final decisions that are ‘favorable to the patentability’ of a claim," and that “determination of a ‘[l]ack of a substantial new question of patentability is not a favorable decision on patentability.’” The Federal Circuit vacated. Once the Director ordered inter partes reexamination it was section 1.948(a), not a determination of a substantial new question of patentability, that governed the limitations on Airbus’s submission of prior art. View "Airbus S.A.S. v. Firepass Corp." on Justia Law

Attorney John Cogswell appealed the imposition of a Rule 11 sanction. Acting on behalf of Predator International, Inc., Cogswell filed a lawsuit in April 2009 against Gamo Outdoor USA, Inc. and Industrias El Gamo, S.A. (collectively, Gamo). The original complaint alleged patent infringement and other claims. When it appeared that Lee Phillips, a co-inventor of the patent at issue, was asserting that he still owned half the patent, Cogswell moved to dismiss the infringement claim, explaining that Predator would litigate ownership in state court with the expectation of reviving the patent-infringement claim once it had established its ownership. The state litigation expanded after Gamo purchased Phillips’s interest in the patent. Cogswell then moved in federal court to supplement Predator’s complaint with a challenge to Gamo’s claimed interest in the patent and moved to amend the complaint by reviving the patent-infringement claim. The district court denied the motion. Eventually the district court imposed a Rule 11 sanction on Cogswell for filing the motion to supplement and amend Predator’s complaint, justifying the sanction on grounds that he was forum shopping on the claims he wished to add, his motion came too long after he had learned of Gamo’s purchase of Phillips’s interest in the patent, and nothing had changed to justify his reinstating the patent-infringement claim. The Tenth Circuit reversed: the motion to supplement and amend was not unwarranted under existing law. View "Predator International v. Gamo Outdoor" on Justia Law

This appeal stems from a patent dispute involving Amity's patent for a device that dispenses both toothpicks and tablets and Market Quest's alleged infringement of the patent. The court concluded that this case arises under the patent laws and therefore falls within the exclusive appellate jurisdiction of the Federal Circuit. The court lacked jurisdiction to resolve the merits of the appeal, but concluded that, had this appeal been filed with the Federal Circuit at the time it was filed with this court, the Federal Circuit would have had jurisdiction. And because this appeal is neither frivolous nor is there any indication that it was filed in bad faith, the court concluded that transfer is in the interest of justice. Therefore, the court ordered the matter transferred to the Federal Circuit pursuant to 28 U.S.C. 1631. View "Amity Rubberized Pen Co. v. Market Quest Grp." on Justia Law

Versata successfully sued SAP for infringement. The Federal Circuit affirmed a damages award, but vacated an injunction, and remanded. Meanwhile, SAP petitioned the U.S. Patent and Trademark Office to institute covered business method (CBM) review --an administrative review procedure established in the Leahy-Smith America Invents Act (AIA), 125 Stat. 284 (2011), asserting that key claims were unpatentable and invalid. While the Patent Trial and Appeal Board (PTAB) was conducting CBM review, Versata sued to set aside the decision to institute review. The court held that it lacked subject matter jurisdiction: “AIA’s express language, detailed structure and scheme for administrative and judicial review, legislative purpose, and nature of administrative action evince Congress’s clear intent to preclude subject matter jurisdiction over the PTAB’s decision to institute patent reexamination.” The court state that “the decision to institute post-grant review is merely an initial step in the PTAB’s process to resolve the ultimate question of patent validity, not a final agency action. . . . Plaintiff retains an alternative adequate remedy through appeal to the Court of Appeals for the Federal Circuit.” The Federal Circuit affirmed; Versata’s attempt to obtain judicial review was addressed to the decision to institute stage, so the court was correct in barring judicial review, 35 U.S.C. 324(e). View "Versata Dev. Grp. v. Lee" on Justia Law

SFA’s patents relate to a computer sales system that includes multiple subsystems or components; each component corresponds to a different phase of the sales process. The patents disclose “an event manager” that detects “events” and automatically implements operation. SFA sued online retailers, including Newegg, alleging infringement. After other accused infringers settled, the district court held Markman hearings and rejected Newegg’s proposed constructions that limited the asserted claims to systems that assist a salesperson, or are used by a salesperson. Newegg also argued that claims were invalid as indefinite, because the system claims contained method step limitations, making it unclear when infringement occurs. The parties jointly sought extension of the case schedule. The court denied the motion as premature and denied summary judgment that the claims were indefinite. The next day, SFA moved to dismiss with prejudice and covenanted not to sue Newegg on the patents at issue. The court found that Newegg was the prevailing party and granted costs, but denied its 35 U.S.C. 285 motion for attorneys’ fees citing the Supreme Court’s standard in Octane (2014), finding that, “[e]ven under the new, lower standard for an exceptional case designation, Newegg has provided no evidence that this case ‘stands out from others with respect to the substantive strength of [SFA’s] litigating position.’” The Federal Circuit affirmed. View "SFA Sys., LLC v. Newegg, Inc." on Justia Law

Versata sued SAP for infringing its 350 patent, entitled “method and apparatus for pricing products in multi-level product and organizational groups.” A jury awarded damages. Meanwhile, SAP petitioned the Patent Trial and Appeal Board, alleging that the patent was a covered business method patent, subject to the special provisions of the Leahy-Smith America Invents Act, 125 Stat. at 329–31.3 Section 18 establishes a separately-designated transitional program for post-grant review proceedings concerning the validity of covered business method patents, under procedures governed by 35 U.S.C. 321– 329. The PTAB cancelled certain claims as unpatentable under 35 U.S.C. 101. The Federal Circuit held that, on appeal in a section 18 case, it has authority review issues decided during the PTAB review process, regardless of when they first arose in the process, if they are part of or a predicate to the ultimate merits. The invention claimed in the 350 patent is a covered business method patent and does not fall within the meaning of a “technological invention.” The court affirmed PTAB’s claim constructions and that the claims at issue were properly held invalid under section 101. View "Versata Dev. Grp., Inc. v. SAP Am., Inc." on Justia Law

Celgard is a developer and manufacturer of battery membranes, used to separate chemical cell components in lithium-ion batteries, preventing contact between the positive and negative electrodes. The patents concerns a separator technology that uses a ceramic composite coating that helps prevent electrical shorting. This technology is used in rechargeable batteries in electronic vehicles and consumer electronic devices such as laptops and cellular phones. Celgard is headquartered in Charlotte, North Carolina. SKI is a manufacturer of separators for use in lithium-ion batteries. SKI mainly supplies the separators to third-party manufacturers, but also manufactures batteries that include the separators it produces. SKI’s principal place of business is in Seoul, Korea. All of SKI’s design, manufacturing, and sales operations are based in Korea. Celgard sued SKI for infringement. Celgard sought to establish the district court’s jurisdiction based on allegations that SKI purposefully directed activities at the forum state through sales and offers for sale of its accused separators to residents of North Carolina. The Federal Circuit affirmed dismissal for lack of personal jurisdiction, under either a purposeful-direction theory or a stream-of-commerce theory, noting an absence of evidence that SKI ever sold or offered for sale the accused products in North Carolina. View "Celgard, LLC v. SK Innovation Co., Ltd." on Justia Law

Intellectual Ventures owns the 137 patent, entitled “Administration of Financial Accounts,” claims methods of budgeting, particularly methods of tracking and storing information relating to a user’s purchases and expenses and presenting that information to the user based on pre-established, self-imposed spending limits. Its 382 patent, entitled “Advanced Internet Interface Providing User Display Access of Customized Webpages,” claims methods and systems for providing customized web page content to the user as a function of user-specific information and the user’s navigation history. The 587 patent, entitled “Method for Organizing Digital Images,” claims methods for scanning hard-copy images onto a computer in an organized manner. Intellectual Ventures sued, asserting infringement by Capital One. Following the district court’s claim construction of the term “machine readable instruction form” in the 587 patent, the parties stipulated to non-infringement. The district court also determined that the asserted claims of the 137 patent claimed ineligible subject matter and the asserted claims of the 382 patent claimed ineligible subject matter and were indefinite under 35 U.S.C. 112(b). The Federal Circuit affirmed, concluding that the asserted claims of the 137 and 382 patents claim unpatentable abstract ideas and that claim construction with respect to the 587 patent was correct. View "Intellectual Ventures I LLC v. Captal One Bank" on Justia Law

The Patent Act restores a patent’s term for delay during prosecution: “A Delay,” arises when the PTO fails to meet statutory deadlines; “B Delay,” arises when, through the fault of the PTO, the agency fails to issue a patent within three years after the application’s filing date, 35 U.S.C. 154(b). Until 2010, the PTO’s practice was to restore, upon issuance, patent term equaling the greater of the number of days of A and B Delays. In 2007, a patent-holder successfully challenged that practice. In response, the PTO adopted an “interim procedure” and an “optional interim” procedure for patents that issued before March, 2010, under which patentees could seek reconsideration up to 180 days after issuance, for adjustments made under the earlier calculation method. Daiichi claims that, in adjusting its patents, the PTO restored days for either the A or B Delay, but not both, so that the term of each was shortened by at least 321 days. The PTO dismissed Daiichi’s requests for reconsideration as untimely under the two-month window. The Federal Circuit affirmed summary judgment in favor of the PTO, declining to find that the consistent treatment of all patents issuing before the Optional Interim Procedure or use of the 180-day administrative review period arbitrary and capricious. View "Daiichi Sankyo Co. v. Lee" on Justia Law

TMC owns patents relating to the drug bivalirudin, a synthetic peptide anti-coagulant. TMC sells the drug for injection under the Angiomax® brand and, from 1997 to 2006, purchased pharmaceutical batches from BV Laboratories. In 2005, BV created batches of bivalirudin with levels of impurity that exceeded the FDA approved maximum. TMC hired a consultant, who discovered that certain methods of adding a pH-adjusting solution during the compounding process minimize the impurity. In 2008, TMC filed two patent applications, describing this discovery. A year before filing these applications, TMC hired BV to prepare batches of bivalirudin using the patented method. Each was released to TMC for commercial packaging. In 2010, TMC sued Hospira, alleging infringement by Hospira’s ANDA filings. The district court found the patents not infringed and not invalid as obvious, indefinite, or under the on-sale bar under 35 U.S.C. 102(b), which applies when, before the critical date, the claimed invention was the subject of a commercial offer for sale and was ready for patenting. The court found that the claimed invention was ready for patenting but not commercially offered for sale. The Federal Circuit reversed, finding that the batches prepared by BV were sold to TMC and not prepared primarily for experimental purposes. View "The Medicines Co v. Hospira, Inc." on Justia Law