Justia Patents Opinion Summaries

The USDA, owner of the patents on the table grape varieties Scarlet Royal and Autumn King, has exclusively licensed the patents to the California Table Grape Commission, which sublicenses to California grape growers and collects royalties that are shared by the Commission and the USDA. The licensing agreements require the growers to pay a royalty on grapes produced and prohibit the growers from propagating the plants. Growers who purchased grapevines covered by the patents, signed license agreements, and paid the fee, challenged the validity and enforceability of the patents, and the conduct of the Commission and the USDA in licensing and enforcing the patents. They argued that the grape varieties were in public use more than one year before the applications for both patents were filed, and that the patents are invalid under 35 U.S.C. 102(b). After the Federal Circuit held that the Administrative Procedure Act waives sovereign immunity for purposes of such an action against the USDA, the district court held that the actions of two individuals who obtained samples of the plants in an unauthorized manner and planted them in their own fields did not constitute an invalidating public use of the plant varieties. The Federal Circuit affirmed. View "Delano Farms Co. v. Cal. Table Grape Comm'n" on Justia Law

Fleming owns two reissue patents (35 U.S.C. 251) relating to radar for detecting police signals. They claim methods for incorporating, and apparatuses that incorporate, a GPS unit to reduce false alarms by allowing the detector to disregard signals from an identified location known to produce false alarms (e.g., a storefront door opener). Fleming sued Escort for infringement. Escort argued anticipation and obviousness under 35 U.S.C. 102(g); 103, claiming that Orrinvented a GPS-incorporating radar detector before Fleming. Fleming’s claimed priority date is 1999—the filing date of his original patent application. Orr alleged that he conceived his invention in 1988 and made a working embodiment that reduced it to practice in 1996. Orr’s then-employer owned the potential patent rights; that employer entered bankruptcy in 1997. With Orr’s assistance, Escort acquired its assets, including potential patent rights. Orr began working at Escort in 1998. He filed a patent application, with Escort as assignee, two months after Fleming filed his application. The jury found most of Fleming’s claims to be infringed and not invalid. It found invalidity as to five claims and invalidated two claims as anticipated. The Federal Circuit affirmed, rejecting an argument that all of the claims were invalid because Fleming did not meet the “error” precondition for obtaining reissue. View "Fleming v. Escort, Inc." on Justia Law

CET owns the asserted patents, which share substantially the same specification. The four patents contain a total of 242 claims. The claims generally recite a method of extracting data from hard copy documents using an automated digitizing unit such as a scanner, recognizing specific information from the extracted data, and storing that information in a memory. This method can be performed by software on an automated teller machine (ATM) that recognizes information written on a scanned check, such as the check’s amount, and populates certain data fields with that information in a computer’s memory. CET asserted infringement by banking entities. Diebold, the manufacturer of ATMs used by the banking entities, sought a declaratory judgment that its ATMs did not infringe CET’s asserted patents and that CET’s patents were invalid and sought injunctive and monetary relief for tortious interference and violations of the Racketeer Influenced and Corrupt Organizations Act (RICO) arising from CET’s act of filing allegedly baseless infringement suits against its customers. The district court dismissed CET’s infringement action, holding that the claims of the asserted patents are invalid as patent-ineligible under 35 U.S.C. 101 and dismissed Diebold’s claims. The Federal Circuit affirmed. View "Content Extraction & Transmission, LLC v. Wells Fargo Bank" on Justia Law

Aqua Shield’s 160 patent claims enclosures designed to cover pools or create sun rooms, consisting of arched sections that can slide over or under one another to enclose or expose the encompassed area as desired. Aqua Shield sued, alleging that IPC, by importing and selling pool enclosures, was infringing claims 1–16 of the patent. The district court denied a requested preliminary injunction because Aqua Shield lacked information needed to show a likelihood of success on the merits and because of questions about personal jurisdiction over the defendants. Eventually, the court entered summary judgment that IPC infringed and that no claim was invalid, awarded damages in the form of a royalty of $10,800, and held that IPC had not been willful in its infringement. The Federal Circuit remanded after vacating the royalty award, the non-willfulness finding, and denial of enhanced damages and attorney’s fees. The court noted the lack of proof that this case is different from the typical one in which pricing might be adjusted to account for a royalty based on sales price. IPC has not pointed to any evidence supporting the district court’s conclusion that a royalty should be a percentage of profits rather than sales revenues. View "Aqua Shield v. Interpool Pool Cover Team" on Justia Law

Stryker’s patents concern pulsed lavage devices that deliver pressurized irrigation for medical therapies, including cleaning wounds. In 1993 Stryker applied for the patents and began to market portable, battery powered, handheld devices. They include suction and discharge tubes. Older systems required a central power source and external mechanical pumps and needed to be wheeled around the hospital. The patents issued in 2000, 2001 and 2006. Zimmer introduced its first portable pulsed lavage device in 1996; its Pulsavac Plus achieved $55 million in annual sales in 2007. Stryker sued Zimmer. The district court found infringement of two patents. The jury found infringement of one claim 2 of the third patent; that all the asserted claims were valid; that Zimmer had willfully infringed all three patents; and that Stryker had marked substantially all of its products that commercially embodied the patents during the period it sought damages, under 35 U.S.C. 287(a). The court awarded $70 million in lost profits plus attorneys’ fees, and imposed an injunction. The Federal Circuit affirmed that the patents were valid and infringed, and the award of damages, but reversed the judgment that infringement was willful and vacated the award of treble damages and award of attorneys’ fees. View "Stryker Corp. v. Zimmer, Inc." on Justia Law

Plaintiffs own patents relating to the BRCA1 and BRCA2 genes, mutations of which are linked to hereditary breast and ovarian cancers. In prior litigation, the Supreme Court held that claims of one of the patents were drawn to patent-ineligible subject matter because the isolated DNA strands were natural phenomena. Generic competitors entered the market for kits to test for susceptibility to particular kinds of cancer. Plaintiffs sought a preliminary injunction, alleging infringement of 66 claims across 15 patents. The district court denied a preliminary injunction. The four composition of matter claims on appeal are directed to primers, which are “short, synthetic, single-stranded DNA molecule[s] that bind[] specifically to . . . intended target nucleotide sequence[s].” The court held these were likely patent ineligible because they claim “products of nature.” The method claims on appeal involve comparisons between the wild-type BRCA sequences with the patient’s BRCA sequences. The court reasoned that these were likely ineligible because the only “inventive concepts” are the patent-ineligible naturally occurring BRCA1 and BRCA2 sequences themselves; the other steps are conventional activities, uniformly employed by those working with DNA. The Federal Circuit affirmed, finding that the claims are directed to ineligible subject matter under 35 U.S.C. 101. View "Univ. of Ut. Research Found. v. Ambry Genetics Corp." on Justia Law

ABB designs, produces, and sells exhaust-gas turbochargers and turbocharger parts, primarily for use in large, ocean-going vessels and in power plants. In 2012, ABB filed suit, accusing TurboUSA, Inc., and TurboNed Service B.V. of infringing two of ABB’s turbocharger-related patents. Claiming that the infringement was willful, ABB alleged that its former employee had improperly obtained and transferred to TurboUSA confidential information relating to ABB parts embodying its patented inventions. After filing its original complaint, ABB received information that, it alleges, suggested that Hans Franken, who worked for ABB until 1986 and is TurboNed’s former owner and TurboUSA’s current indirect owner, and his son Willem, who is TurboUSA’s current president, collaborated in the covert misappropriation of ABB’s trade secrets concerning the design, manufacture, servicing, and pricing of ABB’s turbochargers and parts, and added claims of misappropriation of trade secrets under Fla. Stat. 688.001–688.009 and of civil conspiracy to misappropriate trade secrets. Before discovery, the district court dismissed for failure to state a claim. The Federal Circuit reversed, concluding that the court relied on judgments about the merits that go beyond what is authorized at the complaint stage. View "ABB Turbo Sys. AG v. TurboUSA, Inc." on Justia Law

The patents at issue relate DNA testing, specifically to multiplex amplification of short tandem repeat (STR) loci and claim methods or kits for simultaneously determining the alleles present in a set of STR loci from DNA samples, comprising: obtaining a DNA sample; selecting a set of loci of the DNA sample to amplify, including at least the specific loci recited in the claim; co-amplifying the selected loci in a multiplex amplification reaction; and evaluating the amplified alleles to determine the number of STR present at each loci. The district court entered judgment that the asserted claims were not invalid for lack of enablement and obviousness and that certain accused products did not infringe either the Promega patents the Tautz patent, vacating a verdict of damages and willful infringement. The Federal Circuit held that LifeTech was not licensed for all uses of the asserted patents under an agreement with Promega and, therefore, reversed with respect to infringement (under 35 U.S.C. 271(a) and 35 U.S.C. 271(f)(1)), and remanded for determination of damages. The Federal Circuit held that the asserted claims of the Promega patents are invalid for lack of enablement. View "Promega Corp. v. Life Tech. Corp." on Justia Law

The 187 patent was assigned to the Foundation in February, 2001. In October, the Foundation’s attorney, responsible for prosecution of the patent filed a statutory disclaimer (37 C.F.R. 1.321(a)), for the entire term of all claims and requesting that it be duly recorded. In December, that attorney sought (37 C.F.R. 1.182) to withdraw the disclaimer, stating that it was not filed in the context of litigation or an assertion of double patenting, and had not yet been made public or entered into the PTO’s Patent Application Information Retrieval (PAIR) database or paper prosecution file. The PTO denied the petition, stating that mechanisms available to correct a patent “are not available to withdraw or otherwise nullify the effect of a recorded terminal disclaimer.” The disclaimer appeared on PAIR. The Foundation sought reconsideration, referencing “newly discovered evidence” that the disclaimer was unauthorized. The PTO denied the petition. The district court directed PTO “to withdraw the disclaimer, absent a finding that the Foundation actually authorized its filing.” The Federal Circuit reversed. PTO did not abuse its discretion in declining to use any inherent authority that it might have in withdrawing a disclaimer that the attorney of record filed in accordance with PTO regulations. View "Japanese Found. for Cancer Research v. Lee" on Justia Law

In 1997, Memorylink’s founders approached Motorola about jointly developing a handheld camera that could wirelessly transmit and receive video signals. After a successful demonstration, they sent Motorola a letter, agreeing “that any patents would be jointly owned by Motorola and Memorylink,” agreeing that Motorola should “head up the patent investigation,” and providing a “Wireless Multimedia Core Technology Overview for Patent Review” Motorola’s attorney sent a letter concerning the patent applications, stating an understanding that the inventors were Memorylink’s founders and Motorola employees Schulz and Wyckoff. A proposed patent filing agreement was enclosed. The named inventors signed an invention disclosure and an Assignment of rights to Motorola and Memorylink. Memorylink sued Motorola in 2008, alleging patent infringement and torts sounding in fraud, and seeking a declaration that the Assignment was void for lack of consideration. The district court rejected Memorylink’s argument that its claims did not accrue until an inventorship problem was discovered and dismissed most claims, reasoning that Memorylink should have known that the Motorola employees were not co-inventors in 1998, so that its claims were untimely. The court found that the consideration issue was a contract claim, not time-barred, but granted Motorola summary judgment. The Federal Circuit affirmed. View "Memorylink Corp. v. Motorola Solutions, Inc." on Justia Law