Justia Patents Opinion Summaries

Lightning strikes and animal contacts can cause wires of the power grid to short. Such “low voltage events” can damage wind turbines, which previously disconnected from the grid during a low voltage event. As wind began providing a greater percentage of overall power, utilities began to require low voltage ride-through. GE’s 985 patent, directed to controlling components of a wind turbine that would allow it to remain connected to the grid and to safely ride through a low voltage event, names five co-inventors who were based in Germany. Wilkins is not named. Wilkins was involved in adapting wind turbines to meet certain requirements in the U.S. The German team consulted Wilkins for confirmation that their invention would work with U.S. grid. Wilkins left GE in 2002. The 985 patent is asserted by GE against Mitsubishi in several lawsuits. Mitsubishi challenged the validity of the patent and hired Wilkins, who worked 1,000 hours in an effort to invalidate the 985 patent. Mitsubishi also argued that the patent was unenforceable because GE intentionally failed to name Wilkins as a co-inventor. The administrative law judge found that Wilkins had co-invented the patent but that GE did not intend to deceive the PTO. Later, Wilkins asserted ownership rights in the 985 patent and another patent. Wilkins entered into additional agreements with Mitsubishi and was paid more than $1.5 million. GE sought to quiet title to the patents. Wilkins counterclaimed. After refusing to take an unqualified oath to tell the truth at his deposition, behavior that the court deemed “not acceptable,” Wilkins filed a declaration calling the court “ignorant.” The district court dismissed GE’s ownership claims as time-barred and held that Wilkins and Mitsubishi failed to establish that Wilkins co-invented any claim of the 985 patent. The Federal Circuit affirmed, noting that Wilkins had filed additional claims for malicious prosecution and abuse of process against GE and its counsel. View "Gen. Elec. Co. v. Wilkins" on Justia Law

The patent application, filed before the Leahy-Smith America Invents Act, replaced paragraph 2 of 35 U.S.C. 112 in 2012, covers a coin change holder, a plastic card with four channels on its surface for storing different types of coins. An examiner rejected the application for lack of adequate written description, claim indefiniteness, and obviousness. The inventor cancelled his original claims and substituted a new claims 28 through 37. The examiner, in his final rejection, found claims 28-33 and 37 invalid for lack of written description, claims 28-37 invalid for indefiniteness, and claims 28-37 invalid for obviousness. The examiner noted that, while the claims required that the card be attached to a wallet, this feature was not supported by the written description, and that several claim limitations failed to meet the requirements of 35 U.S.C. 112(b) because they lacked an antecedent basis or were otherwise unclear. The Patent Trial and Appeal Board affirmed the written description and indefiniteness rejections, reversing the obviousness rejection. With respect to indefiniteness, the Board applied the review standard of the Manual of Patent Examining Procedure section 2173.05(e). The Federal Circuit affirmed, rejecting an argument that the Board misapplied the standard of indefiniteness by determining that the claims “contain[ ] words or phrases whose meaning is unclear” and that, had the Board applied an “insolubly ambiguous” standard, those claims would not have been held indefinite.View "In re: Packard" on Justia Law

The 140 and 771 patents are directed to light-emitting diode (LED) string lights that include an LED, an insulated electrical conductor (wire), and an insulation displacement connector (IDC connector). Power must be provided from the insulated electrical conductor to the LEDs. To accomplish this, the patents disclose an IDC connector with terminals that are electrically connected to the LEDs and configured to displace a portion of the insulation surrounding the electrical conductor. GE sued AgiLight, for infringement. After claim construction, the parties stipulated to noninfringement of the 140 and 771 patents on the grounds that AgiLight’s products do not include an IDC connector as construed by the court. The district court entered partial summary judgment consistent with the stipulation and granted AgiLight summary judgment of noninfringement of the 896 and 055 patents. The Federal Circuit affirmed with respect to the 055 patent, but otherwise reversed and remanded.View "GE Lighting Solutions, LLC v. AgiLight, Inc." on Justia Law

Apple claimed infringement of 15 patents by Motorola. Motorola counterclaimed, asserting six of its own patents. The patents concern use of finger contacts to control a touchscreen computer. Both sought declaratory judgments of non-infringement and invalidity. Based upon its claim construction decisions, the district court granted summary judgment of non-infringement with respect to certain claims and excluded most of both parties’ damages expert evidence for remaining claims. With little admissible expert evidence, the court granted summary judgment that neither side was entitled to damages or an injunction. Despite infringement being assumed, the district court dismissed all claims with prejudice. With three Apple patents and three Motorola patents at issue, the Federal Circuit affirmed the claim construction decisions, with one exception. The district court mistakenly construed certain limitations as means-plus-function limitations. With one minor exception, the court reversed the decision to exclude damages evidence presented by both parties and the grant of summary judgment of no damages for infringement of Apple’s patents. Based on reversal of claim construction, the court vacated summary judgment regarding Apple’s request for an injunction. The court agreed that Motorola is not entitled to an injunction for infringement View "Apple Inc. v. Motorola, Inc." on Justia Law

AutoAlert sued Dominion, alleging infringement of five patents that claim systems and methods that involve alerting a car dealership when a new lease or sale opportunity seems a good fit for a past customer. After being served the complaint in that California action, Dominion timely petitioned the Director for inter partes reviews of the five patents under 35 U.S.C. 311-319. The district court stayed the case. The Patent Trial and Appeal Board denied the petition, deciding not to institute any of the requested inter partes reviews, for failure to show “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged.” Dominion filed in a Virginia district court, invoking jurisdiction under 28 U.S.C. 1331 & 1338 and seeking relief from the non-institution decision under the Administrative Procedure Act, 5 U.S.C. 701-706, the Declaratory Judgment Act, 28 U.S.C. 2201-2202, and a mandamus statute, 28 U.S.C. 1361. Dominion then sought a writ of mandamus in the Federal Circuit under 28 U.S.C. 1651, challenging the Director’s non-institution decision. The Federal Circuit denied relief, stating that the relevant statutory provisions make clear that it may not hear an appeal from the Director’s decision not to institute an inter partes review.View "In re: Dominion Dealer Solutions, LLC" on Justia Law

P&G owns patents that claim systems or methods for whitening teeth. P&G sued TT, alleging infringement of the three patents; in another district, Clio, which manufactured the accused products, sought a declaratory judgment action against P&G, alleging that the patents were invalid, unenforceable, or not infringed. In its declaratory-judgment action. P&G amended its complaint in the Ohio action to add Clio as a defendant. When TT and Clio then moved for a stay or a transfer to New Jersey, the Ohio district court denied both motions. The New Jersey district court dismissed Clio’s declaratory-judgment action there without prejudice. Clio then timely petitioned the PTO to institute inter partes reviews of the patents under 35 U.S.C. 311-319. P&G responded, arguing that Clio’s earlier declaratory judgment action involving the same three patents, though it had been voluntarily dismissed, barred the institution of inter partes reviews under section 315(a). The Patent Trial and Appeal Board disagreed and granted all three petitions, because 35 U.S.C. 315(a)(1) states: “An inter partes review may not be instituted if, before the date on which the petition for such a review is filed, the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent.” P&G sought a writ of mandamus under 28 U.S.C. 1651. The Federal Circuit denied the petition, stating that mandamus action is not available. View "In re: Procter & Gamble Co." on Justia Law

In 2010, St. Jude sued Volcano, alleging infringement of five patents. Volcano counterclaimed, asserting infringement of the 994 patent. More than two years later, the district court, based on the stipulations of the parties, dismissed all claims relating to the 994 patent. Six months after the dismissal, St. Jude sought inter partes review of the 994 patent. The Director of the U.S. Patent & Trademark Office, through the Board, denied the petition, stating that a counterclaim alleging infringement constitutes a “complaint alleging infringement of the patent” under 35 U.S.C. 315(b), which bars institution of an inter partes review of a patent if the petitioner was served with a complaint alleging infringement of the patent more than one year before filing the petition. Accordingly, the 2010 counterclaim against St. Jude barred the Director from instituting an inter partes review. The Federal Circuit dismissed, based on the structure of the inter partes review provisions, on the language of section 314(d) within that structure, and on its jurisdictional statute read in light of those provisions.View "St. Jude Medical, Cardiology Div., Inc. v. Volcano Corp." on Justia Law

Vaillancourt obtained ownership of the 221 patent from his mother through an assignment recorded with the PTO in 2011. Vaillancourt represents that the assignment took effect in 2005. In 2010, BD requested an inter partes reexamination of the 221 patent. During the reexamination proceedings, Vaillancourt added claims 21 through 37 to the original 20 claims. The patent examiner rejected all 37 claims. While an appeal was pending, Vaillancourt assigned to VLV “the entire right, title and interest in and to” the 221 patent, “including full and exclusive rights to sue upon and otherwise enforce” the patent. VLV sued BD for infringement in its own name and did not join Vaillancourt. The Board subsequently affirmed all of the examiner’s rejections. Despite no longer being the owner of the patent, Vaillancourt unsuccessfully requested rehearing in his own name. Vaillancourt appealed to the Federal Circuit, identifying himself in the notice of appeal as both the patent owner and appellant. BD moved to dismiss for lack of jurisdiction. The Federal Circuit ultimately dismissed for lack of standing.View "Vaillancourt v. Becton Dickinson & Co." on Justia Law

Braintree manufactures the SUPREP® Bowel Prep Kit, which helps to prepare patients for colonoscopies. In the late 1990s, two colon cleansing options existed; the safest required patients to drink large volumes of unappetizing isotonic prep formulas, resulting in low patient compliance, and a low-volume, hypertonic prep that could cause severe electrolyte shifts, leading to heart failure, kidney failure, neurological impairment, and even death. Braintree’s patent discloses a combination of magnesium sulfate, potassium sulfate, and sodium sulfate, which can be digested in small volumes to safely and effectively induce colonic purging without causing clinically significant electrolyte shifts. Novel filed an abbreviated new drug application (ANDA) and Braintree responded with a patent infringement case (Hatch- Waxman Act, 35 U.S.C. 271(e)(2)(A). The district court granted summary judgment of infringement based on its construction of four disputed claim terms. The Federal Circuit affirmed a finding Braintree’s patent not invalid, but reversed with respect to construction of the claim term “clinically significant electrolyte shifts” and vacated with respect to infringement.View "Braintree Labs, Inc. v. Novel Labs, Inc." on Justia Law

Gilead owns patents directed to antiviral compounds and methods for their use. The 375 and 483 patents list the same inventors and their written descriptions disclose similar content, but they do not claim priority to a common application and have different expiration dates. Gilead sued Natco for infringement of the 483 patent after Natco filed an FDA request for approval to market a generic version of one of Gilead’s drugs that is allegedly covered by the 483 patent. Natco asserted that the 483 patent was invalid for obviousness-type double patenting over the 375 patent. Gilead argued that the 375 patent cannot serve as a double patenting reference against the 483 patent because, even though the 483 patent’s expiration date is 22 months after the 375 patent’s expiration date, the 375 patent issued after the 483 patent. The district court, pursuant to a stipulation, granted Gilead final judgment on infringement. The Federal Circuit vacated and remanded. Because the obviousness-type double patenting doctrine prohibits an inventor from extending his right to exclude through claims in a later-expiring patent that are not patentably distinct from the claims of the inventor’s earlier-expiring patent, the 375 patent qualifies as an obviousness-type double patenting reference for the 483 patent. View "Gilead Sciences, Inc. v. Natco Pharma. Ltd." on Justia Law