Justia Patents Opinion Summaries

LG took a license from Wi-LAN’s predecessor for a patent concerning V-chip technology for ratings-based blocking of television programs. LG subsequently claimed that it owed no royalties because its televisions did not practice Wi-LAN’s technology. Wi-LAN forwarded to LG a letter written by outside counsel (Townsend), naming Wi-LAN’s general counsel and vice president, as addressee. It was marked “CONFIDENTIAL” and contained analysis of Wi-LAN’s patent rights as applied to LG’s technology, opining that LG was practicing Wi-LAN’s technology and owed royalties. Wi-LAN’s disclosure of the letter was an intentional effort to convince LG to revise its position and pay royalties. Wi-LAN later sued for patent infringement, identifying Townsend as litigation counsel. LG served a subpoena on Townsend for documents and testimony relating to the subject matter of the letter, claiming that any privilege was absolutely waived by voluntary disclosure of the letter. Townsend unsuccessfully argued that any waiver should be limited to the letter. The district court found Townsend in contempt, and entered sanctions in the amount of LG’s costs and fees. The Federal Circuit vacated and remanded. The district court erred by rejecting considerations of fairness: whether LG would be unfairly prejudiced by assertion of privilege beyond the four corners of the letter. View "Wi-LAN, Inc. v. LG Elecs., Inc." on Justia Law

In 2004, Loughlin filed application 624, which issued in 2008, as the 426 patent. In 2007, Ling filed the 404 application, which was granted priority benefit under 35 U.S.C. 120, from application 413, filed in January, 2004. All claim a “multiple function lock.” Ling, seeking to provoke an interference, copied claims from pending application 624. In 2010, the Patent and Trademark Office declared an interference between claim 1 of the 426 patent and claim 31 of Ling’s 404 application. Loughlin asserted that, under 35 U.S.C. 135(b)(2), Ling was barred from provoking an interference because Ling’s attempt to copy the claim from Loughlin’s published application was untimely; Ling’s 404 application is “an application filed” after the publication date of Loughlin’s 624 application and Ling copied Loughlin’s claim more than one year after its publication date. The Board denied Loughlin’s motion, finding that the bar does not apply to an application filed before a published application. Ling’s 404 application, having an effective filing date of January 2004, was not an application filed after Loughlin’s application, published November 2004. The Board cancelled claim 1 of the 426 patent. The Federal Circuit affirmed. View "Loughlin v. Ling" on Justia Law

A subsidiary of Marathon hired Preston as a relief pumper in Marathon’s coal bed methane well operation. After beginning work, Preston signed an Employee Agreement containing the assignment at issue. Later, Preston worked with Marathon Engineer Smith on a baffle system to improve machinery used to extract methane gas from water-saturated coal in a coal bed methane gas well. Marathon installed the system on wells. After Preston’s employment ended, both Marathon and Preston pursued patents. The district court declared that Preston is the sole inventor of one patent and that Smith was misjoined as an inventor; ordered the PTO to issue a new certificate reflecting Preston as the sole inventor; declared Marathon the owner of other patents pursuant to the employment agreement and that Preston breached the agreement for failing to assign his rights. The court entered summary judgment in favor of Marathon on its shop right claim, finding that, even if Marathon did not own the patents, it had a shop right to practice the inventions. The Federal Circuit affirmed that Preston assigned his rights in two inventions to Marathon pursuant to his employment agreement. Because that assignment was automatic, there was no breach of that agreement. View "Preston v. Marathon Oil Co." on Justia Law

RTI owns patents relating to the automatic routing of telephone calls based upon cost. Aware of infringement by Speakeasy, a telecommunications company, RTI offered to release Speakeasy from liability in exchange for a one-time payment under RTI’s tiered pricing structure. In 2007, the companies entered a “Covenant Not to Sue” with a payment of $475,000 to RTI, and a provision barring Speakeasy from challenging, or assisting others in challenging, the validity of the patents. The agreement defined “Speakeasy” to include both Speakeasy and Best Buy, which had previously announced plans to acquire Speakeasy. Three years later, Best Buy announced a plan to sell Speakeasy and merge it into Covad. RTI again learned of an infringement and notified Covad. Covad sought a declaratory judgment that the patents were invalid. The action was later dismissed voluntarily. RTI initiated the present lawsuit. The district court dismissed, holding that the doctrine of licensee estoppel, under which a licensee of intellectual property “effectively recognizes the validity of that property and is estopped from contesting its validity,” is unenforceable in the context of challenges to patents, and that the no-challenge clause was contrary to the public interest in litigating the validity of patents. The Second Circuit affirmed. View "Rates Tech. Inc. v. Speakeasy, Inc." on Justia Law

Alice Corporation owns three patents covering a computerized trading platform for exchanging obligations in which a trusted third party settles obligations between a first and second party so as to eliminate “settlement risk.” Settlement risk is the risk that only one party’s obligation will be paid, leaving the other party without its principal. The trusted third party eliminates this risk by either exchanging both parties’ obligations or exchanging neither obligation. CLS sought a declaration of invalidity; Alice counterclaimed infringement. The district court ruled in favor of CLS, holding that each asserted claim of the four patents is invalid for failure to claim patent eligible subject matter. The Federal Circuit reversed. The system, method, and media claims at issue are not drawn to mere “abstract ideas” but are directed to practical applications of invention falling within the categories of patent eligible subject matter defined by 35 U.S.C. 101. View "CLS Bank Int'l v. Alice Corp. Pty. Ltd." on Justia Law

Lupin submitted an Abbreviated New Drug Application (ANDA) to the Food and Drug Administration seeking approval to market a generic version of Fortamet, an extended-release tablet of metaformin hydrochloride. Shionogi, which markets Fortamet, sued Lupin for patent infringement under 35 U.S.C. 271(e)(2)(A) asserting, among others, the 866 patent), which is listed in the Approved Drug Products with Therapeutic Equivalence Evaluations (Orange Book) entry for Fortamet. Lupin attempted to launch its generic Fortamet “at risk,”( without a final judgment on the merits in the litigation). Shionogi obtained a preliminary injunction. The Federal Circuit vacated and remanded. The district court incorrectly concluded that Lupin failed to raise a substantial question of validity regarding the asserted claims of the 866 patent, an abused its discretion by issuing a preliminary injunction. View "Sciele Pharma Inc. v. Lupin, Ltd." on Justia Law

In 2006 the inventor submitted a utility patent application entitled “Crossbar Arithmetic Processor,” disclosing a computing device for processes such as addition, subtraction, multiplication, and division using nanoscale materials in a crossbar array. The examiner rejected all claims. The Board of Patent Appeals and Interferences affirmed under 35 U.S.C. 103(a). The Federal Circuit affirmed. Substantial evidence supports the conclusion that the claimed invention would have been obvious to one having ordinary skill in the art. View "In re: Mouttet" on Justia Law

Wrigley and Cadbury compete in selling chewing gum that provides a cooling sensation. Historically, gum makers have achieved that sensation with menthol. Menthol has disadvantages, including a strong peppermint flavor and bitterness in high concentrations. WS-3 and WS-23 are alternative coolants: Cadbury owns the 893 patent, claiming a combination of menthol with WS-3. Wrigley owns the 233 patent, claiming menthol with WS-23. After Cadbury introduced its WS-3/menthol gum, Wrigley introduced a gum with menthol and WS-23. Cadbury then reformulated its products. Cadbury’s reformulated gum contained both WS-23 and menthol. Wrigley sued, accusing Cadbury of infringing the 233 patent. Cadbury counterclaimed, accusing Wrigley of infringing the 893 patent. The district court granted Wrigley summary judgment of noninfringement. Addressing Cadbury’s summary judgment motion, the district court concluded that claim 34 of the 233 patent was invalid for anticipation and obviousness. The Federal Circuit affirmed. The inventors were on notice of potential interchangeability of WS-23 and WS-3, but drafted claims of the 893 patent narrowly to recite certain N-substituted-p-menthane carboxamides, not a broader category of carboxamides that would include WS-23. The trial court properly held that Cadbury could not expand the coverage of its patent to include WS-23 through the doctrine of equivalents. View "Wm. Wrigley Jr. Co. v. Cadbury Adams USA, LLC" on Justia Law

Once a user records all of the data on the DVD, the user may choose to "finalize" the DVD. A recordable DVD can be played in the drive in which it was recorded without finalization, but not on other recorders or conventional DVD players. A finalized DVD can be played on any standardized DVD player or drive. Toshiba accused defendants of infringing claims patents related to optical disc technology. The district court granted summary judgment for defendants, concluding that the use of unfinalized DVDs was a substantial non-infringing use and that both theories of indirect infringement – contributory and inducing infringement – fail if there are any substantial non-infringing uses. The Federal Circuit affirmed in part and vacated in part. The district court correctly granted summary judgment of non-infringement as to contributory infringement of the asserted claims of one patent, but erred in granting summary judgment of non-infringement as to induced infringement of the asserted claims of that patent and in granting summary judgment of non-infringement of the other patent based on an erroneous claim construction. View "Toshiba Corp. v. Imation Corp." on Justia Law

R+L, owns a patent relating to the less-than-a-load trucking industry and uses the patented method in its business. Carriers in the industry pick up freight from several different customers, often destined for different locations around the country. Freight is taken to a terminal where it is unloaded from the truck and consolidated with other freight headed in the same direction, then reloaded. The patent claims a method that “automates the process of receiving transportation documentation and producing advance loading manifests therefrom to optimize load planning and dynamic product shipment and delivery control.” The patented method enables shipping documents to be sent directly from the truck driver to a common point, such as a terminal, so billing and load planning can occur while the driver is en route with the freight. In 2008, R+L sent cease-and-desist letters to defendants, suspecting infringement. Defendants sought declaratory judgments of invalidity and non-infringement; R+L counterclaimed. The district court ruled against R+L. The Federal Circuit affirmed in part and reversed in part. R+L failed to state a claim of contributory infringement, but adequately stated a claim of induced infringement View "R&L Carriers, Inc. v. Drivertech, LLC" on Justia Law