Justia Patents Opinion Summaries

C.R. Bard, Inc. (Bard), a medical device company, held patents on a vascular graft and entered into a licensing agreement with Atrium Medical Corporation (Atrium) to settle a patent infringement lawsuit. The agreement required Atrium to pay Bard a 15% per-unit royalty on U.S. sales until the U.S. patent expired in 2019 and on Canadian sales until the Canadian patent expired in 2024. Additionally, Atrium was to pay a minimum royalty of $3.75 million per quarter until the FDA approved the iCast stent for vascular use or rescinded its approval for all uses. Atrium ceased minimum royalty payments after the U.S. patent expired, leading Bard to sue for breach of contract.The United States District Court for the District of Arizona held a bench trial and found that the minimum royalty provision was primarily intended to compensate Bard for U.S. sales, thus constituting patent misuse under Brulotte v. Thys Co. The court concluded that the provision violated Brulotte because it effectively extended royalties beyond the patent's expiration based on the parties' motivations during negotiations.The United States Court of Appeals for the Ninth Circuit reversed the district court's judgment. The appellate court clarified that the Brulotte rule requires examining whether a contract explicitly provides for royalties on the use of a patented invention after the patent's expiration. The court held that the licensing agreement did not violate Brulotte because it provided for U.S. royalties only until the U.S. patent expired and Canadian royalties until the Canadian patent expired. The minimum royalty payments were not tied to post-expiration use of the U.S. patent but were instead based on Canadian sales, which continued to be valid under the Canadian patent. The Ninth Circuit concluded that the district court erred by considering the parties' subjective motivations and reversed the judgment for Atrium on Bard’s breach of contract claim. View "C.R. BARD, INC. V. ATRIUM MEDICAL CORPORATION" on Justia Law

The plaintiff, Realtime Adaptive Streaming LLC, sued DISH and related Sling entities for alleged infringement of three patents related to digital data compression. The district court found the asserted claims of one patent ineligible as abstract under 35 U.S.C. § 101. Defendants filed motions to dismiss and for judgment on the pleadings, which the district court denied, opting to rehear invalidity arguments after claim construction. The district court later stayed the case pending inter partes review (IPR) proceedings, which resulted in some claims being found unpatentable. The stay was lifted after the IPR proceedings concluded, and the district court eventually granted summary judgment of invalidity for the remaining patent claims.The United States District Court for the District of Colorado awarded attorneys’ fees to the defendants, citing six "red flags" that should have warned Realtime that its case was flawed. These included prior court decisions finding similar claims ineligible, Board decisions invalidating related patent claims, non-final office actions rejecting claims in the reexamination of the patent at issue, a notice letter from DISH warning of potential fees, and expert opinions from DISH’s witness. The district court found that the totality of these circumstances rendered the case exceptional.The United States Court of Appeals for the Federal Circuit reviewed the district court’s decision and vacated the award of attorneys’ fees. The appellate court found that some of the red flags cited by the district court should not have been given weight, such as the Adaptive Streaming decision and the Board’s decisions on different patents. The court also noted that the district court failed to adequately explain how certain factors, like the notice letter and expert opinions, constituted red flags. The case was remanded for the district court to reconsider the attorneys’ fees award in light of the appellate court’s findings. View "REALTIME ADAPTIVE STREAMING LLC v. SLING TV, L.L.C. " on Justia Law

Platinum Optics Technology Inc. (PTOT) appealed a final written decision from the Patent Trial and Appeal Board (PTAB) regarding U.S. Patent No. 9,354,369, owned by Viavi Solutions Inc. The patent relates to optical filters with specific properties of hydrogenated silicon. PTOT challenged the patent's claims, arguing they were unpatentable due to obviousness based on prior art references. The PTAB ruled against PTOT, finding that the prior art did not render the claims unpatentable.Previously, Viavi had sued PTOT for patent infringement in two cases in the Northern District of California. The claims related to the '369 patent were dismissed with prejudice in both cases. PTOT then petitioned for inter partes review (IPR) of the '369 patent, leading to the PTAB's decision that PTOT failed to prove the claims were unpatentable.The United States Court of Appeals for the Federal Circuit reviewed the case. PTOT argued it had standing to appeal based on potential future infringement liability from continuing to supply bandpass filters and developing new models. However, the court found PTOT's arguments speculative and insufficient to establish an injury in fact. The court noted that the previous lawsuits were dismissed with prejudice, and PTOT did not provide concrete plans or specific details about new products that might infringe the '369 patent.The Federal Circuit dismissed the appeal, concluding that PTOT failed to demonstrate a substantial risk of future infringement or a likelihood that Viavi would assert a claim of infringement. Therefore, PTOT did not have standing to appeal the PTAB's decision. View "PLATINUM OPTICS TECHNOLOGY INC. v. VIAVI SOLUTIONS INC. " on Justia Law

The case involves a dispute over the validity of several patents related to the drug eluxadoline, marketed as Viberzi®, which is used to treat irritable bowel syndrome with diarrhea (IBS-D). Allergan USA, Inc. and its affiliates (collectively, "Allergan") hold patents for the drug and its formulations. Sun Pharmaceutical Industries Limited and MSN Laboratories Private Ltd. (collectively, "Sun") sought to market a generic version of Viberzi, leading to litigation over the validity of Allergan's patents.The United States District Court for the District of Delaware held a three-day bench trial and found that claim 40 of U.S. Patent 7,741,356 (the '356 patent) was invalid for obviousness-type double patenting (ODP) over claims in two later-filed, later-issued patents (the '011 and '709 patents). The district court also found that the claims of four other patents (the '179, '291, '792, and '516 patents) were invalid under 35 U.S.C. § 112 for lack of written description, as they did not adequately describe formulations without a glidant.The United States Court of Appeals for the Federal Circuit reviewed the case. The court reversed the district court's determination that claim 40 of the '356 patent was invalid for ODP, holding that a first-filed, first-issued, later-expiring claim cannot be invalidated by a later-filed, later-issued, earlier-expiring reference claim with a common priority date. The court also reversed the district court's finding that the asserted claims of the '179, '291, '792, and '516 patents lacked written description, concluding that the specification reasonably conveyed to a person of ordinary skill in the art that the inventors had possession of a formulation without a glidant.The Federal Circuit's main holdings were that claim 40 of the '356 patent is not invalid for ODP and that the asserted claims of the '179, '291, '792, and '516 patents satisfy the written description requirement of 35 U.S.C. § 112. The court reversed the district court's judgment of invalidity and remanded the case for further proceedings. View "Allergan USA, Inc. v. MSN Laboratories Private LTD." on Justia Law

Celanese International Corporation, Celanese (Malta) Company 2 Limited, and Celanese Sales U.S. Ltd. (collectively, “Celanese”) filed a petition with the United States International Trade Commission (the “Commission”), alleging that Anhui Jinhe Industrial Co., Ltd., Jinhe USA LLC (collectively, “Jinhe”), and other entities violated 19 U.S.C. § 337 by importing Ace-K (an artificial sweetener) made using a process that infringed Celanese’s patents. The patents in question had an effective filing date of September 21, 2016. It was undisputed that Celanese had sold Ace-K made using the patented process in the United States before the critical date of September 21, 2015.The presiding Administrative Law Judge (ALJ) granted Jinhe’s motion for a summary determination of no violation of 19 U.S.C. § 337, concluding that Celanese’s prior sales triggered the on-sale bar under 35 U.S.C. § 102(a)(1). The ALJ found that the America Invents Act (AIA) did not overturn settled pre-AIA precedent, which held that sales of products made using a secret process could trigger the on-sale bar, precluding the patentability of that process. The Commission denied Celanese’s petition for review, making the ALJ’s decision the final decision of the Commission.The United States Court of Appeals for the Federal Circuit reviewed the case and affirmed the Commission’s decision. The court held that the AIA did not alter the pre-AIA rule that a patentee’s sale of an unpatented product made according to a secret method triggers the on-sale bar to patentability. The court concluded that Celanese’s pre-2015 sales of Ace-K made using its secret process triggered the on-sale bar, rendering the later-sought patent claims on that process invalid. View "CELANESE INTERNATIONAL CORPORATION v. ITC " on Justia Law

The case involves Mobile Acuity Ltd. ("Mobile Acuity") and several Blippar entities ("Blippar"). Mobile Acuity owns U.S. Patent Nos. 10,445,618 and 10,776,658, which disclose methods and devices for storing information that can be accessed using a captured image. Mobile Acuity alleged that Blippar infringed these patents by using similar technology. The patents describe a process where a user captures an image, uploads it to a server, and associates information with the image. Another user can later access this information by capturing a similar image.The United States District Court for the Central District of California dismissed Mobile Acuity's patent infringement action, ruling that the asserted patents claimed ineligible subject matter under 35 U.S.C. § 101. The court found that the patents were directed to the abstract idea of leaving information at a location or object for future use or reference and did not contain an inventive concept that would transform the abstract idea into a patent-eligible application. The court also denied Mobile Acuity's request to amend its complaint, concluding that any amendment would be futile.The United States Court of Appeals for the Federal Circuit reviewed the case and affirmed the district court's decision. The appellate court agreed that the claims were directed to an abstract idea and lacked an inventive concept. The court noted that the claims involved generalized steps of collecting, analyzing, and presenting information using conventional computer components, which are not patent-eligible. The court also upheld the district court's denial of Mobile Acuity's motion for leave to amend, finding that the proposed amendments would not cure the defects in the complaint. Thus, the dismissal of the patent infringement action was affirmed. View "MOBILE ACUITY LTD. v. BLIPPAR LTD. " on Justia Law

Voice Tech Corporation owned U.S. Patent No. 10,491,679, which relates to using voice commands on a mobile device to remotely access and control a computer. Unified Patents, LLC petitioned for inter partes review (IPR) of claims 1–8 of the patent, arguing they were unpatentable under 35 U.S.C. § 103 for obviousness. The Patent Trial and Appeal Board (Board) found all challenged claims unpatentable based on prior art references Wong and Beauregard.The Board's decision was appealed by Voice Tech. The Board had previously determined that the combination of Wong and Beauregard disclosed all the limitations of the challenged claims, including the "audio command interface" and "mobile device interface." Voice Tech argued that the Board misinterpreted these terms and that the prior art did not teach the claimed limitations. The Board, however, found that Wong’s speech recognition engine and Beauregard’s command interpreter taught the necessary elements.The United States Court of Appeals for the Federal Circuit reviewed the case. The court held that Voice Tech did not forfeit its claim construction arguments by not raising them in its request for rehearing. However, the court found that the Board's constructions and findings were supported by substantial evidence. The court agreed with the Board that the prior art disclosed the "receiving," "decodes," and "deciding/selecting" limitations of the claims. The court also rejected Voice Tech's argument that the Board's decision was based on hindsight bias, finding that the Board had properly considered the motivation to combine the prior art references.The Federal Circuit affirmed the Board's decision, holding that all challenged claims of the '679 patent were unpatentable as obvious over the prior art. View "VOICE TECH CORP. v. UNIFIED PATENTS, LLC " on Justia Law

Sanho Corporation appealed a decision by the Patent Trial and Appeal Board (PTAB) that found all challenged claims of U.S. Patent No. 10,572,429 unpatentable as obvious. The PTAB's decision relied on U.S. Patent Application Publication No. 2018/0165053 (Kuo) as prior art. Sanho argued that Kuo should not be considered prior art under 35 U.S.C. § 102(b)(2)(B) because the inventor of the '429 patent had publicly disclosed the relevant subject matter before Kuo's effective filing date through the private sale of a product called HyperDrive.The PTAB concluded that the private sale of the HyperDrive did not qualify as a public disclosure under § 102(b)(2)(B), and therefore, Kuo was considered prior art. The PTAB found that Sanho failed to show that the inventor publicly disclosed the subject matter of Kuo before Kuo's effective filing date. Consequently, the PTAB determined that all challenged claims of the '429 patent were unpatentable as obvious based on combinations that included Kuo.The United States Court of Appeals for the Federal Circuit reviewed the PTAB's decision. The court held that the private sale of the HyperDrive did not constitute a public disclosure under § 102(b)(2)(B). The court reasoned that the term "publicly disclosed" in the statute requires that the invention be made available to the public, which was not the case with the private sale between the inventor and Sanho. The court affirmed the PTAB's decision, concluding that Kuo was prior art and that the challenged claims of the '429 patent were unpatentable as obvious. View "SANHO CORP. v. KAIJET TECHNOLOGY INTERNATIONAL LIMITED, INC. " on Justia Law

SoftView LLC appealed a decision by the Patent Trial and Appeal Board (PTAB) regarding the invalidation of all claims of its U.S. Patent No. 7,461,353. The PTAB's decision was based on a prior inter partes review (IPR) proceeding that found the claims invalid under the estoppel provision in 37 C.F.R. § 42.73(d)(3)(i). SoftView argued that the PTAB misinterpreted the regulation, that the Patent and Trademark Office (PTO) lacked statutory authority to issue such a regulation, and that the regulation should not apply to already issued claims.The PTAB had previously stayed reexamination proceedings pending the outcome of the IPR. After the IPR invalidated 18 claims, the PTAB lifted the stay and resumed reexamination. The PTAB found most claims unpatentable over prior art but reversed the examiner's obviousness rejections. Instead, it applied the estoppel provision to invalidate all claims, including amended and previously issued claims, reasoning that they were not patentably distinct from the canceled claims.The United States Court of Appeals for the Federal Circuit upheld the validity of the regulation and its estoppel standard but agreed with SoftView that the regulation applies only to new or amended claims, not to previously issued claims. The court affirmed the PTAB's application of the regulation to the amended claims, finding them not patentably distinct from the canceled claims. However, it vacated the PTAB's decision regarding the previously issued claims, as the regulation does not apply to maintaining existing claims.The court concluded that the PTO had the authority under 35 U.S.C. § 316(a)(4) to issue the regulation, which governs the relationship of IPR to other proceedings. The case was affirmed in part and vacated and remanded in part for further consideration of the issued claims. View "SOFTVIEW LLC v. APPLE INC. " on Justia Law

The case involves an inter partes review (IPR) proceeding concerning U.S. Patent No. 8,265,096, which relates to methods for constructing frame structures in orthogonal frequency-division multiple access (OFDMA) systems. The Patent Trial and Appeal Board (PTAB) found claims 1–4, 6, and 7 of the patent unpatentable as obvious but did not find claim 8 unpatentable. The PTAB also granted the patentee's motion to amend, canceling claims 1–4, 6, and 7 and substituting them with new claims 44–47, 49, and 50.The PTAB's decision was appealed by ZyXEL Communications Corp., which contested the finding that claim 8 was not obvious and the decision to grant the motion to amend. UNM Rainforest Innovations (UNMRI) cross-appealed the finding that claims 1–4, 6, and 7 were unpatentable. The PTAB had found that the combination of prior art references Talukdar and Li rendered claims 1–4, 6, and 7 obvious but did not find a motivation to combine Talukdar and Nystrom to render claim 8 obvious.The United States Court of Appeals for the Federal Circuit affirmed the PTAB's determination that claims 1–4, 6, and 7 were unpatentable as obvious. The court found substantial evidence supporting the PTAB's conclusion that a person of ordinary skill in the art would combine Talukdar and Li. However, the court reversed the PTAB's decision regarding claim 8, concluding that the combination of Talukdar and Nystrom would render claim 8 obvious.The court also affirmed the PTAB's decision to grant UNMRI's motion to amend, finding no procedural error in allowing UNMRI to supplement its motion with a reply brief. The court remanded the case to the PTAB to determine if the substitute claims are unpatentable as obvious under collateral estoppel based on the court's holding that claims 1–4 and 6–8 are unpatentable as obvious. The PTAB was also instructed to consider whether to evaluate the substitute claims' obviousness on a new ground. View "ZYXEL COMMUNICATIONS CORP. v. UNM RAINFOREST INNOVATIONS " on Justia Law