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WesternGeco’s patents are directed to technologies for controlling the movement and positioning of a series of streamers towed in an array behind a ship, emitting acoustic signals and detecting the returning signals that reflect from the ocean floor. The collected data can be used to map the subsurface geology, helping oil companies analyze underwater natural resource formations and explore for oil and gas beneath the ocean floor. Conventional marine seismic survey systems use long streamers that are towed behind ships in open-water conditions. Vessel movements, weather, and other conditions can cause the streamers to tangle or drift apart. In inter partes review proceeding, the Patent Trial and Appeal Board issued six final written decisions, finding all of the instituted claims in the six proceedings to be unpatentable as anticipated or obvious. It rejected WesternGeco’s arguments that the IPR proceedings were time-barred under 35 U.S.C. 315(b). The Federal Circuit affirmed, as supported by substantial evidence, the Board’s unpatentability determinations, and its conclusion that the proceedings were not time-barred. The relationship at issue is not sufficiently close such that an infringement proceeding would have given an unrelated company a full and fair opportunity to litigate the validity of the claims of the WesternGeco Patents. View "WesternGeco LLC v. ION Geophysical Corp." on Justia Law

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The claims relate to methods of removing hair using nanoparticles to damage hair follicles. GHC is the named applicant on the 575 application. Sienna owns the 941 patent. In 2015, at GHC’s suggestion, the Board declared an interference and identified claim 1 of the 941 patent as the sole count. Claim 1 is directed to a method of localizing thermal damage to a hair follicle by applying a composition comprising a plurality of unassembled plasmonic nanoparticles to a skin surface. The Board identified claims 65–67 of the 575 application and claims 1–20 of the 941 patent as corresponding to that count. Sienna argued that claims of the 575 application were unpatentable for failure to meet the written description requirement. The Board found claims 65–67 lack written description support and are unpatentable under 35 U.S.C. 112 and denied GHC’s motion to add new claim 74, determining that GHC did not show interference-in-fact with Sienna claim or correspondence to Count 1, and failed to provide supporting evidence that this claim was patentable. The Federal Circuit vacated. Substantial evidence supports a finding of a lack of sufficient of written description but the Board erred in denying the motion to amend; its determination that GHC had not established claim 74 interferes with any of Sienna’s claims was not in accordance with controlling precedent. View "General Hospital Corp. v. Sienna Biopharmaceuticals, Inc." on Justia Law

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The patent is titled “Water Heating Apparatus for Continuous Heated Water Flow and Method for Use in Hydraulic Fracturing.” The inventor, Hefley, HOTF's founder, filed the earliest provisional application in 2009; the critical date for analyzing the on-sale and public-use bars under 35 U.S.C. 1023 is September, 2008. Before the critical date, Hefley and his companies performed on-the-fly heating of water on at least 61 frac jobs using the patented system and collected over $1.8 million for those services. Hefley knew that the patent process required that he file his application within one year of the first offer for sale or public use. Hefley did not disclose any of the frac jobs to the PTO. The patent issued in May 2012. Energy, HOTF's competitor, began using its accused process of heating water on frac jobs in 2012. Energy alleged that HOTF tortiously interfered with its prospective business relationship by alleging that Energy’s water heaters infringed a patent. The court granted Energy summary judgment. A jury found HOTF represented in bad faith that it possessed a valid patent, knowingly engaged in unlawful sales or advertising practices, and unlawfully interfered with Energy’s contractual rights and prospective business relationship. The court granted declaratory judgment against Hefley on inequitable conduct, finding that even if the prior frac jobs were experimental, they were focused on economic viability, not how to meet the claims of the patent. The Federal Circuit affirmed that the patent is unenforceable due to inequitable conduct and the findings of tortious interference but vacated the denial of attorneys’ fees. View "Energy Heating, LLC. v. Heat On-the-Fly, LLC" on Justia Law

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VerHoef’s dog developed a walking problem called “knuckling.” Their veterinarian, Dr. Lamb, suggested trying a commercially available harness to support the leg during therapy. The harness did not fix the problem. VerHoef recognized that the harness would work if connected to the dog’s toes. Lamb suggested a strap configured in a figure 8 that fit around the toes and wrapped around the lower leg, above the paw. VerHoef implemented Lamb’s figure eight idea, and, after adjustments, had a working device that reduced the knuckling problem. VerHoef filed a patent application listing the two as joint inventors. A single independent claim expressly recited the figure eight loop. Relations between VerHoef and Lamb soured. VerHoef’s attorney abandoned the joint application and filed a substantially identical application, listing VerHoef as the sole inventor. That same day Lamb filed a substantially identical application listing herself as sole inventor. Each application recites the same independent claim. The examiner issued a final rejection (35 U.S.C. 102(f)). The Patent Board agreed that VerHoef did not maintain “intellectual domination” over the inventive process and that Lamb was a joint inventor. The Federal Circuit affirmed. Substantial evidence in the form of VerHoef’s affidavit supports determinations that Lamb contributed the idea of the figure eight loop and that the figure eight loop is an essential feature of the invention not insignificant in quality or well-known in the art. View "In re: Verhoef" on Justia Law

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TAOS and Intersil were both developing ambient light sensors for electronic devices. Ambient light sensors use a silicon- or other semiconductor-based photodiode that absorbs light and conducts a current. The resulting photocurrent is detected by a sensor, and measurements of the current, a function of the ambient light, are used to adjust the brightness of an electronic screen display. One benefit is better visibility; another is improved battery efficiency. In 2004, the parties confidentially shared technical and financial information during negotiations regarding a possible merger that did not occur. Soon after, Intersil released new sensors with the technical design TAOS had disclosed in the confidential negotiations. TAOS sued for infringement of its patent, and for trade secret misappropriation, breach of contract, and tortious interference with prospective business relations under Texas state law. A jury returned a verdict for TAOS and awarded damages on all four claims. The Federal Circuit affirmed liability for trade secret misappropriation, though on a more limited basis than TAOS presented to the jury, and affirmed liability for infringement of the asserted apparatus claims of the patent, but vacated the monetary awards. The court noted that there was no evidence of Intersil’s independent design of the photodiode array structure. View "Texas Advanced Optoelectronic Solutions, Inc. v. Renesas Electronics America, Inc." on Justia Law

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Disc’s 113 patent, entitled “Spinal Brace,” is directed to an air injectable band with a rigid panel worn around the waist. When the band is inflated it expands vertically to provide traction to the spine of the user to relieve back pain. Disc's 509 patent is entitled “Wrinkled Band Without Air Expansion Tube and its Manufacturing Method.” VGH manufactures and sells inflatable spinal brace products. Disc sued for infringement, specifically identifying VGH’s products and alleging that the products meet “each and every element of at least one claim of the 113 [or 509] Patent, either literally or equivalently.” Disc attached the asserted patents and photographs of the accused products. The following day, amendments to the Federal Rules of Civil Procedure took effect, abrogating Rule 84 and Form 18, stating that the amendments “shall govern in all proceedings in civil cases thereafter commenced and, insofar as just and practicable, all proceedings then pending.” The district court dismissed Disc’s complaint with prejudice, reasoning that the change applied and that the complaint did not meet the “Iqbal/Twombly” standard articulated by the Supreme Court. The court denied Disc’s motions for reconsideration and to amend the judgment. The Federal Circuit reversed. Disc’s allegations are sufficient under the plausibility standard of Iqbal/Twombly. Disc’s disclosures provided VGH fair notice of infringement of the asserted patents. View "Disc Disease Solutions Inc. v. VGH Solutions, Inc." on Justia Law

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Communique’s patent, entitled “System Computer Product and Method for Providing a Private Communication Portal,” allows a remote computer to access a personal computer via the Internet, using a “location facility” to “creat[e] a communication channel.” In 2006, Communique sued, alleging that Citrix’s GoToMyPC remote computer connection service infringed two claims. The court stayed proceedings pending resolution of inter partes reexamination. In 2013, the Patent Board confirmed the patentability of the claims over prior art references, including Citrix’s BuddyHelp computer connection service. The Federal Circuit affirmed. Returning to the district court, Citrix argued that the claims were patent ineligible under 35 U.S.C. 101, because they “only require[] generic software operating on a generic computer system to implement the abstract idea of connecting two computers.” The court rejected this argument. A jury concluded that Citrix had not established that the claims were invalid, but that Communique had not established that Citrix’s product infringed those claims. The Federal Circuit affirmed; the court did not abuse its discretion in ruling that while the reexamination record could be used at trial, the jury could not be informed that Citrix had requested the reexamination. Citrix’s argument did not rest on an improper “practicing the prior art” defense, but instead correctly recognized that claim terms must be “construed the same way for both invalidity and infringement.” View "01 Communique Laboratory, Inc v. Citrix Online, LLC" on Justia Law

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Merck's patents claim classes of compounds, identified by structural formulas, and the administration of therapeutically effective amounts of such compounds for treating Hepatitis C. Gilead developed its own Hepatitis C treatments, marketed as Solvadi® and Harvoni®, based on the compound sofosbuvir. Gilead sought a declaratory judgment that Merck’s patents were invalid and that Gilead was not infringing. Merck counterclaimed for infringement. Gilead stipulated to infringement based on the court’s claim construction, which was not appealed. A jury trial was held on Gilead’s challenges to the patents as invalid for lack of both an adequate written description and enablement of the asserted claims, and Gilead’s defense that Merck did not actually invent the subject matter but derived it from another inventor, employed by Gilead’s predecessor. The jury ruled for Merck but the district court ruled for Gilead, finding pre-litigation business misconduct and litigation misconduct attributable to Merck, and barred Merck from asserting the patents against Gilead. The court awarded attorney’s fees, relying on the finding of unclean hands. The Federal Circuit affirmed the judgment based on unclean hands. The district court found, with adequate evidentiary support, two related forms of pre-litigation business misconduct attributable to Merck. The court noted clear violations of a “firewall” understanding between Gilead’s predecessor and Merck, with a direct connection to the ultimate patent litigation. View "Gilead Sciences, Inc. v. Merck & Co., Inc." on Justia Law

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Merck's patents claim classes of compounds, identified by structural formulas, and the administration of therapeutically effective amounts of such compounds for treating Hepatitis C. Gilead developed its own Hepatitis C treatments, marketed as Solvadi® and Harvoni®, based on the compound sofosbuvir. Gilead sought a declaratory judgment that Merck’s patents were invalid and that Gilead was not infringing. Merck counterclaimed for infringement. Gilead stipulated to infringement based on the court’s claim construction, which was not appealed. A jury trial was held on Gilead’s challenges to the patents as invalid for lack of both an adequate written description and enablement of the asserted claims, and Gilead’s defense that Merck did not actually invent the subject matter but derived it from another inventor, employed by Gilead’s predecessor. The jury ruled for Merck but the district court ruled for Gilead, finding pre-litigation business misconduct and litigation misconduct attributable to Merck, and barred Merck from asserting the patents against Gilead. The court awarded attorney’s fees, relying on the finding of unclean hands. The Federal Circuit affirmed the judgment based on unclean hands. The district court found, with adequate evidentiary support, two related forms of pre-litigation business misconduct attributable to Merck. The court noted clear violations of a “firewall” understanding between Gilead’s predecessor and Merck, with a direct connection to the ultimate patent litigation. View "Gilead Sciences, Inc. v. Merck & Co., Inc." on Justia Law

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SAS sought inter partes review (35 U.S.C. 311(a)) of ComplementSoft’s software patent, alleging that all 16 of the patent’s claims were unpatentable. The Patent Office instituted review on some of the claims and denied review on the rest. The Federal Circuit rejected SAS’s argument that section 318(a) required the Board to decide the patentability of every claim challenged in the petition. The Supreme Court reversed. When the Patent Office institutes an inter partes review, it must decide the patentability of all of the claims the petitioner has challenged. Section 318(a), which states that the Board “shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner” is mandatory and comprehensive. The Director’s claimed “partial institution” power (37 CFR 42.108(a)) appears nowhere in the statutory text. The statute envisions an inter partes review guided by the initial petition. While section 314(a) invests the Director with discretion on whether to institute review, it does not invest him with discretion regarding what claims that review will encompass. The Director’s policy argument—that partial institution is efficient because it permits the Board to focus on the most promising challenges and avoid spending time and resources on others—is properly addressed to Congress. View "SAS Institute Inc. v. Iancu" on Justia Law