Justia Patents Opinion Summaries
Becton, Dickinson & Co. v. Baxter Corp. Englewood
Becton petitioned for inter partes review of claims in Baxter’s patent, directed to “[s]ystems for preparing patient-specific doses and a method for telepharmacy in which data captured while following [a protocol associated with each received drug order and specifying a set of steps to fill the drug order] are provided to a remote site for review and approval by a pharmacist.” The Patent Trial and Appeal Board found that Becton had established that one of ordinary skill in the art would have been motivated to combine prior references and that Baxter’s “evidence of secondary considerations [was] weak” and concluded that none of the challenged claims were shown to be unpatentable as obvious.The Federal Circuit reversed. The Board’s determination that prior art did not teach the verification limitation is not supported by substantial evidence; a highlighting limitation would have been obvious to one of ordinary skill in the art in view of prior art. View "Becton, Dickinson & Co. v. Baxter Corp. Englewood" on Justia Law
Hyatt v. Office of Management and Budget
The Ninth Circuit affirmed the district court's grant of summary judgment in favor of OMB in an action brought by plaintiff and AAET, contending that patent applicants should not have to comply with certain U.S. Patent & Trademark Office (USPTO) rules because the USPTO is violating the Paperwork Reduction Act (PRA). Plaintiff and AAET argue that patent applicants need not follow the rules because the USPTO is violating the PRA by failing to obtain OMB approval and a control number each time the USPTO makes a request to an applicant during the back-and-forth communications process concerning a particular patent. The OMB rejected this argument and concluded that the rules are not subject to the PRA.The panel held that the challenged rules do not impose "collections of information" subject to the PRA's procedural requirements. Rather, the PRA and the regulations expressly exclude from coverage individualized communications just like those between a patent examiner and a patent applicant. Furthermore, even if they impose "collections," most of the rules are exempted from the PRA under Exemption 6. View "Hyatt v. Office of Management and Budget" on Justia Law
New Vision Gaming & Development, Inc. v. SG Gaming, Inc.
New Vision sued SG in the federal district court in Nevada. SG then filed Patent Trial and Appeal Board petitions. The Board declined to respect the forum selection agreement in the parties’ license agreement, which referred to “exclusive” jurisdiction in the appropriate federal or state court in the state of Nevada, and proceeded to a final decision, finding the claims at issue as well as proposed substitute claims, patent-ineligible under 35 U.S.C. 101.The Federal Circuit vacated and remanded the Board’s decisions for consideration of the forum selection clause in light of its 2019 “Arthrex” decision. Because Arthrex issued after the Board’s final-written decisions and after New Vision sought Board rehearing, New Vision has not waived its Arthrex challenge by raising it for the first time in its opening brief. The Board’s rejection of the parties’ choice of forum is subject to judicial review; section 324(e) does not bar review of Board decisions “separate . . . to the in[stitu]tion decision.” View "New Vision Gaming & Development, Inc. v. SG Gaming, Inc." on Justia Law
Trimble Inc. v. PerDiemCo LLC
PerDiemCo, a Texas LLC, is the assignee of the patents, which relate to electronic logging devices. PerDiemCo’s current sole owner, officer, and employee, Babayi, lives and works in Washington, D.C. PerDiemCo rents office space in Texas, which Babayi has never visited. Trimble and ISE, Trimble’s wholly owned subsidiary, manufacture and sell GPS devices. Trimble, incorporated in Delaware, is headquartered in California. ISE is an Iowa LLC with an Iowa principal place of business.Babayi sent a letter to ISE accusing ISE of using technology covered by PerDiemCo’s patents, stating that PerDiemCo “actively licenc[es]” its patents and listed companies that had entered into nonexclusive licenses after the companies had “collectively spent tens of millions of dollars" on litigation. Babayi offered a nonexclusive license. ISE forwarded the letter to Trimble’s Chief IP Counsel, Brodsky, in Colorado, who explained that Trimble would be PerDiemCo’s contact. Babayi replied that PerDiemCo also believed that Trimble’s products infringed its patents. The parties communicated by letter, telephone, and email at least 22 times before Trimble and ISE sought a declaratory judgment of noninfringement in the Northern District of California. The district court held that it lacked specific personal jurisdiction over PerDiemCo. The Federal Circuit reversed. In patent litigation, communications threatening suit or proposing settlement or patent licenses can establish personal jurisdiction. A broad set of a defendant’s contacts with a forum are relevant to the minimum contacts analysis. Here, the minimum contacts or purposeful availment test was satisfied. View "Trimble Inc. v. PerDiemCo LLC" on Justia Law
Uniloc 2017 LLC v. Apple Inc.
Modern telecommunications systems using Voice over Internet Protocol (VoIP) offer clients optional features, such as caller-ID, call waiting, multi-line service, and different levels of service quality known as the “codec specification.” Uniloc’s 552 patent is directed to a system and method to police the use of those features, recognizing that the proliferation of intelligent client devices in communication networks requires providers to maintain control over the use of their networks’ features in order to continue generating revenue. To achieve that control, the patented system employs an enforcement mechanism within the provider’s core network through which clients send “signaling messages” for setting up their communication sessions.On inter partes review, The Patent Trial and Appeal Board found certain claims (not including claims 18-22) invalid for obviousness in view of the Kalmanek patent. The Federal Circuit affirmed, rejecting an argument that the Board’s construction of “intercepting” in the independent claims was erroneous; the claims encompass the situation in which a sending client device intentionally sends a signaling message to the intermediate network entity that performs the interception. Apple failed to show that claim 18 would have been obvious over Kalmanek. View "Uniloc 2017 LLC v. Apple Inc." on Justia Law
Pacific Biosciences of California, Inc. v. Oxford Nanopore Technologies, Inc.
PacBio’s patents describe methods for sequencing a nucleic acid, such as DNA, using nanopore technology. PacBio sued Oxford for infringement. Before trial, the district court granted PacBio’s motion “to prevent [Oxford] from using ‘pejorative’ terms (such as ‘non-practicing entity,’ ‘NPE,’ and ‘paper patents’), stating “it would be inappropriate to put before the jury evidence or argument about the potential impact of a verdict in favor of PacBio— such as higher prices or slower medical research.”A jury found all asserted claims infringed but also determined that they are invalid under 35 U.S.C. 112 for lack of enablement. The district court upheld the verdict on enablement and denied PacBio’s request for a new trial because of Oxford’s improper opening remarks that included references to the potential applications of its accused products to the then-emerging global COVID-19 crisis. The Federal Circuit affirmed. The record supports the legal conclusion that the disclosures of the patents, even combined with the knowledge of relevant artisans, required undue experimentation to enable the full scope of the relevant claims. The court reasonably denied a new trial, given PacBio’s own conduct and references to COVID-19, and its successful request for no more than curative instructions. View "Pacific Biosciences of California, Inc. v. Oxford Nanopore Technologies, Inc." on Justia Law
Free Stream Media Corp. v. Alphonso Inc.
Samba asserted infringement of its 668 patent in the Northern District of California. In the Eastern District of Texas, Samba asserted its 356 patent, entitled “Targeting with Television Audience Data Across Multiple Screens,” relating to a system providing a mobile phone user with targeted advertisements, deemed relevant to the user based on data gathered from the user’s television. Both cases were consolidated in the Northern District of California. The Texas court had already construed a disputed term for both patents. The California court adopted that claim construction; Samba stipulated to noninfringement as to the 668 patent.Defendant moved to dismiss on grounds that the asserted claims of the 356 patent are patent-ineligible subject matter under 35 U.S.C. 101. The court denied the motion, finding that the 356 patent “describes systems and methods for addressing barriers to certain types of information exchange between various technological devices, e.g., a television and a smartphone or tablet being used in the same place at the same time.” The court subsequently entered summary judgment of noninfringement.The Federal Circuit reversed the denial of the motion to dismiss, did not reach the issue of infringement, and affirmed the claim construction. Samba’s asserted claims are not directed to an improvement of technology or creation of new computer functionality but are directed to an abstract idea; the claims comprise generic computing components arranged in a conventional manner. Samba’s desired claim construction, covering one-way communication, contradicts the specification. View "Free Stream Media Corp. v. Alphonso Inc." on Justia Law
Cap Export, LLC v. Zinus, Inc.
Zinus’s patent is directed to “[a]n assemblable mattress support” that “can be shipped in a compact state with all of its components compactly packed into the headboard.” Cap sought a declaratory judgment that the patent was invalid and not infringed. Zinus counterclaimed, alleging infringement and unfair business practices under California state law. The district court granted summary judgment that claims 1 and 3 were invalid as obvious over prior art. The Federal Circuit vacated. The district court subsequently granted partial summary judgment that claims 1–3 were not invalid, in part because Cap had abandoned the “bed in a box” prior art reference that the court had relied on in its previous determination. Cap stipulated to the entry of a final judgment in favor of Zinus, with $1.1 million in damages and a permanent injunction.Thereafter, Cap discovered evidence (in an unrelated suit) that the deposition testimony of Zinus's then-president had been false concerning the prior art. Cap successfully moved to vacate the judgment and injunction under Rule 60(b)(3), which provides grounds for relief for “fraud . . . , misrepresentation, or misconduct by an opposing party.” The Federal Circuit affirmed. The court did not abuse its discretion in determining that the misrepresentations prevented Cap from fully and fairly presenting its case and that Cap satisfied the due diligence requirement. View "Cap Export, LLC v. Zinus, Inc." on Justia Law
Bio-Rad Laboratories, Inc. v. International Trade Commission
10X filed a complaint with the International Trade Commission, alleging that Bio-Rad’s importation and sale of microfluidic systems and components used for gene sequencing or related analyses violated the Tariff Act of 1930, 19 U.S.C. 1337, which prohibits importation and sale “of articles that . . . (i) infringe a valid and enforceable United States patent.”An ALJ determined that Bio-Rad violated the statute with respect to all three patents finding that Bio-Rad infringed the patent claims and that 10X practiced the claims, satisfying the requirement of a domestic industry “relating to the articles protected by the patent.” The ALJ rejected Bio-Rad’s defense that it could not be liable for infringement because it co-owned the asserted 10X patents under assignment provisions that two of the named inventors signed when they were employees of BioRad (and its predecessor), even though the inventions were not made until after the employment.The Commission and Federal Circuit affirmed. Substantial evidence supports findings that Bio-Rad infringed the asserted claims and that 0X’s domestic products practice the asserted claims. The court rejected Bio-Rad’s indefiniteness challenge. The assignment provisions did not apply to a signatory’s ideas developed during the employment solely because the ideas ended up contributing to a post-employment patentable invention in a way that supports co-inventorship of that eventual invention. View "Bio-Rad Laboratories, Inc. v. International Trade Commission" on Justia Law
Raytheon Technologies Corp. v. General Electric Co.
Raytheon’s patent is directed to gas turbine engines, which generally consists of a fan section, a compressor section, a combustor section, and a turbine section. On inter partes review, the Patent Trial and Appeal Board found two claims unpatentable as obvious in view of the Knip reference, which discloses the claimed power density limitation for a geared gas turbine engine. During the proceeding, Raytheon submitted unrebutted evidence establishing that Knip’s disclosure of highly aggressive performance parameters for a futuristic turbine engine relied on the use of nonexistent composite materials. The petitioner never supplied any evidence suggesting a skilled artisan could have made a turbine engine with the power density recited in the claims.The Federal Circuit reversed. The relied-upon prior art fails to enable a skilled artisan to make and use the claimed invention. There is no absolute requirement for a relied-upon reference to be self-enabling in the section 103 context if the overall evidence of what was known at the time of invention establishes that a skilled artisan could have made and used the claimed invention. If an obviousness case is based on a non-self-enabled reference, and no other prior art reference or evidence would have enabled a skilled artisan to make the claimed invention, the invention cannot be said to have been obvious. View "Raytheon Technologies Corp. v. General Electric Co." on Justia Law