Justia Patents Opinion Summaries

SpeedTrack’s 360 patent discloses a “computer filing system for accessing files and data according to user-designated criteria.” The patent explains that prior-art systems “employ a hierarchical filing structure” and “emulate[] commonly[ ]used paper filing systems” in that they “organize[] data into files (analogous to papers in a paper filing system) and directories (analogous to file folders and hanging files).” According to the patent, such systems could “become[] very cumbersome.” According to the patent, prior-art solutions presented additional drawbacks. The 360 patent discloses a method that uses “hybrid” folders, which “contain those files whose content overlaps more than one physical directory” and “allows total freedom from the restrictions imposed by hierarchical and other present-day computer filing systems.”SpeedTrack sued various retail website operators, alleging infringement of the patent. The Federal Circuit affirmed the stipulated judgment of noninfringement based on the district court’s construction of the term “hierarchical limitation.” View "SpeedTrack, Inc. v. Amazon.com, Inc." on Justia Law

Until 1995, a patent’s term was 17 years from the date of issuance, which incentivized certain patentees to delay by abandoning applications and filing continuing applications in their place to obtain patents at a financially desirable time. In 1995, changes in the law triggered a patent application rush. Hyatt, the named inventor on 399 patent applications, bulk-filed 381 applications during that "bubble," each a photocopy of an earlier application. Four applications relate to computer technologies, claim priority to applications filed in the 1970s and 1980s, and are atypically long and complex. Hyatt filed multiple amendments. From 2003 to 2012, the PTO stayed the examination of many of Hyatt’s applications pending litigation. The Board of Patent Appeals affirmed the rejection of the four applications.Hyatt filed suit under 35 U.S.C. 145. The district court ordered the PTO to issue the patents.The Federal Circuit vacated. Prosecution laches may “render a patent unenforceable when it has issued only after an unreasonable and unexplained delay in prosecution that constitutes an egregious misuse of the statutory patent system under a totality of the circumstances” and is a defense available to the PTO in an action to obtain a patent. The district court erred in concluding that the PTO failed to prove prosecution laches. Rather than analyze the evidence of Hyatt’s conduct, the court repeatedly placed blame on the PTO. The court held the issues invalidity for anticipation and lack of written description.in abeyance. View "Hyatt v. Hirshfeld" on Justia Law

Bio-Rad’s patents relate to the generation of microscopic droplets, contiguous fluid that is encapsulated within a different fluid, by using a microfluidic chip. Typically, the inner fluid is water-based, while the outer fluid is oil. The patents arise out of research conducted by inventors at QuantaLife. In 2011, Bio-Rad purchased QuantaLife, acquiring QuantaLife’s patent rights. The inventors became employees of Bio-Rad and executed assignments of their rights to applications that later issued as the 664, 682, and 635 patents. Soon after Bio-Rad acquired QuantaLife, three inventors left Bio-Rad to start 10X, which has developed technology and products in the field of microfluidics, with the goal of achieving DNA and RNA sequencing at the single-cell level. Bio-Rad alleged that 10X violated the Tariff Act, 19 U.S.C. 1337, by importing into the U.S. certain microfluidic chips. The Trade Commission concluded that 10X did not infringe the 664 patent by importing its “Chip GB” but infringed the 664, 682, and 635 patents by importing its “GEM Chips.” The Federal Circuit affirmed. The construction of the term “droplet generation region” is consistent with the intrinsic evidence; substantial evidence established that the use of 10X’s GEM chips directly infringes the asserted claims. Bio-Rad proved the elements of induced and contributory infringement of the 682 and 635 patents with respect to the GEM Chips. View "Bio-Rad Laboratories, Inc. v. United States International Trade Commission" on Justia Law

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

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 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

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

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

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

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