Justia Patents Opinion Summaries

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

Koss Corporation (Koss) owns several patents related to wireless earphones. Koss filed a patent infringement lawsuit against Bose Corporation (Bose) in the Western District of Texas, alleging infringement of three patents. Bose challenged the venue and also filed for inter partes review (IPR) of the patents with the Patent Trial and Appeal Board (PTAB). Concurrently, Bose sought a declaratory judgment of noninfringement in the District of Massachusetts. The Texas court dismissed Koss's case for improper venue, leading Koss to file counterclaims in Massachusetts. The Massachusetts court stayed the case pending the IPR outcomes.In parallel, Koss's infringement action against Plantronics, Inc. was transferred to the Northern District of California. Plantronics moved to dismiss the case, arguing that the patents were invalid under 35 U.S.C. § 101. The California court agreed, invalidating all claims of the patents. Koss amended its complaint but eventually stipulated to dismiss the case with prejudice, without appealing the invalidation order.The United States Court of Appeals for the Federal Circuit reviewed the PTAB's decisions on the IPRs. However, since the California court had already invalidated all claims of the patents and Koss did not appeal this decision, the Federal Circuit found the appeals moot. The court held that the invalidation order from the California court was final and precluded any further action on the patents, leading to the dismissal of the appeals. View "KOSS CORPORATION v. BOSE CORPORATION " on Justia Law

Miller Mendel, Inc. sued the City of Anna, Texas, alleging that the City’s use of the Guardian Alliance Technologies software platform infringed claims 1, 5, and 15 of U.S. Patent No. 10,043,188, which relates to a software system for managing pre-employment background investigations. The United States District Court for the Eastern District of Texas granted the City’s motion for judgment on the pleadings, concluding that the asserted claims do not claim patent-eligible subject matter under 35 U.S.C. § 101. The district court also denied the City’s motion for attorneys’ fees.The district court found that the claims were directed to the abstract idea of performing a background check and did not contain an inventive concept that would transform the abstract idea into a patent-eligible application. Miller Mendel’s motion for reconsideration was denied, with the court clarifying that its decision only invalidated claims 1, 5, and 15. The City’s motion for attorneys’ fees was denied on the grounds that the case was not exceptional.The United States Court of Appeals for the Federal Circuit reviewed the case and affirmed the district court’s decision. The Federal Circuit agreed that the claims were directed to an abstract idea and lacked an inventive concept. The court also upheld the district court’s decision to limit its invalidity finding to claims 1, 5, and 15, as Miller Mendel had narrowed the scope of the asserted claims before the court ruled on the motion. Additionally, the Federal Circuit found no abuse of discretion in the district court’s denial of attorneys’ fees, concluding that Miller Mendel’s litigation conduct did not make the case exceptional. View "MILLER MENDEL, INC. v. CITY OF ANNA, TEXAS " on Justia Law

Backertop Licensing LLC and Lori LaPray appealed the U.S. District Court of Delaware’s orders requiring LaPray to appear in-person for testimony regarding potential fraud and imposing monetary sanctions for her failure to appear. The District Court identified potential misconduct in numerous related patent cases involving IP Edge and Mavexar, which allegedly created shell LLCs, assigned patents for little consideration, and directed litigation without disclosing their ongoing rights. The court was concerned that this arrangement concealed the real parties in interest and potentially perpetrated fraud on the court.The District Court ordered LaPray, the sole owner of Backertop, to produce documents and appear in-person to address these concerns. LaPray moved to set aside the order, citing travel difficulties and requesting to appear telephonically, which the court denied. The court rescheduled the hearing to accommodate her schedule but maintained the requirement for in-person testimony to assess her credibility. LaPray did not attend the rescheduled hearing, leading the court to hold her in civil contempt and impose a daily fine until she appeared.The United States Court of Appeals for the Federal Circuit reviewed the case. The court held that the District Court’s orders were within its inherent authority and not an abuse of discretion. The court found that Federal Rule of Civil Procedure 45, which limits the geographic range of subpoenas, did not apply to the court’s sua sponte orders. The court affirmed the District Court’s orders, emphasizing the necessity of in-person testimony to investigate potential misconduct and assess credibility. The monetary sanctions for LaPray’s failure to appear were also upheld. View "BACKERTOP LICENSING LLC v. CANARY CONNECT, INC. " on Justia Law

Natera, Inc. and NeoGenomics Laboratories, Inc. are healthcare companies in the oncology testing industry. Natera owns two patents, U.S. Patent No. 11,519,035 and U.S. Patent No. 11,530,454, which cover methods for amplifying and sequencing DNA to detect cancer relapse. Natera uses these methods in its Signatera product, while NeoGenomics offers a competing product called RaDaR. Natera sued NeoGenomics, alleging that RaDaR infringed its patents and sought a preliminary injunction to stop NeoGenomics from using, selling, or promoting RaDaR.The United States District Court for the Middle District of North Carolina granted the preliminary injunction, finding that Natera was likely to succeed on the merits of its infringement claim for the ’035 patent. The court did not address the ’454 patent. The district court determined that Natera demonstrated a likelihood of irreparable harm due to direct competition in a two-player market, and that the balance of equities and public interest favored the injunction. The injunction was tailored to allow ongoing use of RaDaR for existing patients and certain clinical trials.The United States Court of Appeals for the Federal Circuit reviewed the district court’s decision. The Federal Circuit affirmed the preliminary injunction, agreeing that Natera showed a likelihood of success on the merits and that NeoGenomics did not raise a substantial question of validity. The court found no error in the district court’s handling of claim construction, irreparable harm analysis, or public interest considerations. The Federal Circuit concluded that the district court did not abuse its discretion in granting the preliminary injunction. View "Natera, Inc. v. NeoGenomics Laboratories, Inc." on Justia Law

Dr. John Insall, an orthopedic surgeon, developed and patented knee replacement devices, which he licensed to Zimmer Biomet Holdings, Inc. In return, Zimmer agreed to pay royalties to Insall, and later to his estate after his death. When Insall’s last patent expired in 2018, Zimmer ceased royalty payments, claiming the obligation had ended. The dispute was submitted to arbitration, where the Estate prevailed. Zimmer then sought to vacate the arbitration award in district court, arguing that continuing royalty payments violated public policy. The district court confirmed the arbitration award.The United States District Court for the Northern District of Illinois reviewed the case. Zimmer argued that the arbitration award should be vacated based on public policy grounds, citing Supreme Court decisions in Brulotte v. Thys Co. and Kimble v. Marvel Entertainment, LLC, which prohibit collecting royalties on expired patents. The district court rejected Zimmer’s argument and confirmed the arbitration award, leading to Zimmer’s appeal.The United States Court of Appeals for the Seventh Circuit reviewed the case. The court emphasized the limited scope of judicial review over arbitration awards under the Federal Arbitration Act (FAA). The court found that the arbitration panel had correctly interpreted the 1998 amendments to the agreement, which untethered the royalty payments from the patents themselves, making them based on the marketing and branding of the NexGen Knee products. Consequently, the court held that the arbitration award did not violate public policy as outlined in Brulotte and Kimble. The Seventh Circuit affirmed the district court’s decision and confirmed the arbitration award in favor of Insall’s Estate. View "Zimmer Biomet Holdings, Inc. v. Insall" on Justia Law

The case involves Amarin Pharma, Inc., Amarin Pharmaceuticals Ireland Limited, and Mochida Pharmaceutical Co., Ltd. (collectively, “Amarin”) and Hikma Pharmaceuticals USA Inc. and Hikma Pharmaceuticals PLC (collectively, “Hikma”). Amarin markets and sells icosapent ethyl, an ethyl ester of an omega-3 fatty acid commonly found in fish oils, under the brand name Vascepa®. In 2012, the U.S. Food and Drug Administration (“FDA”) approved Vascepa for the treatment of severe hypertriglyceridemia. In 2019, following additional research and clinical trials, the FDA approved Vascepa for a second use: as a treatment to reduce cardiovascular risk in patients having blood triglyceride levels of at least 150 mg/dL.In the United States District Court for the District of Delaware, Hikma moved to dismiss Amarin’s complaint for failure to state a claim. The court granted Hikma’s motion, concluding that Amarin’s allegations against Hikma did not plausibly state a claim for induced infringement.The United States Court of Appeals for the Federal Circuit reversed the decision of the district court. The court held that Amarin had plausibly pleaded that Hikma had induced infringement of the asserted patents. The court noted that the case was not a traditional Hatch-Waxman case or a section viii case, but rather a run-of-the-mill induced infringement case arising under 35 U.S.C. § 271(b). The court concluded that the totality of the allegations, taken as true, plausibly plead that Hikma “actively” induced healthcare providers’ direct infringement. View "AMARIN PHARMA, INC. v. HIKMA PHARMACEUTICALS USA INC. " on Justia Law

The case involves Beteiro, LLC, which owns several patents related to facilitating gaming or gambling activities at a remote location. The patents disclose an invention that allows a user to participate in live gaming or gambling activity via a user communication device, even if the user is not in the same location as the gaming venue. Beteiro filed multiple patent infringement cases against various companies, alleging that they infringe certain claims of the patents by providing gambling and event wagering services.The United States District Court for the District of New Jersey dismissed Beteiro's cases for failure to state a claim based on the subject matter ineligibility of the patent claims. The court found that the claims were directed to an abstract idea and did not contain an inventive concept. Beteiro appealed the decision.The United States Court of Appeals for the Federal Circuit affirmed the district court's decision. The court agreed that Beteiro's claims were directed to the abstract idea of exchanging information concerning a bet and allowing or disallowing the bet based on where the user is located. The court also found that the claims did not provide an inventive concept because they achieved the abstract steps using several generic computers. The court concluded that Beteiro's claims amounted to nothing more than the practice of an abstract idea using conventional computer equipment, including GPS on a mobile phone, which are not eligible for patent under current Section 101 jurisprudence. View "BETEIRO, LLC v. DRAFTKINGS INC. " on Justia Law

EcoFactor, Inc. sued Google LLC in the Western District of Texas, alleging patent infringement of U.S. Patent No. 8,738,327, which relates to the operation of smart thermostats in computer-networked heating and cooling systems. After a jury trial, the jury found that Google infringed the asserted claim of the patent and awarded damages to EcoFactor. Google appealed three of the district court’s orders: the denial of Google’s motion for summary judgment that the patent was invalid under 35 U.S.C. § 101; the denial of Google’s motion for judgment as a matter of law of non-infringement of the patent; and the denial of Google’s motion for a new trial on damages.The United States Court of Appeals for the Federal Circuit affirmed the district court's decisions. The court held that Google's appeal of the district court's denial of summary judgment was not appealable after a trial on the merits. The court also found that the jury's infringement verdict was supported by substantial evidence. Finally, the court held that the district court did not abuse its discretion in denying Google's motion for a new trial on damages. The court concluded that the damages expert's opinion was sufficiently reliable for admissibility purposes and that the expert sufficiently showed that the license agreements were economically comparable to the hypothetically negotiated agreement. View "ECOFACTOR, INC. v. GOOGLE LLC " on Justia Law