Justia Patents Opinion Summaries

In 2019, the Federal Circuit (Arthrex) held that the appointment of the APJs by the Secretary of Commerce, 35 U.S.C. 6(a), violated the Appointments Clause. The Patent and Trademark Office and Cisco argued that the Federal Circuit erred in extending Arthrex beyond the context of inter partes reviews to an appeal from a decision of the Patent Trial and Appeal Board in an inter partes reexamination. They claimed that administrative patent judges (APJs) should be deemed constitutionally appointed officers at least when it comes to their duties reviewing appeals of inter partes reexaminations.The Federal Circuit rejected the argument. The fact that an inferior officer on occasion performs duties that may be performed by an employee not subject to the Appointments Clause does not transform his status under the Constitution. Courts should look not only to the authority exercised in the case but to all of the appointee’s duties when assessing an Appointments Clause challenge. An APJs’ duties include both conducting inter partes reviews and reviewing appeals of inter partes reexaminations. Although no discovery is held and no trial conducted in inter partes reexaminations, the proceedings are otherwise similar. The Director’s authority over the Board’s decisions is not meaningfully greater in the context of inter partes reexaminations than in inter partes reviews. View "Virnetx Inc. v. Cisco Systems, Inc." on Justia Law

Starting in 1992, Schwendimann worked at ACT, which manufactured paper coating products. In 1998-2000, Schwendimann and Nasser (ACT's owner) filed the 983 and 845 patent applications; both were named as inventors. Schwendimann filed the 910 application as the sole inventor. All three applications were assigned to ACT. When ACT ceased operations in 2001, it owed significant debts. ACT gave Schwendimann a $282,073.25 promissory note for unpaid wages. ACT agreed to assign its patent applications to Schwendimann to satisfy its outstanding debt to her..Schwendimann agreed to satisfy ACT’s debts to its law firm, SLW. An SLW attorney was instructed to file the necessary documents. SLW filed an incorrect assignment for the 845 application.In 2011, Schwendimann sued Arkwright for infringement and became aware of the incorrect assignment; ACT's assignment to Schwendimann was then recorded with the Patent Office. The district court rejected a claim that Schwendimann lacked standing, finding that ACT assigned the 845 application to Schwendimann in 2002. A judgment of willful infringement was entered; the jury awarded Schwendimann damages of $2,624,228.00. The court awarded prejudgment interest of $1,915,328.00, applying a 10 percent interest rate, under Minnesota law.The Federal Circuit affirmed. Arkwright’s proposed 1.42 percent interest rate was insufficient to place Schwendimann in as good a position as she would have been in, had Arkwright entered into a reasonable royalty agreement; the prejudgment interest rate should be calculated based on the amount of damages awarded, not of Arkwright’s final settlement offer. Arkwright failed to provide a written offer. View "Schwendimann v. Arkwright Advanced Coating, Inc." on Justia Law

Eage filed suit, alleging infringement of four patents under the doctrine of equivalents, stemming from Slayback’s new drug application for a generic version of Eagle’s branded bendamustine product, BELRAPZO®. Bendamustine is used to treat chronic lymphocytic leukemia and indolent B-cell non-Hodgkin lymphoma. The district court entered a judgment of non-infringement on the pleadings.The Federal Circuit affirmed, rejecting Eagle’s arguments that the district court erred when it concluded that the asserted patents disclose, but do not claim, ethanol—and therefore dedicated ethanol to the public and that the district court improperly applied the dedication disclosure doctrine at the pleadings stage, in the presence of factual disputes and without drawing all inferences in Eagle’s favor. The disclosure-dedication doctrine bars application of the doctrine of equivalents: “when a patent drafter discloses but declines to claim subject matter, . . . this action dedicates the unclaimed subject matter to the public.” The application of the doctrine is a question of law. The asserted patents disclose ethanol as an alternative to propylene glycol in the “pharmaceutically acceptable fluid” claim limitation. The only reasonable inference that can be made from the disclosures is that a skilled artisan would understand the patents to disclose ethanol as an alternative to the claimed propylene glycol. View "Eagle Pharmaceuticals Inc. v. Slayback Pharma LLC" on Justia Law

The Patent Trial and Appeal Board instituted inter partes review of Caterpillar’s patent and issued its final written decision on November 13, 2019. Caterpillar appealed, then moved to vacate and remand for a new hearing before a differently constituted panel in light of the Federal Circuit’s 2019 “Arthrex” holding that the administrative patent judges of the Patent Trial and Appeal Board were improperly appointed. The Federal Circuit denied the motion. Unlike prior cases, which have been remanded, Arthrex issued before the Board’s final written decision in Caterpillar’s case. The Arthrex holding was expressly limited “to those cases where final written decisions were issued.” The court rejected an argument that even if the panel members became constitutional immediately before issuing the final written decision, that “does not cure a year’s worth of constitutional violations influencing the Board’s thinking and conclusions.” View "Caterpillar Paving Products, Inc. v. Wirtgen America, Inc." on Justia Law

X One’s patent describes a “Buddy Watch application” that allows a mobile device user to add other mobile device users to her “Buddy List.” A user may set up “instant buddies.” For example, a stranded motorist may wish to be instant buddies with the driver of a tow truck, allowing each phone to show the location of the other phone on its moving map. Uber sought inter partes review asserting that claims of the patent were obvious, 35 U.S.C. 103, in view of prior art that generally describes transmitting location information between mobile devices. The Patent Trial and Appeal Board held the claims were not unpatentable.The Federal Circuit reversed. The Board erred in determining that the combination of prior art does not render obvious the limitation “software . . . to transmit the map with plotted locations to the first individual.” Because terminal-side plotting and server-side plotting, as described in prior art, would have been two of a finite number of known, predictable solutions at the time of the invention of the patent, a person of ordinary skill would have faced a simple design choice between the two, and would have been motivated to combine the teachings of prior art to achieve the limitation. View "Uber Technologies, Inc. v. X One, Inc." on Justia Law

Oyster sued, alleging that Ciena infringed several patents. Ciena petitioned the Patent Trial and Appeal Board for inter partes review of the asserted patents. The district court stayed the litigation. The Board concluded that Ciena had failed to demonstrate by a preponderance of the evidence that any of the challenged claims were unpatentable.The Federal Circuit denied Ciena’s motion to vacate the decision. Ciena forfeited its argument that the members of the Board panel that issued the decision were not appointed in compliance with the Appointments Clause. Ciena requested that the Board adjudicate its petition and affirmatively sought a ruling from the Board members, regardless of how they were appointed. Ciena was content to have the assigned Board judges adjudicate its invalidity challenges until the Board ruled against it. View "Ciena Corp. v. Oyster Optics, LLC" on Justia Law

Hitkansut owns the patent, entitled “Methods and Apparatus for Stress Relief Using Multiple Energy Sources.” While the application that later issued as that patent was pending, Hitkansut entered into a non-disclosure agreement with Oak Ridge National Laboratory (ORNL) and provided ORNL with a copy of the then-unpublished patent application. ORNL staff prepared research reports, received funding, authored publications, and received awards for research, based upon unauthorized use of the patent. Hitkansut sued ORNL, alleging infringement under 28 U.S.C. 1498. The Claims Court determined that certain claims of the patent were invalid but that other claims were valid and infringed. Although Hitkansut originally sought a royalty between $4.5-$5.6 million, based on a percentage of the research funding obtained by ORNL, the Claims Court awarded $200,000, plus interest, as the hypothetically negotiated cost of an up-front licensing fee. The Federal Circuit affirmed.Hitkansut then sought attorneys’ fees and expenses under 28 U.S.C. 1498(a). The Claims Court awarded $4,387,889.54.The Federal Circuit affirmed. Section 1498(a) provides for the award of attorneys’ fees under certain conditions, unless “the court finds that the position of the United States was substantially justified.” The “position of the United States” in this statutory provision refers to positions taken during litigation and does not encompass pre-litigation conduct by government actors, but the examples of conduct cited by the Claims Court demonstrate that the position of the United States was not substantially justified even under this narrow definition View "Hitkansut LLC v. United States" on Justia Law

Uniloc’s patent is directed to a communication system comprising a primary station (base station) and at least one secondary station (computer mouse or keyboard). In conventional systems, such as Bluetooth networks, two devices that share a common communication channel form ad hoc networks called “piconets.” Joining a piconet requires the completion of “inquiry” procedure and “page” procedures, which can take tens of seconds to complete. The invention improves conventional communication systems by including a data field for polling as part of the inquiry message, thereby allowing primary stations to send inquiry messages and conduct polling simultaneously, enabling “a rapid response time without the need for a permanently active communication link” between a parked secondary station and the primary station.In an infringement action, the district court held that the patent’s claims were ineligible under 35 U.S.C. 101. The Federal Circuit reversed, applying the “Alice” test. The claims are directed to a patent-eligible improvement to computer functionality--the reduction of latency experienced by parked secondary stations in communication systems. The claims do not merely recite generalized steps to be performed on a computer using conventional computer activity but are directed to “adding to each inquiry message prior to transmission an additional data field for polling at least one secondary station.” View "Uniloc USA, INC. v. LG Electronics USA, INC." on Justia Law

Oren’s patent covers a system for storing and discharging proppant—a material, such as sand or other particulates, that prevents ground fractures from closing during hydraulic fracturing. Oren sued Grit for infringement, Grit transferred ownership of all the products accused of infringement. Oren and Grit jointly stipulated to dismissal without prejudice of all claims and counterclaims related to the patent. Grit sought inter partes review of claims 1–7. The Board ultimately determined that Grit had not established that any of the challenged claims were unpatentable as obvious over prior art or that the challenged claims were unpatentable, reasoning that neither of the prior references disclosed the patent's configuration. The Federal Circuit vacated, first holding that Grit had standing because Oren previously sued for infringement and is free to reassert those infringement claims. The Board’s determination that prior art does not disclose the patent’s configuration is unsupported by substantial evidence. The Board failed to adequately explain its reasoning. View "Grit Energy Solutions, LLC v. Oren Technologies, LLC" on Justia Law

In 1989, Rudy originally filed the 360 application, entitled “Eyeless, Knotless, Colorable and/or Translucent/Transparent Fishing Hooks with Associatable Apparatus and Methods.” Its lengthy prosecution included numerous amendments and petitions, and four Board appeals. In 2014, the Sixth Circuit affirmed the obviousness of all claims then on appeal. Several claims were the subject of a 2015 office action in which the Examiner rejected them as ineligible for patenting under 35 U.S.C. 101. The Board upheld the determination.The Federal Circuit affirmed, stating that it was applying its own law and the relevant Supreme Court precedent, not the Office Guidance, in analyzing subject matter eligibility. Claim 34 is directed to the abstract idea of selecting a fishing hook based on observed water conditions; its three elements (observing water clarity, measuring light transmittance, and selecting the color of the hook) are each abstract, being mental processes akin to data collection or analysis. Claim 34 fails to recite an inventive concept at step two of the “Alice/Mayo test,” and.nothing in the remaining claims meaningfully distinguishes them from claim 34 in a patent eligibility analysis. View "In Re Rudy" on Justia Law