Justia Patents Opinion Summaries

ESIP’s patent relates to “a novel system and method for combining germicidal protection and aromatic diffusion in enclosed habitable spaces.” ’ Products of this type are commonly known as “vaporizers” or “diffusers.” On inter partes review, the Patent Trial and Appeal Board found that certain claims of ESIP’s patent are invalid as obvious. The Federal Circuit affirmed, first rejecting ESIP’s claim that the Board should not have instituted inter partes review because appellee Puzhen failed to identify “all real parties in interest” as required by 35 U.S.C. 312. The Board’s decision to institute inter partes review is final and not appealable. The Board’s determination of obviousness in light of prior art was supported by substantial evidence. View "ESIP Series 2, LLC v. Puzhen Life USA, LLC" on Justia Law

Cochlear’s patent describes a hearing aid with several parts. A vibration-producing component is implanted and mechanically anchored into a patient’s skull on the patient’s deaf side. An external component, which includes a microphone, picks up sound on the patient’s deaf side, processes the sound, and generates vibrations in the implanted part, which are transmitted through th skull to the patient’s non-deaf ear, which then perceives sound originating from the deaf-ear side. The Patent and Trademark Office instituted two inter partes reviews, 35 U.S.C. 311–319, and concluded that claims 4–6 and 11–12 had been proven unpatentable; claims 7–10 were not unpatentable. Cochlear disclaimed claims 1–3 and 13.The Federal Circuit affirmed except with respect to claim 10, as to which it vacated. The Board correctly held that the preamble phrase “for rehabilitation of unilateral hearing loss” is not a limitation on the scope of the apparatus claims. The court upheld obviousness determinations concerning claims 4-6 and found claims 11-12 anticipated by prior art. On remand with respect to claim 10, the Board should consider whether the directivity-dependent-microphone alternative is outside the scope of 35 U.S.C. 112, because it recites a structure (the directivity dependent microphone) that sufficiently corresponds to the claimed directivity means. View "Cochlear Bone Anchored Solutions AB v. Oticon Medical AB" on Justia Law

Lanard owns Design Patent D167 and the 458 copyright for a work entitled “Pencil/Chalk Holder,” relating to a toy chalk holder designed to look like a pencil. Lanard sold the Chalk Pencil, marked to indicate Lanard’s copyright and patent protections, to national retailers. Ja-Ru designed a toy chalk holder, using the Chalk Pencil as a reference sample. Lanard’s retailers stopped ordering the Chalk Pencil and began ordering Ja-Ru’s product. Lanard sued, asserting copyright infringement, design patent infringement, trade dress infringement, and statutory and common law unfair competition.The Federal Circuit affirmed summary judgment that Ja-Ru’s product does not infringe the patent, that the copyright is invalid and alternatively not infringed, and that Ja-Ru’s product does not infringe Lanard’s trade dress. Lanard’s unfair competition claims failed because its other claims failed. The district court properly construed the claims commensurate with the statutory protection for an ornamental design. Lanard impermissibly seeks to exclude any chalk holder in the shape of a pencil and extend the scope of the patent beyond the “new, original and ornamental design,” 35 U.S.C. 171. Lanard’s copyright is for the chalk holder itself; Lanard’s arguments seek protection for the dimensions and shape of the useful article itself. Because the chalk holder itself is not copyright protectable, Lanard cannot demonstrate that it holds a valid copyright. Lanard cannot establish that the Chalk Pencil has acquired secondary meaning. View "Lanard Toys Ltd. v. Dolgencorp LLC" on Justia Law

ECT sued ShoppersChoice for infringement of its 261 patent, titled “Secure Notification Messaging with User Option to Communicate with Delivery or Pickup Representative.” The Federal Circuit affirmed a judgment on the pleadings that claim 11 of the patent is invalid under 35 U.S.C. 101, as directed to the abstract idea of providing advance notification of the pickup or delivery of a mobile thing. Claims, like claim 11, that are directed to longstanding commercial practices do not pass step one of the two-part section 101 “Alice” test. The process of recording authentication information—such as the customer’s name, address, and telephone number—and including that information in subsequent communications with the customer is abstract not only because it is a longstanding commercial practice, but also because it amounts to nothing more than gathering, storing, and transmitting information, quite unlike the “improvement[s] in computer capabilities” that have been found eligible for patenting at step one. The claims do not include an inventive concept sufficient to transform the claimed abstract idea into a patent-eligible application. View "Electronic Communication Technologies, LLC v. ShoppersChoice.com, LLC" on Justia Law

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