Justia U.S. Federal Circuit Court of Appeals Opinion Summaries

A group of plaintiffs, including a medical device company and its founder, developed and sold a cosmetic penile implant. In 2018, a urologist who later became one of the defendants attended a training session hosted by the plaintiffs, where he signed a non-disclosure agreement and was introduced to certain ideas for improving the implant as well as a list of required surgical instruments. Plaintiffs claimed that these ideas and the instrument list were trade secrets. Soon after, the defendants began developing a competing implant, filed patent applications based on allegedly misappropriated information, and advertised using plaintiffs’ trademark.The United States District Court for the Central District of California heard the case, which included claims for trade secret misappropriation, breach of contract under the nondisclosure agreement, trademark counterfeiting, and incorrect inventorship of two patents. The jury found for the plaintiffs on all major claims, including that the asserted trade secrets were protectable and misappropriated, and that there had been a breach of contract. The court awarded substantial damages, including a reasonable royalty, exemplary damages, and a permanent injunction preventing the defendants from using the trade secrets. The court also found for plaintiffs on their counterfeiting claim and invalidated the two patents for failure to name an alleged true inventor.On appeal, the United States Court of Appeals for the Federal Circuit held there was not legally sufficient evidence to support the jury’s finding that the asserted information qualified as trade secrets under California law, as the core concepts were either generally known or not subject to reasonable secrecy efforts. The court reversed the denial of judgment as a matter of law on the trade secret and breach-of-contract claims, vacated the damages and injunction based on them, and reversed the invalidation of the patents. However, the court affirmed the verdict and damages for trademark counterfeiting. The result was an affirmance in part, reversal in part, and vacatur in part. View "INTERNATIONAL MEDICAL DEVICES, INC. v. CORNELL " on Justia Law

The dispute arose when two pharmaceutical companies, one holding patents on methods of using humanized anti-CGRP antagonist antibodies to treat headaches, accused a competitor of infringing these patents through the marketing of a competing medication. The relevant technology involves antibodies that inhibit the CGRP protein, which is linked to headache by promoting blood vessel dilation. The patents in question claim methods of treating headaches by administering humanized versions of these antibodies. The patent specifications referenced prior art disclosing murine (mouse) antibodies of this type, described methods for their humanization, and included one specific humanized antibody used in the patent holder’s product.Earlier, the U.S. District Court for the District of Massachusetts presided over a jury trial. The jury found that the competitor had willfully infringed the asserted patent claims and rejected arguments that the patents were invalid for lack of written description or enablement. Despite the jury’s verdict, the district court granted judgment as a matter of law for the competitor, ruling that the claims were invalid under 35 U.S.C. § 112 for failing both the written description and enablement requirements. The district court reasoned that the patents did not adequately describe or enable the full scope of the claimed genus of humanized antibodies.On appeal, the United States Court of Appeals for the Federal Circuit reversed the district court’s invalidity judgment. The appellate court held that, in the context of these method claims, the specification and background knowledge in the field were sufficient for a reasonable jury to find that the written description and enablement requirements were met. The court emphasized that the invention concerned the use of a well-known genus of antibodies for a specific purpose, and the specification indicated that all members of the genus would function as claimed. The holding reinstated the jury’s verdict, reversing the district court’s judgment of invalidity, and remanded the case for further proceedings. View "TEVA PHARMACEUTICALS INTERNATIONAL GMBH v. ELI LILLY AND COMPANY " on Justia Law

A company that had previously operated a federal warehouse under contract with the government challenged the government’s decision to override an automatic statutory stay that halted performance of a newly awarded contract to a competitor. After the incumbent’s contract expired, the government solicited new bids and awarded the contract to another company. The incumbent protested this decision to the Government Accountability Office, which triggered an automatic stay under the Competition in Contracting Act (CICA) that prevented the new contractor from beginning performance. A few weeks into the stay period, however, the government determined that urgent and compelling circumstances warranted overriding the stay, and it allowed the new contractor to begin work.The incumbent then filed suit in the United States Court of Federal Claims, contending that the government’s override was arbitrary and capricious in violation of the Administrative Procedure Act. The Court of Federal Claims ruled in favor of the incumbent, issuing a declaratory judgment that the override was arbitrary and capricious. The court found that in the context of a CICA stay, the protestor was not required to prove the traditional four equitable factors for injunctive relief, since Congress had provided for an automatic stay mechanism.On appeal to the United States Court of Appeals for the Federal Circuit, the government argued that the case was moot after the override was withdrawn, but the Federal Circuit found the dispute to be capable of repetition yet evading review. On the merits, the Federal Circuit affirmed the Court of Federal Claims, holding that a protestor seeking to set aside a CICA stay override need only show that the agency’s action was arbitrary and capricious, and is not required to satisfy the four-factor test for equitable relief. The judgment was affirmed and costs were awarded to the protestor. View "LIFE SCIENCE LOGISTICS, LLC v. US " on Justia Law

The dispute concerns patented methods and apparatuses for upgrading software in engine controllers by connecting an external device that can replace and restore software without losing the original version. The patent, with a priority date of March 30, 2001, was asserted by the patent owner against a competitor. The accused infringer responded by alleging that a non-party, Hypertech, had sold a device called the Power Programmer III (PP3) well before the patent’s critical date. The PP3 was alleged to have all features described in the asserted patent claims, based on contemporaneous sales records and analysis of its source code.The United States District Court for the District of Utah reviewed the case. The district court granted summary judgment of invalidity under pre-America Invents Act (AIA) 35 U.S.C. § 102(b), finding that the PP3 was on sale more than one year before the patent’s critical date and that it embodied every claim limitation of the asserted patent. In reaching this decision, the district court admitted deposition testimony from Hypertech’s CEO regarding sales records and the device’s code, holding that, at summary judgment, corporate representatives may testify beyond their personal knowledge. The court also found that the source code itself was not hearsay and, even if it were, could be admitted as a business record.On appeal, the United States Court of Appeals for the Federal Circuit affirmed. It held that the district court did not abuse its discretion in considering the evidence at summary judgment. The court further clarified that the on-sale bar under pre-AIA § 102(b) does not require a sale to publicly disclose the inner workings of the device; it is sufficient that the sale of a device embodying the patented invention occurred before the critical date. Accordingly, the Federal Circuit affirmed the invalidation of all asserted patent claims. View "DEFINITIVE HOLDINGS v. POWERTEQ " on Justia Law

VLSI Technology LLC brought a lawsuit against Intel Corporation, alleging infringement of multiple patents, including U.S. Patent No. 8,566,836. The patent concerns methods and apparatuses for selecting processor cores in multicore systems to execute tasks based on performance parameters, such as processing speed. VLSI asserted several claims from the patent, including both method and apparatus claims, and introduced expert damages theories to support its case.The United States District Court for the Northern District of California addressed several pretrial issues. It struck certain damages theories from VLSI’s expert Dr. Sullivan, concluding that VLSI had not adequately disclosed these theories in its damages contentions as required under local patent rules. The district court also granted Intel summary judgment of noninfringement on two grounds: first, that the alleged infringing acts occurred outside the United States (extraterritoriality), and second, by rejecting VLSI’s doctrine of equivalents (DOE) theory. The district court’s construction of claim terms, particularly importing an “upon identifying” limitation into an apparatus claim, was central to its resolution of the DOE issue.On appeal, the United States Court of Appeals for the Federal Circuit reviewed the district court’s orders. The appellate court reversed the grant of summary judgment of noninfringement on extraterritoriality grounds, finding that a pretrial stipulation between the parties established a U.S. nexus for infringement, and that the district court erred in its analysis of the apparatus claims’ capability to perform the patented functions. The Federal Circuit also reversed the summary judgment for noninfringement under the DOE theory for certain apparatus claims, holding that the district court improperly construed the claims based on prosecution disclaimer. However, the appellate court affirmed the district court’s decision to strike Dr. Sullivan’s NPV and VPU damages theories, finding no abuse of discretion. The case was remanded for further proceedings. View "VLSI TECHNOLOGY LLC v. INTEL CORPORATION " on Justia Law

Fuente Marketing Ltd., a family-owned company selling premium hand-rolled cigars, owns two registered standard character trademarks for the letter X in connection with cigars and related products. Vaporous Technologies, LLC, designs and manufactures oral vaporizers and sought to register a mark featuring an abstract stick figure composed of intersecting lines forming a stylized X and a shaded circle above it, for use with various smoking-related goods. Fuente opposed this trademark application, alleging a likelihood of confusion with its own X marks.The United States Patent and Trademark Office, Trademark Trial and Appeal Board (TTAB), reviewed the opposition. The parties stipulated certain facts, including a description of Vaporous’s mark. The TTAB applied the In re E.I. DuPont DeNemours & Co. factors, finding that while the goods and trade channels overlapped and thus favored a likelihood of confusion, the dissimilarity of the marks weighed heavily against it. The Board found Fuente’s X marks conceptually strong but commercially weak and determined the relevant DuPont factors were either neutral or favored confusion, except for the critical mark similarity factor. Ultimately, the TTAB concluded that the marks were sufficiently distinct in commercial impression, appearance, and sound to avoid confusion and dismissed Fuente’s opposition.On appeal, the United States Court of Appeals for the Federal Circuit reviewed the Board’s factual findings for substantial evidence and its legal conclusions de novo. The Federal Circuit affirmed the TTAB’s decision, holding that the dissimilarity between the marks was sufficient, even in light of other factors, to negate any likelihood of confusion. The court concluded that the Board’s findings were supported by substantial evidence and that Fuente had not shown any harmful legal error. The decision of the TTAB was therefore affirmed. View "FUENTE MARKETING LTD. v. VAPOROUS TECHNOLOGIES, LLC " on Justia Law

A company owned a patent involving technology that allows mobile device applications to be downloaded and installed in the background, without requiring users to visit an application store. Another company, which had previously developed and marketed a product with similar features, initiated a post-grant review proceeding before the United States Patent and Trademark Office’s Patent Trial and Appeal Board, challenging the validity of the patent's original claims. During the proceeding, the patent owner sought to amend the claims by proposing substitute claims, which included additional limitations. The challenger argued that the substitute claims were also unpatentable.The Patent Trial and Appeal Board granted the patent owner’s revised motion to amend, finding that the challenger had not shown, by a preponderance of the evidence, that the substitute claims were unpatentable or patent ineligible. The Board also determined that the original claims were unpatentable based on a prior decision invalidating claims of a related parent patent. The challenger appealed the Board’s decision regarding the substitute claims to the United States Court of Appeals for the Federal Circuit.The United States Court of Appeals for the Federal Circuit considered whether the challenger had Article III standing to appeal. The court found that the challenger failed to demonstrate an injury in fact because it did not provide evidence showing concrete plans to engage in activities that would potentially infringe the substitute claims, nor did it sufficiently link its previous product features to the limitations in the new claims. As a result, the court held that the challenger lacked standing and dismissed the appeal for lack of jurisdiction. The court awarded costs to the patent owner. View "IRONSOURCE LTD. v. DIGITAL TURBINE, INC. " on Justia Law

Two claimants, a veteran and a non-attorney representative, each appealed to the Board of Veterans’ Appeals after an unfavorable Veterans Affairs regional office decision. In both cases, the Board dismissed their appeals as untimely due to a clear miscalculation of the filing deadline. Each claimant then filed a notice of appeal with the United States Court of Appeals for Veterans Claims (“Veterans Court”), seeking to overturn the erroneous Board dismissals and to have their cases reinstated for Board review.While the appeals were pending before the Veterans Court, the Board recognized its mistake and, on its own initiative, reinstated both claimants’ cases to its active docket, giving them the relief they had initially sought in their Veterans Court appeals. For one claimant, the Board later granted the full fee award requested; for the other, the Board remanded the benefit claims, and the regional office granted most but not all of the requested benefits.The Veterans Court, sitting en banc and by panel, dismissed both appeals as moot, holding that the Board’s actions rendered further judicial relief unnecessary. The court reasoned that the claimants had already received the relief available through judicial review, so no live controversy remained. The claimants argued that the filing of a notice of appeal divested the Board of jurisdiction and rendered its subsequent actions void.On appeal, the United States Court of Appeals for the Federal Circuit agreed with the government that the claimants lacked standing. The Federal Circuit held that, because the claimants had obtained all the specific relief sought prior to appealing to the Federal Circuit, there was no remaining injury that the court could redress. Accordingly, the court dismissed both appeals for lack of jurisdiction. View "KERNZ v. COLLINS " on Justia Law

Fortress Iron, LP developed a pre-assembled vertical cable railing system for outdoor spaces, collaborating with two Chinese companies for its manufacture and quality control. Fortress's owner originated the idea, and an employee prepared initial sketches. Employees of the quality control company, HuaPing Huang and Alfonso Lin, contributed critical refinements to the design. After incorporating these suggestions, Fortress filed for and obtained two patents, listing only its owner and employee as inventors, omitting Lin and Huang. Huang later left his company and could not be located.Fortress sued Digger Specialties, Inc. for patent infringement in the United States District Court for the Northern District of Indiana. During litigation, it emerged that Lin and Huang were coinventors. Fortress successfully added Lin to the patents under 35 U.S.C. § 256(a), but was unable to add Huang due to his unavailability. Fortress then moved for partial summary judgment to correct inventorship under 35 U.S.C. § 256(b), while Digger Specialties moved for summary judgment asserting patent invalidity due to incorrect inventorship. The district court denied Fortress’s motion to correct inventorship, holding that notice and an opportunity for hearing must be given to all parties concerned—including Huang—before correction could be ordered. The court granted summary judgment to Digger Specialties, holding the patents invalid for omission of an inventor.The United States Court of Appeals for the Federal Circuit affirmed the district court’s rulings. The Federal Circuit held that an omitted coinventor is a “party concerned” under 35 U.S.C. § 256(b) and must receive notice and an opportunity to be heard before inventorship can be corrected. As Fortress could not satisfy this statutory requirement, correction was unavailable and the patents were invalid. The Federal Circuit thus affirmed the grant of summary judgment of invalidity. View "FORTRESS IRON, LP v. DIGGER SPECIALTIES, INC. " on Justia Law

An attorney entered into a fee agreement with a veteran to represent him in a claim for increased disability benefits from the Department of Veterans Affairs (VA). The agreement provided that the attorney would receive 20% of any past-due benefits awarded, and this fee would be paid directly by the VA from any such award. The veteran had previously requested an increased rating on his own, and after the attorney became involved and filed a notice of disagreement, the VA granted the increase, awarding past-due benefits. The VA initially determined the attorney was entitled to the agreed fee but failed to withhold it from the benefits paid to the veteran, resulting in an overpayment. The VA later paid the attorney and recouped the overpaid amount from the veteran’s future benefits.Subsequently, the veteran challenged the reasonableness of the attorney’s fee before the VA Office of General Counsel (OGC), which concluded that the fee was excessive considering the attorney’s limited involvement and the fact that the award was based on the veteran’s earlier request. The OGC reduced the allowed fee and ordered the attorney to refund the difference to the veteran. The Board of Veterans’ Appeals affirmed this decision. The attorney appealed to the United States Court of Appeals for Veterans Claims, which also affirmed the Board’s determination.The United States Court of Appeals for the Federal Circuit reviewed the case. The court held that, under 38 U.S.C. § 7263(d), it lacked jurisdiction to review decisions by the Veterans Court regarding the reasonableness of attorneys’ fees in such proceedings. The statute clearly provides that such orders by the Veterans Court are final and may not be reviewed by any other court. Therefore, the Federal Circuit dismissed the appeal for lack of jurisdiction. View "KENDALL v. COLLINS " on Justia Law