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

The dispute involved a university and its licensee, who hold a patent describing a biodegradable polymer fiber containing a therapeutic agent, which can be used in medical implants such as drug-eluting stents. The patent claims compositions where the fiber is composed of two immiscible phases: a polymer portion and discrete regions containing the drug. The defendant, a medical device company, manufactured and sold stents with a drug-containing biodegradable coating, which the plaintiffs alleged infringed several claims of the patent.After the lawsuit was transferred to the United States District Court for the District of Delaware, the court construed key claim terms and the case proceeded to a jury trial. The jury found that the defendant infringed the asserted patent claims and did so willfully, rejected the defendant’s invalidity defense based on anticipation by a prior patent (the “Song” reference), and awarded damages. The district court later set aside the willfulness finding but otherwise upheld the verdict and entered judgment for the plaintiffs.On appeal, the United States Court of Appeals for the Federal Circuit reviewed the district court’s denial of the defendant’s motions for judgment as a matter of law de novo. The appellate court concluded that the Song patent anticipated all asserted claims, finding that it expressly disclosed every limitation at issue, including the specific structure of the fiber, drug-containing regions, and release characteristics. The court also determined that no reasonable jury could have found infringement, as the defendant’s stent coating did not meet the “fiber” limitation under the district court’s construction. Accordingly, the Federal Circuit reversed the judgment for the plaintiffs and did not reach the plaintiffs’ cross-appeal regarding willfulness. The court awarded costs to the defendant. View "BOARD OF REGENTS OF THE UNIVERSITY OF TEXAS v. BOSTON SCIENTIFIC CORP. " on Justia Law

A group of plaintiffs, including Michael Kelly and several banking entities under his control, alleged that they lost substantial assets following the 2008 financial crisis when the federal government placed Fannie Mae and Freddie Mac into conservatorship. The plaintiffs had invested significant portions of their Tier 1 Capital in preferred shares of these government-sponsored enterprises, following government incentives. After the conservatorship was imposed, the value of these shares plummeted, causing regulatory insolvency in the banks and leading to receivership and asset liquidation. The plaintiffs claimed a loss of $19.4 billion in combined assets and asserted claims for breach of contract and an unconstitutional Fifth Amendment taking.The United States Court of Federal Claims reviewed the amended complaint, which was filed thirteen years after the events in question. The plaintiffs argued that their filing deadline was tolled during the pendency of Washington Federal v. United States, a related class action filed in the same court and appealed to the United States Court of Appeals for the Federal Circuit. The Federal Claims Court dismissed the complaint for lack of subject-matter jurisdiction, reasoning that the six-year statute of limitations in 28 U.S.C. § 2501 was not tolled by the Washington Federal litigation and was not subject to equitable or class action tolling.The United States Court of Appeals for the Federal Circuit reviewed the dismissal de novo. The court affirmed the decision, holding that 28 U.S.C. § 2501 is a jurisdictional time bar and is not subject to American Pipe tolling or any equitable tolling. As a result, the plaintiffs’ complaint was untimely, and the dismissal by the Court of Federal Claims was affirmed. The court did not reach the merits of the claims, as lack of jurisdiction was dispositive. View "KELLY v. US " on Justia Law

The dispute centers on the government’s use of TETRA® software, developed by 4DD Holdings, LLC. The Department of Defense and Department of Veterans Affairs sought to improve data interoperability for healthcare records and decided to purchase commercial software. After a competitive process, Systems Made Simple (SMS), the government’s contractor, selected TETRA. The government acquired licenses for specific numbers of TETRA’s components through an authorized reseller, Immix Technology, Inc., with explicit restrictions on copying. However, SMS exceeded license limits by making thousands of unauthorized copies during development and testing. 4DD discovered these excess copies and initiated negotiations, ultimately settling for payment for additional cores at the previously agreed license rate. The government later ended its use of TETRA.The United States Court of Federal Claims reviewed the case after 4DD filed suit for copyright infringement. During discovery, evidence destruction by the government led to sanctions. Following a bench trial, the court found the government had significantly exceeded its licenses and assessed damages using a hypothetical negotiation approach, considering factors like the existence of alternative software and the nature of the use, instead of defaulting to the rates in the licensing agreements. The court awarded $12,683,065.86 in damages, including compensatory and non-compensatory (statutory) damages.The United States Court of Appeals for the Federal Circuit examined whether damages should be calculated by reference to the license rates or through a hypothetical negotiation. The court held that neither statute nor precedent compels using the license agreement rates for damages; courts may use hypothetical negotiations when material differences exist between licensed and infringing uses. However, the trial court erred by considering unforeseeable future events (like TETRA’s cancellation) in its damages analysis and by awarding non-compensatory statutory damages against the government. The Federal Circuit affirmed in part, vacated in part, and remanded for further proceedings. View "4DD HOLDINGS, LLC v. US " on Justia Law

A Korean steel manufacturer faced severe financial challenges beginning in 2013 and underwent four debt-to-equity conversions during a corporate restructuring overseen by a committee of creditor banks, including a government-controlled institution. The first three conversions, between 2014 and 2018, were conducted by this creditors’ committee, while the fourth, in 2019, involved a public bidding process in which a private consortium acquired the company. The equity infusions were scrutinized as possible government subsidies subject to countervailing duties under U.S. trade law.Following a 2016 countervailing duty order by the Department of Commerce on certain Korean steel products, Commerce conducted several administrative reviews. In the fourth review, Commerce reversed its earlier findings and determined that the first three debt-to-equity conversions provided a countervailable benefit because private investor participation was found to be insignificant and the company was not equityworthy at the time. Commerce also found that the benefit of these subsidies was not extinguished by the company’s later acquisition, in part because the company did not contest the presumption of benefit pass-through.The United States Court of International Trade remanded Commerce’s findings, holding that Commerce could not change its practice of not re-examining earlier equity infusions absent new information, and that the agency’s determinations lacked sufficient justification and evidentiary support. On further remand, Commerce, under protest, found no countervailable benefit from the first three conversions, and the trial court sustained this result.On appeal, the United States Court of Appeals for the Federal Circuit held that Commerce was permitted to revisit its determinations based on record evidence from later periods, and that its findings of countervailable benefit and benefit pass-through were supported by substantial evidence. The appellate court reversed the trial court’s judgment and remanded with instructions to reinstate Commerce’s original determinations. View "KG DONGBU STEEL CO., LTD. v. US " on Justia Law

The plaintiff, a former U.S. Marine, served from 1999 until his voluntary discharge in 2013. During his service, he suffered traumatic brain injury (TBI) and post-traumatic stress disorder (PTSD, both incurred during deployments to Afghanistan. After returning from his final deployment, he was promoted and served as an instructor, but was never evaluated by a medical review board to determine fitness for duty or eligibility for medical disability retirement. Following discharge, he received a 100 percent disability rating from the Department of Veterans Affairs. In 2018, he applied to the Board for Correction of Naval Records (BCNR) to change his discharge reason to medical disability retirement due to his TBI and PTSD.The BCNR denied his petition in 2019, finding him fit for duty at discharge, and denied again in 2023 after a voluntary remand. The plaintiff challenged these decisions before the United States Court of Federal Claims, which found his complaint timely but ultimately granted judgment for the government, holding that the BCNR’s fitness determination and denial of medical disability retirement were proper.On appeal, the United States Court of Appeals for the Federal Circuit reviewed the case without deference and found several errors. The court held that the BCNR applied the wrong legal standard for assessing fitness, failing to relate the plaintiff’s disabilities to the duties of his office, grade, rank, or rating as required by Navy policy. The BCNR also neglected to consider mandatory factors, such as common military tasks and deployability, in its fitness assessment. Additionally, the court determined that the BCNR failed to apply the required “liberal consideration” standard to the plaintiff’s evidence of unfitness, as mandated by statute and Department of Defense policy. The Federal Circuit vacated the judgment of the Court of Federal Claims and remanded the case for further proceedings consistent with its opinion. View "BEE v. US " on Justia Law

Dougherty Electric, Inc. sought a refund from the IRS for fraud penalties and interest it paid in connection with employment tax liabilities arising from a payroll scheme orchestrated by its sole shareholder between 2001 and 2005. After the shareholder pleaded guilty to tax evasion and was ordered by the U.S. District Court for the Eastern District of Pennsylvania to pay restitution, the IRS audited Dougherty Electric, assessed employment taxes and fraud penalties, and Dougherty Electric paid over $1.5 million. The deadline for filing a refund claim with the IRS was December 11, 2017.Dougherty Electric submitted a timely letter to the IRS on December 7, 2017, asserting a refund claim based on the theory that penalties and interest could not be assessed on criminal restitution, referencing Klein v. Commissioner, 149 T.C. 341 (2017). After the deadline passed, it submitted another letter raising a new theory—that the fraud penalties lacked supervisor approval required by 26 U.S.C. § 6751(b)(1. In 2018, Dougherty Electric submitted formal refund claims and supporting documentation, but the IRS rejected the claims. Dougherty Electric then sued in the United States Court of Federal Claims, which dismissed the complaint for lack of subject-matter jurisdiction, concluding that Dougherty Electric had not timely filed a proper refund claim with the IRS.On appeal, the United States Court of Appeals for the Federal Circuit reviewed the dismissal de novo. The court held that failure to comply with the pre-suit filing requirement of 26 U.S.C. § 7422(a) did not deprive the Court of Federal Claims of subject-matter jurisdiction but did require dismissal for failure to state a claim. The court found that Dougherty Electric’s timely claim satisfied the statutory requirement regarding the Klein theory, but not as to the supervisor approval theory. The court affirmed dismissal as to the supervisor theory, vacated dismissal as to the Klein theory, and remanded for further proceedings. View "DOUGHERTY ELECTRIC, INC. v. US " on Justia Law

This case concerns a dispute over the alleged infringement of a patent related to an insulated overhead door. Cold Chain, LLC owns U.S. Patent No. 9,151,084, and Ridge Corporation became its exclusive licensee in February 2023. Ridge alleged that Kirk NationaLease Co., Truck & Trailer Parts Solutions, Inc., and Altum LLC infringed claims of the patent by manufacturing and selling a roll-up door. Ridge also brought claims for patent inducement, contributory infringement, tortious interference with business relationships, and false patent marking. The accused product is constructed as a “sandwich” panel with two thermoplastic membranes surrounding a foam layer, which is modified to traverse curved tracks.The United States District Court for the Southern District of Ohio initially granted Ridge’s motion for a preliminary injunction, enjoining the defendants from certain activities related to the accused door. The United States Court of Appeals for the Federal Circuit vacated that injunction, finding Ridge lacked standing as it was not an exclusive licensee with all substantial rights. Ridge then amended its complaint, adding Cold Chain as a plaintiff, and the district court again granted a preliminary injunction, concluding the plaintiffs had a strong likelihood of success on the merits.Upon review, the United States Court of Appeals for the Federal Circuit reversed the district court’s order. The court held that the defendants raised substantial questions regarding whether the accused door met three distinct claim limitations: flexibility along the entire length, the foam forming the second outermost surface, and whether the door qualifies as an “insulated overhead door.” The court also found the plaintiffs failed to demonstrate irreparable harm. The preliminary injunction was therefore reversed and the case remanded for further proceedings. View "RIDGE CORP. v. KIRK NATIONALEASE CO. " on Justia Law

The matter concerns a patent covering methods for generating digital images using an external visual server, offloading intensive image processing from a client device to a server that generates, compresses, and transmits images back to the client for display. The patent’s claimed improvement over prior art is the complete transfer of visual processing to the external server, so that the client only handles user input and image decompression. Sony sought inter partes review of twelve claims in the patent, arguing they were obvious in light of prior art, particularly a patent (“Wiltshire”) that described a server-based gaming system transmitting compressed images to clients.Previously, the Patent Trial and Appeal Board (the Board) initially found the claims not unpatentable, concluding Wiltshire did not disclose “generating” images at the server as required by the claims. On Sony’s appeal, the United States Court of Appeals for the Federal Circuit vacated that decision, holding that Wiltshire did disclose generating new images at the server, especially since it referenced games such as Doom that require real-time image generation. The Federal Circuit remanded for further proceedings. On remand, the Board found that Wiltshire, in combination with another reference (“Saha”) disclosing MPEG compression, taught all claim limitations, including the necessary image compression and transmission steps, and held all challenged claims unpatentable as obvious.On appeal, the United States Court of Appeals for the Federal Circuit reviewed whether the Board had exceeded the scope of its mandate or lacked substantial evidence for its findings. The Federal Circuit held that the Board properly followed its mandate, did not improperly revisit issues, and that substantial evidence supported the Board’s finding that the prior art disclosed all elements of the challenged claims. The court affirmed the Board’s decision, holding the claims unpatentable as obvious. View "INTELLECTUAL PIXELS LIMITED v. SONY INTERACTIVE ENTERTAINMENT LLC " on Justia Law

The dispute centered on two patents owned by Wyeth that claim methods of treating non-small cell lung cancer (NSCLC) resistant to two specific drugs, gefitinib and erlotinib, by administering “irreversible” EGFR inhibitors. The patents require the daily administration of a “unit dosage” of an irreversible EGFR inhibitor that covalently binds to specific amino acids in the EGFR protein. The patent specifications list three example compounds, describe in vitro test results, and provide general dosage ranges. However, the specifications do not include any working examples of dosing regimens administered to human patients, nor do they explain how to reliably determine a therapeutically effective and safe dosage for such patients.In the United States District Court for the District of Delaware, Wyeth sued AstraZeneca for alleged infringement based on AstraZeneca’s marketing of an irreversible EGFR inhibitor. After a jury found in Wyeth’s favor, determining the asserted patent claims were not invalid and awarding damages, AstraZeneca renewed its motion for judgment as a matter of law (JMOL), arguing that the patents were invalid for lack of enablement. The district court granted JMOL, concluding that the patents did not provide sufficient guidance for a skilled artisan to determine a suitable daily unit dosage for patients without undue experimentation, especially given the evidence that some disclosed dosage ranges would be toxic in humans.The United States Court of Appeals for the Federal Circuit affirmed the district court’s judgment. The Federal Circuit held that the asserted claims were invalid for lack of enablement under 35 U.S.C. § 112(a). The court concluded that the patent specifications failed to teach skilled artisans how to determine, without undue experimentation, daily unit dosages that would be therapeutically effective and safe for patients across the full scope of the claimed compounds. View "WYETH LLC v. ASTRAZENECA PHARMACEUTICALS LP " on Justia Law

TrackTime, LLC owned two patents claiming methods and systems for navigating within multimedia files on a mobile device using a time-correlated transcript. The patents described creating a synchronization index that allows users to tap on text to play corresponding multimedia segments and to annotate and share transcripts. TrackTime sued Amazon.com Services LLC and Audible, Inc. for patent infringement in the United States District Court for the District of Delaware, asserting claims from both patents.In the District of Delaware, the court ruled on two sets of claims. For the ’978 patent, the court construed certain limitations as means-plus-function terms under 35 U.S.C. § 112(f) and found the claims indefinite due to insufficient structural disclosure in the specification, leading to a holding of invalidity. For the ’638 patent, a jury trial was held focusing on claim 9. The jury found claim 9 not infringed and invalid for anticipation, as well as for other grounds. TrackTime’s post-trial motions for judgment as a matter of law and for a new trial were denied. Final judgment was entered accordingly.The United States Court of Appeals for the Federal Circuit reviewed the case. For the ’978 patent, the court found that further analysis was needed regarding whether the “executable program code” limitations should be considered means-plus-function terms under § 112(f), especially in light of intervening precedent from Dyfan, LLC v. Target Corp. The court vacated the district court’s indefiniteness ruling and remanded for further proceedings. For the ’638 patent, the Federal Circuit affirmed the judgment of invalidity for anticipation, holding there was sufficient evidence for the jury to find claim 9 anticipated by LiveNote and affirming the denial of post-trial motions. The disposition was affirmed in part, vacated in part, and remanded. View "TRACKTIME, LLC v. AMAZON.COM SERVICES LLC " on Justia Law