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

Achates sued QuickOffice, Apple, and others for infringing its patents.Apple sought inter partes review. The Patent and Trademark Office found certain claims invalid, rejecting Achates’s claim that, based on a blank indemnification agreement, Apple had a relationship with QuickOffice and that such relationship caused Apple’s petitions for IPR to be time-barred under 35 U.S.C. 315(b). The Board denied Achates’s motion for discovery of evidence to prove Apple’s specific relationships with the codefendants, finding no basis to believe that even if the blank indemnification agreement had been signed, it would show QuickOffice or any other codefendants to be real parties in interest or in privity with Apple as those terms are used in section 315(b). The Federal Circuit dismissed an appeal for lack of jurisdiction, stating that the decision to institute inter partes review were final and nonappealable under 35 U.S.C. 314(d). View "Achates Reference Publ'g, Inc. v. Apple Inc." on Justia Law

The state filed a complaint, alleging that letters mailed by MPHJ to Vermont businesses informing them that they may be infringing certain patents were deceptive and violated the Vermont Consumer Protection Act, 9 V.S.A. 2451. MPHJ is a non-practicing entity incorporated in Delaware that acts through shell corporations incorporated in many states. MPHJ removed the case twice to federal court, once under the original complaint and once under an amended complaint. The district court remanded the case to state court both times. The Federal Circuit affirmed. While 28 U.S.C. 1442(a)(2), provides jurisdiction “in any civil action arising under, or in any civil action in which a party has asserted a compulsory counterclaim arising under, any Act of Congress relating to patents,” the patents at issue were transferred to MPHJ from the original patent owner; they were not directly “derived from a federal officer.” The complaint neither alleged violation of nor sought relief under the Vermont Bad Faith Assertions of Patent Infringement Act so there is no risk that the state court action can affect the validity of federal law. View "Vermont v. MPHJ Tech. Inv., LLC" on Justia Law

In 2010, Keranos sued 49 parties for infringing three patents by using a specific type of flash memory technology developed by SST, called “SuperFlash,” that implements a split-gate flash memory design. Keranos, which was formed weeks earlier, obtained the rights to the asserted patents from UMC, through an “Exclusive Patent License and Royalty Agreement.” UMC continued to hold the legal title to the asserted patents, all of which expired in 2006-2008. Keranos did not join UMC as co-plaintiff. SST and certain defendants then sued Keranos, UMC, and others, seeking declaratory judgments of noninfringement and invalidity of the same patents. The cases were consolidated into two cases. Following a joint Markman hearing, the district court regrouped the defendants into two new cases: case 00017 pitting Keranos, UMC, and individuals against the manufacturers of the accused products, and case 00018, pitting Keranos against the alleged customers of the accused products who incorporated those products into larger products for sale. The Federal Circuit agreed with the district court that Keranos has standing to sue for infringement of the asserted patents, but vacated and remanded for consideration of Keranos’s motions for leave to amend infringement contentions based on the local patent rules. View "Keranos, LLC v. Silicon Storage Tech., Inc." on Justia Law

Nippon Steel filed suit, charging POSCO with patent infringement and unfair competition. The court entered a protective order prohibiting cross-use of confidential materials which “shall be used by the receiving Party solely for purposes of the prosecution or defense of this action.” POSCO later produced several million pages of documents containing confidential information. Nippon also sued POSCO (based in Korea) in Japan for alleged trade secret misappropriation. POSCO filed a declaratory judgment action in Korea. Discovery in U.S. federal courts is more generous than in Japan and Korea, so Nippon moved the court to modify its discovery protective order for the purposes of providing foreign counsel in the Japanese and Korean actions approximately 200 pages of proprietary documentation relating to POSCO’s manufacturing process. Based on the Federal Rules of Civil Procedure and the balancing framework for modifying discovery orders, a special master concluded that modification should be granted, subject to restrictions to keep the information confidential. Among the restrictions: “[b]efore the documents may be submitted to a foreign court, the court must identify the information and agree that it would be maintained as confidential and restricted from third party access.” The district court and Federal Circuit affirmed. View "In re: Posco" on Justia Law

Carter served in the Army, 1965-1967. In 1989, he sought disability benefits for an injury to his back. The VA denied his claim. He sought to reopen in 2005, filing new evidence that he had aggravated the injury during his service. In 2006, the VA reopened, but denied the claim. The Board of Appeals affirmed in 2009. While appeal was pending, Carter changed counsel. He filed Form 21-22a in March 2010, naming a private attorney in place of Disabled American Veterans. New counsel requested a copy of Carter’s claim file. In June 2010, new counsel and the government jointly requested partial vacatur of the 2009 decision; the Veterans Court remanded the case with instructions. The Board sent a letter to Carter and Disabled American Veterans, stating that additional evidence must be submitted within 90 days (November 4, 2010). Counsel did not receive the letter. On December 13, 2010, the VA sent new counsel Carter’s file, nearly nine months after her requested. She did not immediately read the file and did not see the letter. In February 2011, without hearing from Carter, the Board again denied his claim. Carter’s attorney received a copy of the decision in December 2011. The Veterans Court affirmed. The Federal Circuit vacated. The Veterans Court incorrectly understood the law governing this notice defect. View "Carter v. McDonald" on Justia Law

Versata successfully sued SAP for infringement. The Federal Circuit affirmed a damages award, but vacated an injunction, and remanded. Meanwhile, SAP petitioned the U.S. Patent and Trademark Office to institute covered business method (CBM) review --an administrative review procedure established in the Leahy-Smith America Invents Act (AIA), 125 Stat. 284 (2011), asserting that key claims were unpatentable and invalid. While the Patent Trial and Appeal Board (PTAB) was conducting CBM review, Versata sued to set aside the decision to institute review. The court held that it lacked subject matter jurisdiction: “AIA’s express language, detailed structure and scheme for administrative and judicial review, legislative purpose, and nature of administrative action evince Congress’s clear intent to preclude subject matter jurisdiction over the PTAB’s decision to institute patent reexamination.” The court state that “the decision to institute post-grant review is merely an initial step in the PTAB’s process to resolve the ultimate question of patent validity, not a final agency action. . . . Plaintiff retains an alternative adequate remedy through appeal to the Court of Appeals for the Federal Circuit.” The Federal Circuit affirmed; Versata’s attempt to obtain judicial review was addressed to the decision to institute stage, so the court was correct in barring judicial review, 35 U.S.C. 324(e). View "Versata Dev. Grp. v. Lee" on Justia Law

Celgard is a developer and manufacturer of battery membranes, used to separate chemical cell components in lithium-ion batteries, preventing contact between the positive and negative electrodes. The patents concerns a separator technology that uses a ceramic composite coating that helps prevent electrical shorting. This technology is used in rechargeable batteries in electronic vehicles and consumer electronic devices such as laptops and cellular phones. Celgard is headquartered in Charlotte, North Carolina. SKI is a manufacturer of separators for use in lithium-ion batteries. SKI mainly supplies the separators to third-party manufacturers, but also manufactures batteries that include the separators it produces. SKI’s principal place of business is in Seoul, Korea. All of SKI’s design, manufacturing, and sales operations are based in Korea. Celgard sued SKI for infringement. Celgard sought to establish the district court’s jurisdiction based on allegations that SKI purposefully directed activities at the forum state through sales and offers for sale of its accused separators to residents of North Carolina. The Federal Circuit affirmed dismissal for lack of personal jurisdiction, under either a purposeful-direction theory or a stream-of-commerce theory, noting an absence of evidence that SKI ever sold or offered for sale the accused products in North Carolina. View "Celgard, LLC v. SK Innovation Co., Ltd." on Justia Law

SpeedTrack’s patent, entitled “Method for Accessing Computer Files and Data, Using Linked Categories Assigned to Each Data File Record on Entry of the Data File Record,” describes methods for searching and accessing files stored on a computer system. The claimed methods require use of: “category descriptions,” corresponding to stored files; a “file information directory” containing information linking “category descriptions” to specific system files; and a “search filter,” to locate files that have “category descriptions” matching those in the filter. SpeedTrack sued, alleging that Walmart’s online retail website infringed the patent by permitting visitors to search for available products by selecting pre-defined descriptive categories. Walmart licensed and used Endeca’s software to achieve this functionality. After reexamination by the PTO, the district court granted summary judgment of noninfringement , finding that, because the accused Endeca software uses numerical identifiers instead of descriptive words, users did not use “category descriptions” required by the patent. The Federal Circuit affirmed the claim construction. Speedtrack later sued Office Depot. The Federal Circuit affirmed judgment as a matter of law, finding that SpeedTrack’s claims were barred by res judicata and under the “Kessler doctrine,” which bars suits against customers for use of a product previously found not to infringe in a suit against the product’s supplier. View "SpeedTrack, Inc. v. Office Depot, Inc." on Justia Law

ICP imports products sold to food manufacturers, including “white sauce.” In 1998, Customs issued a Ruling Letter, classifying “white sauce” under Harmonized Tariff Schedule of the U.S. (HTSUS) 2103.90.9060 as “sauces and preparations therefor.” In 2005 Customs issued a Notice, without providing statutory notice and comment, reclassifying “white sauce” under HTSUS 0405.20.3000 as “[d]airy spreads,” effecting a tariff increase of almost 2400%. Waves of litigation followed. In 2007, Customs liquidated entries from 2003-2004 under the Notice, imposing a liability of $28 million. After Customs denied a protest, ICP unsuccessfully asked Customs for relief under 19 U.S.C. 1520(c). ICP did not ask Customs to voluntarily reliquidate under 19 U.S.C. 1501, nor seek administrative review of the protest denial, which became final and could not be suspended pending the Federal Circuit decision concerning the Notice. ICP sued without paying the $28 million owed. The Trade Court dismissed for lack of jurisdiction based on ICP’s failure to pay and for failure to state a claim. In 2014 the Federal Circuit held that the 2005 Notice was subject to the requirements in 19 U.S.C. 1625(c) and was void because Customs failed to comply. The Federal Circuit affirmed with respect to the 2003-2004 entries. To invoke Trade Court jurisdiction, an aggrieved importer must file protest under 19 U.S.C. 1514. Once Customs denies that protest, the importer must pay “all liquidated duties, charges, or exactions” owed before commencing suit,28 U.S.C. 2637. The pre-payment requirement is a valid condition attached to the government’s waiver of immunity, and ICP lacked a constitutionally protected property interest. View "Int'l Custom Prods., Inc v. United States" on Justia Law

Gaymar ‘s patent is directed to a patient temperature control system, including a blanket that can conductively warm or cool the patient. In 2008, Gaymar sued CSZ, asserting that CSZ’s Blanketrol device infringed claims of the patent. The PTO granted CSZ’s inter partes reexamination request and issued a first Office Action rejecting all claims of the patent as anticipated or obvious over prior art cited in CSZ’s request. The district court denied Gaymar’s motion for a preliminary injunction and granted CSZ’s motion to stay the case pending the conclusion of the reexamination. The PTO reaffirmed its rejection of all claims of the patent. Gaymar filed an express abandonment of all claims in 2010, and the PTO concluded the reexamination, cancelling all of the claims. The district court lifted the stay. CSZ unsuccessfully sought attorney’s fees under 35 U.S.C. 285, alleging that Gaymar’s litigation position was frivolous and that Gaymar had engaged in litigation misconduct. Following the Supreme Court’s 2014, decision, Octane Fitness, CSZ unsuccessfully moved for reconsideration. The Federal Circuit affirmed a finding of a lack of objective baselessness, but reversed the exceptional case finding insofar as it was based on CSZ’s purported misconduct. View "Gaymar Indus., Inc. v. Cincinnati Sub-Zero Prods., Inc." on Justia Law