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

Lynk Labs, Inc. owns U.S. Patent No. 10,687,400, which relates to light-emitting diodes (LEDs) and LED drivers, specifically alternating current (AC) driven LEDs and LED circuits. Samsung Electronics Co., Ltd. filed a petition for inter partes review (IPR) challenging claims 7-20 of the '400 patent for obviousness. Lynk Labs disclaimed claims 14 and 18-20, leaving claims 7-13 and 15-17 in dispute. The Patent Trial and Appeal Board (Board) determined that claims 7-13 and 17 were unpatentable for obviousness based on prior art, including U.S. Patent Application Publication No. 2004/0206970 (Martin), which was filed before the '400 patent's priority date but published after.The Board found that Martin could serve as prior art under 35 U.S.C. § 102(e)(1), which allows a published patent application to be deemed prior art as of its filing date. The Board also determined that claims 15 and 16 were unpatentable based on other grounds not involving Martin. Lynk Labs appealed, arguing that Martin could not be prior art because it was published after the '400 patent's priority date and that the Board erred in its claim constructions.The United States Court of Appeals for the Federal Circuit affirmed the Board's decision. The court held that under § 102(e)(1), a published patent application can be deemed prior art as of its filing date, thus Martin was properly considered prior art. The court also upheld the Board's claim constructions, concluding that the term "a plurality of LEDs connected in series" includes both individual LEDs and groups of LEDs connected in series, and that "matches" in the context of the forward voltage limitation includes both equivalence and a rectified input AC voltage output that is less than the forward voltage of the LEDs. The court found substantial evidence supporting the Board's findings and affirmed the unpatentability of claims 7-13 and 17. View "LYNK LABS, INC. v. SAMSUNG ELECTRONICS CO., LTD. " on Justia Law

BearBox LLC and Austin Storms alleged that Lancium LLC and its co-founders, Michael T. McNamara and Dr. Raymond E. Cline, Jr., improperly used Storms' ideas and patented them. The dispute arose from a conversation at a Bitcoin mining conference and a follow-up email from Storms to McNamara containing BearBox's system details. BearBox claimed that Storms should be named as an inventor on Lancium's U.S. Patent No. 10,608,433.The United States District Court for the District of Delaware granted summary judgment to Lancium, dismissing BearBox's Louisiana state law conversion claim as preempted by federal patent law. The court also excluded BearBox's expert's supplemental report and denied BearBox's claim that Storms was either a sole or joint inventor of the '433 patent.The United States Court of Appeals for the Federal Circuit reviewed the case. The court affirmed the district court's judgment on all issues. It held that BearBox's conversion claim was preempted by federal patent law because it sought patent-like protection for unpatented technology. The court also upheld the exclusion of the expert's supplemental report, finding no abuse of discretion in the district court's decision. Finally, the court agreed with the district court's conclusion that BearBox failed to prove by clear and convincing evidence that Storms was a sole or joint inventor of the '433 patent. The court found that the information Storms shared with Lancium did not establish his contribution to the claimed invention and that Lancium had independently conceived the subject matter of the patent before Storms' communication. View "BEARBOX LLC v. LANCIUM LLC " on Justia Law

Novartis Pharmaceuticals Corporation developed a combination therapy of valsartan and sacubitril, marketed as Entresto®, for treating heart failure. The U.S. Patent 8,101,659 (the ’659 patent) protects this combination. In 2019, several generic manufacturers, including MSN Pharmaceuticals, filed Abbreviated New Drug Applications (ANDAs) to market generic versions of Entresto, prompting Novartis to sue for patent infringement.The United States District Court for the District of Delaware held a three-day bench trial. The court found that the claims of the ’659 patent were not invalid for obviousness, lack of enablement, or indefiniteness but were invalid for lack of written description. Specifically, the court determined that the patent did not adequately describe the combination of valsartan and sacubitril in a complex form, which was a later-discovered form of the combination.The United States Court of Appeals for the Federal Circuit reviewed the case. The court reversed the district court’s determination that the claims lacked an adequate written description, holding that the ’659 patent adequately described the claimed combination of valsartan and sacubitril administered "in combination." The court affirmed the district court’s findings that the claims were not invalid for lack of enablement or obviousness. The court concluded that the patent did not need to enable or describe the later-discovered complex form of the combination, as it was not claimed in the patent. The court also found no clear error in the district court’s determination that the prior art did not provide a motivation to combine valsartan and sacubitril with a reasonable expectation of success.Thus, the Federal Circuit affirmed in part and reversed in part, upholding the validity of the ’659 patent except for the written description finding, which it reversed. View "Novartis Pharmaceuticals Corporation v. Torrent Pharma Inc." on Justia Law

Bitmanagement Software GmBH ("Bitmanagement") developed software for rendering three-dimensional graphics, specifically "BS Contact Geo," which was used by the United States Navy ("Navy") in conjunction with its SPIDERS 3D platform. Initially, Bitmanagement provided the Navy with 100 seat licenses, allowing installation on 100 computers. In 2012, the Navy switched to a floating license, permitting installation on multiple computers but limiting simultaneous users to 20, monitored by a tracking application called Flexera. However, Flexera failed to limit usage, and the software was installed on over 429,000 Navy computers.The United States Court of Federal Claims initially found no liability for copyright infringement. Bitmanagement appealed, and the Federal Circuit held that the Navy's failure to use Flexera breached a material condition of the implied license, constituting copyright infringement. The case was remanded to the Court of Federal Claims to calculate damages. On remand, the court awarded Bitmanagement $154,400, based on a hypothetical negotiation for a combination of seat and floating licenses, rather than per-copy damages.The United States Court of Appeals for the Federal Circuit reviewed the case and affirmed the lower court's decision. The Federal Circuit held that the Court of Federal Claims did not abuse its discretion in awarding damages based on the Navy's actual usage of the software rather than the number of copies made. The court found that the hypothetical negotiation would have resulted in a primarily usage-based licensing scheme, supported by the parties' past licensing practices and the evidence presented. The court also upheld the admission of the government's damages expert's testimony and found no error in the burden of proof allocation. View "BITMANAGEMENT SOFTWARE GMBH v. US " on Justia Law

CeramTec GmbH manufactures artificial hip components made from zirconia-toughened alumina (ZTA) ceramic, which contains chromium oxide (chromia) and is marketed under the name "Biolox Delta." The addition of chromia gives the ceramic a pink color. CeramTec held U.S. Patent 5,830,816 (the '816 patent) for the chemical composition of Biolox Delta until it expired in January 2013. In January 2012, CeramTec applied for trademarks for the pink color of its ceramic hip components, which were registered on the Supplemental Register in April 2013. CoorsTek Bioceramics LLC, a competitor, manufactures similar ceramic hip implants and filed a lawsuit and a cancellation petition with the Trademark Trial and Appeal Board (the Board) in 2014, arguing that the pink color was functional and should not be trademarked.The Board found in favor of CoorsTek, concluding that the pink color was functional for ceramic hip components. The Board analyzed the functionality under the four factors from In re Morton-Norwich Products, Inc., and found that CeramTec's patents and public communications disclosed the functional benefits of chromia, including increased hardness. The Board also found that there was no probative evidence of functionally equivalent designs and conflicting evidence regarding the cost of manufacturing. The Board rejected CeramTec's unclean hands defense, which argued that CoorsTek should be precluded from challenging the trademarks due to its previous statements about chromia's lack of material benefits.The United States Court of Appeals for the Federal Circuit reviewed the case and affirmed the Board's decision. The court held that the Board's findings were supported by substantial evidence and that the Board correctly applied the burden of proof. The court also addressed CeramTec's arguments regarding the Board's analysis of the Morton-Norwich factors and the unclean hands defense, finding no reversible error. The court concluded that the pink color of CeramTec's ceramic hip components was functional and not eligible for trademark protection. View "CERAMTEC GMBH v. COORSTEK BIOCERAMICS LLC " on Justia Law

Honeywell International Inc., Telit Cinterion Deutschland GmbH, and Sierra Wireless, ULC (collectively, "Honeywell") appealed a decision by the Patent Trial and Appeal Board (PTAB) regarding U.S. Patent No. 7,319,718 (the '718 patent). The '718 patent involves a coding method for Channel Quality Indicator (CQI) in third-generation mobile communication systems. The PTAB had declined to hold claims 1, 2, 4-7, 9-13, and 15-23 of the '718 patent unpatentable as obvious.The PTAB found that Honeywell had not shown that a person of ordinary skill in the art would have been motivated to switch the last two bits in the basis sequence table of the Philips reference to provide more protection to the most significant bit (MSB). The PTAB also held that even if such a motivation existed, it had not been demonstrated that this change would be desirable. Honeywell argued that the PTAB's decision was based on multiple legal errors and was not supported by substantial evidence.The United States Court of Appeals for the Federal Circuit reviewed the PTAB's decision. The court found that the PTAB improperly based its conclusion on the '718 patent's primary motivation to maximize system throughput rather than minimizing root-mean-square error or bit error rate. The court noted that the motivation to modify a prior art reference need not be the same as the patentee's motivation. The court also found that the PTAB's finding that Honeywell had not shown a motivation to switch the bits was not supported by substantial evidence, as the Philips reference itself recognized the benefit of protecting the MSB.The court concluded that the PTAB's decision was based on a misunderstanding of the relevant standards for obviousness and anticipation. The court held that the PTAB erred in requiring a consensus among the working group members and in failing to recognize that the claimed modification needed only to be desirable, not the best or preferred approach. The decision of the PTAB was reversed. View "HONEYWELL INTERNATIONAL INC. v. 3G LICENSING, S.A. " on Justia Law

Teva Branded Pharmaceutical Products R&D, Inc., Norton (Waterford) Ltd., and Teva Pharmaceuticals USA, Inc. (collectively, Teva) filed an NDA for their ProAir® HFA Inhalation Aerosol, which contains the active ingredient albuterol sulfate. Teva listed several patents in the FDA's Orange Book, including patents related to the inhaler's dose counter and canister. Amneal Pharmaceuticals of New York, LLC, Amneal Ireland Ltd., Amneal Pharmaceuticals LLC, and Amneal Pharmaceuticals, Inc. (collectively, Amneal) filed an ANDA to market a generic version of ProAir® HFA, asserting that their product did not infringe Teva's patents.The United States District Court for the District of New Jersey ruled in favor of Amneal, ordering Teva to delist its patents from the Orange Book. The court found that Teva's patents did not claim the active ingredient albuterol sulfate but were directed to components of the inhaler device. Teva appealed the decision, arguing that their patents were properly listed because they claimed parts of the NDA product.The United States Court of Appeals for the Federal Circuit reviewed the case and affirmed the district court's decision. The Federal Circuit held that for a patent to be listed in the Orange Book, it must claim the drug for which the application was submitted and approved, which includes the active ingredient. The court rejected Teva's argument that a patent claims the drug if it reads on any part of the NDA product. The court concluded that Teva's patents, which claimed only the device components of the inhaler, did not meet the statutory requirement of claiming the drug, as they did not claim the active ingredient albuterol sulfate. Therefore, the court affirmed the order requiring Teva to delist its patents. View "TEVA BRANDED PHARMACEUTICAL PRODUCTS R&D, INC. v. AMNEAL PHARMACEUTICALS OF NEW YORK, LLC" on Justia Law

CloudofChange, LLC sued NCR Corporation, alleging infringement of U.S. Patent Nos. 9,400,640 and 10,083,012, which disclose an online web-based point-of-sale (POS) builder system. The system allows non-expert business operators to assemble and manage POS systems. NCR's product, NCR Silver, was accused of infringing these patents. NCR Silver is a web-based POS solution that requires merchants to use their own internet connection and POS hardware, although NCR occasionally provides the hardware.The United States District Court for the Western District of Texas found that NCR's merchants' use of the system could be attributed to NCR under principles of vicarious liability and denied NCR's motion for judgment as a matter of law (JMOL) of no direct infringement. The jury found NCR directly infringed the asserted claims, awarded CloudofChange $13.2 million in damages, and found NCR's infringement willful. NCR renewed its motion for JMOL, arguing that it did not use the claimed system as a matter of law, but the district court denied the motion.The United States Court of Appeals for the Federal Circuit reviewed the case and reversed the district court's denial of JMOL. The Federal Circuit held that it is NCR's merchants, not NCR, who use the claimed system by putting it into service and benefiting from it. The court also concluded that NCR is not vicariously liable for its merchants' use of the system, as NCR does not direct or control the merchants' actions in putting the system to use. Consequently, the Federal Circuit vacated the jury verdict and reversed the district court's decision. View "CLOUDOFCHANGE, LLC v. NCR CORPORATION " on Justia Law

Palo Alto Networks, Inc. (PAN) petitioned for inter partes review (IPR) of claims 1–18 of Centripetal Networks, LLC’s U.S. Patent No. 10,530,903, asserting that the claims were unpatentable for obviousness based on three prior-art references. The United States Patent and Trademark Office Patent Trial and Appeal Board (the Board) concluded that PAN had not established by a preponderance of the evidence that the claims would have been obvious over the relevant prior art combination.The Board found that PAN’s argument regarding the motivation to combine the references was not sufficiently articulated in the petition. Specifically, the Board determined that PAN had not provided sufficient evidence to show that a person of ordinary skill in the art would have been motivated to modify Paxton’s computing system to include Sutton’s step of transmitting a notification of malicious activity after Paxton’s correlation step. The Board concluded that PAN had not established that the claims would have been obvious.The United States Court of Appeals for the Federal Circuit reviewed the case and found that the Board erred by failing to clearly explain its holding or rationale regarding the motivation to combine and whether the proposed combination teaches the final limitation of claim 1. The court noted that the Board did not make a clear finding on whether a person of ordinary skill in the art would have been motivated to modify Paxton by adding Sutton’s step of transmitting a notification of malicious activity after Paxton’s correlation step. The court vacated the Board’s decision and remanded the case for further proceedings to clarify and explain its holding on the motivation to combine the references. View "PALO ALTO NETWORKS, INC. v. CENTRIPETAL NETWORKS, LLC " on Justia Law

Crown Packaging Technology, Inc. and CarnaudMetalbox Engineering Ltd. (collectively, “Crown”) sued Belvac Production Machinery, Inc. (“Belvac”) for infringing claims of U.S. Patent Nos. 9,308,570, 9,968,982, and 10,751,784, which relate to necking machines used in manufacturing metal beverage cans. Belvac argued that the patents were invalid under pre-AIA 35 U.S.C. § 102(b) because a necking machine embodying the invention was on sale in the U.S. before the critical date. Both parties sought summary judgment on this issue.The United States District Court for the Western District of Virginia granted summary judgment to Crown, ruling that the patents were not invalid under the on-sale bar, and denied Belvac’s motion. After a jury trial, the court entered a judgment that the asserted claims were not invalid and not infringed. Crown appealed the noninfringement judgment, and Belvac appealed the no invalidity judgment.The United States Court of Appeals for the Federal Circuit reviewed the case. The court held that the letter sent by Crown to Complete Packaging Machinery constituted a commercial offer for sale in the U.S. before the critical date, thus invalidating the patents under § 102(b). The court reversed the district court’s summary judgment in favor of Crown and remanded for entry of judgment in Belvac’s favor. The court did not address the issue of infringement due to the invalidity finding. View "Crown Packaging Technology, Inc. v. Belvac Production Machinery, Inc." on Justia Law