Justia U.S. Federal Circuit Court of Appeals Opinion SummariesArticles Posted in Intellectual Property
In Re Monolithic Power Systems, Inc.
Bel Power sued, alleging that Monolithic infringes Bel’s patents by selling certain power modules to original equipment manufacturers and other distributors and customers that use the products in their own electronic devices. Monolithic moved to dismiss or transfer for lack of venue under 28 U.S.C. 1406(a), arguing that, as a Delaware corporation, it does not “reside” in the Western District of Texas, that it does not own or lease any property in that district, and that the homes of four full-time remote employees in the Western District identified in the complaint to support venue do not constitute a “regular and established place of business.” Monolithic alternatively moved to transfer to the Northern District of California.The Federal Circuit upheld the denial of both requests. Monolithic viewed maintaining a business presence in the Western District as important, as evidenced by a history of soliciting employment in Austin to support local customers, even if none of its Western District employees were required to reside there. Monolithic provided certain Western District employees with lab equipment or products to be used in or distributed from their homes as part of their responsibilities. The convenience of parties and witnesses and the interests of justice did not weigh in favor of transfer under the multi-factor approach; Monolithic failed to demonstrate that California was clearly more convenient than the Western District. View "In Re Monolithic Power Systems, Inc." on Justia Law
Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp.,
Merck’s 708 patent describes sitagliptin dihydrogen phosphate (sitagliptin DHP), which belongs to the class of dipeptidyl peptidase-IV (DP-IV) inhibitors that can be used for treating non-insulin-dependent (Type 2) diabetes. Mylan petitioned for inter partes review, arguing that claims 1–3, 17, 19, and 21–23 were anticipated by the Merck-owned 489 publication, and the equivalent 871 patent (collectively, Edmondson) Edmondson is directed to compounds that are DP-IV inhibitors, useful in the treatment or prevention of diseases in which the dipeptidyl peptidase-IV enzyme is involved, such as diabetes and particularly type 2 diabetes. Mylan also argued that claims 1–4, 17, 19, and 21–23 would have been obvious over Edmondson and two additional publications.The Federal Circuit affirmed the Patent and Trademark Office Patent Trial and Appeal Board holding that Mylan failed to show that claims 1–4, 17, 19, and 21–23 were anticipated or would have been obvious over the cited prior art at the time the alleged invention was made. Merck reduced to practice more than what is shown in Edmondson for the claimed subject matter. View "Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp.," on Justia Law
Cooperative Entertainment, Inc. v. Kollective Technology, Inc. (
Cooperative’s ’452 patent relates to systems and methods of structuring a peer-to-peer (P2P) dynamic network for distributing large files, namely videos and video games. In prior art systems, video streaming was controlled by content distribution networks (CDNs), where the content was “distributed directly from the CDN server originating the content.” The 452 patent claims methods and systems for a network in which content distribution occurs “outside controlled networks and/or [CDNs],” i.e., outside a “static network of controlled systems,” using dynamic P2P networks comprising “peer nodes,” i.e., nodes consuming the same content contemporaneously, that transmit content directly to each other instead of receiving content from the CDN.The Federal Circuit reversed the dismissal of Cooperative’s infringement suit. The complaint contains several alleged inventive concepts which the specification touts as specific improvements in the distribution of data compared to the prior art, which should have precluded the district court’s holding on ineligibility (35 U.S.C. 101). One such concept is the required dynamic P2P network wherein multiple peer nodes consume the same content and are configured to communicate outside the CDNs. Another requires trace routes to be used in content segmentation. View "Cooperative Entertainment, Inc. v. Kollective Technology, Inc. (" on Justia Law
Provisur Technologies, Inc. v. Weber, Inc.
Provisur’s patent describes a method and system for “classifying slices or a portion cut from a food product according to an optical image of the slice.” Some food products, like bacon or cold cuts, are packaged and sold in groups of slices and “in accordance with a particular weight requirement.” Systems of conveyors and slicers create and gather these groups for packaging. The patent explains that, while slicing apparatuses and conveyor systems were known in the art, it remained “desirable to provide a system which would be directly responsive to the quality of cut slices and which would provide a compact and effective arrangement to classify slices based on fat content and fat deposits.” The patent describes an apparatus that includes a slicing station with a blade for removing slices from a food product.On inter partes review, the Patent Trial and Appeal Board concluded that Weber had proved unpatentable as obvious claims 1–10, 13, and 14 but not claims 11 or 12. The Federal Circuit vacated in part. The Board erred in deciding that claims 11 and 12 are not obvious; on remand, should the Board find the independent claims obvious after considering the surface-area limitations, claims 11 and 12 are also obvious in view of the Board’s determinations regarding claims 2, 6, and 7. View "Provisur Technologies, Inc. v. Weber, Inc." on Justia Law
Polaris Innovations Ltd. v. Brent
Polaris’s 993 patent, titled “Control Component for Controlling a Semiconductor Memory Component in a Semiconductor Memory Module,” explains that the control component can send both address signals and control signals through the same leads, allowing the control component to perform its functions with fewer leads. Its 505 patent involves a shared-resource system in which logical controls are used to manage resource requests.In inter partes review (IPR) proceedings, the Patent Trial and Appeal Board determined that all challenged claims are unpatentable. The Federal Circuit affirmed. Because the Board decided the merits before Polaris filed its motion to terminate the IPR Polaris’s motion was untimely. The Board properly exercised its discretion. The court rejected Polaris’s argument that the Board misconstrued the claim terms “memory chips” and “semiconductor memory component” within the claim phrase “wherein the semiconductor memory component comprises a plurality of memory chips.” Prior art discloses all claim limitations under the Board’s claim constructions. The Board correctly adopted Polaris’s expert’s definition of “single buffer” as the broadest reasonable interpretation consistent with the specification, which discloses that resource tags "may be located in disparate locations." Substantial evidence supports a finding that the prior art discloses a “resource tag buffer.” View "Polaris Innovations Ltd. v. Brent" on Justia Law
SawStop Holding LLC v. Vida;
Sawstop requested patent term adjustments (PTA) under 35 U.S.C. 154(b)(C), which grants day-for-day extensions for delays attributable to appellate review by the Patent Trial and Appeal Board or by a Federal court in a case in which the patent was issued under a decision in the review reversing an adverse determination of patentability.With respect to the application that led to the issuance of the 476 patent, the Board had affirmed the rejection of claim 11 on new grounds. On remand, SawStop filed amendments and a request for continued examination. The examiner eventually allowed claim 11. The PTO made no adjustment to the patent's term because “the patent only issue[d] after further prosecution” and amendment. The district court and Federal Circuit agreed. Because claim 11 was subject to a new ground of rejection on appeal, the application was not “issued under a decision in the review reversing an adverse determination of patentability.” With respect to the 796 patent, PTA had been granted for the delay incurred in the successful reversal of the rejection of claim 2 but was not granted for Sawstop’s appeal to the district court because the appeal did not “revers[e] an adverse determination of patentability.” Claim 1 remained subject to an outstanding provisional double patenting rejection and was unpatentable both before and after the appeal. Claim 1 was canceled and did not issue in the patent. View "SawStop Holding LLC v. Vida;" on Justia Law
Hyatt v. United States Patent and Trademark Office
During the GATT Bubble–a 1995 application “rush” by applicants who wanted their patent claims to be governed by the pre-35 U.S.C. 154(a)(2) patent term, Hyatt filed the 938 application, which claims priority to applications filed as early as 1983. The PTO completed an initial examination in 2003, but from 2003-2012, stayed the examination of many of Hyatt’s applications pending litigation. In 2013, an examiner instructed Hyatt to select claims for examination as part of efforts to manage Hyatt’s approximately 400 pending applications. Hyatt selected eight of approximately 200 claims in that application. Hyatt responded to a non-final rejection in 2015 with significant claim amendments. The Examiner determined that the amendments shifted seven claims to different species of computer systems and processes and issued a restriction requirement between the originally-selected claims and the amended claims, requiring Hyatt to prosecute his amended claims in a new application.The Federal Circuit affirmed summary judgment in favor of the PTO. Hyatt failed to disclose claims to a separate invention and attempted to file them years after 1995. Withholding these claims falls within the 37 C.F.R. 1.129 exception to the general rule prohibiting restriction: In an application that has been pending for at least three years as of June 8, 1995, no requirement for restriction shall be made or maintained in the application after June 8, 1995, except where the examiner has not made a requirement for restriction in the present or parent application before April 8, 1995, due to actions by the applicant. Hyatt’s amended claims are subject to the new patent term. View "Hyatt v. United States Patent and Trademark Office" on Justia Law
Arendi S.A.R.L. v. LG Electronics Inc.
Arendi sued LG for infringement. The District of Delaware’s rules required Arendi to “specifically identify the accused products and the asserted patent(s)” and to produce "an initial claim chart relating each accused product to the asserted claims each product allegedly infringes.” Arendi filed its Disclosure, listing hundreds of LG products as infringing four claims of the 843 patent but provided claim charts for only one product—LG’s Rebel 4 phone, labeling the Rebel 4 as “exemplary.” LG objected, stating that, “[s]hould Arendi intend to accuse [non-Rebel 4] products, then Arendi must promptly provide claim charts demonstrating how these products infringe or explain why Arendi contends the current claim charts are representative of specific non-charted products.” Arendi did not respond. The parties later agreed on eight representative products to represent all accused products, including seven non-Rebel 4 products. Arendi did not supplement its Disclosure. In response to an interrogatory relating to those eight products, LG reiterated that Arendi only provided infringement contentions for the Rebel 4. Arendi provided its expert report months after the close of fact discovery.The district court granted LG's motion to strike portions of that report because it “disclosed—for the first time—infringement contentions for five of” the non-Rebel 4 representative products. Arendi still did not supplement its Disclosure but filed a second complaint, asserting that LG’s non-Rebel 4 products infringed the 843 patent. The Federal Circuit affirmed the dismissal of the complaint, citing the duplicative-litigation doctrine. View "Arendi S.A.R.L. v. LG Electronics Inc." on Justia Law
INVT SPE LLC v. International Trade Commission
INVT alleged that the importation and sale of personal devices, such as smartphones, smartwatches, and tablets, infringed INVT's patents. An ALJ determined that the accused devices did not infringe claims 3 and 4 of the 590 patent and claims 1 and 2 of the 439 patent and that INVT had failed to meet the technical prong of the domestic industry requirement as to those claims.The International Trade Commission affirmed the finding of no 19 U.S.C. 1337 (section 337) violation. The Federal Circuit affirmed the determination with respect to the 439 patent because INVT failed to show infringement and the existence of a domestic industry. The 439 patent relates to wireless communication systems, specifically an improvement to adaptive modulation and coding, which is a technique used to transmit signals in an orthogonal frequency division multiplexing system. The asserted 439 claims are drawn to “capability” but for infringement purposes, a computer-implemented claim drawn to a functional capability requires some showing that the accused computer-implemented device is programmed or otherwise configured, without modification, to perform the claimed function when in operation. INVT failed to establish that the accused devices, when put into operation, will ever perform the particular functions recited in the asserted claims. The determination with respect to the 590 patent is moot based on the patent’s March 2022 expiration. View "INVT SPE LLC v. International Trade Commission" on Justia Law
Best Medical International, Inc. v. Elekta Inc.,
BMI’s 096 patent is generally directed to a method and apparatus for conformal radiation therapy of tumors using a pre-determined radiation dose. To account for the three-dimensionality of tumors, the gantry of a radiation machine—which houses the radiation beam—rotates around a patient to irradiate the tumor from different angles. The gantry uses a multileaf collimator to narrow the radiation beam and conform it to the shape of the tumor. The 096 patent purports to improve upon prior art by computing an optimal radiation beam arrangement that maximizes radiation of a tumor while minimizing radiation of healthy tissue.The Patent Trial and Appeal Board, in two inter partes reviews, found that a person having ordinary skill in the art would have had formal computer programming experience. Elekta’s expert had that experience; BMI’s did not. The Board accordingly discounted BMI’s expert testimony and determined Elekta had proven that challenged claims 1, 43, 44, and 46 were unpatentable as obvious. Before filing an appeal, BMI finally canceled claim 1 during an ex parte reexamination. The Federal Circuit affirmed unpatentability determinations with respect to the other claims as supported by substantial evidence regarding the level of skill in the art and each of the remaining Graham factors. View "Best Medical International, Inc. v. Elekta Inc.," on Justia Law