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

The company's patent covers polyol-based resin blends and methods of using them to create closed-cell polyurethane and polyisocyanurate-based foams, used for thermal insulation boards for the walls of homes and buildings. On reexamination, the examiner ruled that all the claims were invalid as anticipated under 35 U.S.C. 102(b) or, in the alternative, obvious under 35 U.S.C. 103(a). The Board affirmed, relying upon the identical prior art references the examiner had cited. The Federal Circuit vacated, holding that the Board relied on new findings of fact to support rejection and failed to identify this rejection as a new ground, so that the company's notice rights were violated (5 U.S.C. 554(b)(3); 35 U.S.C. 6(b). Had the Board labeled its rejection as a new ground of rejection, the company could have reopened its prosecution to address the newly-alleged deficiencies in its Declaration with the examiner.

A manufacturer of cable connectors that are used to connect coaxial cables to electronic devices filed a complaint with the International Trade Commission asserting that the importation, sale for importation, and sale after importation of certain coaxial cable connectors infringed four of its patents and therefore violated 19 U.S.C. 1337. Its 539 design patent patent issued in 2001 and describes an ornamental design for a coaxial cable connector. The Commission ruled that the company failed to satisfy the requirement of showing that a "domestic industry" exists or was being established. The Federal Circuit affirmed. The company's enforcement litigation expenses did not constitute "substantial investment in exploitation" of the 539 patent. Those costs were not sufficiently related to licensing. The company has no formal licensing program and the litigation opponent was its only licensee.

The patent, entitled "Low Friction Rotary Knife," is directed to a power operated knife used principally in the meat packing and other commercial food processing industries. While plaintiff's claim of invalidity, asserting anticipation in its pre-1998 prior art blades, was pending, defendant sought reexamination. The validity of the claims was affirmed. The district court rejected a claim of invalidity, but found no infringement. The Federal Circuit affirmed denial of judgment as a matter of law on the issue of anticipation and affirmed with respect to infringement. The district court had excluded references and denied a new trial on the issue of obviousness, based on its interpretation of 35 U.S.C. 315(c)'s reference to "final determination." The Federal Circuit vacated and remanded that decision.

Defendant's process patent is directed to methods for preventing the contamination of exposed semiconductor chip terminals during encapsulation of the chips in molded plastic. Plaintiff, one of defendant's licensees, sought a declaration of non-infringement. The parties have been involved in other litigation. The district court dismissed for lack of subject matter jurisdiction. The Federal Circuit reversed. The dispute between the parties, as to whether the license agreement requires royalty payments to be tied to valid patent coverage, is sufficient to support declaratory judgment jurisdiction.

The patents at issue relate to balloon-expandable stents, used to treat occluded blood vessels. Following a remand, the district court found that defendants did not literally infringe the patents and rejected claims that the patents were invalid for lack of description or due to inequitable conduct. The Federal Circuit affirmed. Based on the court's proper clarification of its construction of the term "undulating," there was not substantial evidence to support a finding of infringement, nor was there substantial evidence of inequitable conduct.

Plaintiff owns the 245 Patent, which originally issued in 2005 and claims p-GlcNAc, a polymer extracted from another polymer called chitin, that accelerates hemostasis (the process which causes bleeding to stop) and is useful in trauma units for treating serious wounds. The district court found infringement. While the case was pending, the patent was re-examined; the scope of the claims changed. The Federal Circuit vacated an injunction and award of damages and remanded. Defendant has absolute intervening rights with respect to products manufactured before the date of reissue. The court must determine whether defendant has equitable intervening rights with respect to products manufactured after the date of reissue. A contention that the patent, as originally issued, was invalid is moot.

The Patent, entitled "Spread Spectrum Digital Screening," issued in 1997 and relates to digital half-toning, a process of converting a continuous tone image, such as a photo, to a half-tone image, consisting of a pattern of minute dots. Newspapers are half-tone. In an infringement case, the district court granted a motion to stay the case against the Kodak Customers pending the outcome of plaintiff's action against Kodak in New York. The Federal Circuit dismissed for lack of jurisdiction, finding that there was no final judgment within the meaning of 28 U.S.C. 1295(a)(1), and and that the the decision did not otherwise qualify as an appealable order.

The jury found that Amazon's 1-click purchasing system infringes plaintiff's 710 patent, entitled "Object-Based On-Line Transaction Infrastructure," which covers an online purchasing system, but that all of the claims of the patent were invalid, and that Amazon did not infringe any of the other patents at issue. The judge granted a plaintiff's post-verdict motion and ruled that the 710 patent claims were not invalid. The Federal Circuit reversed the post-verdict ruling and held that each asserted claim of the 710 Patent is invalid as anticipated and the asserted claims of the other patents remain valid and not infringed.

The 605 and 247 patents cover aspects of genetically modified soybeans. The patent-holder sued one of its licensed seed producers, alleging infringement rather than breach of the agreement between the two. The district found infringement and awarded about $84,000. The Federal Circuit affirmed, rejecting an argument that patent rights were exhausted with respect to all of the soybean seeds that are present in grain elevators as undifferentiated commodity. The court also rejected an argument that plaintiff could not recover pre-complaint damages because it did not provide actual notice and did not mark or require growers to mark second-generation seeds in compliance with 35 U.S.C. 287(a). Defendant had actual notice.

The patent application discloses an improved diaper; traditional diapers are constructed using an absorbent core of fluff pulp, interposed between a water barrier sheet and a permeable layer. For highest absorption, fluff pulp is treated with a chemical cross-linking agent. The application described a diaper that would avoid the expense of using chemically cross-linked fluff pulp while retaining superior absorbency properties, by extracting wood pulp with a caustic substance at low temperature, followed by dry and fluff. The examiner rejected the application (35 U.S.C. 103) as obvious from a prior patent. The Board sustained the rejection. The Federal Circuit vacated and remanded because the basis of the Board's rejection differed from the basis given by the examiner.