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

The district court dismissed Sanderling’s infringement suit due to the asserted claims’ lack of patent-eligible subject matter under 35 U.S.C. 101. The patents at issue share the title “Dynamic Promotional Layout Management and Distribution Rules,” and are directed to a method using distribution rules to load digital image branding functions to users when certain conditions are met. The patents share a common specification, which describes the digital image branding function as a transformation, using, for example, an icon or a filter, that displays in a client terminal for the user to apply to a digital image. A distribution rule “is a rule used in determining how to target a group of end users, for instance, a rule that determines that only a group of end users having certain characteristics and/or match a certain requirement.”The Federal Circuit affirmed. The claims are directed to an abstract idea, not a specific improvement in computer functionality. The claims describe the use of computers as a tool to identify when a condition is met and then to distribute information based on satisfaction of that condition. The elements of the representative claim, individually and as an ordered combination, do not constitute an inventive concept. View "Sanderling Management Ltd. v. Snap Inc." on Justia Law

Sequoia’s patent is directed to “a method for managing a logical volume for minimizing a size of metadata and supporting dynamic online resizing,” and “a computer-readable recording medium storing a program or data structure for embodying the method.” The patent describes a preferred embodiment that has three storage virtualizations: extents, disk partitions, and logical volume. The accused product, Red Hat’s software tool, can create and resize logical volumes with units smaller than a whole disk partition, such as extents. Red Hat’s petitions for inter partes reviews were rejected.In infringement litigation, the Federal Circuit reversed a finding of invalidity based on the construction of “computer-readable recording medium” to include transitory media (signals or waves). Transitory media are ineligible statutory subject matter under 35 U.S.C. 101. The district court erred in relying on extrinsic evidence that was clearly at odds with the intrinsic evidence.The Federal Circuit affirmed a finding of noninfringement, upholding the constructions of a “disk partition” to mean a “section of a disk that is a minimum unit of a logical volume” and a “logical volume” to mean an “extensible union of more than one disk partition, the size of which is resized in disk partition units.” View "Sequoia Technology, LLC v. Dell Inc." on Justia Law

HCM sued Philip Morris for allegedly infringing at least one claim of HCM’s patent, which is directed to an electronic nicotine-delivery device. Philip Morris manufactures the IQOS electronic nicotine-delivery system, which “heats tobacco-filled sticks wrapped in paper [HeatSticks] to generate a nicotine-containing aerosol.” Philip Morris markets IQOS as a “heat-not-burn” system; the tobacco is heated at a low enough temperature that the tobacco does not burn, therefore, in Philip Morris’s view, preventing combustion.Philip Morris argued that an exhibit HCM attached to its original complaint conclusively demonstrated that IQOS does not initiate a combustion reaction as required by the asserted claims. The district court agreed that a Modified Risk Tobacco Product Application that Philip Morris submitted to the FDA when it sought a modified risk order to sell IQOS established that IQOS did not initiate a combustion reaction and thus did not infringe the asserted claims. The court granted Philip Morris attorneys’ fees under 35 U.S.C. 285.The Federal Circuit reversed. HCM’s original and amended complaints recite sufficient allegations to raise a facially plausible case of patent infringement and specifically rejected the notion that IQOS does not initiate a combustion reaction. View "Healthier Choices Management Corp. v. Philip Morris USA, Inc." on Justia Law

Arbutus’s 127 patent states that its purpose is to allow for more efficient methods and compositions for introducing nucleic acids into cells and methods of downregulating gene expression. The invention is, in part, the “surprising discovery” of the Morphology Limitation when one controls two factors: the lipid compositions of a SNALP formulation and formation process.Moderna sought inter partes review (IPR), arguing that the 069 patent, which was filed in April 2009, and claims priority to an application filed in April 2008, anticipated every claim. The 069 patent lists five inventors, three of which are listed on the 127 patent. The 069 patent, its child patent (435 patent), and the 127 patent are commonly owned by Arbutus. While the 127 patent was filed during the pendency of the 069 patent, it does not claim priority to it.The Patent Trial and Appeal Board found claims 1–22 of the 127 patent invalid as anticipated. The Federal Circuit affirmed. The Board’s determination that the Morphology Limitation of claim 1 is inherently anticipated by the 069 patent is supported by substantial evidence as is its finding that the 069 patent and its incorporated references describe nucleic acid-lipid particles and disclose these amounts as an inherent property of the formulations. View "Arbutus Biopharma Corp. v. Modernatx, Inc." on Justia Law

SAS creates and sells software used for data access, management, analysis, and presentation. The SAS System allows users to input user-written programs into its graphical user interface to complete analytics tasks. Users write commands in SAS’s programming language. An earlier version of the SAS System is in the public domain. SAS has copyright registrations that cover various aspects of the SAS System. WPL created a competitor, the WPS System, which uses the SAS Language to allow users to run user-written programs to complete analytics tasks such as data access, management, analysis, and presentation. SAS sued WPL, alleging copyright infringement of the SAS System and SAS user manuals.The district court first concluded that SAS possessed valid copyright registrations covering SAS’s asserted software, then determined that WPL provided evidence that showed the software program elements were not within the scope of protection under copyright law. Applying the abstraction-filtration-comparison test, the district court determined that SAS failed to establish copyrightability.The Federal Circuit affirmed the dismissal of the suit. The court interpreted “copyrightability” as meaning whether the specific elements of a copyrighted work that are asserted in a copyright infringement action fall within the scope of protection extended to that particular work under copyright law. The district court acted properly in conducting a pretrial “Copyrightability Hearing.” View "SAS Institute, Inc. v. World Programming Ltd." on Justia Law

Salazar’s patent describes technology for wireless and wired communications, including command, control, and sensing for two-way communication of sound, voice, and data “with any appliance and/or apparatus capable of transmitting and/or receiving compatible sound, voice, and data signals.” ’The patent expired in 2015. In a subsequent suit, a jury found HTC did not infringe the patent but did not decide whether the patent was valid. Salazar later sued AT&T, asserting the patent against the same products he previously challenged. HTC intervened.At claim construction, the court held that the claims require one microprocessor that is capable of performing the "recited ‘generating,’ ‘creating,’ ‘retrieving,’ and ‘generating’ functions,” explaining that the claim term provided certain functions that the “said microprocessor” must be “necessarily configured to perform as well as the structural relationship between ‘said microprocessor’ and other structural elements.” The court denied AT&T’s motion for summary judgment, based on claim preclusion and Supreme Court precedent, which prevents harassment of customers of an adjudged noninfringer. The jury found that the accused products did not infringe and that the patent was not invalid. The Federal Circuit affirmed the judgment of noninfringement, agreeing with the claim construction, did not reach AT&T’s preclusion arguments, and held that AT&T waived its challenge concerning anticipation. View "Salazar v. AT&T Mobility LLC" on Justia Law

Apple sought to register the mark APPLE MUSIC for the production and distribution of sound recordings and arranging, organizing, conducting, and presenting live musical performances. Apple began using the mark in 2015 when it launched its music streaming service. Bertini, a professional musician, opposed the registration. Bertini has used the mark APPLE JAZZ in connection with festivals and concerts since 1985. In the mid-1990s, Bertini began using APPLE JAZZ to issue and distribute sound recordings. Bertini argued that Apple’s registration would likely cause confusion with Bertini’s common law trademark, 15 U.S.C. 1052(d).The Trademark Trial and Appeal Board dismissed Bertini’s opposition, finding that Bertini’s common law mark APPLE JAZZ is inherently distinctive and that Bertini may claim a 1985 priority date in connection with “[a]rranging, organizing, conducting, and presenting concerts [and] live musical performances.” Apple successfully argued that it was entitled to a 1968 priority date based on trademark rights it purchased from Apple Corps, the Beatles’ record company, in 2007. That registration covers the mark APPLE for “[g]ramophone records featuring music” and “audio compact discs featuring music.” The Board found that Apple was entitled to tack its 2015 use of APPLE MUSIC onto Apple Corps’ 1968 use of APPLE.The Federal Circuit reversed. Apple cannot tack its use of APPLE MUSIC for live musical performances onto Apple Corps’ use of APPLE for gramophone records and its application to register APPLE MUSIC must be denied. View "Bertini v. Apple Inc." on Justia Law

Ironburg sued Valve for infringing its patent, entitled “Controller for Video Game Console.” In 2021, after much pretrial litigation and a change of venue, a trial was held, with each juror attending remotely through videoconferencing technology. The parties and the court agreed that each juror should have the accused product in hand. The device was mailed to each juror. Before trial, the court rejected invalidity challenges based on the purported indefiniteness of several claim terms and held that Valve was estopped from pressing its prior-art-based invalidity defenses as a consequence of Valve’s partially instituted inter partes review. The jury returned a verdict of willful infringement and assessed damages ($4 million). The court denied Ironburg’s motion to enhance damages.The Federal Circuit affirmed that the terms “elongate member” and “extends substantially the full distance between the top edge and the bottom edge” are not indefinite; the claims are infringed; the infringement was willful; damages will not be enhanced; and Valve is estopped from litigating the prior-art grounds on which IPR was requested but not instituted. The court vacated the holding that Valve was estopped from litigating its later-discovered invalidity grounds; the court erred in placing the burden on Valve concerning whether a skilled searcher conducting a diligent search reasonably would have been expected to discover certain grounds for invalidating claims. View "Ironburg Inventions Ltd. v. Valve Corp." on Justia Law

Reynolds filed a complaint at the International Trade Commission alleging that Philip Morris violated Section 337 of the Tariff Act, 19 U.S.C. 1337, through the importation and sale of tobacco products (the IQOS line of electronic nicotine delivery system products) that infringed certain claims of the 123 and 915 patents. The patents are directed to electrically powered “smoking articles” that heat tobacco instead of burning it, providing an inhalable substance in vapor or aerosol form. After an investigation, the Commission barred Philip Morris and its affiliates from importing products infringing the asserted patents.The Federal Circuit affirmed. The Commission satisfied its Section 337 duty to “consult with” the Department of Health and Human Services and asked interested government agencies, including the FDA, to provide written submissions on the public interest factor. The Commission provided a sufficient basis for the issuance of an exclusion order. Philip Morris’s argument that Reynolds’ products that had not received FDA authorization are precluded from consideration by Section 337 for purposes of its domestic industry requirement has no merit. The court also upheld findings of non-obviousness and infringement concerning the patents. View "Philip Morris Products S.A. v. International Trade Commission" on Justia Law

The 853 patent relates to universal remotes, specifically to a universal control engine that facilitates communication between a controlling device (i.e., a remote) and intended target appliances (e.g., a TV, a DVD player, a sound system, etc.). Although the specification of the patent acknowledges that universal remotes were known at the time of the invention, it states that the proliferation of new communication methods raises the potential for “confusion, misoperation, or other problems,” particularly because the preferred communication method for transmitting commands “may vary by both appliance and by the function to be performed.”. The 853 patent’s purported invention is the ability to reliably use different communication methods that enable a single remote control to provide commands to a variety of target appliances, according to the optimal method of communication for each target appliance and command.The Patent Trial and Appeal Board held that the patent’s claims had not been proven unpatentable as obvious. The Federal Circuit affirmed. The Board thoroughly considered the evidence of record and found that the skilled artisan would not have understood the prior patent’s listing of remote command codes to correspond to the claim limitation at issue. The Board’s finding in this close factual dispute is supported by substantial evidence. View "Roku, Inc. v. Universal Electronics, Inc." on Justia Law