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

In 2008, McDonald filed a patent application for methods and systems related to the display of search results. Several original claims did not recite a “processor” for conducting the claimed searches. The examiner rejected those claims as directed to patent-ineligible subject matter under 35 U.S.C. 101. McDonald amended the claims, adding a “processor” to certain claim limitations. The examiner withdrew the rejection. While the application leading to the 901 patent was pending, McDonald filed a continuation application, which resulted in the 111 patent; the claims in the continuation application included “processor” limitations. In 2015, McDonald filed a reissue application seeking to broaden the claims of the 111 patent, including amendments to remove the “processor” limitations. The examiner rejected multiple claims as obvious.The Patent Board affirmed, rejecting the reissue claims as being based on a defective reissue declaration lacking an error correctable by reissue and rejecting certain claims as impermissibly attempting to recapture subject matter that the patentee intentionally surrendered to overcome an eligibility rejection. The Federal Circuit affirmed. The Board properly applied the recapture rule; McDonald deliberately—not erroneously or inadvertently—added the “processor” limitations during the prosecution of the original claims to overcome the rejection. The error pinpointed in the Inventor Reissue Declaration—the existence of the allegedly unnecessary “processor” limitations—is uncorrectable because doing so would violate the recapture rule. View "In Re McDonald" on Justia Law

The Federal Circuit affirmed the judgment of the United States Patent and Trademark Office (PTO) denying Plaintiff's patent applications, which failed to list any human as an inventor, holding that the Patent Act requires an "inventor" to be a natural person.Plaintiff, who developed and ran artificial intelligence systems that generate patentable inventions, sought patent protection for two putative inventions by filing two patent applications with the PTO, listing DABUS, "a collection of source code or programming and a software program," as the sole inventor. The PTO denied the petitions on the ground that "a machine does not qualify as an inventor." The district court affirmed, concluding that an "inventor" under the Patent Act must be an "individual" and that an "individual" is a natural person. The Federal Circuit affirmed, holding that the plain meaning of "inventor" in the Patent Act is limited to natural persons. View "Thaler v. Vidal" on Justia Law

Realtime filed patent infringement actions against Netflix in the District of Delaware. While that action was ongoing, Netflix filed petitions for inter partes review (IPR) and moved to dismiss the complaint, arguing patent ineligibility under 35 U.S.C. 101. Following the institution of the IPR proceedings and a recommendation from the Delaware magistrate finding certain claims ineligible, Realtime voluntarily dismissed the Delaware action—before the district court ruled on the magistrate’s findings. The next day, Realtime reasserted the same patents against Netflix in the Central District of California—despite having previously informed the Delaware court that transferring the Delaware action to the Northern District of California would be an unfair burden on Realtime. Netflix then moved for attorneys’ fees and to transfer the actions back to Delaware. Before a decision on either motion, Realtime again voluntarily dismissed its case.Netflix renewed its motion for attorneys’ fees for the California actions, the Delaware action, and IPR proceedings. The district court awarded fees for both California actions under 35 U.S.C. 285, and, alternatively, the court’s inherent equitable powers. The court declined to award fees for the Delaware action or IPR proceedings The Federal Circuit affirmed. The district court did not abuse its discretion in awarding fees under its inherent equitable powers or in denying fees for the related proceedings The court did not address whether the award satisfies section 285's requirements. View "Realtime Adaptive Streaming LLC v. Netflix, Inc." on Justia Law

The patents share the same specification and are entitled “Non-Invasive Diagnosis of Graft Rejection in Organ Transplant Patients.” They discuss diagnosing or predicting organ transplant status by using methods to detect a donor’s cell-free DNA (cfDNA). When an organ transplant is rejected, the recipient’s body, through its natural immune response, destroys the donor cells, releasing cfDNA from the donated organ’s dying cells into the blood. These increased levels of donor cfDNA—which occur naturally as the organ’s condition deteriorates—can be detected and then used to diagnose the likelihood of an organ transplant rejection.In an infringement action, the district court found the patents ineligible under 35 U.S.C. 101. The Federal Circuit affirmed. The court applied the Supreme Court’s two-part “Alice” test to determine whether the claims were patent-eligible applications of laws of nature and natural phenomena or claims that impermissibly tie up such laws and phenomena. The claims boil down to collecting a bodily sample, analyzing the cfDNA using conventional techniques, including PCR, identifying naturally occurring DNA from the donor organ, and then using the natural correlation between heightened cfDNA levels and transplant health to identify a potential rejection, none of which was inventive. This is not a case involving a method of preparation or a new measurement technique. View "CareDx, Inc. v. Natera, Inc" on Justia Law

LG filed petitions for inter partes review (IPR), each challenging a dependent claim of the 990 patent, which relates to capturing and displaying digital panoramic images. The Federal Circuit affirmed the Patent Trial and Appeal Board’s findings that LG had not shown the challenged claims were unpatentable. Substantial evidence supports the Board’s finding that prior art disclosure critical to both of LG’s IPR petitions was an apparent error that would have been disregarded or corrected by a person of ordinary skill in the art. The Board correctly identified several aspects of the disclosure that would alert the ordinarily skilled artisan that the disclosure was an obvious error of a typographical or similar nature, notwithstanding the amount of time that preceded detection of the obvious error. The corrected disclosure does not satisfy the language of the challenged claims; LG did not meet its burden to prove the challenged claims unpatentable as obvious. View "LG Electronics Inc. v. Immervision, Inc." on Justia Law

Coca-Cola distributes a Thums Up cola and Limca lemon-lime soda in India and other foreign markets. Meenaxi has distributed a Thums Up cola and a Limca lemon-lime soda in the United States since 2008 and registered the THUMS UP and LIMCA marks in the United States in 2012. Coca-Cola brought cancellation proceedings under the Lanham Act, 15 U.S.C. 1064(3), asserting that Meenaxi was using the marks to misrepresent the source of its goods. The Trademark Trial and Appeal Board canceled Meenaxi’s marks.The Federal Circuit reversed. Coca-Cola has not established a statutory cause of action based on lost sales or reputational injury. Coca-Cola does not identify any lost sales in the United States but instead relies on testimony that “THUMS UP-branded and LIMCA-branded products are resold in Indian grocery stores around the world, including in the U.S.” Coca-Cola presented no evidence that it sells the Limca soda in the United States and established only that Thums Up cola is “available for purchase as an individual beverage or as part of a tasting tray” at “World of Coca-Cola” and “Coca-Cola Store” locations in Atlanta and Orlando. View "Meenaxi Enterprise, Inc. v. Coca-Cola Co." on Justia Law

Novartis markets a 0.5 mg daily dose of fingolimod hydrochloride under the brand name Gilenya, for treating relapsing-remitting multiple sclerosis, a debilitating immune-mediated demyelinating disease. There is currently no cure for MS. The disease is managed by reducing or preventing relapses and thereby slowing disability. HEC filed an Abbreviated New Drug Application (ANDA) seeking approval to market a generic version of Gilenya. Novartis sued, alleging that HEC’s ANDA infringes all claims of its patent. The Federal Circuit initially affirmed a holding that the patent is not invalid and that HEC’s ANDA infringes that patent.On rehearing, the Federal Circuit reversed. Because the Novartis patent fails to disclose the absence of a loading dose, the district court clearly erred in finding that the negative claim limitation “absent an immediately preceding loading dose” added during prosecution to overcome prior art satisfied the written description requirement of 35 U.S.C. 112(a). The specification nowhere describes “initially” administering a daily dosage. View "Novartis Pharmaceuticals Corp. v. Accord Healthcare, Inc." on Justia Law

The patents, which cover skin care products and are related as parent and child, are owned by the University of Massachusetts, which sued L’Oréal (S.A. and USA) for infringement. L’Oréal S.A., which is based in France, moved to dismiss the action on the ground that the Delaware forum lacked personal jurisdiction over it. The district court granted the motion without permitting UMass to conduct jurisdictional discovery, then ruled on a dispute about the proper construction of one limitation of a claim, and relying on that construction, held another limitation of the claim indefinite and entered a final judgment of invalidity.Finding that UMass was entitled to jurisdictional discovery, the Federal Circuit vacated the dismissal of L’Oréal S.A. The court then rejected the district court’s construction of the “wherein” clause in a claim: A method for enhancing the condition of unbroken skin of a mammal by reducing one or more of wrinkling, roughness, dryness, or laxity of the skin, without increasing dermal cell proliferation, the method comprising topically applying to the skin a composition comprising a concentration of adenosine in an amount effective to enhance the condition of the skin without increasing dermal cell proliferation, wherein the adenosine concentration applied to the dermal cells is 10-4 M to 10-7 M. View "University of Massachusetts v. L’Oréal S.A." on Justia Law

Pavo's patent is generally directed to “[a] flash memory apparatus having a single body type rotary cover” to protect USB ports from damage and foreign substances. Pavo’s predecessor sued Kingston, alleging infringement. Kingston sought inter partes review (IPR). Certain claims survived IPR. The district court lifted the previously-imposed stay, and, in claim construction, found that the phrase “pivoting the case with respect to the flash memory main body” included a clerical error. It corrected the language, replacing the word “case” with the word “cover” so that the claim read “pivoting the cover with respect to the flash memory main body.” The court determined that the error was “evident from the face of the patent” because “[t]he case is described as a part of the main body, so it is not possible for it to rotate with respect to the body,” noting that the prosecution history was consistent with the correction.A jury returned a verdict that Kingston had willfully infringed three claims and awarded Pavo a 20-cent reasonable royalty. The court awarded $7,515,327.40 in compensatory damages, enhanced by 50 percent. The Federal Circuit affirmed. The district court appropriately corrected an obvious minor clerical error in the claims; the correction is not subject to reasonable debate. Reliance on an obvious minor clerical error in the claim language is not a defense to willful infringement. The court rejected Kingston’s challenges to an expert’s damages testimony and affirmed the damages award. View "Pavo Solutions,. LLC v. Kingston Technology Co., Inc." on Justia Law

Shure’s 493 patent relates to arrays of microphones and housings for the arrays so that the arrays and housings may be fitted into a drop ceiling grid. The array is configured, in one embodiment, to “include[] a plurality of microphone transducers selectively positioned in a self-similar or fractal-like configuration, or constellation.” During inter partes review (IPR), Shure added independent claim 57, which recites: A microphone assembly comprising: an array microphone comprising a plurality of microphones arranged in a self-similar configuration. The Patent Board concluded that a skilled artisan would understand “self-similar” to have had a well-known meaning and include the specification’s disclosure of “fractal-like[] configurations or constellations,” which does not create an ambiguity. ClearOne requested rehearing and to file a sanctions motion, arguing Shure violated its duty to disclose material prior art; weeks before the Board's decision, Shure petitioned for post-grant review of the 653 patent, which also relates to drop ceiling microphone arrays, asserting that all claims of the 653 patent would have been obvious over, inter alia, patent publications Levit and Gulbrandsen, which Shure did not disclose in the 493 patent IPR.The Board denied rehearing and did not authorize a sanctions motion, reasoning that Levit and Gulbrandsen were cumulative of references asserted by ClearOne in its IPR petition. The Federal Circuit affirmed, further concluding that the self-similar term is not indefinite, and substantial evidence supports the Board’s subsidiary fact findings based on extrinsic evidence. View "ClearOne, Inc. v. Shure Acquisition Holdings, Inc." on Justia Law