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

Broadcom’s 583 patent is directed to reducing power consumption in computer systems by “gating” clock signals with circuit elements to turn the signals ON and OFF for downstream parts of the circuit; its 752 patent is directed to a memory access unit that improves upon conventional methods of requesting data located at different addresses within shared memory. Broadcom alleged violations of 19 U.S.C. 1337 based on Renesas's importation of products that allegedly infringe those patents.An ALJ held that Broadcom failed to demonstrate a violation with respect to the 583 patent, citing the technical prong of the domestic industry requirement; Broadcom failed to identify an actual domestic industry article that practices claim 25. For the 752 patent, the ALJ held that claim 5 would have been unpatentable as obvious. The International Trade Commission affirmed. In inter partes review, the Patent Trial and Appeal Board held that claims 25 and 26 of the 583 patent and claims 1, 2, 5, 7, and 8 of the 752 patent would have been obvious over prior art but that Renesas failed to demonstrate that other claims of the 583 patent would have been obvious.With respect to the 583 patent, the Federal Circuit affirmed the Board’s holding and affirmed the holding that there was no domestic industry. With respect to the 752 patent, the court affirmed the entirety of the Board’s holding. View "Broadcom Corp. v. International Trade Commission" on Justia Law

The Trademark Trial and Appeal Board affirmed an examiner’s refusal to register the trademark “TRUMP TOO SMALL” for use on T-shirts. According to Elster’s registration request, the phrase he sought to trademark invokes a memorable exchange between then-candidate Trump and Senator Marco Rubio from a 2016 presidential primary debate, and aims to “convey[] that some features” of Trump’s “policies are diminutive.” The Board’s decision was based on the Lanham Act, 15 U.S.C. 1052(c), and the Board’s finding that the mark included the surname of a living individual without his consent.The Federal Circuit reversed. Applying section 2(c) to bar registration of Elster’s mark unconstitutionally restricts free speech in violation of the First Amendment. Section 2(c), prohibits registration of a trademark that [c]onsists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.” As applied in this case, section 2(c) involves content-based discrimination that is not justified by either a compelling or substantial government interest. View "In Re Elster" on Justia Law

Alarm.com filed petitions seeking inter partes reviews (IPRs) under 35 U.S.C. 311–19 of claims of three Vivint patents. The Patent Trial and Appeal Board issued three final written decisions, which rejected Alarm.com’s challenges to certain claims. The Federal Circuit affirmed in 2018. In 2020, Alarm.com filed three requests for ex parte reexamination of those same claims under 35 U.S.C. 301–07. The Patent Office’s Director, without deciding whether the requests presented a “substantial new question of patentability,” vacated the ex parte reexamination proceedings based on section 315(e)(1), which, the Director concluded, estopped Alarm.com from pursuing the requests once the IPRs resulted in final written decisions.The district court dismissed Alarm.com’s complaint, reasoning that review under the Administrative Procedure Act, 5 U.S.C. 706(2)(A), (C), of the Director’s decision, was precluded by the ex parte reexamination scheme viewed as a whole. The Federal Circuit reversed The only portion of the ex parte reexamination statutory scheme that expressly precludes judicial review is section 303(c), but the preclusion established by that text does not apply to Alarm.com’s challenge. View "Alarm.com Inc, v. Hirshfeld" on Justia Law

Intuitive filed three inter partes review (IPR) petitions to challenge the patentability of Ethicon’s patent, entitled “Drive Interface for Operably Coupling a Manipulatable Surgical Tool to a Robot.” The Patent Trial and Appeal Board, in two IPRs, upheld the patentability of claims 24-26. Ethicon moved to terminate Intuitive as a party to the remaining IPR, arguing estoppel under 35 U.S.C. 315(e)(1) based on the decisions in the companion IPRs. The Board terminated Intuitive as a petitioner to the final IPR and upheld the patentability of claims 24–26 on the merits.Only a party to an IPR may appeal a Board’s final decision, 35 U.S.C. 141(c). Intuitive argued it could appeal because the Board misinterpreted 35 U.S.C. 315(e)(1) and that estoppel should not apply to simultaneously-filed petitions, noting that it was “once a party” to the IPR. The Federal Circuit dismissed an appeal. The Board did not err. Section 315(e)(1) estops a petitioner as to invalidity grounds for an asserted claim that it failed to raise but “reasonably could have raised” in an earlier-decided IPR, regardless of whether the petitions were simultaneously filed and regardless of the reasons for their separate filing. All three IPRs challenged the same claim; Intuitive actually knew of the cited prior art when it filed the other petitions and knew which claims it wanted to challenge based on that art. Intuitive reasonably could have raised its grounds from the third IPR in either earlier IPR. View "Intuitive Surgical, Inc. v. Ethicon LLC" on Justia Law

Junker, the named inventor of the 839 Design Patent, titled “Handle for Introducer Sheath,” sued MedComp for infringement of the sole claim of the D839 patent. The parties disputed whether a letter sent before the critical date was a commercial offer for sale of the claimed design, rendering the claim invalid under the on-sale bar, 35 U.S.C. 102(b), or merely a quotation signaling the parties were engaged in preliminary negotiations. The district court granted Junker summary judgment of no invalidity under the on-sale bar. After a bench trial, the court rejected each of MedComp’s remaining invalidity challenges, found that each of the accused products infringed the D839 patent claim and that the infringement was willful, and awarded Junker $1,247,910 in damages under 35 U.S.C. 289, which allows recovery of an infringer’s profits from the sale of the infringing products.The Federal Circuit reversed the district court’s summary judgment of no invalidity. The pre-critical date letter was a commercial offer for sale and there is no dispute that the claimed design was ready for patenting. The letter contains a number of necessary terms typical for a commercial contract and specifies different purchase options for its peelable sheath products. View "Junker v. Medical Components, Inc." on Justia Law

Adapt’s patents-in-suit claim methods of treating opioid overdose by intranasal administration of a naloxone formulation, and devices for intranasal administration. Naloxone—the active ingredient in Adapt’s NARCAN® Nasal Spray—is an opioid receptor antagonist that blocks opioids from reaching the opioid receptors, helping reverse the effects of opioid overdose. Before the priority date of the patents-in-suit, numerous naloxone products had been used to treat opioid overdose. The patents-in-suit are listed in the FDA’s “Approved Drug Products with Therapeutic Equivalence Evaluations” “Orange Book.” Teva submitted to the FDA Abbreviated New Drug Application (ANDA) seeking approval to manufacture and sell a generic version of NARCAN®., with a Paragraph IV certification asserting that the patents-in-suit are invalid, unenforceable, and/or not infringed, 21 U.S.C. 355(j)(2)(A)(vii)(IV).Adapt sued Teva for infringement under 35 U.S.C. 271(e)(2). The Federal Circuit affirmed a holding that the asserted claims of the patents-in-suit would have been obvious in view of prior art. The district court’s findings, supported by ample evidence, provide a detailed explanation as to why a skilled artisan would have been motivated to combine the prior art references to arrive at the claimed invention. Prior art, as a whole, did not teach away from the claimed invention. The court rejected Adapt’s argument that its evidence of unexpected results, copying, skepticism, long-felt need, and failure of others indicated nonobviousness. View "Adapt Pharma Operations Ltd. v. Teva Pharmaceuticals USA, Inc." on Justia Law

In litigation between Uniloc and Apple, Uniloc unsuccessfully sought to seal matters of public record, such as quotations of Federal Circuit opinions and a list of patent cases Uniloc had filed. The Federal Circuit affirmed but held that the district court must conduct a detailed analysis on whether confidential licensing information of third-party licensees of Uniloc’s patents should be sealed and remanded for “particularized determinations.”On remand, Uniloc moved to seal or redact third-party documents that revealed licensing terms, licensees’ names, amounts paid, including a Fortress (Uniloc’s financier) investment memorandum, containing Fortress’s investment criteria and other third-party licensing information. The district court ordered that the licensing information, including the licensees' identities, be unsealed in full. explaining that “patent licenses carry unique considerations” that bolster the public’s right of access, including the valuation of patent rights, and that disclosure of patent licensing terms would facilitate “up-front cost evaluations of potentially infringing conduct,” “driv[e] license values to a more accurate representation of the technological value,” and help “inform reasonable royalties.” The Federal Circuit vacated. The district court failed to follow the previous remand instructions to make particularized determinations. Any procedural failings of Uniloc and Fortress cannot justify unsealing the information of third parties in the investment memo. The court should have considered whether the interests of the third parties outweigh the public’s interest in seeing licensing details that are not necessary for resolving this case. View "Uniloc USA, Inc. v. Apple Inc." on Justia Law

Shinyaku and Sarepta executed an Agreement concerning “a potential business relationship relating to therapies for the treatment of Duchenne Muscular Dystrophy.” During the Agreement’s term the parties would “not directly or indirectly assert or file any legal or equitable .. claim or otherwise initiate any … form of legal or administrative proceeding against the other Party . . . in any jurisdiction … concerning intellectual property in the field of Duchenne Muscular Dystrophy,” including “patent infringement litigations, declaratory judgment actions, patent validity challenges” before the U.S. Patent and Trademark Office (PTO) or Japanese Patent Office, and reexamination proceedings before the PTO. A forum selection, governing intellectual property disputes between the parties after the term’s expiration named the District of Delaware. The term ended in June 2021; the two-year forum selection clause took effect. That same day, Sarepta filed seven Patent Trial and Appeal Board petitions for inter partes review (IPR). Shinyaku filed suit in the District of Delaware asserting breach of contract (alleging that the IPR petitions violated the forum selection clause), declaratory judgment of noninfringement and invalidity concerning Sarepta’s patents, and infringement of Shinyaku’s patents.The Federal Circuit directed that the district court enter an injunction, requiring Sarepta to withdraw the petitions. The plain language of the forum selection clause resolved the dispute. View "Nippon Shinyaku Co., Ltd. v. Sarepta Therapeutics, Inc." on Justia Law

Caltech’s patents disclose circuits that generate and receive irregular repeat and accumulate (IRA) codes, a type of error correction code designed to improve the speed and reliability of data transmissions. Wireless data transmissions are ordinarily susceptible to corruption arising from noise or other forms of interference. IRA codes help to identify and correct corruption after it occurs.The Federal Circuit affirmed, in part, a judgment finding infringement. The district court did not err in its construction of the claim limitation “repeat” and substantial evidence supports the jury’s verdict of infringement of the asserted claims of the patents. The court upheld summary judgment findings of no invalidity based on inter partes review estoppel, a determination of no inequitable conduct, and the district court’s decision with respect to its jury instructions on extraterritoriality. The court remanded in part. Claim 13 of the 781 patent is patent-eligible but the court vacated the verdict of infringement because of the district court’s failure to instruct the jury on the construction of the claim term “variable number of subsets.” Caltech’s two-tier damages theory cannot be supported on the record, requiring a new trial on damages. View "California Institute v. Broadcom Ltd." on Justia Law

Laser-based systems for measuring distances, useful for many purposes, are best known for helping autonomous cars sense their surroundings. Velodyne markets products incorporating such systems. Quanergy, which also markets products employing laser systems, challenged the validity of multiple claims in Velodyne’s patent in two inter partes review (IPR) proceedings. The Patent Trial and Appeal Board held that multiple claims are not unpatentable as obvious.The Federal Circuit affirmed, upholding the construction of the term “lidar” to mean pulsed time-of-flight lidar; “lidar” is an acronym for “Laser Imaging Detection and Ranging.” Like radar, lidar determines distance based on the time-of-flight of the transmitted wave. The Board gave substantial weight to Velodyne’s objective evidence of unresolved long-felt need, industry praise, and commercial success. Substantial evidence supports the Board’s presumption of a nexus and its thorough analysis of each objective indicia. View "Quanergy Systems, Inc v. Velodyne Lidar USA, Inc." on Justia Law