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

Uniloc’s patent is directed to “a system and method for enabling local and global instant [Voice over Internet Protocol (VoIP)] messaging over an IP network.” Facebook filed two petitions for inter partes review (IPR) of the patent, challenging claims as obvious under 35 U.S.C. 103. Apple's IPR proceeding was already pending. Facebook filed a third petition, identical in substance to Apple’s petition, with a motion to join the Apple IPR. The Board granted Facebook’s motion. LG filed IPR petitions identical in substance to Facebook’s original petitions, with motions to join both Facebook IPRs. The Board instituted IPRs based on LG’s petitions and granted LG’s motion. In the Apple IPR, the Board upheld the patentability of all challenged claims. The Board dismissed-in-part Facebook, finding that Facebook was estopped under 35 U.S.C. 315(e)(1), as to the claims challenged in the Apple IPR. The Board concluded that the dismissal of Facebook did not limit LG’s participation. In consolidated IPRs, the Board found all of the challenged claims unpatentable. Uniloc unsuccessfully sought rehearing, arguing that the proceeding should have been terminated once the original petitioner, Facebook, was deemed estopped,The Federal Circuit affirmed; 35 U.S.C. 314(d)’s “No Appeal” provision did not bar review of the Board’s conclusion that under section 315(e)(1) a petitioner is not estopped from maintaining the IPR proceeding before it. The Board did not err in finding that LG was not estopped from maintaining its IPR challenge to claims 1–8 and that Facebook is not estopped from challenging claim 7. There was no error in the Board’s unpatentability findings. View "Uniloc 2017 LLC v. Facebook, Inc." on Justia Law

Edgewell manufactures and sells Diaper Genie, a system comprising a pail for the collection of soiled diapers and a replaceable cassette that is placed inside the pail and forms a wrapper around the soiled diapers. The 420 and 029 patents relate to alleged improvements in the cassette design. Edgewell accused Munchkin’s refill cassettes, which Munchkin marketed as being compatible with Edgewell’s Diaper Genie-branded diaper pails, of infringement. The district court granted, summary judgment of non-infringement of both patents.The Federal Circuit vacated with respect to the 420 patent. The district court erred in construing the term “clearance” on summary judgment in a manner dependent on the way the claimed cassette is put to use in an unclaimed structure. The 420 patent claims are directed only to a cassette; absent an express limitation to the contrary, the term “clearance” should be construed as covering all uses of the claimed cassette. The court reversed with respect to the 029 patent, directed to a cassette with a cover extending over pleated tubing housed therein. The district court correctly construed “annular cover” and “tear-off section” but there remained a genuine issue of material fact for the jury, sufficient to preclude summary judgment of noninfringement under the doctrine of equivalents. View "Edgewell Personal Care Brands, LLC v. Munchkin, Inc." on Justia Law

In 2010, the Army granted Authentic a nonexclusive license to manufacture and sell clothing bearing the Army’s trademarks. The agreement required the Army’s advance written approval of any products and marketing materials bearing the Army’s trademarks and included exculpatory clauses that exempted the Army from liability for exercising its discretion to deny approval. In 2011-2014, Authentic submitted nearly 500 requests for approval; the Army disapproved 41 submissions. During that time, Authentic received several formal notices of material breach for claimed failures to timely submit royalty reports and pay royalties. Authentic eventually paid its royalties through 2013. Authentic’s counsel indicated that Authentic would not pay outstanding royalties for 2014.Authentic's ensuing breach of contract suit cited the Army’s denial of the right to exploit the goodwill associated with the Army’s trademarks, refusal to permit Authentic to advertise its contribution to Army recreation programs, delay of approval for a financing agreement, denial of approval for advertising, and breach of the implied duty of good faith and fair dealing by not approving the sale of certain garments. The Federal Circuit affirmed summary judgment in favor of the government. The license agreement stated in no uncertain terms that the Army had “sole and absolute discretion” regarding approval of Authentic’s proposed products and marketing materials; the exercise of that broad approval discretion is not inconsistent with principles of trademark law. View "Authentic Apparel Geoup, LLC v. United States" on Justia Law

Rain sued Samsung for infringement of claims of the 349 patent, which is directed to delivering software application packages to a client terminal in a network based on user demands. The claimed invention purports to deliver these packages more efficiently by using an operating system in a client terminal rather than a web browser. The district court found the patent not infringed and not indefinite.The Federal Circuit reversed as to indefiniteness, 35 U.S.C. 112. The term “user identification module” fails to provide any structure for performing the claimed functions, has no commonly understood meaning, and is not generally viewed by one skilled in the art to connote a particular structure. The term is a means-plus-function term subject to section 112; the function of “user identification module” is “to control access to one or more software application packages to which the user has a subscription,” but nothing in the claim language or the written description provides an algorithm to achieve the “control access” function of the “user identification module.” View "Rain Computing, Inc. v. Samsung Electronics Co., Ltd." on Justia Law

Bayer’s patent is directed to recombinant forms of human factor VIII (FVIII), a protein that is produced, and released into the bloodstream, by the liver. In Bayer’s suit, alleging that Baxalta’s biologic product Adynovate® infringes certain claims of the patent, a jury found that the asserted claims were enabled and infringed, and that Bayer was entitled to reasonable-royalty damages. The district court did not send the question of willful infringement to the jury, holding as a matter of law that Baxalta’s conduct did not meet the requirements for willfulness.The Federal Circuit affirmed, rejecting Baxalta’s challenges to the district court’s construction of the claim term “at the B-domain” and its interpretation of the word “random” in its construction of the claim term “an isolated polypeptide conjugate.” The court upheld the district court’s judgments of infringement and enablement as supported by substantial evidence, along with the court’s awards of damages and pre-verdict supplemental damages. Even accepting Bayer’s evidence as true and weighing all inferences in Bayer’s favor, the record is insufficient to establish that Baxalta’s “conduct rose to the level of wanton, malicious, and bad-faith behavior required for willful infringement.” View "Bayer HealthCare LLC v. Baxalta Inc." on Justia Law

In 2013, the Naval Facilities Engineering Command installed copyrighted graphics-rendering software created by German company Bitmanagement onto all computers in the Navy-Marine Corps Intranet. No express contract or license agreement authorized the Navy’s actions. In 2016, Bitmanagement filed suit, alleging copyright infringement, 28 U.S.C. 1498(b). The Claims Court found that, while Bitmanagement had established a prima facie case of copyright infringement, the Navy was not liable because it was authorized to make copies by an implied license, arising from the Navy’s purchase of individual licenses to test the software and various agreements between the Navy and the vendor.The Federal Circuit vacated and remanded for the calculation of damages. The Claims Court ended its analysis prematurely by failing to consider whether the Navy complied with the terms of the implied license, which can readily be understood from the parties’ entire course of dealings. The implied license was conditioned on the Navy using a license-tracking software, Flexera, to “FlexWrap” the program and monitor the number of simultaneous users. The Navy failed to effectively FlexWrap the copies it made; Flexera tracking did not occur as contemplated by the implied license. That failure to comply creates liability for infringement. View "Bitmanagement Software GMBH v. United States" on Justia Law

SynQor’s 190 patent issued in 2006, as part of an extensive family of patents that disclose technology for DC-DC power converters used in large computer systems and data communication equipment to convert direct electric current from one voltage to another. In 2011, SynQor asserted several patents against Vicor. Vicor petitioned for reexamination of the 190, 702, and 290 patents. The Patent Trial and Appeal Board affirmed that claims of the 702 patent were not unpatentable, finding that “there are incompatibilities in frequency between” prior references Cobos and Steigerwald, and found the challenged claims of the 290 patent not unpatentable based on a combination of Steigerwald, Cobos, and another reference.The Federal Circuit court affirmed the patentability of the claims of the 290 patent and the finding the 702 patent not unpatentable but did not reach the finding that Steigerwald and Cobos were incompatible. The 190 patent expired in 2018. A year later, the Board issued its decision in the 190 reexamination, rejecting SynQor’s argument that Steigerwald and Cobos had incompatible frequencies.The Federal Circuit vacated. Common law issue preclusion arising from the 702 and 290 reexaminations collaterally estopped the Board from finding that an artisan would be motivated to combine Steigerwald and Cobos. The Board’s decision on newly presented claims 34–38 became moot with the patent's expiration. View "SynQor, Inc. v. Vicor Corp." on Justia Law

Bean’s patent, issued in 2002, covers an auger-type poultry chiller. Days after the patent issued, Bean’s only domestic competition, Morris, wrote a demand letter, arguing that the patent was invalid and citing prior art. Morris received no response and proceeded to develop and sell chillers that included features described in the Bean patent. About 11 years later, Bean requested ex parte reexamination of its patent. After John Bean amended and added claims, the Patent and Trademark Office issued a reexamination certificate; six weeks after receiving that certificate, Bean filed suit, alleging that Morris infringed the patent once the reexamination certificate issued.The Federal Circuit affirmed partial summary judgment in favor of Morris. A defendant, accused of infringing a reissued patent, may raise the affirmative defense of equitable intervening rights, 35 U.S.C. 252, and may be protected from liability for infringement of substantively and substantially altered claims in a reissued patent. Granting equitable intervening rights is a matter of judicial discretion. Once granted, they give the alleged infringer the continued right to manufacture, sell, or use the accused product after the reexamination certificate is issued “when the defendant made, purchased, or used identical products, or made substantial preparations to make, use, or sell identical products, before the reissue date.” The public has the right to use what is not specifically claimed in the original patent. View "John Bean Technologies Corp. v. Morris & Associates, Inc." on Justia Law

Melanoscan’s patent, titled “Apparatus for Total Immersion Photography,” relates to the detection, diagnosis, and treatment of skin cancer as well as other diseases and cosmetic conditions of the visible human. The apparatus claimed as a “device” is an enclosure fitted with cameras and lights arranged in a manner that “allows for the imaging of total or subtotal non-occluded body surfaces in order to detect health and cosmetic conditions and involves the measurement and analysis of an optically depicted image of a patient’s surfaces.” Canfield petitioned the Patent Trial and Appeal Board for inter partes review (IPR) of multiple claims, asserting unpatentability on the ground of obviousness. The Board ruled that all of the challenged claims are patentable.The Federal Circuit reversed as to independent claims 1 and 51, and vacated and remanded as to the dependent claims in the petition. Claims 1 and 51 place the subject within the enclosure, as in the prior art, and place multiple cameras and lights within the enclosure, as in the prior art; the subject matter described in claims 1 and 51 would have been obvious to a person of ordinary skill in the field of the invention. View "Canfield Scientific, Inc. v. Melanoscan, LLC" on Justia Law

The Synchronoss patents describe a system for synchronizing data across multiple systems or devices connected via the Internet and a “method for transferring media data to a network coupled apparatus.” The system generally involves one device or system that utilizes a first sync engine, a second device or system that utilizes a second sync engine, and a data store. In an infringement suit against Dropbox, the district court held that all asserted claims in the patent are either invalid under 35 U.S.C. 112, paragraph 2, or not infringed.The Federal Circuit affirmed the findings of invalidity and non-infringement and did not address Dropbox’s claims of ineligible subject matter. The asserted claims of one patent “are nonsensical.” Adopting Synchronoss’s proposal would require rewriting the claims. With respect to another patent, the claim term “user identifier module” does what the definiteness requirement prohibits; the term does not correspond to “adequate” structure in the specification that a person of ordinary skill in the art would be able to recognize and associate with the corresponding function in the claim. With respect to the third patent, Dropbox does not directly infringe by “using” Synchronoss’s claimed system. View "Synchronoss Technologies, Inc. v. Dropbox, Inc." on Justia Law