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

In 2000, Australian started advertising and selling condoms with the marks NAKED and NAKED CONDOM in Australia. In 2003, Australian, through its website, began advertising, selling, and shipping condoms featuring its unregistered mark to customers in the U.S. Naked owns Registration No. 3,325,577 for the mark NAKED for condoms. The companies engaged in settlement negotiations. Naked asserts that email communications demonstrate that the parties reached an agreement whereby Australian would discontinue its use of its unregistered mark in the U.S. and consent to Naked’s use and registration of its NAKED mark. Australian filed a petition to cancel the registration of the NAKED.The Trademark Trial and Appeal Board determined that Australian lacked standing and could not show an interest in the cancellation proceeding or a reasonable belief of damage because it had contracted away its proprietary rights in its unregistered marks.The Federal Circuit reversed. An absence of proprietary rights does not in itself negate an interest in the proceeding or a reasonable belief of damage. A petitioner seeking to cancel a trademark registration establishes an entitlement to bring a cancellation proceeding under 15 U.S.C. 1064 by demonstrating a real interest in the cancellation proceeding and a reasonable belief of damage regardless of whether the petitioner lacks a proprietary interest in an asserted unregistered mark. View "Australian Therapeutic Supplies Pty., Ltd. v. Naked TM, LLC" on Justia Law

Decker developed the patented inventions while employed at the University of Texas and assigned the patents to UT. Gensetix obtained an exclusive license in the patents. The license agreement provides that, Gensetix must enforce the patents. The parties agreed to cooperate in any infringement suit and that nothing in the agreement would waive UT's sovereign immunity. Gensetix sued Baylor, alleging infringement and requested that UT join as a co-plaintiff. UT declined. Gensetix named UT as an involuntary plaintiff under FRCP 19(a). The district court dismissed, finding that UT is a sovereign state entity, so that the Eleventh Amendment barred joinder of UT, and that the suit could not proceed without UT.The Federal Circuit affirmed in part. UT did not voluntarily invoke federal jurisdiction; the Eleventh Amendment prevents “the indignity of subjecting a State to the coercive process of judicial tribunals” against its will. It is irrelevant that the license agreement requires the initiation of an infringement suit by Gensetix or cooperation by UT. The court erred in dismissing the suit without adequate analysis of Rule 19(b)'s factors: the extent to which a judgment might prejudice the missing required party or the existing parties; the extent to which any prejudice could be lessened; whether a judgment rendered in the required party’s absence would be adequate; and whether the plaintiff would have an adequate remedy if the action were dismissed. View "Gensetix, Inc. v. Baylor College of Medicine" on Justia Law

Entitled “System and Method for Adjustable Licensing of Digital Products,” Uniloc’s 960 patent is directed to the problem that consumers of software use digital products on multiple devices, where consumers have “a legitimate need to install and use the software on every computer.” On Hulu’s petition, the Patent Trial and Appeal Board instituted Inter Partes Review (IPR) and found multiple claims unpatentable over the prior art. During the IPR, Uniloc had filed a Motion to Amend, asking the Board to enter Substitute Claims for specific independent claims if the latter were found unpatentable. Hulu opposed the Motion, arguing that the Substitute Claims are directed to patent-ineligible subject matter. Uniloc replied that Hulu was not permitted to raise an argument under 35 U.S.C. 101 in opposition to the Substitute Claims but did not raise substantive arguments that its Substitute Claims meet the section 101 standards for eligibility. The Board denied Uniloc’s Motion, based solely on ineligibility. The Federal Circuit affirmed the judgment of invalidity of all original claims and subsequently affirmed the denial of Uniloc’s motion for rehearing. The Board correctly concluded that it is not limited by section 311(b) in its review of proposed substitute claims in an IPR and that it may consider section 101 eligibility. View "Uniloc 2017 LLC v. Hulu, LLC" on Justia Law

The 850 patent discloses a self-anchoring beverage container that prevents spills by anchoring the container to a surface. An International Trade Commission complaint, against several respondents (including Mayborn) alleged infringement of the patent and sought a general exclusion order (GEO) barring importation of infringing goods by any party. An ALJ determined that remaining respondents—those with whom the Complainants had not settled—were in default and infringed claim 1 of the patent. The defaulting respondents did not raise invalidity challenges. The ALJ recommended a GEO because it was difficult to gain information about entities selling the containers, and numerous entities were importing the containers, making it “nearly impossible to identify the sources.” The Commission issued the GEO in 2018. Mayborn took no action during the proceedings.In 2019, the Complainants notified Mayborn and its retail partners that Mayborn’s products infringed the patent in violation of the GEO. Mayborn petitioned the Commission to rescind its GEO under 19 U.S.C. 1337(k)(1), which allows the Commission to rescind or modify an order if “the conditions which led to such ... order no longer exist.” Mayborn argued that this requirement was satisfied because claim 1 of the patent was invalid under 35 U.S.C. 102, 103. The Federal Circuit affirmed the Commission’s denial of Mayborn’s petition. The asserted discovery of invalidating prior art after the issuance of a GEO is not a changed condition. View "Mayborn Group, Ltd. v. International Trade Commission" on Justia Law

Packet’s patents teach a method for monitoring packets exchanged over a computer network. A stream of packets between two computers is called a connection flow. Monitoring connection flows cannot account for disjointed sequences of the same flow in a network. The specifications explain that it is more useful to identify and classify “conversational flows,” defined as “the sequence of packets that are exchanged in any direction as a result of an activity.” Conversational flows provide application-specific views of network traffic and can be used to generate helpful analytics to understand network load and usage. The 789 patent recites apparatus claims’ the 725 and 751 patents recite method claims.Packet asserted claims against NetScout’s products under 35 U.S.C. 102. The jury found all claims willfully infringed, rejected NetScout’s invalidity defenses, and awarded pre-suit ($3.5 million) and post-suit ($2.25 million) damages. The court issued findings, rejecting NetScout’s section 101 invalidity defense, enhanced damages by $2.8 million, and awarded an ongoing royalty for post-verdict infringement. The Federal Circuit reversed in part and vacated the award of enhanced damages. The district court erred in denying NetScout’s motion for judgment as a matter of law on pre-suit damages. Packet is barred from recovering damages for pre-suit sales of the NetScout products because it failed to comply with the marking requirement. The court otherwise affirmed. View "Packet Intelligence LLC v. NetScout Systems, Inc." on Justia Law

Each patent at issue claims a method of treating cancer by administering antibodies targeting specific receptor-ligand interactions on T cells, which are responsible for processing information to develop an immune response in the body using receptors on their surfaces. The named inventor Dr. Honjo, a professor at Kyoto University, had shared information with Drs. Wood and Freeman until about 2001. In 2002, Honjo filed his patent application in Japan. Each patent at issue case claims priority from that patent application; none include Freeman and Wood as inventors.The Federal Circuit affirmed that Drs. Freeman and Wood should be deemed inventors of the subject matter of the patents alongside Dr. Honjo, 35 U.S.C. 116(a). The inventorship of a complex invention may depend on partial contributions to conception over time, and there is no principled reason to discount genuine contributions made by collaborators because portions of that work were published prior to conception for the benefit of the public. Earlier publication of an invention is obviously a potential hazard to patentability, but the publication of a portion of a complex invention does not necessarily defeat joint inventorship of that invention. View "Dana-Farber Cancer Institute v. Ono Pharmaceutical Co., Ltd." on Justia Law

Uniloc filed patent infringement actions against Apple, which moved to dismiss, arguing that Uniloc had granted its creditor a license with the right to sublicense in the event of a Uniloc default. According to Apple, Uniloc had defaulted and “lacked the right to exclude Apple from using the patents.” Apple’s motion referenced material that Uniloc had designated as highly confidential. Uniloc asked the court to seal most of the materials in the parties’ filings, including citations to case law, quotations from published opinions, and 23 entire exhibits, including matters of public record. The court denied that motion. Uniloc sought reconsideration, stating that it was willing to make public more than 90 percent of the material it had originally sought to shield; it submitted a declaration including individual grounds for redacting or sealing the remaining materials and declarations from third-party licensees that disclosure would cause them significant competitive harm. The court denied Uniloc’s motion.The Federal Circuit affirmed with respect to Uniloc’s requests to seal its purportedly confidential information and that of its related entities and vacated with respect to licensees. In denying Uniloc’s “sweeping motion,” the court sent a strong message that litigants should submit narrow, well-supported sealing requests and “took seriously the presumption of public access.” The court failed to make sufficient findings on balancing the public’s right of access against the interests of the third parties in shielding their financial and licensing information from public view. View "Uniloc 2017 LLC v. Apple, Inc." on Justia Law

Valencell’s patent, entitled “Methods and Apparatus for Generating Data Output Containing Physiological and Motion-Related Information,” concerns systems for monitoring information such as blood oxygen level, heart rate, and physical activity. Apple sought inter partes review (IPR) of claims 1–13. The Patent Board instituted review of several claims but denied review of claims 3–5. Fitbit then filed an IPR petition for claims 1, 2, and 6–13 and moved for joinder with Apple’s IPR. The Board granted Fitbit’s petition, terminating Fitbit’s separate proceeding. The Supreme Court then held that all patent claims challenged in an IPR petition must be reviewed by the Board if the petition is granted. The Board re-instituted conducted further proceedings and issued a Final Written Decision, finding claims 1, 2, and 6–13 unpatentable, and claims 3–5 not unpatentable. Following the decision, Apple withdrew from the proceeding. Valencell challenged Fitbit’s right to appeal as to claims 3–5.The Federal Circuit held that Fitbit has a right to appeal but vacated as to claims 3–5. Fitbit’s rights as a joined party apply to the entire proceedings and include the right of appeal, conforming to the statutory purpose of avoiding redundant actions by facilitating consolidation, while preserving statutory rights, including judicial review. The court remanded for review of the patentability of claims 3-5 in light of claims of obviousness. View "Fitbit, Inc. v. Valencell, Inc." on Justia Law

The Patent Trial and Appeal Board, in an ex parte appeal, affirmed an examiner’s rejection of claims in Boloro’s patent applications. Boloro moved to vacate. The Director of the Patent and Trademark Office acknowledged that the administrative patent judges (APJs) were not constitutionally appointed at the time of the Board’s final decision. The Federal Circuit has previously held that the appropriate remedy for such a constitutional violation was to vacate the Board’s decision and to remand for reassignment to a different panel of APJs for a new hearing and decision. The Director urges that the same remedy should not be extended to ex parte proceedings, like the Boloro proceedings, because the Director possesses “complete control over the initial examination” and could at any time before the Board proceedings have directed the issuance of Boloro’s patents but did not, consistent with the Board’s subsequent decisions. The Federal Circuit rejected that argument and remanded to the Board. View "In Re Boloro Global Ltd." on Justia Law

Genentech manufactures and sells bevacizumab, a biological product used to treat certain types of cancer, under the name Avastin. Amgen filed a biologics license application, 42 U.S.C. 262(k) to market a biosimilar version of Avastin—Mvasi. Mvasi received FDA approval effective September 2017. In October, Amgen notified Genentech of its intent to commercially market Mvasi starting no earlier than 180 days from the date of the letter. In August 2018, Amgen filed a third supplement to its Mvasi application to add a manufacturing facility and a fourth supplement to change its drug label. By July 2019, Amgen decided it would commercially launch Mvasi, intending to market it immediately. Genentech filed motions, seeking to preclude Amgen from commercially marketing Mvasi until Amgen “provides notice of its intent to commercially market such product” pursuant to 42 U.S.C. 262(l)(8) and 180 days have elapsed,” arguing that Amgen’s third and fourth supplements resulted in new and distinct applications that require new notices. The Federal Circuit affirmed the denial of the motions, reasoning that Amgen’s October 2017 commercial marketing notice for Mvasi satisfied Section 262(l)(8)(A)’s notice requirements. View "Genentech, Inc. v. Immunex Rhode Island Corp." on Justia Law