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

In the case before the United States Court of Appeals for the Federal Circuit, Chewy, Inc., (Chewy) brought a suit against International Business Machines Corp. (IBM) seeking a declaratory judgment of noninfringement of several IBM patents. In response, IBM filed counterclaims alleging Chewy’s website and mobile applications infringed the patents.The patents in question relate to improvements in web-based advertising. The United States District Court for the Southern District of New York granted Chewy's motion for summary judgment of noninfringement of claims of the ’849 patent and also granted Chewy's motion for summary judgment that claims of the ’443 patent are ineligible under 35 U.S.C. § 101. IBM appealed both summary judgment rulings.The Court of Appeals affirmed in part, reversed in part, and remand for further proceedings. The Court affirmed the lower court's decision on noninfringement of the ’849 patent, ruling that Chewy's website and applications did not infringe certain claims of the patent because they didn't perform the specific limitation of "selectively storing advertising objects" as described in the patent.However, the Court reversed the lower court’s grant of summary judgment of noninfringement of claim 12 of the ’849 patent, concluding that there is a genuine dispute of material fact regarding whether Chewy "establish[es] characterizations for respective users."As for the ’443 patent, the Court affirmed the lower court's ruling that the claims are ineligible under § 101. The patent claims, according to the Court, could not transform the abstract idea of identifying advertisements based on search results into patent-eligible subject matter. View "CHEWY, INC. v. IBM " on Justia Law

This case involves an appeal by Pfizer Inc. from decisions made by the U.S. Patent and Trademark Office Patent Trial and Appeal Board (the Board). The Board concluded that claims 1–45 of U.S. Patent 9,492,559, owned by Pfizer and related to immunogenic compositions comprising conjugated Streptococcus pneumoniae capsular saccharide antigens for use in pneumococcal vaccines, were unpatentable. The Board also denied Pfizer’s proposed amendments to the claims.Pfizer's first challenge pertained to the Board’s conclusion regarding the molecular weight of the glycoconjugate in the patent, arguing that the Board incorrectly applied the "result-effective variable doctrine." The court disagreed, upholding the Board's decision that the molecular weight was a result-effective variable that a person of ordinary skill in the art would have been motivated to optimize.Pfizer's second challenge related to the Board’s finding that the compositions of additional claims incorporating more specific glycoconjugates would have been obvious. The court disagreed with Pfizer's argument that without examples showing the claimed glycoconjugates would have each been immunogenic, there would have been no reasonable expectation of success.Thirdly, Pfizer challenged the Board’s denial of its motions to amend the claims. The court affirmed the Board's decision on some of the proposed claims but vacated the decision on others, remanding them for further consideration due to the Board’s lack of clarity.Lastly, Pfizer challenged the Patent and Trademark Office’s Director Review procedure, alleging it violated the Administrative Procedure Act (APA). The court rejected this argument, finding any potential APA violation was harmless as Pfizer had not demonstrated prejudice.Therefore, the court affirmed the Board’s decisions in part, vacated them in part, and remanded the case back to the Board for further proceedings. View "PFIZER INC. v. SANOFI PASTEUR INC. " on Justia Law

In this case, Freshub, Ltd., and Freshub, Inc. (collectively, Freshub) filed a lawsuit against Amazon.com, Inc., and its subsidiaries (collectively, Amazon) in the Western District of Texas, alleging that Amazon infringed on its patents related to voice-processing technology. Amazon denied the infringement and asserted that the patent should be deemed unenforceable due to alleged inequitable conduct committed by Freshub's parent company, Ikan Holdings LLC. The jury found that Amazon did not infringe the asserted claims of Freshub's patents. Freshub appealed the verdict, and Amazon cross-appealed the court's finding that it failed to prove the asserted inequitable conduct.The United States Court of Appeals for the Federal Circuit upheld the district court's decisions. The court held that substantial evidence supported the jury's finding that Amazon did not infringe the asserted claims of Freshub’s patents. The court also found that the district court did not abuse its discretion in denying Freshub's motion for a new trial based on alleged prejudicial statements made by Amazon at trial. Furthermore, the court agreed with the district court's determination that Amazon failed to prove by clear and convincing evidence that Ikan’s counsel made a false statement to the United States Patent and Trademark Office with the specific intent to deceive, thereby rejecting Amazon’s inequitable conduct defense. View "FRESHUB, INC. v. AMAZON.COM, INC. " on Justia Law

Promptu Systems Corp. sued Comcast Corp. alleging that Comcast infringed on its U.S. Patent Nos. 7,047,196 and 7,260,538. The patents cover a method of using speech recognition services in combination with cable television or video delivery. The case was litigated in the United States District Court for the Eastern District of Pennsylvania. The district court adopted claim constructions that were mostly in line with Comcast's proposals. As a result, Promptu and Comcast agreed to dismiss Promptu's patent-infringement claim and state-law claims with prejudice. Promptu also agreed to a final judgment of no infringement by Comcast of the ’196 and ’538 patents, based on the claim constructions adopted by the district court.Promptu appealed the judgment, challenging several of the underlying claim constructions. The United States Court of Appeals for the Federal Circuit found that the district court incorrectly construed certain claim terms and therefore vacated the judgment and remanded the case for further proceedings. The court held that the district court's constructions of the terms "back channel," "multiplicity of received identified speech channels," "speech recognition system coupled to a wireline node," and "centralized processing station" were not accurate. The court provided detailed analysis and reasoning for these conclusions. The court did not rule on the merits of the infringement claims, but instead remanded the case for further proceedings based on the corrected claim constructions. View "PROMPTU SYSTEMS CORPORATION v. COMCAST CORPORATION " on Justia Law

The United States Court of Appeals for the Federal Circuit reviewed a decision by the Trademark Trial and Appeal Board denying Naterra International, Inc.'s petition for cancellation of Samah Bensalem's BABIES’ MAGIC TEA standard character mark registration. Naterra argued that there was a likelihood of confusion between its BABY MAGIC mark and Bensalem’s BABIES’ MAGIC TEA mark. The Court examined several factors, including the similarity of the marks, the nature of the goods, and the trade channels. The Court found that the Board erred in its assessment of the similarity of the marks and the trade channels and failed to properly evaluate relevant evidence about the nature of the goods. Therefore, the Court vacated the Board's decision and remanded the case for further proceedings. The Court also found the Board did not err in its assessment of the fame of Naterra's mark. View "NATERRA INTERNATIONAL, INC. v. BENSALEM " on Justia Law

In 2020, the law firm Chestek PLLC applied for a trademark for the mark "CHESTEK LEGAL" but provided only a P.O. box as its domicile address. The United States Patent and Trademark Office (USPTO) refused the application because it did not comply with the domicile address requirement. Chestek argued that the rules enforcing this requirement were improperly promulgated under the Administrative Procedure Act (APA). The Trademark Trial and Appeal Board affirmed the examiner's refusal. On appeal to the United States Court of Appeals for the Federal Circuit, Chestek argued that the domicile address requirement was improperly promulgated for two reasons: the USPTO was required to comply with the requirements of notice-and-comment rulemaking under 5 U.S.C. § 553 but failed to do so because the proposed rule did not provide notice of the domicile address requirement adopted in the final rule, and the domicile address requirement is arbitrary and capricious because the final rule failed to offer a satisfactory explanation for the domicile address requirement and failed to consider important aspects of the problem it purports to address, such as privacy. The Federal Circuit found the domicile address requirement to be a procedural rule that is exempt from notice-and-comment rulemaking. Furthermore, the USPTO's decision to require the address provided by all applicants to be a domicile address was not arbitrary or capricious for failure to provide a reasoned justification. The court affirmed the Board's refusal to register Chestek's mark. View "In Re CHESTEK PLLC " on Justia Law

This case concerns a patent dispute between RAI Strategic Holdings, Inc. (RAI) and Philip Morris Products S.A. (Philip Morris) about an electrically powered smoking article. The United States Court of Appeals for the Federal Circuit affirmed in part, vacated in part, and remanded the decision of the Patent Trial and Appeal Board (Board).RAI owns a patent for electrically powered smoking articles that heat tobacco or other substances without significant combustion. Philip Morris filed a petition to review the patent, asserting that the claims were invalid due to a lack of written description and obviousness over prior art. The Board agreed with Philip Morris and held certain claims of the patent unpatentable.On appeal, RAI argued that the Board erred by finding that some claims lacked adequate written description support and that other claims were obvious. The Court of Appeals agreed with RAI regarding the written-description issue. It found that the patent specification did provide adequate written description support for the disputed claims, as it disclosed the end points of the claimed range and there were no inconsistent statements regarding the range. Thus, the Court of Appeals vacated the Board's decision on this issue and remanded for further consideration.However, the Court of Appeals affirmed the Board’s decision regarding the obviousness issue. It found substantial evidence to support the Board's finding that a person of ordinary skill in the art would have been motivated to combine prior art references, making the claims obvious. Specifically, the Court found that the Board reasonably concluded that a skilled artisan would have been motivated to replace the heating element in Robinson's smoking article with the heating element taught by Greim. Therefore, the Court affirmed the Board’s finding that these claims were unpatentable as obvious. View "RAI Strategic Holdings, Inc. v. Philip Morris Products S.A." on Justia Law

In this case, the University of South Florida Board of Trustees (USF) sued the United States, claiming that the latter infringed a patent owned by USF regarding genetically modified mice for Alzheimer's Disease research. The USF contended that The Jackson Laboratory, with the government's authorization and consent, had been producing and using mice covered by the patent for the government. The government countered the claim by asserting it had a license to practice the patent under a provision of the Bayh-Dole Act, which addresses patent rights in work funded by the federal government. The United States Court of Appeals for the Federal Circuit determined that the provision does apply and therefore affirmed the judgment of noninfringement. The court confirmed that the April 1997 work, the first actual reduction to practice of the invention, was "in the performance of work under a funding agreement." The court also rejected USF's contention that a funding agreement must be in place at the time of the relevant work, clarifying that the Act can cover work already performed before a funding agreement is executed or becomes effective. View "University of South Florida Board of Trustees v. United States" on Justia Law

In a patent dispute between Weber, Inc. and Provisur Technologies, Inc. before the United States Court of Appeals for the Federal Circuit, Weber appealed two final written decisions from the Patent Trial and Appeal Board. The Board had determined that Weber failed to establish the unpatentability of the claims of Provisur’s patents relating to high-speed mechanical slicers used in food-processing plants. The Board found that Weber’s operating manuals were not prior art printed publications and that the prior art did not disclose two challenged claim terms. The Court of Appeals reversed the Board's determinations that Weber's operating manuals do not qualify as printed publications and that the prior art does not disclose the "disposed over" and "stop gate" limitations. The court then vacated the Board's conclusions that Weber failed to establish unpatentability of the challenged claims, and remanded the case for further proceedings. View "WEBER, INC. v. PROVISUR TECHNOLOGIES, INC. " on Justia Law

The appellants, Google LLC and ecobee, Inc. had appealed from a decision of the United States Patent and Trademark Office’s Patent Trial and Appeal Board. The Board had found that the challenged claims of U.S. Patent No. 8,498,753, owned by EcoFactor, Inc., were not unpatentable. Google argued that the Board had made an erroneous claim construction of a limitation in Claim 1 and that Google had not been given notice or an opportunity to address the Board’s construction, thereby violating the Administrative Procedure Act. The United States Court of Appeals for the Federal Circuit held that the Board had indeed construed Claim 1 and that its construction was erroneous. The court vacated the Board’s decision and remanded the case for further proceedings under the correct construction of the [1m] limitation in Claim 1. View "GOOGLE LLC v. ECOFACTOR, INC. " on Justia Law