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

Communique’s patent, entitled “System Computer Product and Method for Providing a Private Communication Portal,” allows a remote computer to access a personal computer via the Internet, using a “location facility” to “creat[e] a communication channel.” In 2006, Communique sued, alleging that Citrix’s GoToMyPC remote computer connection service infringed two claims. The court stayed proceedings pending resolution of inter partes reexamination. In 2013, the Patent Board confirmed the patentability of the claims over prior art references, including Citrix’s BuddyHelp computer connection service. The Federal Circuit affirmed. Returning to the district court, Citrix argued that the claims were patent ineligible under 35 U.S.C. 101, because they “only require[] generic software operating on a generic computer system to implement the abstract idea of connecting two computers.” The court rejected this argument. A jury concluded that Citrix had not established that the claims were invalid, but that Communique had not established that Citrix’s product infringed those claims. The Federal Circuit affirmed; the court did not abuse its discretion in ruling that while the reexamination record could be used at trial, the jury could not be informed that Citrix had requested the reexamination. Citrix’s argument did not rest on an improper “practicing the prior art” defense, but instead correctly recognized that claim terms must be “construed the same way for both invalidity and infringement.” View "01 Communique Laboratory, Inc v. Citrix Online, LLC" on Justia Law

Merck's patents claim classes of compounds, identified by structural formulas, and the administration of therapeutically effective amounts of such compounds for treating Hepatitis C. Gilead developed its own Hepatitis C treatments, marketed as Solvadi® and Harvoni®, based on the compound sofosbuvir. Gilead sought a declaratory judgment that Merck’s patents were invalid and that Gilead was not infringing. Merck counterclaimed for infringement. Gilead stipulated to infringement based on the court’s claim construction, which was not appealed. A jury trial was held on Gilead’s challenges to the patents as invalid for lack of both an adequate written description and enablement of the asserted claims, and Gilead’s defense that Merck did not actually invent the subject matter but derived it from another inventor, employed by Gilead’s predecessor. The jury ruled for Merck but the district court ruled for Gilead, finding pre-litigation business misconduct and litigation misconduct attributable to Merck, and barred Merck from asserting the patents against Gilead. The court awarded attorney’s fees, relying on the finding of unclean hands. The Federal Circuit affirmed the judgment based on unclean hands. The district court found, with adequate evidentiary support, two related forms of pre-litigation business misconduct attributable to Merck. The court noted clear violations of a “firewall” understanding between Gilead’s predecessor and Merck, with a direct connection to the ultimate patent litigation. View "Gilead Sciences, Inc. v. Merck & Co., Inc." on Justia Law

Verified’s patent is directed to “auto-verification” of a voter’s ballot. In 2009, Verified sued Election Systems, which markets automated voting systems, for infringement. Election counterclaimed that the patent's claims were invalid under 35 U.S.C. 101, 102, 103, and 112. The court determined that claims 1–93 were not infringed and claim 94 was invalid under section 112. No further analysis of section 101 was provided; claim 49 was invalid under section 103, but not infringed, while claims 1–48, 50–84, and 86–92 were not invalid under sections 102 and 103. The Federal Circuit affirmed the invalidity of claim 49 and upheld that claims 1–48, 50–84, and 86–92 were not proven invalid because, in failing to respond to these arguments in its summary judgment briefing, Election had not met its burden to prove its invalidity counterclaims. In 2016, Verified again sued Election for infringement, asserting that issue preclusion, or collateral estoppel, precludes Election from relitigating the section 101 issue. The district court dismissed, concluding that the Supreme Court's 2014 “Alice” decision constituted a “substantial change” in the law such that “the issue of patent validity is not precluded from further litigation.” The court determined that the patent was based on the abstract idea of “vote collection and verification” and that the voting system was made up of “generic computer components performing generic computer functions,” insufficient to transform the abstract idea into patent-eligible subject matter. The Federal Circuit affirmed. While “Alice” did not constitute a substantial change in law and the section 101 issue was not actually litigated, the claims are patent-ineligible. View "Voter Verified, Inc. v. Election Systems & Software LLC" on Justia Law

The patent, which lists Rieley and Muller as inventors and for which they applied for in 1997, describes the conversion of an incoming facsimile or voicemail message into a digital representation, which is then forwarded to an email address. The patent was originally assigned to JFAX, which was owned by Rieley and Muller. It is now assigned to AMT; j2 has an exclusive license. The patent expired in 2017. James alleges that in 1995 Rieley asked James to develop software that would provide “Fax-to-Email, Email-to-Fax, and Voicemail-to-Email” functions. In 1996, James and Rieley signed a contract that does not mention patent rights, but expressly requires the assignment to JFAX of “all copyright interests” in the developed “code and compiled software.” The system was complete in 1996. James assigned all copyrights in code and compiled software to JFAX, but “did not assign any patent ownership or inventorship rights.” He claims that he was not aware of the patent until 2013 when he was contacted by attorneys representing a defendant in an infringement suit. James brought a claim for correction of inventorship under 35 U.S.C. 256, with state-law claims for unjust enrichment, conversion, misappropriation, and unfair competition. Finding James had no Article III standing, the district court dismissed. The Federal Circuit reversed, finding that the agreement could be read as not assigning patent rights and as not establishing a hired-to-invent relationship. View "James v. J2 Cloud Services, LLC" on Justia Law

The patent is directed to improving the efficiency by which messages are sent from a receiver to a sender in a telecommunications system to advise the sender that errors occurred in a particular message.The patent is concerned with organizing the information contained in Status Protocol Data Units efficiently, to minimize the size of the S-PDUs, thus conserving bandwidth. The patent discloses several methods for encoding the sequence numbers of missing packets in S-PDUs. In inter partes review, the Patent Board found, and the Federal Circuit affirmed, that various claims were anticipated and that the petition for review was not time-barred. After an en banc court vacated the decision, addressing only the appealability of the Board’s time-bar determination under 35 U.S.C. 315(b), the panel reaffirmed the determinations left unaffected by the en banc court’s decision. With respect to the time-bar claim, the panel affirmed the decision of the Board. In making that determination, the Board did not apply a legally erroneous standard in deciding the “real party in interest, or privy” issue and based its decision on substantial evidence. View "Wi-Fi One, LLC v. Broadcom Corp." on Justia Law

John Bean’s patent, directed to a chiller for cooling poultry carcasses, issued in 2002. Morris is the only other U.S. poultry chiller manufacturer. Weeks after the patent issued, Morris sent a letter stating that Bean had been contacting Morris’s customers and claiming that the equipment being sold by Morris infringed the patent. That Demand Letter notified Bean that Morris believed the patent to be invalid based on prior art and claimed unfair competition. Bean never responded. Morris continued to sell its chillers. In 2013, Bean requested ex parte reexamination. The Patent Office rejected both claims of the 622 patent as anticipated or obvious. Bean amended the two original claims and added six claims. The Patent Office issued a reexamination certificate under 35 U.S.C. 307 allowing the amended and newly added claims. Bean sued, alleging infringement from the date the reexamination certificate issued. In 2016, the district court granted Morris summary judgment, finding the infringement action barred by laches and equitable estoppel based on the 2002 Demand Letter. The Federal Circuit reversed, noting the Supreme Court holding in SCA Hygiene Products (2017), that laches cannot be asserted as a defense to infringement occurring within the six-year period before the filing of an infringement complaint as prescribed by 35 U.S.C. 286. Tthe allegedly infringing activity for which Bean sought damages started in 2014, and Bean filed its infringement complaint in 2014; SCA Hygiene bars Morris’s laches defense. View "John Bean Technologies Corp. v. Morris & Associates, Inc." on Justia Law

Droplets’s 115 Patent, describing a system “for delivering interactive links for presenting applications and second information at a client computer from remote sources in a network-configured computer processing system,” was filed in 2009, copending with the application leading to the 838 Patent, filed in 2003. The 838 Patent was copending with the application leading to the 745 Patent, filed in 2000; the 745 Patent was copending with the 917 Provisional, filed in 1999. A Patent Cooperation Treaty application was filed in 2000, and published in 2001. The specification of the 115 Patent includes a priority claim that specifically refers to the 838 Patent and incorporates its disclosure by reference and includes a cross reference to the 917 Provisional. The 115 Patent properly claims priority from the 838 Patent and is entitled to the benefit of the 2003 filing date; the 838 patent is entitled to the benefit of the 917 Provisional's 1999 filing date. The Patent Board found the 115 Patent invalid as obvious under 35 U.S.C. 103, reasoning that it failed to enumerate a priority claim sufficient to avoid fully-invalidating prior art; incorporation by reference is insufficient to satisfy a patentee’s burden of providing notice of the asserted priority date under 35 U.S.C. 120. The Federal Circuit affirmed. Because the 115 Patent expressly claims priority only to an immediately preceding application, and not the preceding provisional application, an earlier-filed reference (international publication with the same specification) invalidated it. View "Droplets, Inc. v. E*Trade Bank" on Justia Law

In 1995, Raniere assigned all rights in the five patents to GTI. Raniere is not listed on GTI’s incorporation documents as an officer, director, or shareholder. GTI dissolved in 1996. In 2014, Raniere executed a document on behalf of GTI, as its “sole owner,” purportedly transferring the patents to himself. Raniere subsequently sued Microsoft and AT&T for infringement, identifying himself as the patents’ owner. Microsoft moved to dismiss for lack of standing, noting that the PTO’s records indicated that Raniere did not own the patents. Raniere produced documents that, according to the court, failed to indicate that Raniere had an ownership interest in GTI at any time or had the right to assign the patents. Raniere obtained documents from an attorney, showing the GTI shareholders’ consent to a transfer of shares from Raniere’s ex-girlfriend (75% owner of GTI) to Raniere. The documents did not indicate that any transfer was completed and did not establish that Raniere owned the patents. The district court held a hearing, found that Raniere’s testimony contradicted Raniere’s earlier representation that the shares had already been transferred and was “wholly incredible and untruthful,” concluded that Raniere was unlikely to be able to cure the standing defect, dismissed the case, and found that Raniere’s conduct demonstrated “a clear history of delay and contumacious conduct.” The Federal Circuit affirmed the dismissal and a subsequent award of prevailing parties attorney fees and costs, 35 U.S.C. 285. View "Raniere v. Microsoft Corp." on Justia Law

Kamstrup filed a petition for inter partes review of the 559 patent. The Board instituted review, based in part on the Nielsen patent. During trial, Apator attempted to swear behind Nielsen’s effective filing date (March 25, 2010), 18 days before its own effective filing date of April 12 and proffered a declaration in which the inventor, Drachmann, declared he conceived of his invention, an ultrasonic consumption meter, before Nielsen’s effective filing date. Apator further proffered: an email from Drachmann to Tunheim dated February 15, 2010 that the Drachmann Declaration states attached an image file; a March 22, 2010 email to Tunheim that the Drachmann Declaration states attached a presentation; an email from Drachmann to Bjerngaard dated March 22, 2010 that the Drachmann Declaration states attached a file; and several drawings that the Drachmann Declaration states were created between February 15 and March 22, 2010. The Patent Trial and Appeal Board rejected Apator’s attempt to swear behind Nielsen and found the claims anticipated and obvious. The Federal Circuit affirmed. Apator failed to sufficiently corroborate Drachmann’s testimony of conception. None of the emails themselves indicate what file was attached or what such attachment disclosed. View "Apator Miitors ApS v. Kamstrup A/S" on Justia Law

Stereochemistry is the study of a molecule’s three-dimensional structure. Stereoisomers are molecules with the same chemical formula and structure but different three-dimensional configurations. Enantiomers, non-superimposable mirror images of one another, often have identical physical properties, such as density and boiling point, but can exhibit different pharmacological properties in the human body. Sumitomo’s 372 patent relates generally to “novel imide compounds and their acid addition salts” that are useful as antipsychotic agents. The patent discloses and claims more than one billion compounds, some of which have stereo and optical isomers. Lurasidone, the (–)-enantiomer of an imide compound covered by the patent, is the active ingredient in Sunovion’s schizophrenia and bipolar depression drug LATUDA®. After Emcure filed Abbreviated New Drug Applications with the FDA, seeking approval to market generic versions of LATUDA®, Sumitomo sued for infringement. The claim construction question centered on what combination of enantiomers claim 14 encompassed. The Federal Circuit rejected Sumitomo’s attempt to “import limitations from the specification into the claim” and affirmed the district court, holding that the patent covers at least the specific orientation depicted in the claim, which is the active pharmaceutical ingredient in each party’s commercial product. View "Sumitomo Dainippon Pharma Co., Ltd. v. Emcure Pharmaceuticals Ltd." on Justia Law