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

Halo, a Hong Kong company that designs and sells high-end modern furniture, owns two U.S. design patents, 13 U.S. copyrights, and one U.S. common law trademark, all relating to its furniture designs. Halo’s common law trademark, ODEON, is used in association with at least four of its designs. Halo sells its furniture in the U.S., including through its own retail stores. Comptoir, a Canadian corporation, also designs and markets high-end furniture that is manufactured in China, Vietnam, and India. Comptoir’s furniture is imported and sold to U.S. consumers directly at furniture shows and through distributors, including in Illinois. Halo sued, alleging infringement and violation of Illinois consumer fraud and deceptive business practices statutes. The district court dismissed on forum non conveniens grounds, finding that the balance of interests favored Canada and that Canada, where the defendants reside, was an adequate forum. The Federal Circuit reversed. The policies underlying U.S. copyright, patent, and trademark laws would be defeated if a domestic forum to adjudicate the rights they convey was denied without a sufficient showing of the adequacy of the alternative foreign jurisdiction; the Federal Court of Canada would not provide any “potential avenue for redress for the subject matter” of Halo’s dispute. View "Halo Creative & Design, Ltd. v. Comptoir des Indes Inc." on Justia Law

Two appeals involved U.S. Patent No. 6,349,291, which named Samir Varma as the inventor and was owned by InvestPic LLC (collectively, Varma). The ’291 patent stated that many “conventional financial information sites” on the World Wide Web furnish information derived from “rudimentary statistical functions [that] are not useful to investors in forecasting the behavior of financial markets because they rely upon assumptions that the underlying probability distribution function (‘PDF’) for the financial data follows a normal or Gaussian distribution, which is generally false.” The Patent Trial and Appeal Board of the Patent and Trademark Office cancelled certain claims of the ’291 patent in two related reexamination proceedings: one initiated by International Business Machines Corp. and SAS Institute Inc.; the other by SAS alone. Varma’s appeals centered on two claim phrases: (1) a “bias parameter” that “determines a degree of randomness in sample selection in a resampling process”; and (2) “a statistical analysis request corresponding to two or more selected investments.” The Federal Circuit Court of Appeals agreed with Varma that the Board erred regarding both claim phrases. Correcting the first error, the Court reversed the cancellation of claims 1–5, 8–16, 19–21, and 24. Correcting the second error, the Court vacated the cancellation of claims 22, 23, 25, and 29–31 and remanded for further proceedings on those claims. View "In re Varma" on Justia Law

Applicants Ray and Amanda Tears Smith appealed a final decision of the Patent Trial and Appeal Board which affirmed the rejection of claims 1–18 of U.S. Patent Application No. 12/912,410 for claiming patent-ineligible subject matter under 35 U.S.C. 101. Applicants filed the ’410 patent application, titled “Blackjack Variation.” According to the application, “[t]he present invention relates to a wagering game utilizing real or virtual standard playing cards.” The examiner concluded that the claims represented “an attempt to claim a new set of rules for playing a card game,” which “qualifies as an abstract idea.” Because the claims covered only the abstract idea of rules for playing a wagering game and use conventional steps of shuffling and dealing a standard deck of cards, the Federal District Court of Appeals affirmed. View "In re: Smith" on Justia Law

Appellants Ulf Bamberg, Peter Kummer, and Ilona Stiburek (collectively, "Bamberg") appealed the Patent Trial and Appeal Board’s consolidated interference proceeding decision refusing to allow their claims to four patent applications because the specification failed to meet the written description requirement of 35 U.S.C. 112. The involved claims disclose a method for the transfer of printed images onto dark colored textiles by ironing over a specialty transfer paper. During the interference proceeding, Appellees Jodi Dalvey and Nabil Nasser (collectively, "Dalvey") filed a motion alleging that Bamberg’s claims were unpatentable for lack of written description. Dalvey alleged that the claims recited a white layer that melted at a wide range of temperatures, but Bamberg’s specification only disclosed a white layer that did not melt at ironing temperatures (i.e., below 220°C). Therefore, Dalvey argued that Bamberg’s specification failed to meet the written description requirement because it did not disclose an invention in which the white layer melted at temperatures below 220°C. The Federal Circuit Court of Appeal concluded that the Board properly construed the claims, and substantial evidence supported the Board’s determination that Bamberg failed to meet the written description requirement, and because it was not an abuse of discretion to deny Bamberg’s motion to amend. View "Bamberg v. Dalvey" on Justia Law

Tam, the “front man” for Asian-American rock band, The Slants, sought to register the mark THE SLANTS and attached specimens featuring the name set against Asian motifs. The examining attorney found the mark disparaging to people of Asian descent (15 U.S.C. 1052(a)) and denied registration. The Trademark Trial and Appeal Board dismissed for failure to file a brief. Tam filed another application, seeking to register the mark THE SLANTS for identical services and claiming use of the mark since 2006. Attached specimens did not contain Asian motifs. The examining attorney again found the mark disparaging and declined to register it. The Board affirmed. On rehearing, en banc, the Federal Circuit vacated, finding Section 2(a) of the Lanham Act unconstitutional. The government may not penalize private speech merely because it disapproves of the message, even when the government’s message-discriminatory penalty is less than a prohibition. “Courts have been slow to appreciate the expressive power of trademarks. Words—even a single word—can be powerful. With his band name, Tam conveys more about our society than many volumes of undisputedly protected speech.” The regulation at issue amounts to viewpoint discrimination; under strict scrutiny or intermediate scrutiny review, the disparagement proscription is unconstitutional, because the government has offered no legitimate interests to justify it. View "In Re:Tam" on Justia Law

DiStefano’s patent application claims a method that enables an individual to design a web page without having to “learn HTML or to interact extensively with a web page designer.” Its primary embodiment includes a graphical user interface with a primary display screen and an overlaid design plate that has menu buttons to assist in editing and a design place to edit web assets, such as Java applets, scripts, stock art, background images, and textures. Web assets can come from a web asset database, be uploaded directly by users, or be obtained from independent websites. When the user finishes editing a web asset, it is dragged from the design plate onto the website. The Patent Trial and Appeal Board rejected claims under 35 U.S.C. 102, for anticipation. The Federal Circuit vacated, rejecting application of the printed matter analysis and a conclusion that “web assets’ origination from third party authors and the user cannot patentably distinguish (i.e., cannot breathe novelty into) the claimed method, particularly because the web assets’ origins have no functional relationship to the claimed method.” Although selected web assets likely communicate some information, the content of the information is not claimed; the information’s “origin,” is not part of informational content. Nothing in the claim calls for origin identification to be inserted into the content of the web asset. View "In re: DiStefano" on Justia Law

In 1997 Seagate recruited Dr. Shukh, a native of Belarus, to move to the U.S. Shukh executed Seagate’s standard Employment Agreement, assigning to Seagate all “right, title, and interest in and to any inventions” made while at Seagate. Seagate prohibited employees from filing patent applications for their inventions. During his employment, Shukh was named as an inventor on 17 patents. Shukh’s time at Seagate was tumultuous. His performance evaluations indicated that he did not work well with others due to his confrontational style. In 2009, Seagate terminated Shukh and 178 others. Shukh has not yet secured employment and claims that he was told that he would never find employment at certain companies with his reputation. Shukh alleges that Seagate wrongfully omitted him as an inventor from several patents relating to semiconductor technologies; that Seagate discriminated against and terminated him based national origin and in retaliation for complaining about discrimination. He sought correction of inventorship of the disputed patents under 35 U.S.C. 256. The district court held that Shukh had no interest in the patents based on the assignment; dismissed claims for rescission of his Employment Agreement, breach of contract, breach of fiduciary duty, and unjust enrichment; and rejected claims of reputational harm, retaliation, fraud, and discrimination on summary judgment. The Federal Circuit vacated with respect to correction of inventorship, but otherwise affirmed. There is a genuine dispute of material fact as to whether Shukh’s negative reputation is traceable to Seagate’s omission of Shukh as an inventor from disputed patents. View "Shukh v. Seagate Tech., LLC" on Justia Law

R+L claimed infringement of the 078 patent, which generally relates to an improved method of consolidating freight into trailers to optimize delivery efficiencies for the loads in each trailer. While the case was pending, R+L filed for ex parte reexamination of the patent. Although the patent survived, R+L added language to all of the claims at issue. Because the district court determined that the new claims were not substantially identical to the initial claims of the 078 patent, and because there was no dispute that Qualcomm ceased its allegedly infringing activity before the reexamination certificate issued, R+L stipulated to final judgment, dismissing its infringement claim against Qualcomm. R+L appealed the determination that the amendments made during reexamination resulted in a substantive change in claim scope. The Federal Circuit affirmed, finding that amended claim 1 is not “substantially identical” to original claim under 35 U.S.C. 252, so R+L is not entitled to infringement damages prior to issuance of the reexamination certificate. View "R+L Carriers, Inc.. v. Qualcomm, Inc." on Justia Law

Konig’s SRI Employment Agreement, stated: I agree ….To promptly disclose… all discoveries, improvements, and inventions, including software … during … my employment, and … to effect transfer of ownership … to SRI . . . . I understand that termination of this employment shall not release me from my obligations. While employed by SRI, Konig started generating documents relating to a personalized information services idea called “Personal Web” and formed a company, Utopy. Konig left SRI and filed a provisional patent application in 1999; the 040 patent issued in 2005. In 2001, Konig asked an SRI scientist to test the Utopy products. The 040 patent was eventually assigned to PUM. Konig filed another patent application in 2008. PUM was the assignee; the 276 patent issued in 2010. In 2009, PUM sued Google, asserting infringement. PUM provided interrogatory responses that asserted that the conception of the inventions was while Konig was still at SRI. Google had acquired “any rights” that SRI had and counterclaimed breach of contract. The court stated that no reasonable juror could have found that the injury was “inherently unknowable,” applied the three-year limitations period for contracts claims, and granted PUM judgment on the counterclaim. The court also entered judgment of invalidity and noninfringement. The Federal Circuit affirmed, noting that the claim construction had no effect on the outcome and declining to issue an advisory opinion. View "Personalized User Model, LLP v. Google, Inc." on Justia Law

Nippon Steel filed suit, charging POSCO with patent infringement and unfair competition. The court entered a protective order prohibiting cross-use of confidential materials which “shall be used by the receiving Party solely for purposes of the prosecution or defense of this action.” POSCO later produced several million pages of documents containing confidential information. Nippon also sued POSCO (based in Korea) in Japan for alleged trade secret misappropriation. POSCO filed a declaratory judgment action in Korea. Discovery in U.S. federal courts is more generous than in Japan and Korea, so Nippon moved the court to modify its discovery protective order for the purposes of providing foreign counsel in the Japanese and Korean actions approximately 200 pages of proprietary documentation relating to POSCO’s manufacturing process. Based on the Federal Rules of Civil Procedure and the balancing framework for modifying discovery orders, a special master concluded that modification should be granted, subject to restrictions to keep the information confidential. Among the restrictions: “[b]efore the documents may be submitted to a foreign court, the court must identify the information and agree that it would be maintained as confidential and restricted from third party access.” The district court and Federal Circuit affirmed. View "In re: Posco" on Justia Law