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

MRC owns the 488 patent, claiming an ornamental design for a football jersey for a dog, and the 487 patent, which claims a similar baseball jersey. Cohen is the named inventor and principal shareholder of MRC and assigned his rights to that company. Hunter is a retailer of licensed sports consumer products, including pet jerseys and previously purchased pet jerseys for dogs from Cohen through companies with which he was affiliated. Cohen claims that in 2009 he designed another pet jersey, known as the “V3” jersey, which later became the subject of the 488 patent. Hunter began purchasing the V3 jersey in 2009. In 2010, Cohen filed a patent application for the V3 jersey and the baseball equivalent that became the subject of the 487 patent. Cohen informed Hunter that he no longer intended to do business with Hunter because Hunter was having difficulty making payments. Hunter sought proposals from other companies to manufacture and supply it with pet jerseys like the V3 and contracted with CDI. MRC sued Hunter and CDI for willful infringement. The district court granted summary judgment in favor of Hunter and CDI, finding both patents invalid as obvious under 35 U.S.C. 103(a). The Federal Circuit affirmed. View "MRC Innovations, Inc. v. Hunter Mfg., LLP" on Justia Law

New York based Stone Lion manages a hedge fund that focuses on credit opportunities. Lion, a United Kingdom private equity firm, invests primarily in companies that sell consumer products. Lion has two marks registered with the Patent and Trademark Office and started using the marks in the U.S. in 2005. Lion filed applications for “LION CAPITAL” and “LION” in 2005 and 2007, respectively, for services including “financial and investment planning and research,” “investment management services,” “capital investment consultation,” “equity capital investment,” and “venture capital services” Lion has priority over Stone Lion with respect to those marks. In August 2008, Stone Lion filed an intent-to-use application for the mark “STONE LION CAPITAL,” proposing to use the mark in connection with “financial services, namely investment advisory services, management of investment funds, and fund investment services.” Lion opposed the registration under section 2(d) of the Lanham Act, 15 U.S.C. 1052(d), alleging that the proposed mark would likely cause confusion with Lion’s registered marks when used for Stone Lion’s recited financial services. The Trademark Trial and Appeal Board conducted the likelihood of confusion inquiry pursuant to 13 factors and refused registration. The Federal Circuit affirmed, finding that the Board had substantial evidence to support its conclusion. View "Stone Lion Capital Partners, LP v. Lion Capital, LLP" on Justia Law

In 2006, Allen and Gillman agreed to adapt Allen’s electronic payment system, then used in the automotive industry, to process health care claims. Their contracts provided that Allen’s company, StoneEagle, owned the new system technology. StoneEagle licensed the technology to Talon, which was responsible for marketing. Allen applied for a patent on the system, listing himself as the sole inventor. Gillman had some role in drafting the application and in the application process. Although not listed as an inventor, Gillman had an ownership interest in the patent application until at least July 2010, when he assigned his interest to StoneEagle. The patent issued in September 2010. By 2011, the relationship had soured. StoneEagle sought a declaratory judgment that Allen was the sole inventor and owner of the patent and asserted state law trade secret misappropriation claims. The court issued a preliminary injunction prohibiting use or disclosure of StoneEagle’s trade secrets and confidential information. StoneEagle terminated the license agreement, but Talon and Gillman allegedly started a competing venture. The district court denied a contempt order and clairifed the injunction. The Federal Circuit remanded with instructions to dismiss, finding that the court lacked jurisdiction over the case when StoneEagle initiated the lawsuit because it did not did not allege an actual controversy concerning inventorship. View "Stoneeagle Servs., Inc. v. Gillman" on Justia Law

Hauge and his former employer, ERI, disputed ownership of intellectual property rights related to “pressure exchangers,” a type of energy recovery device used in reverse osmosis. In 2001 they entered into an Agreement. The district court adopted the Agreement, holding that ERI was to be the sole owner of three U.S. patents and one pending patent application. After expiration of the Agreement’s non-compete clause, in 2004, Hauge filed a patent application, titled “Pressure Exchanger,” and a utility application. The patent issued in 2007, describing “[a] pressure exchanger for transferring pressure energy from a high-pressure fluid stream to low-pressure fluid stream.” In 2009, Hauge’s new company, Isobarix, unsuccessfully attempted to reach a new agreement with ERI. Isobarix began selling a pressure exchanger, called “XPR.” Hauge entered into a consulting agreement with two ERI employees. ERI sought an Order to Show Cause, in 2012, submitting an expert’s declaration that Isobarix was using pressure exchanger technology from pre-March 19, 2001 in design and manufacture of XPR, which is “virtually identical to the ERI pressure exchanger” in operation. The court entered a Contempt Order, finding that allowing Hauge to develop new products using technology he assigned to ERI solely because the new inventions post-date the Agreement would render the Agreement useless. The Federal Circuit vacated, finding that Hauge did not violate the “four corners” of the 2001 Order. View "Energy Recovery, Inc. v. Hauge" on Justia Law

Danisco and Novozymes compete as suppliers of Rapid Starch Liquefaction products, genetically modified industrial enzymes that convert plant-based material into ethanol. They have patents that claim α-amylase enzymes, genetically engineered through substitution of amino acids in the peptide sequence to improve liquefaction performance. Novozymes has sued Danisco several times. Once Novozymes amended a pending patent application to claim one of Danisco’s new products, and sued Danisco the same day that the patent issued. Danisco owns the 240 patent, issued 2011 and claiming priority from a 2008 provisional application, claiming a variation for increased viscosity reduction in a starch liquefaction assay; it is the active ingredient in Danisco’s RSL products. After the PTO issued a Notice of Allowance, Novozymes amended a pending application to claim the enzyme, and contested entitlement to priority, arguing that its amended claim covered the same invention as the 240 patent. After Danisco’s 240 patent issued, Novozymes requested continued examination and made comments about its refusal to “acquiesce.” Upon issuance of Novozymes’s 573 patent, Danisco sought declaratory judgments that its products did not infringe and that the 573 patent was invalid, or that its 240 patent had priority under 35 U.S.C. 291. The district dismissed, acknowledging that Novozymes’s 573 patent presented a substantial risk to Danisco, but that Danisco’s action was filed before Novozymes could take action to enforce its rights. The Federal Circuit reversed, holding that the totality of the circumstances established a justiciable controversy. View "Danisco U.S. Inc. v. Novozymes A/S, Inc." on Justia Law

Ancora’s patent, entitled “Method of Restricting Software Operation within a License Limitation,” describes a method of preventing unauthorized software use by checking whether a program is operating within its license and taking remedial action if it is not. Methods for checking license coverage of software were known at the time of application, but some were vulnerable to hacking, while others were expensive and inconvenient to distribute. The specification claims to overcome those problems by using memory space associated with the computer’s basic input/output system (BIOS), rather than other space, to store encrypted license information for the verification process. While the contents of BIOS space may be modified, the level of expertise needed to do so is unusually high, and the risk of accidentally rendering the computer inoperable is too high for the ordinary hacker. The method eliminates the expense and inconvenience of using additional hardware. Ancora sued, alleging that products running Apple’s iOS operating system infringed the patent. Ancora stipulated to non-infringement under the district court’s construction of the claim term “program” and appealed that construction. Apple cross-appealed. The Federal Circuit reverses the construction of “program” as limited to application programs, affirmed a conclusion that the terms “volatile memory” and “non-volatile memory” are not indefinite, and remanded.View "Ancora Tech., Inc. v. Apple, Inc." on Justia Law

Elcommerce.com owns a patent directed to a system and method of monitoring a supply chain of components to coordinate and stabilize the supply of components from various producers. Elcommerce charged SAP with patent infringement. SAP counterclaimed that the patent was invalid, unenforceable, and not infringed. The district court construed claims and entered summary judgment that certain asserted system claims were invalid for indefiniteness under 35 U.S.C. 112. The parties stipulated that the claim construction precluded finding that SAP infringes any of the asserted method claims. The Federal Circuit affirmed construction of the claim terms “independent supply chain sites,” “scanning for,” “detecting,” and “monitoring for changed supply-related data information,” and the resulting stipulation of non-infringement of the method claims. The court vacated the ruling of invalidity of the system claims as based on an incorrect evidentiary premise. SAP incorrectly informed the court that Federal Circuit precedent makes consideration of evidence of the knowledge and understanding of the relevant technology by persons of skill in the field of the invention unnecessary and declined to provide evidence of how such persons would view the description of “structure, materials, or acts” in the specification for performance of the several functions claimed. Invalidity must be proven by clear and convincing evidence . View "Elcommerce.com, Inc. v. SAP AG & SAP Am., Inc." on Justia Law

The Federal Circuit previously held that patent claim construction receives de novo determination on appeal. Such review is conducted on the administrative record and any additional information in the record of the district court, and is without deference to the ruling of the district court. The court had applied that standard to this case and, reversing the district court, held that the claim term “voltage source means” is a means-plus-function term requiring corresponding structure in the specification. The court held the claims invalid for indefiniteness. After granting rehearing, en banc, the Federal Circuit applied the principles of stare decisis, and confirmed the Cybor standard of de novo review. The court stated that after 15 years of experience with Cybor, it concluded that it should retain plenary review of claim construction, to provide national uniformity, consistency, and finality to the meaning and scope of patent claims. View "Lighting Ballast Control, LLC v. Philips Elec. N. Am. Corp." on Justia Law

Solvay’s 817 patent claims an improvement to a method of making a hydrofluorocarbon (HFC-245fa), which does not deplete the ozone layer as legislatively mandated to replace ozone-depleting alternatives. HFC-245fa is especially useful in preparing polymeric materials used for insulation in refrigeration and heat systems. The patent has a 1995 priority date. In 1994, Honeywell and RSCAC entered into a contract, under which RSCAC engineers, in Russia, studied commercial production of HFC-245fa. RSCAC sent Honeywell a report documenting a continuous process capable of producing high yields of HFC-245fa. Honeywell used the report to run the same process in the U.S., before the 817 patent’s priority date. Solvay sued Honeywell, alleging infringement. Honeywell argued that the Russian inventors made the invention in this country by sending instructions to Honeywell personnel who reduced the invention to practice in the U.S. The district court held that the RSCAC engineers should be treated as inventors who made the invention in the U.S. under 35 U.S.C. 102(g)(2), that RSCAC disclosed claim1 in a 1994 Russian patent application such that they did not abandon, suppress, or conceal it. The Federal Circuit affirmed judgment for Honeywell. It is not required that the inventor be the one to reduce the invention to practice if reduction to practice was done on his behalf in the U.S., so Honeywell’s invention qualified as prior art.View "Solvay, S.A. v. Honeywell Int'l, Inc." on Justia Law

EnOcean owns a patent application that claims a self-powered switch, which can be used to turn on and off lights, appliances, and other devices without a battery or connection to an electrical outlet. The named inventors originally filed a patent application disclosing the switch in Germany in 2000; in 2001 they filed a Patent Cooperation Treaty (PCT) international application with a similar disclosure. The Board of Patent Appeals and Interferences declared an interference in 2010 between EnOcean and Face, the real party of interest in a U.S. Patent that also claims a self-powered switch. The Board found the Face claims were unpatentable under 35 U.S.C. 103 based on prior art. Face did not appeal. The Board then applied a presumption that EnOcean’s claims were unpatentable for the same reasons. EnOcean’s argument for rebutting the presumption required determination that EnOcean’s claims could benefit from the filing dates of its German and PCT applications, eliminating a reference from prior art. The Board accorded no benefit of priority to the claims and found all of EnOcean’s claims unpatentable under section 103. The Federal Circuit vacated in part, finding that the Board erred in treating certain EnOcean claims as means-plus-function claims and in finding that certain EnOcean claim limitations lack support in its priority German and PCT applications.View "EnOcean GmbH v. Face Int'l Corp." on Justia Law