Justia U.S. Federal Circuit Court of Appeals Opinion SummariesArticles Posted in Patents
Google, LLC v. IPA Technologies Inc.
The patents relate to software-based architecture for supporting cooperative task completion by flexible, dynamic configurations of autonomous electronic agents. Both patents list Martin and Cheyer as inventors. Google petitioned for inter partes review of various claims, relying primarily on an academic paper entitled “Building Distributed Software Systems with the Open Agent Architecture” to argue that the claims would have been obvious. Google contended that the paper was prior art as work “by others” because it described the work of an inventive entity (Martin, Cheyer, and Moran) differently from the inventive entity of the challenged patents. The Board concluded that Google had not provided sufficient support to explain how Moran’s contribution established him as an inventive entity.The Federal Circuit vacated. The Board failed to resolve fundamental testimonial conflicts in concluding that the relied-upon reference was not prior art. The issue was not the lack of corroboration for Moran’s testimony, but rather whether his testimony should be credited over Cheyer and Martin’s conflicting testimony during the IPR proceedings. View "Google, LLC v. IPA Technologies Inc." on Justia Law
Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc
Bennett sued Atlanta Gas, a Georgia distributor of natural gas, for infringement of Bennett's patent, directed to an anti-icing device for a gas pressure regulator. Atlanta Gas was served with the complaint on July 18, 2012. That litigation was dismissed without prejudice for lack of personal jurisdiction. On July 18, 2013, Atlanta Gas filed an inter partes review (IPR) petition concerning the patent.The Patent Trial and Appeal Board rejected Bennett’s argument that Atlanta Gas was time-barred from petitioning for IPR under 35 U.S.C. 315(b) and determined that the challenged claims were unpatentable over the prior art. The Federal Circuit held that Atlanta Gas should have been barred, vacated the unpatentability determination, and remanded with directions to dismiss the IPR and to further consider a sanctions order. Before the Board acted, the Supreme Court held that time-bar determinations were unreviewable, "Thryv," (2020). On remand, the Federal Circuit affirmed the unpatentability determination on the merits and again remanded for the Board to reconsider and finalize its sanctions order. The Board then terminated the proceeding due in part to reconsideration of its decision on the time bar. Atlanta Gas appealed.The Federal Circuit dismissed, holding that it lacked jurisdiction to review the Board’s decision to vacate its institution decision, a decision made based in part on the Board's evaluation of the time bar and changed Patent and Trademark Office policy. View "Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc" on Justia Law
Sound View Innovations, LLC v. Hulu, LLC
Sound View alleged that Hulu infringed claim 16 of its patent, titled “Method for Streaming Multimedia Information over Public Networks” by its use of (third party) edge servers, which sit between a central Hulu content server and the video-playing devices of customers. The district court construed the patent’s “downloading/retrieving limitation” not to cover a process in which downloading occurs from one buffer in a helper server and the (concurrent) retrieving places what is retrieved in another buffer in that server. The court construed the limitation to require that the same buffer in the helper server host both the portion sent to the client and a remaining portion retrieved concurrently from the content server or other helper server. Hulu argued that, in the edge servers of its content delivery networks, no single buffer hosts both the video portion downloaded to the client and the retrieved additional portion. Sound View argued that there remained a factual dispute about whether “caches” in the edge servers met the concurrency limitation as construed.The district court held that a “cache” could not be the “buffer” that its construction of the downloading/retrieving limitation required. The Federal Circuit vacated the summary judgment of non-infringement, affirming the construction of the downloading/retrieving limitation but rejecting the determination that “buffer” cannot cover “a cache.” View "Sound View Innovations, LLC v. Hulu, LLC" on Justia Law
Sunoco Partners Marketing & Terminals L.P. v. U.S. Venture, Inc.
Gasoline producers blend butane into gasoline before selling it because butane makes gasoline more volatile, helping vehicles start more readily in colder temperatures, and butane is cheaper than gasoline. Sunoco’s patented technology seeks to maximize butane content while complying with EPA regulations concerning volatility, which vary depending on season and location. Sunoco’s patents “describe a system and method for blending butane with the gasoline at a point close to the end of the distribution process: immediately before being distributed to the tanker trucks that take gasoline to consumer gas stations.” Producers can “blend the maximum allowable butane into each batch based on where the truck is going and what month it is.” Sunoco successfully sued Venture, alleging infringement.The Federal Circuit reversed a holding that the experimental-use doctrine insulated a subset of asserted patent claims from the on-sale bar, vacated the infringement judgment as to those claims, and remanded for the district court to analyze the second prong of the on-sale bar. The court also vacated the infringement judgment with respect to patent claims that it affirmed are invalid in a separate appeal. The court adopted the district court’s claim constructions and affirmed its infringement judgment regarding two patent claims; vacated a treble-damages award; and affirmed the denial of lost-profits damages and $2 million reasonable royalty. View "Sunoco Partners Marketing & Terminals L.P. v. U.S. Venture, Inc." on Justia Law
Auris Health, Inc. v. Intuitive Surgical Operations, Inc.
Intuitive’s 447 patent relates to robotic surgery systems and describes an improvement over Intuitive’s earlier robotic surgery systems, which allow surgeons to remotely manipulate surgical tools using a controller. The invention embodied by the patent attempts to address difficulties in swapping tools via a robotic system with a servo-pulley mechanism, which allows clinicians to more quickly swap out surgical instruments and thereby reduce surgery time, improve safety, and increase the reliability of the system. Following inter partes review of all five claims of the patent, the Patent Trial and Appeal Board determined that Auris failed to demonstrate that the claims were unpatentable as obvious. Although the Board agreed with Auris that its combination of two references disclosed every limitation of the challenged claims, the Board concluded that a skilled artisan would not have been motivated to combine those references. The Federal Circuit vacated. The Board impermissibly rested its motivation-to-combine finding on evidence of general skepticism about the field of invention. The Board recited Auris’s evidence that combining prior art would reduce the number of assistants but also Intuitive’s evidence that such a combination would come at the expense of precision required for surgery. View "Auris Health, Inc. v. Intuitive Surgical Operations, Inc." on Justia Law
Apple, Inc. v. Zipit Wireless, Inc.
Zipit, a Delaware corporation with a principal place of business in South Carolina, and with all of its employees in South Carolina, is the assignee of the patents-in-suit, which are generally directed to wireless instant messaging devices that use Wi-Fi. In 2013, Zipit contacted Apple in California. For three years, the parties exchanged correspondence and met in person at Apple’s Cupertino headquarters. Zipit filed a patent infringement action against Apple in Georgia but later dismissed the case without prejudice.Apple sought a declaratory judgment of noninfringement in the Northern District of California. The district court dismissed, holding that it lacked specific personal jurisdiction over Zipit (general jurisdiction was not asserted). The court concluded that Apple had established the requisite minimum contacts but that “the exercise of personal jurisdiction . . . would be unconstitutional when ‘[a]ll of the contacts were for the purpose of warning against infringement or negotiating license agreements, and [the defendant] lacked a binding obligation in the forum.’” The Federal Circuit reversed, Zipit is subject to specific personal jurisdiction in the Northern District of California for purposes of Apple’s declaratory judgment action. Zipit has not presented a compelling case that the relevant factors in the aggregate would render the exercise of jurisdiction unreasonable. View "Apple, Inc. v. Zipit Wireless, Inc." on Justia Law
Niazi Licensing Corp. v. St. Jude Medical S.C., Inc.
Congestive heart failure can be treated by resynchronization therapy, using electrical pacing leads to help keep the two sides of the heart contracting with regularity and in sync. According to Niazi's 268 patent, physicians previously accomplished resynchronization by inserting a catheter into the coronary sinus and its branch veins to place pacing leads on the hearts of patients; it can be “difficult to pass a lead” into the coronary sinus and its branch veins using a catheter. The 268 patent describes a double catheter, comprising an outer and inner catheter, for cannulating the coronary sinus “without significant manipulation.” Niazi sued for patent infringement, accusing combinations of St. Jude’s products of directly infringing the 268 patent and accusing St. Jude of inducing infringement.The Federal Circuit reversed the district court’s determination that all but one of the asserted patent claims are invalid as indefinite; when read in light of the intrinsic evidence, a person of ordinary skill in the art would understand the scope of the claims with reasonable certainty. Niazi failed to prove direct infringement—a necessary element of Niazi’s inducement claim. The court affirmed the entry of monetary sanctions and the exclusion of portions of Niazi’s technical expert and damages expert reports because Niazi failed to disclose predicate facts during discovery. The court upheld the exclusion of portions of Niazi’s damages expert report as unreliable. View "Niazi Licensing Corp. v. St. Jude Medical S.C., Inc." on Justia Law
Roche Diagnostics Corp. v. Meso Scale Diagnostics, LLC
BioVeris, a Roche entity, owns the patents, which concern immunoassays that exploit electrochemiluminescence (ECL). Meso maintains that a prior owner, IGEN, granted it exclusive rights to the patent claims it now asserts against Roche (which sells instruments and reagent packs for performing ECL immunoassays). Meso sued Roche in the Delaware Court of Chancery in 2010, alleging that Roche breached its 2003 license with IGEN by violating a field restriction. The chancery court determined that Meso was not a party to the 2003 license agreement, such that only BioVeris (IGEN’s successor-in-interest) could enforce the field restriction.In 2017, Roche sought a federal court declaratory judgment that it does not infringe Meso’s rights arising from a 1995 joint venture license agreement. Meso counterclaimed for patent infringement. A jury found that Meso holds an exclusive license to the asserted patent claims, that Roche directly infringed one claim and induced infringement of three claims in other patents, and that Roche’s infringement was willful. It awarded Meso $137,250,000 in damages. The court granted Roche judgment as a matter of law on willfulness, denied Meso’s motions to enhance damages, and rendered a noninfringement judgment with respect to three additional patents on the ground that Meso waived compulsory infringement counterclaims. The Federal Circuit affirmed on direct infringement, reversed on induced infringement, vacated the damages award, remanded for a new trial on damages, and vacated the judgment of noninfringement with respect to three additional patents. View "Roche Diagnostics Corp. v. Meso Scale Diagnostics, LLC" on Justia Law
Littelfuse, Inc. v. Mersen USA EP Corp.
Littelfuse alleged that Mersen infringed its patent, which is directed to a “fuse end cap for providing an electrical connection between a fuse and an electrical conductor.” After the district court construed the patent claims, the parties stipulated to a judgment of non-infringement.The Federal Circuit vacated the judgment and the district court’s constructions of “fastening stem” and “a fastening stem that extends from the mounting cuff and into the second cavity of the terminal that receives the conductor.” On remand, the district court should adjust the construction of those claim terms so as to allow for the independent claims to cover both single-piece and multi-piece embodiments, but the court’s constructions should continue to give meaning to the terms “fastening” and “stem” in the context of the invention and the ordinary meaning of those terms. View "Littelfuse, Inc. v. Mersen USA EP Corp." on Justia Law
Genuine Enabling Technology LLC v. Nintendo Co., Ltd.
Genuine Enabling’s patent, titled “Method and Apparatus for Producing a Combined Data Stream and Recovering Therefrom the Respective User Input Stream and at Least One Additional Input Signal,” discloses the technology for combining data streams that the inventor, Nguyen, conceived when developing a “voice mouse” that conserved computer resources. Genuine sued Nintendo, accusing infringement by the Wii Remote and Wii Remote Plus, the Nunchuk, the WiiU GamePad, the Switch Joy-Con Controller, and the Nintendo Switch Pro Controller..The district court construed the term “input signal,” which appears in all the asserted claims, consistent with the defendants’ proposed construction, and granted the defendants summary judgment of noninfringement.The Federal Circuit reversed. The district court erred in its construction of “input signal.” The Federal Circuit construed the term to mean “a signal having an audio or higher frequency.” Nguyen disclaimed subject matter other than signals below the audio frequency spectrum during prosecution, and the district court further erred in relying on extrinsic evidence to limit the claim scope to signals above 500 Hz. View "Genuine Enabling Technology LLC v. Nintendo Co., Ltd." on Justia Law