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

The patents, which cover skin care products and are related as parent and child, are owned by the University of Massachusetts, which sued L’Oréal (S.A. and USA) for infringement. L’Oréal S.A., which is based in France, moved to dismiss the action on the ground that the Delaware forum lacked personal jurisdiction over it. The district court granted the motion without permitting UMass to conduct jurisdictional discovery, then ruled on a dispute about the proper construction of one limitation of a claim, and relying on that construction, held another limitation of the claim indefinite and entered a final judgment of invalidity.Finding that UMass was entitled to jurisdictional discovery, the Federal Circuit vacated the dismissal of L’Oréal S.A. The court then rejected the district court’s construction of the “wherein” clause in a claim: A method for enhancing the condition of unbroken skin of a mammal by reducing one or more of wrinkling, roughness, dryness, or laxity of the skin, without increasing dermal cell proliferation, the method comprising topically applying to the skin a composition comprising a concentration of adenosine in an amount effective to enhance the condition of the skin without increasing dermal cell proliferation, wherein the adenosine concentration applied to the dermal cells is 10-4 M to 10-7 M. View "University of Massachusetts v. L’Oréal S.A." on Justia Law

Pavo's patent is generally directed to “[a] flash memory apparatus having a single body type rotary cover” to protect USB ports from damage and foreign substances. Pavo’s predecessor sued Kingston, alleging infringement. Kingston sought inter partes review (IPR). Certain claims survived IPR. The district court lifted the previously-imposed stay, and, in claim construction, found that the phrase “pivoting the case with respect to the flash memory main body” included a clerical error. It corrected the language, replacing the word “case” with the word “cover” so that the claim read “pivoting the cover with respect to the flash memory main body.” The court determined that the error was “evident from the face of the patent” because “[t]he case is described as a part of the main body, so it is not possible for it to rotate with respect to the body,” noting that the prosecution history was consistent with the correction.A jury returned a verdict that Kingston had willfully infringed three claims and awarded Pavo a 20-cent reasonable royalty. The court awarded $7,515,327.40 in compensatory damages, enhanced by 50 percent. The Federal Circuit affirmed. The district court appropriately corrected an obvious minor clerical error in the claims; the correction is not subject to reasonable debate. Reliance on an obvious minor clerical error in the claim language is not a defense to willful infringement. The court rejected Kingston’s challenges to an expert’s damages testimony and affirmed the damages award. View "Pavo Solutions,. LLC v. Kingston Technology Co., Inc." on Justia Law

Shure’s 493 patent relates to arrays of microphones and housings for the arrays so that the arrays and housings may be fitted into a drop ceiling grid. The array is configured, in one embodiment, to “include[] a plurality of microphone transducers selectively positioned in a self-similar or fractal-like configuration, or constellation.” During inter partes review (IPR), Shure added independent claim 57, which recites: A microphone assembly comprising: an array microphone comprising a plurality of microphones arranged in a self-similar configuration. The Patent Board concluded that a skilled artisan would understand “self-similar” to have had a well-known meaning and include the specification’s disclosure of “fractal-like[] configurations or constellations,” which does not create an ambiguity. ClearOne requested rehearing and to file a sanctions motion, arguing Shure violated its duty to disclose material prior art; weeks before the Board's decision, Shure petitioned for post-grant review of the 653 patent, which also relates to drop ceiling microphone arrays, asserting that all claims of the 653 patent would have been obvious over, inter alia, patent publications Levit and Gulbrandsen, which Shure did not disclose in the 493 patent IPR.The Board denied rehearing and did not authorize a sanctions motion, reasoning that Levit and Gulbrandsen were cumulative of references asserted by ClearOne in its IPR petition. The Federal Circuit affirmed, further concluding that the self-similar term is not indefinite, and substantial evidence supports the Board’s subsidiary fact findings based on extrinsic evidence. View "ClearOne, Inc. v. Shure Acquisition Holdings, Inc." on Justia Law

Arthrex sued S&N, alleging infringement. S&N sought inter partes review (IPR). The Patent Trial and Appeal Board found that prior art anticipated several claims. Arthrex challenged the decision on the merits and argued that the Board lacked constitutional authority to issue the final decision because its Administrative Patent Judges (APJs) were not nominated by the President and confirmed by the Senate, as the Appointments Clause requires for principal officers.The Federal Circuit severed the statutory limitations on the removal of APJs and remanded for rehearing by a new panel. The Supreme Court vacated and remanded, finding that the appropriate remedy was to exempt the Director from 35 U.S.C. 6(c), which precludes anyone but the Board from granting rehearing of a Board decision, and remand to the Acting Director for a decision on whether to rehear the case. The offices of the Director and Deputy Director were vacant. Agency Organization Order 45-1 states, “If both the [Director] and the Deputy [Director] positions are vacant, the Commissioner for Patents . . . will perform the non-exclusive functions and duties of the [Director].” The Commissioner denied rehearing and ordered that the Board’s decision “is the final decision of the agency.”The Federal Circuit affirmed, rejecting arguments that the Commissioner violated the Appointments Clause, the Federal Vacancies Reform Act, 5 U.S.C. 3345, or the Constitution’s separation of powers in denying Arthrex’s rehearing request. The court agreed that prior art anticipated the challenged claims. View "Smith & Nephew, Inc. v. Arthrex, Inc." on Justia Law

Kaufman’s now-expired patent describes and claims methods for using a computer to automatically generate an end-user interface for working with the data in a relational database. Kaufman sued Microsoft, asserting infringement by Microsoft’s making and selling of its Dynamic Data product. A jury found Microsoft liable and awarded damages of $7 million. The district court upheld the verdict and denied Kaufman’s motion to amend the judgment to include prejudgment interest. The Federal Circuit affirmed the denial of Microsoft’s post-judgment motions but reversed the denial of prejudgment interest. Microsoft failed to preserve its challenge to claim construction with respect to the phrase “automatically generating,” and failed to establish that the district court erred in its claim construction or that the jury’s verdict was not supported by substantial evidence. View "Kaufman v. Microsoft Corp.," on Justia Law

USAA, a reciprocal inter-insurance exchange organized under Texas law with its principal place of business in San Antonio, owns the four patents, which address the use of a mobile device to capture an image of a bank check and transmit it for deposit. Mitek filed suit in the Northern District of California, seeking a declaratory judgment (28 U.S.C. 2201(a)), that Mitek and its customers have not infringed, either directly or indirectly, any valid and enforceable claim of USAA’s patents. USAA moved for dismissal of the complaint, arguing that there was no case or controversy between USAA and Mitek and that the court should exercise discretion not to hear Mitek’s claim. In the alternative, USAA requested the transfer of the action to the Eastern District of Texas under 28 U.S.C. 1404. The California court, without ruling on the dismissal motion, ordered the case transferred to Texas.The Texas court dismissed for want of a case or controversy, stating that, even if jurisdiction existed, it would exercise its discretion to decline to entertain the action. The Federal Circuit vacated the Texas court’s dismissal and remanded, affirming the California court’s transfer order. To make the “case or controversy” determination, the district court’s primary task will be to ascertain the alleged role of the Mitek technology in the banks’ applications and the alleged role that the Mitek technology plays in infringement claims. View "Mitek Systems, Inc. v. United Services Automobile Association" on Justia Law

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

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 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

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