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

The Patent Trial and Appeal Board found four claims of Quake’s patent and Claim 25 of its Patent Application unpatentable for lack of written description, 35 U.S.C. 112. The claims cover a method of determining the presence of a chromosomal abnormality in fetuses by using massively parallel sequencing (MPS) technology to sequence DNA fragments from a sample of the mother’s blood that contains both maternal and fetal DNA, identifying what chromosomes those DNA fragments come from based on their sequences, and determining if the test chromosome is over- or under-represented in the sample as compared to a reference chromosome. The claims recite a random MPS method for the detection step--all of the DNA in the sample is sequenced, as opposed to sequencing specific, targeted sequences. The Federal Circuit affirmed. The written description requirement prevents an applicant from later asserting that he invented that which he did not; it is particularly important when, as here, claims are added later during prosecution in response to developments by others. The first time Quake tried to cover random MPS with this specification was after the publication of another patent application directed to random MPS: Quake then canceled all his pending claims and replaced them with claims covering random MPS, creating a mismatch between the claims and the originally filed specification. The Board did not abuse its discretion in declining to reopen the record to admit expert testimony from another proceeding. View "Quake v. Lo" on Justia Law

TQ’s patent, entitled “Multicarrier Transmission System with Low Power Sleep Mode and Rapid-On Capability,” relates to the field of “multicarrier transmission systems” that provide high-speed data links between communication points[ and have recently been used] . . . for communications over the local subscriber loop that connects a telephone service subscriber to a central telephone office.” The patent generally describes a method for “establishing a power management sleep state in a multicarrier system” and efficiently waking up a transmission system utilized on hardware, such as a computer, from sleep mode.DISH Network sought inter partes review (IPR). The U.S. Patent Trial and Appeal Board found the challenged claims unpatentable as obvious. The Federal Circuit affirmed, first holding that the Board did not violate TQ’s Administrative Procedures Act rights; it never construed the “reinitialize” limitation in its Decision to Institute IPR as TQ claimed, and, therefore, did not change course by construing the term in the Final Written Decision. The Board properly construed the “without needing to reinitialize” limitation. Substantial evidence supports the Board’s obviousness determination. View "TQ Delta, LLC v. DISH Network LLC" on Justia Law

UTC’s patent is generally directed to a gas turbine engine having a gear train driven by a spool with a low stage count low-pressure turbine, designed for use in airplanes. GE sought inter partes review. The Patent Trial and Appeal Board found that the claims at issue were not unpatentable for obviousness. UTC moved to dismiss GE’s appeal for lack of standing, arguing that an appellant does not automatically possess standing to appeal an adverse Board decision.GE submitted a Declaration by Long, GE’s Chief IP Counsel, explaining that because the design of aircraft engines can take eight years or more, GE develops new engines based on old designs; in the 1970s, GE developed a geared turbofan engine for NASA. GE asserted that UTC's patent impedes its ability to use that design as a basis for future geared turbofan engine designs, thereby limiting the scope of GE’s engine designs and its ability to compete. Long declared that designing around the patent restricts GE’s design choices and forced GE to incur additional research and development expenses. Long declared that Boeing requested information from GE and its competitors for engine designs for future Boeing aircraft with information regarding designs for both geared-fan engines and direct-drive engines; GE researched a geared-fan engine design that would potentially implicate UTC’s Patent but chose not to submit a geared-fan engine design.The Federal Circuit dismissed the appeal for lack of Article III standing. GE’s purported competitive injuries are too speculative to support constitutional standing. Long’s declarations are the only evidence of standing and neither shows concrete and imminent injury to GE related to the patent. View "General Electric Co. v. United Technologies Corp." on Justia Law

Westech sued 3M in the Western District of Washington, alleging infringement. 3M moved to dismiss the original and amended complaints. While 3M’s motion was pending, the Supreme Court decided, in TC Heartland, that under the patent venue statute, 28 U.S.C. 1400(b), a corporation “resides” only in its state of incorporation. 3M amended its motion to argue improper venue. Westech sought to amend its complaint and argued that the presence of sales representatives and 3M’s sales in Washington supported venue and that 3M had a “principal place of business” and other business locations at various Washington addresses. At the time of the original complaint, 3M did not own, lease, use, or maintain property at any of the specified locations, and, at the time of the motion did not occupy any of the locations. The district court denied 3M’s motion without prejudice and allowed Westech amend its complaint. In the interim, the Federal Circuit held that section 1400(b) requires a defendant to have a physical place in the district that serves as a regular and established place of business. The district court then dismissed the case. On appeal, 3M sought attorneys’ fees and double costs, arguing that Westech’s appeal was frivolous. The Federal Circuit affirmed the dismissal but denied the motion for fees and costs. Westech’s behavior on appeal bordered on sanctionable, but Westech pursued the appeal when the question of who shoulders the burden of establishing proper venue was unanswered. View "Westech Aerosol Corp. v. 3M Co." on Justia Law

Nucleic acids DNA and RNA are made of a series of building blocks, called nucleotides, linked together in a chain. Hybridization techniques are used to detect the presence of certain nucleic acid sequences of interest, i.e., target sequences, such as genetic alterations. In such procedures, scientists use a hybridization “probe”—i.e., a labeled polynucleotide that is hybridizable and remains detectable after hybridization occurs—that is sufficiently complementary to the target sequence. The probe will hybridize with the target sequence if the target sequence is present, and the label on the probe then allows scientists to detect the hybridized probe. Nucleic acid hybridization was well understood by the 1982 claimed priority date of the patents at issue. The prevailing method of labeling probes at that time was via radioactive labeling. Enzo filed a patent application covering non-radioactive labeling at additional positions on a nucleotide. Both patents at issue generally relate to the use of non-radioactively labeled polynucleotides in nucleic acid hybridization and detection applications. The Federal Circuit affirmed a holding that the asserted claims are invalid for lack of enablement. Patent protection is granted in return for an enabling disclosure of an invention, not for vague intimations of general ideas that may or may not be workable. View "Enzo Life Sciences, Inc. v. Roche Molecular Systems, Inc." on Justia Law

Global’s patent claims carpeted automotive vehicle load floors having sandwich-type composite panels with cellular cores. Global filed a reissue application, seeking to broaden its claims. It replaced the term “thermoplastic” with “plastic” in several independent claims. The Patent Office’s rules for reissue applications require an inventor oath or declaration specifically identifying the error relied on as the basis for the reissue. The inventor filed a declaration explaining that he is the inventor of over 50 U.S. patents in the field of plastic-molded products and that, at the time of the invention, he was aware of the use of plastics other than thermoplastics for the formation of a sandwich-type composite panel with a cellular core. He cited patents and patent applications, including his own, and technical papers purportedly disclosing the use of thermoset plastics (instead of thermoplastics) in vehicle load floors. The examiner rejected Global’s reissue claims for failing to comply with the written description requirement of 35 U.S.C. 112. The Board affirmed. The Federal Circuit vacated; “the level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.”On remand, the Board should address the relevant factors, including predictability and criticality, based on the record and determine whether the written description requirement has been satisfied under the proper legal standard. View "In re: Global IP Holdings LLC" on Justia Law

Kolcraft’s 970 and 231 Design Patents are both titled “Exposed Legs for a Play Yard” and have an effective filing date of November 2004. In 2016, Graco sought inter partes review, challenging the patents on multiple grounds. The Patent Trial and Appeal Board instituted a single trial addressing both patents on grounds related to the prior art (Chen). In its Patent Owner Response, Kolcraft included a declaration signed by inventors with exhibits. Neither the Declaration nor the exhibits included specific dates of conception. Graco deposed the inventors. The Board concluded that Chen is prior art because Kolcraft failed to show that conception, diligence, and reduction to practice of the patents occurred before Chen was filed and that the testimony of the inventors that they conceived of the play yard invention before Chen's effective filing date was not corroborated by non-inventor testimony, documents, or other evidence. The Board relied on the redacted version of the Inventor Declaration and did not take into account inventor deposition testimony of prior conception, finding Kolcraft’s reliance on inventor deposition testimony to be waived as it was raised for the first time at oral hearing. The Board determined and the Federal Circuit affirmed that the patents-in-suit were obvious in view of Chen. View "Kolcraft Enterprises, Inc. v. Graco Children's Products, Inc." on Justia Law

Cellspin sued Fitbit, Moov, Nike, Fossil, Garmin, Canon, GoPro, Panasonic, and JKI (defendants) for infringing various claims of four patents that share the same specification and generally relate to connecting a data capture device, e.g., a digital camera, to a mobile device so that a user can automatically publish content from the data capture device to a website.. The district court dismissed, finding the patents ineligible for patent protection under 35 U.S.C. 101, and awarded attorney fees to defendants under 35 U.S.C. 285. The Federal Circuit vacated, concluding that the district court misapplied precedent. The asserted claims are directed to an abstract idea--the idea of capturing and transmitting data from one device to another--but the district court erred with respect to the “second step” inventive concept inquiry, by ignoring allegations that, when properly accepted as true, preclude the grant of a motion to dismiss. Cellspin made specific, plausible factual allegations about why aspects of its claimed inventions were not conventional, e.g., its two-step, two-device structure requiring a connection before data is transmitted. View "Cellspin Soft, Inc. v. Fitbit, Inc." on Justia Law

Elbit’s 073 patent, entitled “Reverse Link for a Satellite Communication Network,” claims a system for transmitting information from user terminals to a central hub using satellite communication—a “reverse link.” Add “a forward link,” i.e., satellite communication from the hub to user terminals, and the result is “a complete two-way communication system via satellite.” To transmit data to the hub, user terminals employ a “transmitter means,” which has two communication means, one for “transmitting short bursty data,” and a second for “continuous transmission of data.” Elbit sued Hughes for infringement. The jury found system claims 2–4 of the patent infringed and not invalid, and awarded damages. The district court found that the case was exceptional and that Elbit is entitled to attorney’s fees, but the court has not quantified the fees. The Federal Circuit affirmed as to infringement and damages but concluded it lacked jurisdiction over the unquantified attorney’s fees decision. Substantial evidence supported the jury’s findings. Elbit and its expert did what case law requires in explaining the relevance of a prior settlement to this case. Hughes, which introduced no expert damages testimony, did not demonstrate either “faulty assumptions” or “a lack of reliable economic testimony” that would warrant disturbing the jury’s award. View "Elbit Systems Land & C4I Ltd v. Hughes Network Systems, LLC" on Justia Law

UCB’s 434 patent, entitled “Transdermal therapeutic system which contains a d2 agonist and which is provided for treating Parkinsonism, and a method for the production thereof,” claims a polymorph of rotigotine. UCB’s 414 patent is entitled “Polymorphic form of rotigotine and process for production.” UCB has been selling the FDA-approved product, Neupro, since 2007. The district court concluded that Actavis’s generic products infringed the patent under the doctrine of equivalents and upheld the 434 patent's validity over obviousness and anticipation challenges. The court invalidated the 414 patent under 35 U.S.C. 102(a) as known and used by others in the U.S. before the date of invention. The Federal Circuit affirmed. There is not enough evidence to conclude that UCB surrendered polyisobutylene as a possible equivalent; UCB’s claiming of acrylates and silicates does not bar treating polyisobutylenes as an equivalent for infringement purposes and vitiation does not bar application of the doctrine of equivalents here. Actavis offers no examples of prior art that would be ensnared by the addition of polyisobutylene to the claim, in contrast to the claim as is. The court upheld fact findings as to polyisobutylene’s characteristics as compared to silicates and acrylates and as to what a skilled artisan would have known about the interchangeability of polyisobutylene-based adhesives and silicone-based adhesives and the conclusion that the accused products infringe the claims under the doctrine of equivalents. View "UCB, Inc. v. Watson Laboratories Inc." on Justia Law