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

The patents at issue relate to balloon-expandable stents, used to treat occluded blood vessels. Following a remand, the district court found that defendants did not literally infringe the patents and rejected claims that the patents were invalid for lack of description or due to inequitable conduct. The Federal Circuit affirmed. Based on the court's proper clarification of its construction of the term "undulating," there was not substantial evidence to support a finding of infringement, nor was there substantial evidence of inequitable conduct.

Plaintiff, which owned a nuclear power plant, entered into the standard U.S. Department of Energy contract, under which DOE agreed to collect spent nuclear fuel (SNF) no later than 1998. DOE never began collecting SNF and has breached contracts nationwide. Massachusetts restructured the electric utility industry and, in 1999, the plant sold for $80 million; buyer agreed to accept decommissioning responsibilities for $428 million. The district court awarded $40 million for the portion of the decommissioning fund corresponding to projected post-decommissioning SNF-related costs attributable to DOE’s continuing breach. The court awarded the buyer $4 million in mitigation damages, including direct and overhead costs for new spent fuel racks and fees paid to the NRC. The Federal Circuit reversed in part and remanded. Plaintiff cannot recover damages under a diminution-of-value theory in a partial breach setting. The sale of assets does not alter the principle that when the breaching party has not repudiated and is still expected to perform, anticipated damages are not recoverable until incurred. A non-breaching party may recover from the government indirect overhead costs associated with mitigation and the costs of financing those activities.

Plaintiff owns the 245 Patent, which originally issued in 2005 and claims p-GlcNAc, a polymer extracted from another polymer called chitin, that accelerates hemostasis (the process which causes bleeding to stop) and is useful in trauma units for treating serious wounds. The district court found infringement. While the case was pending, the patent was re-examined; the scope of the claims changed. The Federal Circuit vacated an injunction and award of damages and remanded. Defendant has absolute intervening rights with respect to products manufactured before the date of reissue. The court must determine whether defendant has equitable intervening rights with respect to products manufactured after the date of reissue. A contention that the patent, as originally issued, was invalid is moot.

The Patent, entitled "Spread Spectrum Digital Screening," issued in 1997 and relates to digital half-toning, a process of converting a continuous tone image, such as a photo, to a half-tone image, consisting of a pattern of minute dots. Newspapers are half-tone. In an infringement case, the district court granted a motion to stay the case against the Kodak Customers pending the outcome of plaintiff's action against Kodak in New York. The Federal Circuit dismissed for lack of jurisdiction, finding that there was no final judgment within the meaning of 28 U.S.C. 1295(a)(1), and and that the the decision did not otherwise qualify as an appealable order.

In 2000, the Army awarded SDC a $430,000 contract. A dispute arose regarding specifications. In 2001, SDC requested termination for convenience. In 2004, the CO terminated the contract and SDC submitted a settlement proposal for $789,058. The officer awarded $403,563 in 2005. Under the Contract Disputes Act, a contractor may appeal to a board of contract appeals within 90 days or to the Court of Federal Claims within 12 months, 31 U.S.C. 606, 609. SDC filed in court, seeking, $19,316 in costs, and, for the first time, seeking equitable adjustments of $1.7 million: $397,000 for defective specifications; $500,000 for alleged breach of covenants of fair dealing and cooperation; and $750,000 for alleged bad faith. After a stipulated dismissal, SDC took no further action. In 2008, SDC submitted new claims: $19,316 in termination costs, a category previously disallowed, and $7 million in equitable adjustments. The CO denied termination costs as already addressed in the 2005 decision. The Board dismissed the appeal for lack of jurisdiction. The Federal Circuit affirmed. The termination costs claim should have been presented to the Board within 90 days of receipt of the decision. Equitable adjustment claims were submitted outside the six-year statute of limitations, 41 U.S.C. 605(a).

The jury found that Amazon's 1-click purchasing system infringes plaintiff's 710 patent, entitled "Object-Based On-Line Transaction Infrastructure," which covers an online purchasing system, but that all of the claims of the patent were invalid, and that Amazon did not infringe any of the other patents at issue. The judge granted a plaintiff's post-verdict motion and ruled that the 710 patent claims were not invalid. The Federal Circuit reversed the post-verdict ruling and held that each asserted claim of the 710 Patent is invalid as anticipated and the asserted claims of the other patents remain valid and not infringed.

The 605 and 247 patents cover aspects of genetically modified soybeans. The patent-holder sued one of its licensed seed producers, alleging infringement rather than breach of the agreement between the two. The district found infringement and awarded about $84,000. The Federal Circuit affirmed, rejecting an argument that patent rights were exhausted with respect to all of the soybean seeds that are present in grain elevators as undifferentiated commodity. The court also rejected an argument that plaintiff could not recover pre-complaint damages because it did not provide actual notice and did not mark or require growers to mark second-generation seeds in compliance with 35 U.S.C. 287(a). Defendant had actual notice.

The Court of Federal Claims dismissed, for lack of jurisdiction, the most recent claims brought by the Samish Indian Nation in its continuing quest for federal recognition and benefits. The claims court reasoned that some of the allegations were not premised upon any statute that was money-mandating, and that allegations reliant on money-mandating statutes were limited by other statutes, so that they fell outside the scope of the Tucker Act (28 U.S.C. 1491(a)) and the Indian Tucker Act (28 U.S.C. 1505). The Federal Circuit affirmed with respect to some of the allegations because the Tribal Priority Allocation system (25 CFR 46.2) is not money-mandating. The court reversed dismissal of claims under the Revenue Sharing Act, reasoning that the court's ability to provide a monetary remedy under that law is not limited by operation of the Anti-Deficiency Act, 31 U.S.C. 1341.

The patent application discloses an improved diaper; traditional diapers are constructed using an absorbent core of fluff pulp, interposed between a water barrier sheet and a permeable layer. For highest absorption, fluff pulp is treated with a chemical cross-linking agent. The application described a diaper that would avoid the expense of using chemically cross-linked fluff pulp while retaining superior absorbency properties, by extracting wood pulp with a caustic substance at low temperature, followed by dry and fluff. The examiner rejected the application (35 U.S.C. 103) as obvious from a prior patent. The Board sustained the rejection. The Federal Circuit vacated and remanded because the basis of the Board's rejection differed from the basis given by the examiner.

The 545 patent claims a method for distributing copyrighted products (songs, movies, books) over the Internet where the consumer receives a copyrighted product for free in exchange for viewing an advertisement, and the advertiser pays for the copyrighted content. The district court dismissed an infringement claim. The Federal Circuit reversed and remanded. The patent claims a "process" within the meaning of 35 U.S.C. 101.