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

PET, a Texas LLC registered to do business throughout Texas, has its registered address in Plano, which is in the Eastern District of Texas. The Banks all have their principal offices or branches or customers in the Northern District of Texas. PET's “sole business is to enforce its intellectual property.” PET’s CEO wrote to each of the Banks, identifying PET’s patents, stating that the Banks are believed to be infringing the patents, and inviting non-exclusive licenses. All the Banks conduct banking business in the Northern District of Texas. All the letters from PET referred to PET’s pending lawsuit against Citizens National Bank in the Eastern District. The Northern District of Texas dismissed the Banks’ declaratory judgment action, reasoning that PET’s contacts with the Northern District did not subject it to personal jurisdiction. The Federal Circuit reversed, finding that PET is subject to personal jurisdiction in the Northern District under 28 U.S.C. 1391: Venue in a multidistrict state. PET “purposefully directed” its charges of infringement to banks conducting banking business in the Northern District. The charges “arise out of or relate to” PET’s patent licensing activities in the Northern District. PET has met the minimum contacts requirement without offense to due process. View "Jack Henry & Associates, Inc.. v. Plano Encryption Technologies, LLC" on Justia Law

When the patent owner filed for the 772 patent, the law defined the patent term as 17 years from the date the patent issued. The law was later amended to define the patent term as expiring 20 years from the patent’s earliest effective filing date, Uruguay Round Agreements Act of 1994 (URAA), 108 Stat. 4983. The owner then filed for the related 990 patent. The change in law caused the second patent to expire earlier than the first patent. The owner concedes that the claimed inventions in the two related patents are obvious variants of each other. The district court invalidated the 772 patent based on obviousness-type double patent; the invalidating reference, the 990 patent, was filed and issued after, but expired before, the 772 patent. The Federal Circuit reversed. The patents are governed by different patent term statutory regimes; the correct framework is to apply the traditional obviousness-type double patenting practices extant in the pre-URAA era to the pre-URAA patent and look to that patent’s issuance date as the reference point for obviousness-type double patenting. Under this framework, and because a change in patent term law should not truncate the term statutorily assigned to the pre-URAA 772 patent, the 990 patent is not a proper double patenting reference. View "Novartis Pharmaceuticals Corp. v. Breckenridge Pharmaceutical, Inc." on Justia Law

Ezra filed an Abbreviated New Drug Application (ANDA) for a generic version of Novartis’s multiple sclerosis drug, Gilenya®. Novartis sued for infringement, asserting the 229 patent. Because the 229 patent was filed before the 1994 Uruguay Round Agreements Act (URAA), its patent term was 17 years. It was set to expire in 2014. Novartis secured a patent term extension (PTE) of five years, 35 U.S.C. 156. Section 156 was enacted to restore the value of the patent term that an owner loses because the product cannot be commercially marketed without regulatory, e.g., FDA, approval. Multiple patents may cover the same product, but only one patent’s term can be extended. Novartis also owned the 565 patent covering Gilenya® and sought PTE on the 229 patent, which now expires in February 2019. Because the 565 patent issued from an application filed after the URAA, its 20-year term expired in 2017. The court denied Ezra’s motion for judgment on the pleadings, where Ezra argued that the extension of the 229 patent’s term beyond the life of the 565 patent de facto extended the life of the 565 patent and rendered the 229 patent invalid for double patenting; the two patents' claims are not patentably distinct. Ezra stipulated that its ANDA product infringes and dropped the double patenting issues. The court found the 229 patent valid, unexpired, enforceable, and infringed, and enjoined Ezra’s ANDA product until the 2019 expiration. The Federal Circuit affirmed. Obviousness-type double patenting does not invalidate an otherwise valid PTE. View "Novartis AG v. Ezra Ventures LLC" on Justia Law

Maxchief has its principal place of business in China and distributes one of the plastic tables it manufactures (UT-18) exclusively through Meco, which is located in Tennessee. Meco sells the UT-18 tables to retailers. Wok competes with Maxchief in the market for plastic folding tables, and also has its principal place of business in China. Wok owns patents directed to folding tables. Wok sued Maxchief’s customer, Staples, in the Central District of California, alleging that Staples’ sale of Maxchief’s UT-18 table infringed the Wok patents. Staples requested that Meco defend and indemnify Staples. Meco requested that Maxchief defend and indemnify Meco and Staples. The Staples action is stayed pending the outcome of this case. Maxchief then sued Wok in the Eastern District of Tennessee, seeking declarations of non-infringement or invalidity of all claims of the Wok patents and alleging tortious interference with business relations under Tennessee state law. The district court dismissed the declaratory judgment claim for lack of personal jurisdiction. With respect to the state law tortious interference claim, the district court concluded it lacked subject matter jurisdiction. The Federal Circuit affirmed. Wok lacked sufficient contacts with the forum state of Tennessee for personal jurisdiction as to both the declaratory judgment claim and the tortious interference claim. View "Maxchief Investments Ltd. v. Wok & Pan, Ind., Inc." on Justia Law

Saint Louis Brewery (SLB), a craft brewery founded in 1989 by Thomas Schlafly and Daniel Kopman, began selling beer with the SCHLAFLY logo in 1991 and asserts that it “has continuously sold beer under its SCHLAFLY trademark” ever since. In 2011, SLB applied for trademark registration for the word mark “SCHLAFLY” for use with various types of beer. The application drew opposition from Phyllis Schlafly, Thomas’s aunt and a well-known conservative activist (now deceased), and Bruce Schlafly (Opposers). The Trademark Trial and Appeal Board denied the opposition. The Federal Circuit affirmed the registration, rejecting an argument that the Board did not recognize that the mark was “primarily merely a surname,” and improperly accepted that the mark has acquired secondary meaning although the applicant did not provide survey evidence. The court also rejected claims of violation of the Opposers’ First Amendment, Fifth Amendment, and Due Process rights and protections. A trademark registration does not constitute a “taking” and the trademark opposition procedure, of which the Opposers have availed themselves, provides an appropriate process of law. View "Schlafly v. Saint Louis Brewery, LLC" on Justia Law

The Court of Federal Claims held that the government effected a physical taking of a 10-acre peninsula on the island of Culebra in Puerto Rico, when the Fish and Wildlife Service faxed its claim of ownership to a gun mount located on the peninsula to a potential purchaser. The location of the government’s claim had been disputed for many years. After the fax was sent, a potential buyer of the land around the claimed area backed out. The Federal Circuit reversed, first holding that the claim was not untimely under the Tucker Act, 28 U.S.C. 1491. Even if Plaintiffs “knew or had reason to know of the government’s claims" before 2006, a mere government assertion of ownership does not constitute a taking. The scope and location of the government’s alleged taking was not previously fixed as it was in the 2006 fax. The government’s mere sharing of information about its claim of ownership with a third party does not constitute a physical taking (or a per se regulatory taking) of that property; the government did not physically occupy part of Plaintiffs’ property, require Plaintiffs to suffer a permanent physical invasion, directly appropriate Plaintiffs’ property, constitute the functional equivalent of an ouster of Plaintiffs’ possession, or deprive Plaintiffs of all economically beneficial use of Plaintiffs’ property. View "Katzin v. United States" on Justia Law

Seoul's asserted patents are directed to methods of backlighting display panels, particularly LED displays used in televisions, laptop computers, and other electronics. The 209 patent teaches, “uniform illumination is difficult to achieve, and prior art devices frequently fail[ed] to provide a sufficiently uniform source of illumination for LCD displays.” The invention claimed in the patent purports to solve this problem by providing a light source that uniformly backlights the rear surface of the display panel. The district court entered summary judgment that claim 20 is not anticipated and awarded damages. The Federal Circuit affirmed that claim 20 of the 209 patent and the asserted 554 patent claims are not anticipated and upheld the denial of judgment as a matter of law of no induced infringement. The evidence, while not overwhelming, provides at least circumstantial evidence that would allow a jury to reasonably find that Emplas had knowledge of the patents and of its customers’ infringing activity and that it intended to induce their infringement. 35 U.S.C. 271(b), The court upheld the $70,000 award for infringement of the 209 patent but vacated the $4 million damages award for infringement of the 554 patent, as not supported by substantial evidence. View "Enplas Display Device Corp. v. Seoul Semiconductor Co." on Justia Law

Ancora’s 941 patent, entitled “Method of Restricting Software Operation Within a License Limitation,” describes and claims methods of limiting a computer’s running of software not authorized for that computer to run. It issued in 2002, and the patentability of all claims was confirmed in a reexamination in 2010. Ancora sued HTC, alleging infringement of the 941 patent. The district court dismissed, concluding that the patent’s claims are invalid because their subject matter is ineligible for patenting under 35 U.S.C 101, as directed to, and ultimately claiming no more than, an abstract idea. The Federal Circuit reversed. The claimed advance is a concrete assignment of specified functions among a computer’s components to improve computer security, and this claimed improvement in computer functionality is eligible for patenting. The asserted innovation of the patent relates to where the license record is stored in the computer and the interaction of that memory with other memory to check for permission to run a program that is introduced into the computer. View "Ancora Technologies, Inc. v. HTC America, Inc." on Justia Law

The patent, entitled “Rinseable splash shield and method of use,” discloses a vessel for containing contents to be mixed that is positioned in a mixing machine and a splash shield that is positioned to shield the opening of the vessel. After the material within the vessel is mixed by a mixing element, the splash shield is separated from the vessel and rinsed by a nozzle on the mixing machine. The patent describes how the invention “provide[s] a drink mixer having a splash shield that may be automatically rinsed following mixing of each batch or beverage, preferably without disassembly or removal of any components or disposable covers.” The Patent Trial and Appeal Board upheld the patentability of claim 21 under 35 U.S.C. 103. The Federal Circuit affirmed, rejecting an argument that the Board changed claim construction theories midstream without providing the parties an opportunity to respond, and erred in construing the “nozzle” terms so as to require that the nozzles be prepositioned. Substantial evidence supports the Board’s decision ’s that Hamilton Beach did not persuasively establish a motivation to combine the prior art references to arrive at claim 21. View "Hamilton Beach Brands, Inc. v. f'real Foods, LLC" on Justia Law

Kerr was employed by the federal agency since 1980. Following adverse personnel actions, Kerr alleged sex and religious discrimination and retaliation before the agency’s Equal Employment Opportunity office. Kerr subsequently challenged her 2006 removal and the earlier adverse personnel actions before the Merit Systems Protection Board (MSPB), citing Title VII and retaliation under the Whistleblower Protection Act (WPA), 5 U.S.C. 1201. The MSPB indicated that it lacked jurisdiction over the less-serious personnel decisions and gave Kerr the opportunity to present her removal-related claims to the agency’s EEO office or have the MSPB decide them. Kerr chose the EEO office. The MSPB dismissed Kerr’s appeal without prejudice. The EEO office rejected Kerr’s discrimination claims and concluded that the WPA claim was not within its jurisdiction, telling Kerr that she could not appeal the constructive discharge claim to the EEOC, but could either appeal to the MSPB or file suit. Kerr filed suit. On remand from the Ninth Circuit, the government first argued that the court lacked jurisdiction over Kerr’s WPA claim because she failed to exhaust her administrative remedies by MSPB review. The district court dismissed the WPA claim. A jury returned a defense verdict on the discrimination claim. The Ninth Circuit affirmed. The Supreme Court denied certiorari. The MSPB rejected Kerr’s request to reopen, concluding that there was neither good cause nor equitable tolling for the untimely filing. The Federal Circuit reversed. Kerr did have a reasonable basis for thinking that the district court was an appropriate forum for all of her claims. The court noted the language of 5 U.S.C. 7702, Tenth Circuit precedent, and that the government did not warn Kerr she would waive her claim by failing to file at the MSPB. Kerr has demonstrated reasonable diligence and there is no prejudice to the agency. View "Kerr v. Merit Systems Protection Board" on Justia Law