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

In 2001, Inforocket sued Keen for infringement suit of the 836 patent. Keen brought its own infringement suit against Inforocket based on another patent, before the same judge. The court granted Inforocket summary judgment of noninfringement. While its appeal was pending, Keen acquired Inforocket. Both suits were dismissed “without prejudice.” Keen changed its name to Ingenio.and successfully requested ex parte reexamination of the 836 patent. Several claims were canceled, others were determined to be patentable as amended, and new claims were added. Ingenio was later sold twice. CTC acquired the 836 patent, and, in 2012, asserted infringement against multiple parties. In 2013, Ingenio and others filed a single IPR petition challenging claims of the 836 patent. CTC argued that 35 U.S.C. 315(b) barred institution of IPR proceedings, and that Ingenio lacked standing because Ingenio was served with the 2001 infringement complaint.The Patent Trial and Appeal Board found the suit was not barred because the 2001 suit was “dismissed voluntarily without prejudice … leaving the parties as though the action had never been brought.” The Board did not address whether the patent at issue in that suit is the same patent, in light of interim amendments, or whether section 315(b)’s time bar should be determined on a “petitioner-by-petitioner” basis. The Board determined that several claims either were anticipated by or would have been obvious in view of prior art. The Federal Circuit, having previously held that section 315(b) time-bar determinations are appealable,” vacated. The petition was time-barred and the Board lacked jurisdiction to institute IPR proceedings. View "Click-to-Call Technologies, LP v. Ingenio, Inc." on Justia Law

The patent describes an ATM, capable of performing banking transactions, including “automatically depositing a bundle of cashes and cheques inserted at once” by separating deposited bundles into individual banknotes; verifying the authenticity or abnormality of each note; sorting and processing the notes based on how each was verified; and preparing the notes for storage safes. One component recited in each of the nine claims is a “cheque standby unit.” The specification does not mention a “cheque standby unit,” but references a “cheque temporary standby unit” in three portions of the detailed description. The International Trade Commission found that Diebold violated section 337 of the Tariff Act of 1930 by importing ATM components that infringe the claims, all of which recite the term “cheque standby unit.” The Federal Circuit reversed, finding that the term “cheque standby unit” is a means-plus-function term subject to 35 U.S.C. 112, para. 6, which lacks corresponding structure disclosed in the specification. The claimed function is “holding the at least one authentic cheque to return the at least one authentic cheque to the user responsive to receiving user instructions canceling depositing of the at least one authentic cheque.” A person of ordinary skill in the art would be unable to recognize the structure in the specification and associate it with the corresponding function in the claim. View "Diebold Nixdorf, Inc. v. International Trade Commission" on Justia Law

BSG sued BuySeasons for infringement of three patents related to systems and methods for indexing information stored in wide access databases. The patents teach that the “self-evolving” aspect of the claimed invention addresses the shortcomings of prior art by enabling users to “add new parameters for use in describing items.” The district court dismissed the suit on grounds that none of the asserted patent claims were patent-eligible under 35 U.S.C. 101. The Federal Circuit affirmed. The asserted claims are directed to the abstract idea of considering historical usage information while inputting data. BSG does not purport to have invented database structures that allow database users to input item data as a series of parameters and values. The recitation of a database structure slightly more detailed than a generic database does not save the asserted claims; a claim is not patent eligible merely because it applies an abstract idea in a narrow way. The only alleged unconventional feature of BSG’s claims is the requirement that users are guided by summary comparison usage information or relative historical usage information but this simply restates an abstract idea. View "BSG Tech LLC v. BuySeasons, Inc." on Justia Law

Eight of Rembrandt’s at-issue patents address cable modem technology; the ninth involves over-the-air signals. Rembrandt filed multiple infringement suits against dozens of cable companies, cable equipment manufacturers, and broadcast networks. The cases were consolidated. After several years of litigation, the court entered final judgment against Rembrandt on all claims. Many of the defendants sought attorney fees under 35 U.S.C. 285. Nearly four years after the litigation ended, the court issued a brief order granting that motion, declaring the case exceptional, and granting the bulk of the requests for fees, including nearly all of the attorney fees incurred in the litigation: more than $51 million. The Federal Circuit affirmed the exceptional case designation but remanded, finding that the court erred by failing to analyze fully the connection between the fees awarded and Rembrandt’s misconduct. While the court’s findings that that Rembrandt: wrongfully gave fact witnesses payments contingent on the outcome of the litigation; engaged in, or failed to prevent, widespread document spoliation; and should have known that the revived patents were unenforceable, were “remarkably terse” and “shed little light on its justifications” none of those findings was based “on an erroneous view of the law or on a clearly erroneous assessment of the evidence. View "In re Rembrandt Technologies, LP Patent Litigation" on Justia Law

Arthur served on active Army duty, 1940-1945, as a prisoner of war of the German government for 25 months. He was service-connected for several disabilities and had VA claims pending when he died in 2011. Winters pursued those as a substituted claimant and her own claims for accrued benefits as his surviving spouse. In 2013, the Board of Veterans’ Appeals denied some claims and granted service-connected benefits for others, found that the awards were inextricably intertwined with Winters’s accrued benefits claim, and remanded for initial disability ratings and to readjudicate the accrued-benefits claim. The Board determined that a subsequent letter in which Winters sought earlier dates “d[id] not constitute [a] motion for revision,” directed the letter to the Regional Office, but did not notify Winters of its determination so that the 120-day appeal period did not start to run. In 2014, the Board denied Winters’s claims for entitlement to an earlier effective date and for accrued benefits. In 2016, the Veterans Court dismissed an appeal of the 2013 decision for lack of jurisdiction and vacated the 2014 decision as premature because the 2013 decision was not final. Winters sought attorney fees and expenses under the Equal Access to Justice Act, 28 U.S.C. 2412(d) for that decision. The Federal Circuit affirmed the denial of her application. The court lacked jurisdiction to award EAJA fees relating to an appeal over which it did not have jurisdiction. With respect to the 2014 Board decision, Winters was not a “prevailing party.” View "Winters v. Wilkie" on Justia Law

Gerson imports finished decorative candle and tea light lamps made of plastic and/or wax, designed to resemble ordinary candles, but using battery-operated LEDs, and serving both decorative and illuminative functions. Customs liquidated the merchandise under HTSUS subheading 9405.40.80, which imposes a duty rate of 3.9%, and reads: Lamps and lighting fittings including searchlights and spotlights and parts thereof, not elsewhere specified or included; illuminated signs, illuminated nameplates and the like, having a permanently fixed light source, and parts thereof not elsewhere specified or included: 40 Other electric lamps and lighting fittings. Gerson argued that it should have been classified under subheading 8543.70.70, which imposes a rate of 2%, and reads: Electrical machines and apparatus, having individual functions, not specified or included elsewhere in this chapter; parts thereof: 70 Other machines and apparatus: 70 Electric luminescent lamps. The Federal Circuit affirmed judgment in favor of the government. Gerson’s reading would impermissibly expand the scope of heading 8543, unduly narrow the scope of heading 9405, and be inconsistent with the World Customs Organization’s Harmonized Commodity Description and Coding System Explanatory Notes, which suggest that chapter 94 is reserved for finished household lamps like Gerson’s candles, while chapter 85 is reserved for unfinished lamps used in conjunction with other electrical devices. View "Gerson Co. v. United States" on Justia Law

GKN’s patent describes a drivetrain for a four-wheel drive vehicle, consisting of primary and secondary drivetrains. The drivetrain can be switched between two-wheel drive mode and four-wheel drive mode. The claimed drivetrain operates to reduce the number of rotating components when the secondary drivetrain is disconnected. JTEKT petitioned for inter partes review (IPR). The Patent Trial and Appeal Board instituted IPR on all challenged claims. The IPR focused on whether claims 2 and 3, which specify that two side-shaft couplings connect the secondary axle rather than one side-shaft coupling to provide both transverse and longitudinal power distribution between the left and right wheels and the front and rear wheels, would have been obvious over prior art and whether claims 6 and 7 would have been obvious over prior art. The Board held that claims 6 and 7 would have been obvious but that JTEKT did not show that claims 2 and 3 would have been obvious. The Federal Circuit dismissed an appeal for lack of standing. While the fact that JTEKT has no product on the market does not preclude Article III standing, either in IPRs or in declaratory judgment actions, JTEKT has not established at this stage of the development that its product creates a concrete and substantial risk of infringement or will likely lead to infringement claims. View "JTEKT Corp. v. GKN Automotive Ltd." on Justia Law

Advantek’s design patent covers a portable animal kennel that Advantek sells with the mark “Pet Gazebo.” Advantek sued its former manufacturer, Shanghai Walk-Long, Advantek’s former vice president, and others for patent infringement, breach of contract, and aiding and abetting breach of fiduciary duty, alleging that Walk-Long copied the Pet Gazebo and infringed the patent with their “Pet Companion.” The district court granted Walk-Long judgment on the pleadings, holding that prosecution history estoppel bars Advantek from enforcing the patent against the Pet Companion. The parties stipulated to the dismissal of the non-patent counts. The Federal Circuit reversed, concluding that prosecution history estoppel does not preclude enforcement of the patent against the accused kennel. Advantek elected to patent the ornamental design for a kennel with a particular skeletal structure. A competitor who sells a kennel embodying Advantek’s patented structural design infringes the patent, regardless of extra features, such as a cover, that the competitor might add to its kennel. Construed in the light most favorable to Advantek, the complaint can be read to accuse the skeletal structure of Walk-Long’s Pet Companion. View "Advantek Marketing, Inc. v. Shanghai Walk-Long Tools Co." on Justia Law

BioDelivery filed petitions for inter partes review (IPR) of Aquestive's Patent. The Patent Trial and Appeal Board (PTAB) instituted review of fewer than all of the asserted claims based upon fewer than all asserted grounds and issued final written decisions that sustained the patentability of all instituted claims on all instituted grounds and included a discussion of collateral estoppel between inter partes reexamination and IPR. On appeal, PTAB acknowledged error in its assumption that inter partes reexamination could give rise to collateral estoppel in IPR. After oral argument in the Federal Circuit, the Supreme Court issued its 2018 “SAS” decision, explaining that the petitioner, not the Director defines the contours of the IPR; if the Director institutes review, PTAB review must proceed “in accordance with or in conformance to the petition,” including “‘each claim challenged’ and ‘the grounds on which the challenge to each claim is based,’” BioDelivery requested remand to consider the patentability of the non-instituted claims. Aquestive and the Patent Office argued that BioDelivery had waived SAS-based relief by failing to raise any issue of non-instituted claims on appeal. The Federal Circuit granted a remand; waiver does not apply and the motion is not untimely. The PTO’s salutary decision concerning future action does not insulate earlier PTAB actions from remedy. View "BioDelivery Sciences International, Inc.. v. Aquestive Therapeutics, Inc." on Justia Law

Contour’s patents describe action sport video cameras or camcorders, configured for remote image acquisition control and viewing. The claimed device uses GPS technology and includes wireless communication capability to allow another device, such as a smartphone, to control camera settings in real time, access stored video, and act as a “viewfinder” to preview what the camera sees. The patents claim priority to a provisional application filed in September 2010; the one-year critical date is September 13, 2009. GoPro sought inter partes review of the patents, alleging unpatentability on obviousness grounds, relying on a 2009 GoPro sales catalog as prior art. That catalog discloses a digital camera linked to a wireless viewfinder/controller. There was testimony that the catalog was distributed at a July 2009 trade show with approximately 150 vendors and more than 1,000 attendees. The Patent Trial and Appeal Board concluded that the catalog is not a prior art printed publication under 35 U.S.C. 102(b). The Federal Circuit vacated. A dealer show focused on extreme sports vehicles is an obvious forum for action sports cameras; while the general public may not have been aware of the trade show, dealers would encompass the relevant audience such that a person ordinarily skilled and interested in action cameras, exercising reasonable diligence, should have been aware of it. The catalog was disseminated with no restrictions and was intended to reach the general public. View "GoPro, INC. v. Contour IP Holding, LLC" on Justia Law