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

The 222 Application, entitled “System and Method for Operating a Drain Valve,” is directed to a valve assembly for draining contaminants, condensation, and other fluids that adversely affect the efficiency and function of a pressurized system. The Patent Trial and Appeal Board affirmed the examiner’s rejection of all claims as anticipated (35 U.S.C. 102(b)) and/or obvious (35 U.S.C. 103). The Federal Circuit reversed as to anticipation, finding the holdings not supported by substantial evidence, and vacated the obviousness determinations. The Board’s strained interpretation of “signal” was unreasonably broad and inconsistent with the 222 application. The Board did not provide an adequate evidentiary basis or explanation for its determination that the claims would have been obvious. View "In re: Hodges" on Justia Law

The 222 Application, entitled “System and Method for Operating a Drain Valve,” is directed to a valve assembly for draining contaminants, condensation, and other fluids that adversely affect the efficiency and function of a pressurized system. The Patent Trial and Appeal Board affirmed the examiner’s rejection of all claims as anticipated (35 U.S.C. 102(b)) and/or obvious (35 U.S.C. 103). The Federal Circuit reversed as to anticipation, finding the holdings not supported by substantial evidence, and vacated the obviousness determinations. The Board’s strained interpretation of “signal” was unreasonably broad and inconsistent with the 222 application. The Board did not provide an adequate evidentiary basis or explanation for its determination that the claims would have been obvious. View "In re: Hodges" on Justia Law

In 1985, EgyptAir Flight 648 was hijacked by terrorists, who killed passengers and destroyed the aircraft. The U.S. State Department determined that the terrorists received support from the Libyan government. In 1988, a Libyan Intelligence Service agent detonated explosives on Pan Am Flight 103, killing 270 people and destroying the aircraft. Insurers paid $97 million in claims. Libya was shielded by the Foreign Sovereign Immunities Act (FSIA), 28 U.S.C. 1604, before enactment of the 1996 State Sponsors of Terrorism Exception to FSIA, 28 U.S.C. 1605(a)(7). The insurers sued, asserting their insurance subrogation rights. While those claims were pending, President Bush negotiated a settlement with Libya, The U.S. agreed to terminate pending lawsuits; Libya paid the government $1.5 billion, which funded the Foreign Claims Settlement Commission. The Libyan Claims Resolution Act, 122 Stat. 2999, provides that Libya shall not be subject to the FSIA exceptions. The insurers’ suit was dismissed. Some of the insurers submitted claims with the Commission, which were denied because of a rule requiring that claimants be U.S. nationals from the date of injury to the date of the espousal of their claims by the U.S. They then sued, alleging that the government took their property without just compensation. The Federal Circuit affirmed summary judgment in favor of the government. The insurers “cannot claim an investment-backed expectation free of government involvement nor can they characterize the Government’s action as novel or unexpected.” View "Aviation & General Isurance Co., Ltd. v. United States" on Justia Law

Merck’s 353 patent claims mometasone furoate monohydrate, the active ingredient in Merck’s Nasonex® nasal product. Amneal submitted an Abbreviated New Drug Application (ANDA) to the U.S. Food & Drug Administration (FDA) seeking approval to market a generic mometasone furoate nasal spray. In Merck’s infringement suit, the district court found that Merck failed to prove that Amneal’s ANDA product will infringe. The Federal Circuit affirmed, upholding the district court’s refusal to require Amneal to produce additional samples of its ANDA product for testing before trial. The court rejected a claim that the noninfringement finding must be reversed because it was not based on Amneal’s final commercial product. The district court did not clearly err in finding that a Raman spectroscopy three-peak analysis was required to confirm the infringing form of mometasone furoate in Amneal’s product. Raman spectroscopy is a vibrational spectroscopy technique. A laser is used to generate a Raman spectrum, which indicates the vibrational modes of molecules and can be used to differentiate crystalline forms. View "Merck Sharp & Dohme Corp. v. Amneal Pharmaceuticals LLC" on Justia Law

Polaris’s 405 Patent, titled “Side-by-Side ATV,” issued in December 2013, “relates to [all-terrain vehicles] having at least a pair of laterally spaced apart seating surfaces.” The patent expresses a desire that the ATVs have a low center of gravity. Arctic Cat successfully sought inter partes review. The Patent Trial and Appeal Board found that the claims were unpatentable as obvious (35 U.S.C. 103) over one combination of references. The Federal Circuit vacated with respect to certain claims, The Board failed to consider Polaris’s uncontested evidence that skilled artisans would not have been motivated to place a fuel tank under prior art’s seats and applied a legal analysis that runs contrary to the concept of teaching away. On remand, the Board must analyze whether prior art “teaches away” from claims 17–19 under the framework articulated in precedent. The Board must determine whether prior art merely expresses a general preference for maintaining very low seats or whether its teachings “criticize, discredit, or otherwise discourage” significantly raising the occupancy area of prior art’s ATV to add a fuel tank under one of the seats. View "Polaris Industries, Inc. v. Arctic Cat, Inc." on Justia Law

Xitronix filed, in the U.S. District Court for the Western District of Texas, a “Walker Process” monopolization claim under section 2 of the Sherman Act and sections 4 and 6 of the Clayton Act based on the alleged fraudulent prosecution of a patent. The parties believed that the Federal Circuit had jurisdiction over an appeal under 28 U.S.C. 1295(a)(1). The Federal Circuit transferred the case to the Fifth Circuit, citing the Supreme Court’s 2013 decision, Gunn v. Minton. The Xitronix complaint alleges that KLA “engaged in exclusionary conduct by fraudulently prosecuting to issuance the [’]260 patent” and its conduct “was and is specifically intended to monopolize and destroy competition in the market” and alleges KLA intentionally made false representations to the Patent Office on which the examiner relied during prosecution. On the face of the complaint, no allegation establishes “that federal patent law creates the cause of action.” The only question is whether the monopolization allegation “necessarily depends on resolution of a substantial question of federal patent law, in that patent law is a necessary element of one of the well-pleaded claims.” There is nothing unique to patent law about allegations of false statements. View "Xitronix Corp. v. KLA-Tencor Corp." on Justia Law

On September 11, 2012, President Obama published notice “continuing for [one] year the national emergency . . . with respect to the terrorist attacks.” In April 2013, O’Farrell, an Army Reservist, received an order directing him to replace another Reservist, an attorney, who had been deployed. After reaching his maximum total years of active commissioned service (28 years), O’Farrell was transferred to the Army Reserve Retired List in October 2013. O’Farrell served his active duty as legal counsel until September 30, 2013. By August 26, 2013, O’Farrell had used his 15 days of military leave, most of his accrued annual leave, and advance annual leave. To avoid being placed on Military Leave Without Pay for the remainder of his active duty service, O’Farrell (unsuccessfully) requested an additional 22 days leave under 5 U.S.C. 6323(a)(1). O’Farrell did not cite any statutory provision that would qualify him as "called to full-time military service as a result of a call or order to active duty in support of a contingency operation." He argued that he was “serving . . . during a national emergency." O’Farrell sued under the Uniformed Services Employment and Reemployment Rights Act, 38 U.S.C. 4301– 4333. The Federal Circuit reversed. Section 6323(b) does not require that “a specific contingency operation" be identified in military orders when an employee is activated; “in support of” includes indirect assistance to a contingency operation, 5 U.S.C. 6323(b)(2)(B), which includes a military operation that results in service members being called to active duty under any law during a national emergency, 10 U.S.C. 101(a)(13). A service member’s leave request need not use particular language. View "O'Farrell v. Department of Defense" on Justia Law

The 865 application is directed to an elastic knee brace having a framework and a hinge with a strut and arm components. The elastic nature of the knee brace allows for and aids in the flexing of the knee. The specification describes the “injection molded” aspect of the invention in a section titled “Preferred Manufacturing Methods” near the end of the written description. During prosecution, the examiner rejected claims 1 and 14 as being anticipated by a patent that teaches a knee brace with a sleeve containing a stiffener having a connector portion that connects a proximal and a distal portion. The examiner concluded that “injection molded” is “a method of manufacturing an apparatus.” Nordt appealed, arguing that “injection molded” conveys a structural limitation in that it describes the structural relationship between the framework and the strut and arm components. The Board affirmed. The Federal Circuit vacated; the claim term at issue is structural and should have been afforded weight when assessing patentability View "In re: Nordt Development Co., LLC" on Justia Law

The 713 patent relates to digitally processing and archiving files in a digital asset management system that parses files into multiple objects and tags the objects to create relationships between them. These objects are analyzed and compared, manually or automatically, to archived objects to determine whether variations exist based on predetermined standards and rules. The system eliminates redundant storage of common text and graphical elements and improves system operating efficiency, reducing storage costs. Berkheimer sued HP, alleging infringement. Following a Markman hearing, the district court concluded that the term “archive exhibits minimal redundancy” in claim 10 is indefinite and renders claim 10 and its dependents invalid and granted HP summary judgment that claims 1–7 and 9 are patent ineligible under 35 U.S.C. 101. The Federal Circuit affirmed the determination that claims 10–19 are invalid as indefinite. Because claims 1–3 and 9 do not capture the purportedly inventive concepts, those claims are ineligible. The court did not decide whether claims 4–7 are patent eligible but held that summary judgment was improper, given the fact questions created by the specification’s disclosure. Claims 4–7 contain limitations directed to the arguably unconventional inventive concept described in the specification. View "Berkheimer v. HP Inc." on Justia Law

MACOM’s predecessor developed semiconductors using gallium nitride (GaN), obtained patents related to that technology, and sold those patents to Infineon's predecessor, retaining rights under separate license agreement. That agreement defines a “Field of Use” characterized by GaN-on-silicon technology and licenses MACOM to practice the GaN patents within the “Field of Use only.” MACOM and Infineon share rights to practice the patents in the Field of Use. The agreement defines an “Exclusive Field” within the Field of Use in which MACOM has exclusive rights to practice the patents—even as against Infineon. Infineon notified MACOM that it believed MACOM had breached the agreement by making and selling products using GaN-on-silicon-carbide technology, which is distinct from GaN-on-Si technology and outside the Field of Use. MACOM responded that the GaN-on-SiC sales were minimal and that any breach had been cured. Infineon terminated the Agreement. MACOM sued, asserting contract claims and seeking a declaratory judgment of noninfringement and obtained a preliminary injunction. The Federal Circuit affirmed in part, agreeing that MACOM could likely establish that its activity outside the Field of Use did not breach the agreement and that MACOM would suffer irreparable harm in the absence of a preliminary injunction. The court vacated two sentences in the injunction for lacking specificity. View "MACOM Technology Solutions Holdings, Inc. v. Infineon Technologies Americas Corp." on Justia Law