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

ACS's patent relates to “creels” for supplying yarn and other stranded materials to a manufacturing process. ACS sued Shaw for infringement, but voluntarily dismissed the suit without prejudice. Within one year of service of the complaint (35 U.S.C. 315(b)), Shaw sought inter partes review (IPR), proposing 15 grounds of rejection. Most of the grounds were directed to the non-interposing claims, but two grounds alleged that interposing claims would have been obvious over German patents and another alleged that interposing claims were anticipated by a U.S. patent (Payne). Ultimately, the Patent Board found that Shaw had not shown by a preponderance of the evidence that the interposing claims were unpatentable based on the instituted grounds, but had shown by a preponderance of the evidence that the non-interposing claims were unpatentable based on the instituted grounds. The Federal Circuit affirmed in part, agreeing that dismissals without prejudice leave the parties as though the action had never been brought and finding that it lacked jurisdiction to review the Board’s decision not to institute IPR on the Payne-based ground, including its decision not to consider the Payne-based ground in its final decision. The court vacated in part, finding the Board’s decision as to “tube Q” ambiguous at best, and remanding for fact findings. View "Shaw Indus. Group v. Automated Creel Sys., Inc." on Justia Law

In 2007, Kansas landowners sued, alleging that the government had taken their land without compensation by conversion of a rail corridor to a trail under the National Trail Systems Act, 16 U.S.C. 1247(d). The Claims Court granted the government summary judgment concerning five claims and certified questions to the Kansas Supreme Court concerning the scope of Kansas railroad easements. That court determined that it lacked jurisdiction to accept the certified question. The Claims Court then granted plaintiffs summary judgment plus attorney fees under the Uniform Relocation Assistance and Real Property Act, 42 U.S.C. 4654(c), calculated using the lodestar method, where a reasonable number of hours expended is multiplied by the prevailing rate in the relevant community. Based on the “no-interest rule,” historical rates, rather than rates in force at the end of litigation, were to be used. Counsel sought $2,017,987 in fees and $201,924 in costs, based, in part, on rates in effect in Washington D.C. The court reduced the number of hours and applied the St. Louis rate for hours expended until 2010 and Washington D.C. rates for later work. The Federal Circuit denied a request to supplement the record and affirmed, upholding the reductions imposed by the lower court. View "Biery v. United States" on Justia Law

MAG Aerospace alleged that B/E Aerospace infringed its patents for quick-repair vacuum toilets, such as those commonly found on commercial aircrafts. The district court granted summary judgment of noninfringement on all patents and ruled that the doctrine of assignor estoppel barred B/E from arguing that the asserted patents are invalid. The Federal Circuit affirmed, upholding the district court’s finding that B/E’s toilet bowl cannot be replaced “toollessly” as required by one challenged patent; its construction of “outturned flange supported by the top of the support structure;” and its finding concerning “valve sets.” One of the inventors of the patents-in-suit, Pondelick, now works for B/E. Pondelick assigned the patents to his former employer, who in turn assigned them to MAG. The district court correctly concluded that Pondelick was in privity with B/E so that assignor estoppel applies to bar B/E from attacking the validity of the patents. View "MAG Aerospace Indus., Inc v. B/E Aerospace, Inc." on Justia Law

In 1989, Hicks, a Secretary at Maxwell Air Force Base, was removed from her position for failure to request leave in accordance with proper procedures and being absent without official leave. Following an appeal, Hicks’ removal was mitigated to a 60-day suspension. In 1990, the Air Force effected a new removal action. A Merit Systems Protection Board (MSPB) ALJ affirmed. A year later, Hicks sought review with the full board. The Federal Circuit affirmed dismissal of her motion, explaining that Hicks had not shown how her depression prevented her from meeting filing requirements. In 2014, Hicks contacted the U.S. Office of Special Counsel, alleging that the Air Force had removed her in retaliation for making protected disclosures. After Special Counsel terminated its investigation. Hicks filed an Individual Right of Action (IRA) appeal with MSPB. An ALJ dismissed for lack of jurisdiction; in 1990, when Hicks was removed, filing an appeal was not a “protected disclosure” under the Whistleblower Protection Act, 103 Stat. 16. MSPB and the Federal Circuit affirmed. The Whistleblower Protection Enhancement Act of 2012, 126 Stat. 1465, expanded its jurisdiction to cover IRA appeals alleging that an agency engaged in the prohibited personnel practices described in 5 U.S.C. 2302(b)(9), including appeals alleging reprisal for filing a previous MSPB appeal, but it did not apply retroactively to Hicks. View "Hicks v. Merit Sys. Protection Bd." on Justia Law

Cree’s 175 patent, filed in 1996, is entitled “Solid State White Light Emitter and Display Using Same.” The claims at issue are directed to the production of white light through the “down-conversion” of blue light from light-emitting diodes (LEDs”. Downconversion is the process in which high-energy (shorter wavelength) light is absorbed by a material and then reemitted as lower energy (longer wavelength) light. By choosing the particular absorbing material, light at a desired wavelength (and thus a desired color) can be produced. During ex parte reexamination, an examiner rejected six claims as obvious under multiple combinations of prior art references. The Board upheld the rejection. The Federal Circuit affirmed, rejecting arguments based on licensing of the patent and press releases. The court noted the lack of evidence that the commercial success was caused by the subject matter of the 175 patent as distinct from the prior art. View "In re: Cree, Inc." on Justia Law

In consolidated cases, patent-holder plaintiffs market drugs and have patents in the FDA’s Approved Drug Products with Therapeutic Equivalence Evaluations publication (Orange Book), 21 U.S.C. 355(b)(1). Mylan filed Abbreviated New Drug Applications (ANDA), 21 U.S.C. 355(j), seeking FDA approval to market generic versions of the drugs, certifying that the Orange Book patents are invalid or would not be infringed by the proposed drugs. The plaintiffs sued in Delaware under 35 U.S.C. 271(e)(2)(A). Mylan is incorporated in, and has its principal place of business in, West Virginia and submitted its ANDAs in Maryland; it intends to direct sales into Delaware, among other places, once it has FDA approval. Mylan sent notices to the plaintiffs in New York, Ireland, Delaware and Sweden. One plaintiff is incorporated in Delaware, the U.S. subsidiary of another has its principal place of business in Delaware. Both have sued others for infringement in Delaware. Each district court concluded that Delaware had sufficient contacts related to the subject of these cases to exercise specific personal jurisdiction over Mylan. The judges disagreed about whether Delaware could exercise general personal jurisdiction (independent of suit-related contacts) on the ground that Mylan consented to jurisdiction in registering to do business. Each declined to dismiss. The Federal Circuit affirmed on the issue of specific jurisdiction, declining to address general personal jurisdiction. View "Acorda Therapeutics, Inc. v. Mylan Pharma., Inc." on Justia Law

In consolidated cases, patent-holder plaintiffs market drugs and have patents in the FDA’s Approved Drug Products with Therapeutic Equivalence Evaluations publication (Orange Book), 21 U.S.C. 355(b)(1). Mylan filed Abbreviated New Drug Applications (ANDA), 21 U.S.C. 355(j), seeking FDA approval to market generic versions of the drugs, certifying that the Orange Book patents are invalid or would not be infringed by the proposed drugs. The plaintiffs sued in Delaware under 35 U.S.C. 271(e)(2)(A). Mylan is incorporated in, and has its principal place of business in, West Virginia and submitted its ANDAs in Maryland; it intends to direct sales into Delaware, among other places, once it has FDA approval. Mylan sent notices to the plaintiffs in New York, Ireland, Delaware and Sweden. One plaintiff is incorporated in Delaware, the U.S. subsidiary of another has its principal place of business in Delaware. Both have sued others for infringement in Delaware. Each district court concluded that Delaware had sufficient contacts related to the subject of these cases to exercise specific personal jurisdiction over Mylan. The judges disagreed about whether Delaware could exercise general personal jurisdiction (independent of suit-related contacts) on the ground that Mylan consented to jurisdiction in registering to do business. Each declined to dismiss. The Federal Circuit affirmed on the issue of specific jurisdiction, declining to address general personal jurisdiction. View "Acorda Therapeutics, Inc. v. Mylan Pharma., Inc." on Justia Law

Acceleron’s 021 patent discloses a computer network appliance containing a number of hot-swappable components, meaning that those components can be removed and replaced without turning off or resetting the computer system as a whole. The Patent Trial and Appeal Board instituted inter partes review of the patent based on Dell’s petition under 35 U.S.C. 311 and confirmed the validity of claims 14–17 and 34–36, while cancelling claims 3 and 20 as anticipated. The Federal Circuit vacated cancellation of claim 20 and remanded for reconsideration of anticipation under the correct claim construction of “a microcontroller module and a dedicated ethernet path, wherein the dedicated ethernet path is separate from a switched fast ethernet connection and provides the microcontroller module with a connection to remotely poll the CPU module, the power module and the ethernet switch module.” The court also vacated cancellation of claim 3, remanding for reconsideration of anticipation as appropriate. The court otherwise affirmed, rejecting Dell’s challenge to the Board’s finding that the key prior-art reference fails to disclose a particular claim element. View "Dell, Inc. v. Acceleron, LLC." on Justia Law

Halo, a Hong Kong company that designs and sells high-end modern furniture, owns two U.S. design patents, 13 U.S. copyrights, and one U.S. common law trademark, all relating to its furniture designs. Halo’s common law trademark, ODEON, is used in association with at least four of its designs. Halo sells its furniture in the U.S., including through its own retail stores. Comptoir, a Canadian corporation, also designs and markets high-end furniture that is manufactured in China, Vietnam, and India. Comptoir’s furniture is imported and sold to U.S. consumers directly at furniture shows and through distributors, including in Illinois. Halo sued, alleging infringement and violation of Illinois consumer fraud and deceptive business practices statutes. The district court dismissed on forum non conveniens grounds, finding that the balance of interests favored Canada and that Canada, where the defendants reside, was an adequate forum. The Federal Circuit reversed. The policies underlying U.S. copyright, patent, and trademark laws would be defeated if a domestic forum to adjudicate the rights they convey was denied without a sufficient showing of the adequacy of the alternative foreign jurisdiction; the Federal Court of Canada would not provide any “potential avenue for redress for the subject matter” of Halo’s dispute. View "Halo Creative & Design, Ltd. v. Comptoir des Indes Inc." on Justia Law

Two appeals involved U.S. Patent No. 6,349,291, which named Samir Varma as the inventor and was owned by InvestPic LLC (collectively, Varma). The ’291 patent stated that many “conventional financial information sites” on the World Wide Web furnish information derived from “rudimentary statistical functions [that] are not useful to investors in forecasting the behavior of financial markets because they rely upon assumptions that the underlying probability distribution function (‘PDF’) for the financial data follows a normal or Gaussian distribution, which is generally false.” The Patent Trial and Appeal Board of the Patent and Trademark Office cancelled certain claims of the ’291 patent in two related reexamination proceedings: one initiated by International Business Machines Corp. and SAS Institute Inc.; the other by SAS alone. Varma’s appeals centered on two claim phrases: (1) a “bias parameter” that “determines a degree of randomness in sample selection in a resampling process”; and (2) “a statistical analysis request corresponding to two or more selected investments.” The Federal Circuit Court of Appeals agreed with Varma that the Board erred regarding both claim phrases. Correcting the first error, the Court reversed the cancellation of claims 1–5, 8–16, 19–21, and 24. Correcting the second error, the Court vacated the cancellation of claims 22, 23, 25, and 29–31 and remanded for further proceedings on those claims. View "In re Varma" on Justia Law