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

Abutting landowners claimed that the United States effected a taking of their property without just compensation when it converted a former railroad corridor between Sarasota and Venice, Florida, into a recreational trail pursuant to the National Trails System Act Amendments of 1983, 16 U.S.C. 1247(d), because deeds transferred by their predecessors-in-title to a railroad company granted only easements on their land for railroad purposes and, upon termination of the use of the land as a railroad, left the landowners unencumbered title and possession of their land. The Federal Circuit affirmed partial summary judgment in favor of the government, holding that the owners lacked a property right or interest in the land-at-issue because the railroad company, had obtained fee simple title to the land. The court noted that the state’s highest court has confirmed that, under Florida law, a railroad can acquire either an easement or fee simple title to a railroad right-of-way and that no statute, state policy, or factual considerations prevails over the language of the deeds when the language is clear; the language of the six deeds-at-issue clearly convey fee simple title on their face. View "Rogers v. United States" on Justia Law

Tam, the “front man” for Asian-American rock band, The Slants, sought to register the mark THE SLANTS and attached specimens featuring the name set against Asian motifs. The examining attorney found the mark disparaging to people of Asian descent (15 U.S.C. 1052(a)) and denied registration. The Trademark Trial and Appeal Board dismissed for failure to file a brief. Tam filed another application, seeking to register the mark THE SLANTS for identical services and claiming use of the mark since 2006. Attached specimens did not contain Asian motifs. The examining attorney again found the mark disparaging and declined to register it. The Board affirmed. On rehearing, en banc, the Federal Circuit vacated, finding Section 2(a) of the Lanham Act unconstitutional. The government may not penalize private speech merely because it disapproves of the message, even when the government’s message-discriminatory penalty is less than a prohibition. “Courts have been slow to appreciate the expressive power of trademarks. Words—even a single word—can be powerful. With his band name, Tam conveys more about our society than many volumes of undisputedly protected speech.” The regulation at issue amounts to viewpoint discrimination; under strict scrutiny or intermediate scrutiny review, the disparagement proscription is unconstitutional, because the government has offered no legitimate interests to justify it. View "In Re:Tam" on Justia Law

The Patent Trial and Appeal Board granted SAMSF’s motion to cancel certain claims prior to its review of SAMSF’s patents relating to administering the “natural” stereoisomer of 5-methyl-tetrahydrofolic acid (L-5-MTHF) and other vitamins to treat symptoms associated with folate deficiency, which causes health issues, including cardiovascular disease, neurological disorders, birth defects, and skeletal disorders. The Federal Circuit affirmed the Board’s conclusion of obviousness under 35 U.S.C. 103. The court prior rejected SAMSF’s arguments art taught away from its claimed use of a reduced folate to treat folate deficiency, and that objective indicia of non-obviousness further demonstrated the validity of its patents. Although the Board erred in its assessment of the evidence of licensing, its other factual findings were supported by substantial evidence. View "S. Ala. Med. Sci. Found. v. Gnosis, S.P.A." on Justia Law

At the request of Gnosis, the Patent Trial and Appeal Board instituted inter partes review of claims of Merck’s patent, which relates to methods of using folates to lower levels of homocysteine in the human body. Homocysteine is an amino acid that, when present in excessive quantities, can cause severe cardiovascular, ocular, neurological, and skeletal disorders. Merck filed a response and a motion to cancel claims 1–3, 5, 6, and 13, which the Board granted. The Board only reviewed the patentability of dependent claims 8, 9, 11, 12, 14, 15, and 19–22 and found them invalid for obviousness, 35 U.S.C. 103, in light of prior art. The Federal Circuit affirmed, finding that the Board’s factual findings to the contrary were supported by substantial evidence and rejecting Merck’s arguments that the prior art taught away from the claimed method and that objective indicia of non-obviousness further support the patentability of the claims. View "Merck & Cie v. Gnosis, S.P.A." on Justia Law

DiStefano’s patent application claims a method that enables an individual to design a web page without having to “learn HTML or to interact extensively with a web page designer.” Its primary embodiment includes a graphical user interface with a primary display screen and an overlaid design plate that has menu buttons to assist in editing and a design place to edit web assets, such as Java applets, scripts, stock art, background images, and textures. Web assets can come from a web asset database, be uploaded directly by users, or be obtained from independent websites. When the user finishes editing a web asset, it is dragged from the design plate onto the website. The Patent Trial and Appeal Board rejected claims under 35 U.S.C. 102, for anticipation. The Federal Circuit vacated, rejecting application of the printed matter analysis and a conclusion that “web assets’ origination from third party authors and the user cannot patentably distinguish (i.e., cannot breathe novelty into) the claimed method, particularly because the web assets’ origins have no functional relationship to the claimed method.” Although selected web assets likely communicate some information, the content of the information is not claimed; the information’s “origin,” is not part of informational content. Nothing in the claim calls for origin identification to be inserted into the content of the web asset. View "In re: DiStefano" on Justia Law

SightSound’s patents disclose methods for sale and distribution of digital audio and video signals, requiring: connection, by telecommunications lines, between a party’s memory and a second party’s memory; selling digital signals to the second party for a fee through telecommunications lines; transmitting the signal from the first memory to the second memory by telecommunications lines; and storing the signal in the second memory. Apple sought covered business method (CBM) review under the America Invents Act, 125 Stat. 284, arguing that claims were invalid as anticipated under 35 U.S.C. 102. The Patent Board determined that the patents are CBM patents because they recite an activity that is “financial in nature,” and do not include novel, non-obvious technological features, then determined that there was a reasonable likelihood that the claims were anticipated or obvious by disclosures relating to a 1980s CompuSonics computer system. The petitions did not specifically allege obviousness over CompuSonics. The Board granted SightSound additional time and authorized sur-replies and new declaration testimony on the issue of obviousness, then rejected SightSound’s contention that the term “second memory” is limited to non-removable media and held seven claims invalid as obvious. The Federal Circuit found that it lacked jurisdiction to review the decision to consider issues not explicitly raised in the petitions, but affirmed that the patents are CBM patents and the final decision with respect to claim construction and obviousness. View "Sightsound Techs., LLC v. Apple Inc." on Justia Law

Unwired Planet sued the defendants for infringement, then initiated an action with the International Trade Commission (ITC). The district court stayed its litigation pending resolution of the ITC proceedings. After receiving an unfavorable claim construction ruling from an Administrative Law Judge, Unwired Planet obtained dismissal of the ITC investigation. The court lifted its stay. Unwired Planet indicated that if it adopted a construction of the disputed claim term that matched the ITC construction, Unwired Planet would concede non-infringement. The court adopted a construction that closely tracked that employed by the ALJ, noting in a footnote that its construction excluding devices employing “computer modules” did not exclude devices employing “microprocessors.” Believing that difference to be material, Unwired Planet did not stipulate to non-infringement. The court denied the defendants’ motion for summary judgment, finding it was unclear whether the accused products actually fell within the claims as construed, because the distinction between devices operating with microprocessors and those operating with computer modules was unclear. Unwired Planet then stipulated to non-infringement. The district court entered final judgment of non-infringement. The Federal Circuit affirmed, upholding construction of the term “mobile device” as “a portable wireless two-way communication device that does not contain a computer module.” View "Openwave Sys., Inc. v. Apple, Inc." on Justia Law

In 2006, the Department of Commerce announced that it was changing a method it used to calculate whether imported goods are being sold in the United States at less than fair value, i.e., being dumped. Previously, Commerce employed “zeroing” in that calculation: for goods sold above fair value, Commerce treated the sale price as being at (rather than above) fair value—it zeroed out margins above fair value and permitted no offset against below-fair-value sales in calculation of the average, resulting in larger average dumping margins than if offsetting had been allowed. The new policy generally made it more difficult to find dumping. Commerce stated that the change would apply “in all current and future antidumping investigations as of the effective date” and that it would apply the final modification to all investigations pending as of the effective date. There were seven such investigations, all initiated by petitions filed after March 6, 2006, when the new no-zeroing policy was proposed. Two companies found to have engaged in dumping argued that their cases were governed by the new policy. The Federal Circuit upheld Commerce’s determination that they were not. Commerce spoke ambiguously on timing in adopting its new policy and reasonably resolved the ambiguity to exclude the cases. View "Diamond Sawblades Mfr. Coal. v. United States" on Justia Law

Dean, a preference-eligible veteran, applied for a position as a “Recent Graduate” Wage and Hour Specialist within the Department of Labor. The announcement stated that the position “is a part of the Pathways Employment Program,” open only to “[e]ligible recent graduates from qualifying educational institutions” and separately identified job qualifications (which did not include a minimum educational requirement) and program eligibility, which required a “degree or certificate from a qualifying educational institution within the previous two years,” or previous six years for certain veterans; 34 veterans met the requirements. Dean was not considered because he had not graduated within the timeframe. Dean filed an unsuccessful Veterans Employment Opportunities Act (VEOA) appeal. The Board cited 5 U.S.C. 3302(1), authorizing the President to except positions from the competitive service, and 5 U.S.C. 3308, limiting OPM’s ability to include minimum educational requirements for positions in the competitive service that are subject to examination. The Federal Circuit affirmed, finding that that the Board had jurisdiction under section 3330a of the VEOA because sections 3302(1) and 3308 are statutes relating to veterans’ preference, and that Dean’s veterans’ preference rights under those sections were not violated. View "Dean v. Dep't of Labor" on Justia Law

Prolitec, Inc. owned U.S. Patent No. 7,712,268 (“‘683 patent”). The ‘683 patent had only two apparatus claims. The United States Patent and trademark Office, Patent Trial and Appeal Board found that the two claims were unpatentable as anticipated and additionally as obvious. The Board also denied Prolitec’s motion to amend. Proletic appealed, and the Director of the United States Patent and Trademark Office intervened for the limited purpose of addressing the Board’s regulations and practices regarding motions to amend. The Federal Circuit affirmed the Board’s findings that the two claims in the ‘683 patent were anticipated and the Board’s denial of Prolitec’s motion to amend, holding that the Board’s ultimate claim constructions were not in error and that the Board’s finding that both claims in the ’683 patent were anticipated was supported by substantial evidence. View "Prolitec, Inc. v. Scentair Techs., Inc." on Justia Law