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

Donald Forest submitted a patent application for an "Apparatus for Selecting from a Touch Screen" to the United States Patent and Trademark Office (USPTO) on December 27, 2016. The Patent Trial and Appeal Board (PTAB) affirmed in part the examiner’s rejection of certain claims under 35 U.S.C. § 103 and nonstatutory double patenting. Forest appealed this decision.The PTAB reviewed the case and upheld the examiner's rejection of certain claims in Forest's patent application. Forest did not dispute that his application was filed more than a year after the expiration date of any resulting patent, which would have been in 2015. The USPTO raised a jurisdictional issue, arguing that Forest had no personal stake in the appeal because he could not be granted enforceable rights by a patent with zero term. Forest argued that he would still acquire "provisional rights" under 35 U.S.C. § 154(d) if the USPTO issued him an expired patent.The United States Court of Appeals for the Federal Circuit reviewed the case and disagreed with Forest's interpretation of the statute. The court held that provisional rights are granted only when a patent would issue with exclusionary rights, meaning before its expiration date. Since Forest's patent would issue after its expiration date, he would not receive any enforceable rights. Consequently, the court dismissed the appeal. View "In Re FOREST " on Justia Law

United Water Conservation District (United) filed a lawsuit against the United States, seeking just compensation for an alleged taking under the Fifth Amendment. United claimed that the National Marine Fisheries Service (NMFS) required it to increase the amount of water bypassing its diversion dam to protect an endangered species of trout, resulting in a loss of water that United could otherwise use for beneficial purposes.The United States Court of Federal Claims dismissed United's complaint for lack of subject matter jurisdiction, determining that the claim should be evaluated as a regulatory taking. The court reasoned that United had not yet exhausted its administrative remedies by applying for and being denied an incidental-take permit under the Endangered Species Act, making the claim not ripe for adjudication.The United States Court of Appeals for the Federal Circuit reviewed the case and affirmed the lower court's decision. The appellate court agreed that United's claim was regulatory in nature, as the NMFS's actions did not constitute a physical appropriation of water already diverted by United. Instead, the actions required more water to remain in the river, representing a regulatory restriction on United's use of the water. The court held that United's claim was not ripe because it had not yet obtained a final agency action by applying for and being denied an incidental-take permit. Therefore, the dismissal for lack of subject matter jurisdiction was appropriate. View "UNITED WATER CONSERVATION DISTRICT v. US " on Justia Law

George Roseberry, a U.S. Army veteran, sustained a lower back injury during his service from 1977 to 1989. In March 1994, he filed a claim for service connection related to degenerative disc disease, which was denied three months later. Between 1998 and 2005, he made several unsuccessful attempts to reopen his claim. On July 20, 2021, the Veterans Court remanded his case to the Board of Veterans’ Appeals, concluding his appeal on October 12, 2021. On November 13, 2021, Roseberry filed an application for attorney fees under the Equal Access to Justice Act (EAJA), which was one day late.The United States Court of Appeals for Veterans Claims dismissed Roseberry’s EAJA application as untimely. The court found that the application was due on November 12, 2021, 30 days after the effective date of the mandate, October 12, 2021. Roseberry’s counsel had mistakenly relied on the date the mandate was entered on the docket, October 15, 2021, leading to the late filing. The court determined that equitable tolling was not warranted as there were no “extraordinary circumstances” to justify the delay.The United States Court of Appeals for the Federal Circuit reviewed the case and affirmed the Veterans Court’s decision. The Federal Circuit agreed that the correct standard for equitable tolling is “extraordinary circumstances,” as established by precedent. Roseberry’s late filing was due to ordinary neglect, which does not meet the threshold for equitable tolling. Consequently, the Federal Circuit upheld the dismissal of Roseberry’s EAJA application as untimely. View "ROSEBERRY v. COLLINS " on Justia Law

The case involves an appeal by the named inventors of U.S. Patent Application No. 11/005,678, which is directed to logistics systems and methods for the transportation of goods. The application was rejected by an Examiner under pre-AIA 35 U.S.C. § 102(e) as anticipated by a published patent application (Lettich) and under 35 U.S.C. § 103 as obvious over Lettich in view of another reference (Rojek). The inventors appealed the rejection to the U.S. Patent Trial and Appeal Board (Board).The Board initially reversed the Examiner's rejections but later granted the Examiner's request for rehearing, determining that Lettich did qualify as prior art under pre-AIA § 102(e). The Board then sustained the Examiner's anticipation and obviousness rejections. The inventors appealed the Board's decision to the United States Court of Appeals for the Federal Circuit.The Federal Circuit reviewed the case and found that the Board conducted an incomplete analysis in determining whether Lettich qualifies as prior art under § 102(e). Specifically, the court held that it is not sufficient to show that a single claim in the prior art application is supported by the provisional application; the specific portions of the application relied on in the rejection must also be supported by the provisional application. The court vacated the Board's decision and remanded the case for further analysis to determine whether the Lettich Provisional Application provides written description support for the specific disclosures in Lettich that the Examiner identified and relied on in the prior art rejections. View "In Re RIGGS " on Justia Law

The plaintiffs, Michael Etchegoinberry, Erik Clausen, Barlow Family Farms, L.P., and Christopher Todd Allen, own land in the Westlands Water District, part of the San Luis Unit in California. They alleged that the United States failed to provide necessary drainage for their irrigated lands, leading to a rise in the water table and accumulation of saline groundwater, which they claimed resulted in a taking of their property without just compensation under the Fifth Amendment.The United States Court of Federal Claims initially denied the government's motion to dismiss the case for lack of subject matter jurisdiction, agreeing with the plaintiffs that their claim was timely under the stabilization doctrine. This doctrine postpones the accrual of a takings claim until the damage has stabilized and the extent of the damage is reasonably foreseeable. The case was then stayed for nearly seven years for settlement attempts. In 2023, the Court of Federal Claims revisited the issue and dismissed the case sua sponte for lack of subject matter jurisdiction, holding that the stabilization doctrine did not apply and the claim was time-barred.The United States Court of Appeals for the Federal Circuit reviewed the case and affirmed the dismissal. The court held that the stabilization doctrine did not apply because the plaintiffs' claim was based on the regular and known lack of drainage over many years, not an irregular or intermittent physical process. Even if the doctrine applied, the court found that the plaintiffs' claim accrued before the critical date of September 2, 2005, as they were aware of the permanent nature of the damage to their land well before that date. The court concluded that the plaintiffs' claim was time-barred and affirmed the dismissal for lack of subject matter jurisdiction. View "ETCHEGOINBERRY v. US " on Justia Law

Wash World Inc. sought to reverse a final judgment that it infringed Belanger Inc.'s 8,602,041 patent. Wash World contended that the district court erred in not construing three claim terms and that Belanger could not prove infringement under the correct constructions. Wash World also disputed the jury's decision to award Belanger $9.8 million in lost profits damages and requested a remittitur of approximately $2.6 million. Belanger argued that Wash World forfeited these issues by not preserving them in the district court.The United States District Court for the Eastern District of Wisconsin ruled that no construction was needed for the disputed terms and denied Wash World's motion for summary judgment of noninfringement. The jury found that Wash World’s Razor EDGE car wash system infringed Belanger’s patent and awarded $9.8 million in lost profits and $260,000 in reasonable royalties. The district court denied Wash World’s post-trial motions for judgment as a matter of law, a new trial, or remittitur.The United States Court of Appeals for the Federal Circuit reviewed the case. It found that Wash World forfeited its arguments regarding the constructions of "outer cushioning sleeve" and "predefined wash area" by not presenting them adequately in the district court. However, the court agreed with the district court's construction of "dependingly mounted" and affirmed the judgment of infringement.On the issue of damages, the Federal Circuit concluded that the jury's award improperly included $2,577,848 for convoyed sales, which lacked sufficient evidence of a functional relationship with the patented product. The court vacated the damages portion of the judgment and remanded with instructions to remit the damages by $2,577,848, resulting in a total award of $7,482,152 in favor of Belanger. View "WASH WORLD INC. v. BELANGER INC. " on Justia Law

Maquet Cardiovascular LLC owns U.S. Patent No. 10,238,783, which relates to an intravascular blood pump system designed to improve the deployment of blood pumps within a patient's circulatory system. The patent aims to address the difficulties associated with guiding blood pumps to the appropriate position using supplemental guiding mechanisms. Instead, it employs integrated guide mechanisms located on the device itself. Maquet sued Abiomed Inc. and its affiliates for infringing claims of the '783 patent and U.S. Patent No. 9,789,238.The United States District Court for the District of Massachusetts construed certain claim terms of the '783 patent, including "guide mechanism comprising a lumen" and "guide wire" terms. The court included negative limitations in its constructions based on the prosecution history of related patents. The parties stipulated to non-infringement based on these constructions, leading the district court to enter a final judgment of non-infringement for both patents.The United States Court of Appeals for the Federal Circuit reviewed the district court's claim constructions. The Federal Circuit found that the district court erred in applying prosecution disclaimer to the "guide mechanism comprising a lumen" term in claim 1 of the '783 patent, as the prosecution history of the related '238 patent was not relevant due to differences in claim language. The court also found that the district court erred in construing the "guide wire" terms in claims 1 and 24 of the '783 patent, as Maquet did not make a clear and unmistakable disavowal of claim scope during the prosecution of the '728 patent.The Federal Circuit vacated the district court's judgment of non-infringement as to the '783 patent and remanded for further proceedings. The judgment of non-infringement as to the '238 patent was left undisturbed. View "MAQUET CARDIOVASCULAR LLC v. ABIOMED INC. " on Justia Law

Actavis Laboratories FL, Inc. ("Actavis") filed Abbreviated New Drug Applications (ANDAs) with the FDA to market generic versions of branded drugs. The manufacturers of these branded drugs, who hold New Drug Applications (NDAs) and patents, sued Actavis for patent infringement under the Hatch-Waxman Act. This Act considers the submission of an ANDA with a Paragraph IV certification as an act of patent infringement if it seeks FDA approval before the expiration of the patents. Actavis incurred significant litigation expenses defending these suits and deducted these expenses as ordinary business expenses on its tax returns.The IRS disagreed, treating these expenses as capital expenditures related to the acquisition of an intangible asset (FDA approval) and issued Notices of Deficiency. Actavis paid the assessed taxes and sued in the Court of Federal Claims for a refund, arguing that the litigation expenses were deductible. The Court of Federal Claims ruled in favor of Actavis, holding that the litigation expenses were deductible as ordinary business expenses.The United States Court of Appeals for the Federal Circuit reviewed the case. The court considered whether the litigation expenses were ordinary business expenses or capital expenditures. Applying both the "origin of the claim" test and the IRS regulation under C.F.R. § 1.263, the court concluded that the expenses were deductible. The court found that the origin of the claim was the patent infringement suit, not the pursuit of FDA approval, and that the litigation did not facilitate the acquisition of the FDA-approved ANDA. Therefore, the court affirmed the decision of the Court of Federal Claims, allowing Actavis to deduct the litigation expenses as ordinary business expenses. View "ACTAVIS LABORATORIES FL, INC. v. US " on Justia Law

AMP Plus, Inc., doing business as ELCO Lighting, appealed a final written decision by the Patent Trial and Appeal Board (PTAB) which found that ELCO failed to show claim 22 of U.S. Patent No. 9,964,266 was unpatentable as obvious. The patent, owned by DMF, Inc., relates to a compact recessed lighting system that can be installed in a standard electrical junction box. The key issue on appeal was whether claim 22, which includes a limitation referred to as "Limitation M," was obvious.The PTAB initially found that claim 17 of the patent was anticipated by prior art, but did not explicitly address the patentability of claim 22. ELCO appealed, and the United States Court of Appeals for the Federal Circuit vacated and remanded the case for the PTAB to address the arguments concerning claim 22. On remand, the PTAB concluded that ELCO failed to show the unpatentability of claim 22, noting that ELCO's petition lacked sufficient analysis and evidence to establish that the marine recessed lighting system disclosed in the prior art could be installed in a building, as required by Limitation M.The United States Court of Appeals for the Federal Circuit reviewed the case and affirmed the PTAB's decision. The court held that ELCO's petition did not adequately address the specific requirement of Limitation M and that the evidence cited did not support the installation of the marine lighting system in a building. The court also rejected ELCO's argument that claim 22 was anticipated by the same prior art that anticipated claim 17, as this argument was not raised in the original petition. The court concluded that the PTAB's determination was supported by substantial evidence and affirmed the decision. View "AMP PLUS, INC. v. DMF, INC. " on Justia Law

Associated Energy Group, LLC (AEG) initiated multiple bid protests concerning contracts managed by the U.S. Department of Defense, Defense Logistics Agency Energy (DLA) to deliver fuel to a U.S. military base and nearby airfield in Djibouti. This appeal concerns whether AEG has standing to bring its second bid protest in the U.S. Court of Federal Claims, challenging a one-year sole-source bridge contract awarded to the incumbent contractor. AEG argued that officials within the Djiboutian Ministry of Energy and Natural Resources were preventing contract performance by threatening AEG’s contracted fuel delivery truck drivers and refusing to issue or renew petroleum activity licenses (PALs) to AEG and its contractors.The U.S. Court of Federal Claims dismissed AEG’s complaint for lack of subject matter jurisdiction, ruling that AEG lacked both Article III constitutional standing and Tucker Act statutory standing to challenge the sole-source bridge contract awarded to United Capital Investments Group, Inc. (UCIG). The Claims Court found that neither AEG nor its contractors possessed the required PAL, making AEG ineligible to bid on the contract.The United States Court of Appeals for the Federal Circuit reviewed the case and affirmed the Claims Court’s dismissal. The court held that AEG lacked Article III standing because it could not bid on or compete for the bridge contract due to the lack of a PAL. Additionally, the court found that AEG lacked statutory standing under the Tucker Act, as it did not have a substantial chance of winning the contract even if the alleged errors by DLA were corrected. The court concluded that an exception to mootness applied to the case, but AEG’s inability to secure the required PAL meant it had no concrete stake in the lawsuit. View "ASSOCIATED ENERGY GROUP, LLC v. US " on Justia Law