Justia U.S. Federal Circuit Court of Appeals Opinion Summaries
ABS Global, Inc. v. Cytonome/ST, LLC
Cytonome/ST’s 439 patent, titled “Hydrodynamic Focusing Apparatus and Methods,” describes and claims a microfluidic device for use in processing particles of interest contained in a sample fluid. ABS petitioned the Patent and Trademark Office (PTO) for an inter partes review, 35 U.S.C. 311–19, of the patentability of five claims of the patent. The PTO’s Patent Trial and Appeal Board determined that ABS had not shown any of the challenged claims to be unpatentable.The Federal Circuit reversed in part and vacated in part. The Board erred in its claim construction of a limitation common to all challenged claims: “a fluid focusing region configured to focus the sample stream.” The “sample stream” is not limited to a singular-only sample stream. Under the correct claim construction, at least two claims are invalid as anticipated. View "ABS Global, Inc. v. Cytonome/ST, LLC" on Justia Law
Great Concepts, LLC v. Chutter, Inc.
Great Concepts applied to register “DANTANNA’S” as a mark for a “steak and seafood restaurant.” Its 764 Registration issued in 2005. Chutter’s predecessor-in-interest, Dan Tana, subsequently petitioned the Trademark Trial and Appeal Board to cancel the Registration, based on an alleged likelihood of confusion with Tana’s common law “DAN TANA” mark for restaurant services. The cancellation proceeding was suspended during a trademark infringement civil suit. In 2009, the district court granted Great Concepts summary judgment; the Eleventh Circuit affirmed. In December 2010, the Board dismissed Tana’s cancellation proceeding. Meanwhile, in March 2010, Great Concepts’ then-attorney, Taylor, filed with the Patent and Trademark Office (PTO) a combined declaration of use and declaration of incontestability, under the Lanham Act, 15 U.S.C. 1058, 1065, declaring “there is no proceeding involving said rights pending and not disposed of either in the U.S. Patent and Trademark Office or in the courts.” At the time, both the PTO cancellation proceeding and the Eleventh Circuit appeal were pending.In 2015, Chutter successfully petitioned the PTO for cancellation of Great Concepts’ “DANTANNA’S” mark based on Taylor’s 2010 false affidavit. The Federal Circuit reversed. The statute limits the Board’s authority to cancel registration of a mark to circumstances in which the “registration was obtained fraudulently,” but does not authorize cancellation of a registration when the incontestability status of that mark is “obtained fraudulently.” View "Great Concepts, LLC v. Chutter, Inc." on Justia Law
Cyntec Company, Ltd. v. Chilisin Electronics Corp.
Cyntecsued Chilisin, alleging infringement of certain claims of patents directed to molded chokes and a method of manufacturing molded chokes. A choke is a type of inductor used to eliminate undesirable signals in a circuit. Chokes are found in most modern electronics that use batteries or a power supply. Before closing arguments, the district court granted judgment as a matter of law that the asserted claims were not invalid as obvious. The jury then found that Chilisin infringed the asserted claims and awarded the full amount of damages requested by Cyntec.The Federal Circuit affirmed the judgment of infringement as supported by substantial evidence, given the court’s construction of the “by means of” limitation and its jury instruction regarding that limitation. The court reversed the judgment of nonobviousness; given the evidence, a reasonable jury could have found the asserted claims obvious in view of prior art. The court vacated the award of lost profits; the expert’s importation calculations, were unreliable and speculative and his lost profits calculation stemmed from those calculations. View "Cyntec Company, Ltd. v. Chilisin Electronics Corp." on Justia Law
Corephotonics, Ltd. v. Apple, Inc.
Corephonics’s Challenged Patents relate to dual-aperture camera systems and disclose techniques for using the images from both lenses when zooming while capturing video. The Patent Trial and Appeal Board found claims of the Challenged Patents unpatentable as obvious (35 U.S.C. 103) in inter partes reviews initiated by Apple.The Federal Circuit vacated, finding no procedural error in the Board’s handling of whether two prior references are analogous art. The Board’s handling of the analogous art issue neither markedly departed from the evidence and theories presented by the petition or institution decision nor unfairly surprised” Corephotonics. The Board’s determination that one of the references is analogous art is supported by substantial evidence; the reference is in the same field of endeavor as the Challenged Patents . The court remanded for the Board to explain why the other reference is (or is not) analogous art and how this finding affects its overall conclusion as to obviousness. The Board must decide whether it should consider Apple’s contention that, regardless of whether the reference is pertinent to the problem faced by the inventors, it is in the same field of endeavor as the Challenged Patents. View "Corephotonics, Ltd. v. Apple, Inc." on Justia Law
Finjan LLC v. SonicWall, Inc.
Finjan asserted the “Downloadable Patents” and the “ARB Patent,” among others in a patent infringement complaint as to SonicWall’s Gateways, Email Security products, and Capture Advanced Threat Protection, among other products. The Downloadable Patents relate to ways to protect network-connectable devices from undesirable downloadable operations.The district court agreed with SonicWall’s interpretation of the claims, concluding that the recited claim limitations “must be performed by the same computer.” Capture ATP and Gateways and Capture ATP and ES products involve separate, remote computers. The court granted summary judgment of noninfringement. Finjan unsuccessfully argued that there remained a factual dispute as to whether Capture ATP and its Gateway and Capture ATP and its ES products each work together to act as a unified computer system to form the steps as Finjan alleged. The district court excluded the apportionment opinions of Finjan’s technical expert and of Finjan’s damages expert based on that apportionment analysis.The Federal Circuit vacated in part. The district court based its judgment of invalidity on a collateral estoppel decision that has since been vacated. The court affirmed the summary judgment of noninfringement and the exclusion of Finjan’s expert analysis. View "Finjan LLC v. SonicWall, Inc." on Justia Law
Schwendimann v. Neenah, Inc.
Schwendimann owns the challenged patents, which relate to transfer sheets and methods for transferring images onto dark-colored fabrics. Multi-layer image transfer sheets for transferring images onto fabrics were well known in the prior art but Schwendimann’s patents claimed a single-step solution whereby the white background was incorporated into the image transfer sheet, allowing the white background and dark image to be applied simultaneously onto the dark fabric.On inter partes review, the Patent Trial and Appeal Board found all claims of three patents and multiple claims of the fourth patent unpatentable as obvious in view of prior art. The Federal Circuit affirmed. Substantial evidence supported the Board’s finding that a skilled artisan would be motivated to combine prior art. View "Schwendimann v. Neenah, Inc." on Justia Law
Sisvel International, S.A. v. Sierra Wireless, ULC
Sisvel’s 561 patent relates to methods of channel coding when transmitting data in radio systems. Channel coding is a technique that adds redundant information to a data block, thereby creating a coded data block. To account for problems from noise and interference during data transmission, the redundant data allows a receiver to more accurately detect and correct errors in the transmitted data, but at the cost of requiring more bandwidth and network resource usage. The 561 patent uses techniques called “link adaptation” and “incremental redundancy,” which it asserts improves prior channel coding techniques.On inter partes review, the Patent Trial and Appeal Board found four claims unpatentable but upheld five other claims. The Federal Circuit affirmed the findings of unpatentability. Prior art (Chen) does disclose a second puncturing pattern for transmission of selected code symbols and the Board provided a sufficiently detailed explanation to support its finding that Chen discloses the “combining” limitation. The Board acknowledged Sisvel’s argument that Chen includes a statement that “retransmitted packets are interleaved (not combined).” The court vacated in part, with respect to the claims that were upheld. View "Sisvel International, S.A. v. Sierra Wireless, ULC" on Justia Law
Stimson Lumber Co. v. United States
In 1907, the then-owner executed the “Stimson deed,” transferring to the Railroad “its successors and assigns, the right to cross said right of way at any point or points where such crossing is desired” the land at issue. POTB later took ownership of the railroad. A 2007 storm caused severe damage to the railroad tracks. POTB did not repair the damage, resulting in the disbandment of the Oregon Tillamook Railroad Authority. POTB, with governmental entities, established the Salmonberry Trail Intergovernmental Agency, to construct “a new multi-use trail” that would “connect to a wide network of existing recreation[al] trails and parks, educational opportunities, and heritage sites” over portions of the railroad line. In 2016, POTB filed a notice of intent to abandon service of the portions of the railroad line at issue with the Surface Transportation Board, which issued a Notice of Interim Trail Use (NITU) allowing interim trail use and railbanking under the National Trails System Act Amendments, 16 U.S.C. 1247(d).The Claims Court and Federal Circuit rejected Stimson’s claim that the creation of the trail constituted a Fifth Amendment taking. Railbanking and interim trail use are within the scope of the easement. Stimson failed to show abandonment for all purposes and had no compensable property interest in the land to which the deed pertained. View "Stimson Lumber Co. v. United States" on Justia Law
GSS Holdings (Liberty) Inc. v. United States
GSS is the managing member and owner of Liberty. In 2006, Liberty purchased a note issued by Aaardvark and entered into a liquidity asset purchase agreement (LAPA) for that Note. BNS was Liberty’s counterparty for the Aaardvark LAPA, requiring BNS to purchase the Aaardvark Note at par value if Liberty exercised the LAPA. Months later, Liberty entered into a note purchase agreement with an unrelated investor, Scotiabank’s predecessor, and issued the First Loss Note; Scotiabank’s predecessor funded the “First Loss Note Account” to cover some of the risk of Liberty’s assets. That Account would compensate BNS for a loss in value of Liberty’s assets. For tax purposes, Scotiabank’s investment in the Note was treated as a partnership interest in Liberty. In 2011, Liberty exercised the Aaardvark LAPA; BNS purchased the Aaardvark Note at a loss. BNS certified this loss to Scotiabank, causing Liberty to pay $24 million to BNS from the Account. Liberty’s loss was allocated to GSS.GSS filed an amended return for the 2009 tax year, requesting to carry back the allocated 2011 loss, 26 U.S.C. 165. The IRS disallowed the deduction under section 707(b)(1), focusing on Liberty’s Aaardvark Note sale to BNS and the $24 million payment to BNS to conclude that these transactions should be treated as a single transaction. The Claims Court rejected GSS’s appeal. The Federal Circuit vacated. The Claims Court erred by applying a hybrid legal standard that improperly conflated the step transaction doctrine and the economic substance doctrine. Under the end result test, the Claims Court must “examine whether it appears that separate transactions were really component parts of a single transaction intended from the outset to be taken for the purpose of reaching the ultimate result.” View "GSS Holdings (Liberty) Inc. v. United States" on Justia Law
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Elekta Ltd. v. ZAP Surgical Systems, Inc.
Elekta’s 648 patent, titled “Method and apparatus for treatment by ionizing radiation,” discloses a device for treating a patient with ionizing radiation for certain types of radiosurgery and radiation therapy. The invention uses a radiation source, e.g., a linear accelerator (linac), mounted on a pair of concentric rings to deliver a beam of ionizing radiation to the targeted area of the patient. ZAP Surgical Systems sought inter partes review (IPR). The Patent Trial and Appeal Board addressed Elekta’s arguments that a skilled artisan would not have been motivated to combine, and would not have had a reasonable expectation of success in combining, one prior art device (Grady) with the linac described in the prior art, Ruchala, and whether a skilled artisan would have been dissuaded from combining the devices because one device was an imaging device, rather than a radiation device, and because the linac’s weight would render the Grady device inoperable, imprecise, and unsuitable for treatment.The Board concluded that a skilled artisan would have been motivated to combine Grady and Ruchala. The Federal Circuit affirmed, finding substantial support for the finding that a person of ordinary skill in the art would have been motivated to make the proposed combination. View "Elekta Ltd. v. ZAP Surgical Systems, Inc." on Justia Law