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

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Nucleic acids DNA and RNA are made of a series of building blocks, called nucleotides, linked together in a chain. Hybridization techniques are used to detect the presence of certain nucleic acid sequences of interest, i.e., target sequences, such as genetic alterations. In such procedures, scientists use a hybridization “probe”—i.e., a labeled polynucleotide that is hybridizable and remains detectable after hybridization occurs—that is sufficiently complementary to the target sequence. The probe will hybridize with the target sequence if the target sequence is present, and the label on the probe then allows scientists to detect the hybridized probe. Nucleic acid hybridization was well understood by the 1982 claimed priority date of the patents at issue. The prevailing method of labeling probes at that time was via radioactive labeling. Enzo filed a patent application covering non-radioactive labeling at additional positions on a nucleotide. Both patents at issue generally relate to the use of non-radioactively labeled polynucleotides in nucleic acid hybridization and detection applications. The Federal Circuit affirmed a holding that the asserted claims are invalid for lack of enablement. Patent protection is granted in return for an enabling disclosure of an invention, not for vague intimations of general ideas that may or may not be workable. View "Enzo Life Sciences, Inc. v. Roche Molecular Systems, Inc." on Justia Law

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Westech sued 3M in the Western District of Washington, alleging infringement. 3M moved to dismiss the original and amended complaints. While 3M’s motion was pending, the Supreme Court decided, in TC Heartland, that under the patent venue statute, 28 U.S.C. 1400(b), a corporation “resides” only in its state of incorporation. 3M amended its motion to argue improper venue. Westech sought to amend its complaint and argued that the presence of sales representatives and 3M’s sales in Washington supported venue and that 3M had a “principal place of business” and other business locations at various Washington addresses. At the time of the original complaint, 3M did not own, lease, use, or maintain property at any of the specified locations, and, at the time of the motion did not occupy any of the locations. The district court denied 3M’s motion without prejudice and allowed Westech amend its complaint. In the interim, the Federal Circuit held that section 1400(b) requires a defendant to have a physical place in the district that serves as a regular and established place of business. The district court then dismissed the case. On appeal, 3M sought attorneys’ fees and double costs, arguing that Westech’s appeal was frivolous. The Federal Circuit affirmed the dismissal but denied the motion for fees and costs. Westech’s behavior on appeal bordered on sanctionable, but Westech pursued the appeal when the question of who shoulders the burden of establishing proper venue was unanswered. View "Westech Aerosol Corp. v. 3M Co." on Justia Law

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Global’s patent claims carpeted automotive vehicle load floors having sandwich-type composite panels with cellular cores. Global filed a reissue application, seeking to broaden its claims. It replaced the term “thermoplastic” with “plastic” in several independent claims. The Patent Office’s rules for reissue applications require an inventor oath or declaration specifically identifying the error relied on as the basis for the reissue. The inventor filed a declaration explaining that he is the inventor of over 50 U.S. patents in the field of plastic-molded products and that, at the time of the invention, he was aware of the use of plastics other than thermoplastics for the formation of a sandwich-type composite panel with a cellular core. He cited patents and patent applications, including his own, and technical papers purportedly disclosing the use of thermoset plastics (instead of thermoplastics) in vehicle load floors. The examiner rejected Global’s reissue claims for failing to comply with the written description requirement of 35 U.S.C. 112. The Board affirmed. The Federal Circuit vacated; “the level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.”On remand, the Board should address the relevant factors, including predictability and criticality, based on the record and determine whether the written description requirement has been satisfied under the proper legal standard. View "In re: Global IP Holdings LLC" on Justia Law

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Kolcraft’s 970 and 231 Design Patents are both titled “Exposed Legs for a Play Yard” and have an effective filing date of November 2004. In 2016, Graco sought inter partes review, challenging the patents on multiple grounds. The Patent Trial and Appeal Board instituted a single trial addressing both patents on grounds related to the prior art (Chen). In its Patent Owner Response, Kolcraft included a declaration signed by inventors with exhibits. Neither the Declaration nor the exhibits included specific dates of conception. Graco deposed the inventors. The Board concluded that Chen is prior art because Kolcraft failed to show that conception, diligence, and reduction to practice of the patents occurred before Chen was filed and that the testimony of the inventors that they conceived of the play yard invention before Chen's effective filing date was not corroborated by non-inventor testimony, documents, or other evidence. The Board relied on the redacted version of the Inventor Declaration and did not take into account inventor deposition testimony of prior conception, finding Kolcraft’s reliance on inventor deposition testimony to be waived as it was raised for the first time at oral hearing. The Board determined and the Federal Circuit affirmed that the patents-in-suit were obvious in view of Chen. View "Kolcraft Enterprises, Inc. v. Graco Children's Products, Inc." on Justia Law

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Quiedan imports agricultural stakes produced in China for use in training grape vines and other plants. Each stake is made of steel concrete reinforcing bar (rebar) by cutting rebar to a length of four to five feet, then sharpening one end to a point to ease driving the stake into the ground. The Department of Commerce concluded that Quiedan’s stakes are clearly within the scope of an antidumping duty order covering rebar from China. The Court of International Trade and Federal Circuit affirmed. Under the Rebar Order as modified by the 2007 Continuation, the “product covered is all steel concrete reinforcing bars (rebar) sold in straight lengths,” but “[s]pecifically excluded are plain rounds (i.e., non-deformed or smooth bars) and rebar that has been further processed through bending or coating.” The use of the rebar is immaterial and its physical properties and fabrication fall within the scope of the order. View "Quiedan Co. v. United States" on Justia Law

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WestRock’s Virginia paper mill was fueled by steam from boilers that burned various fuels, including fossil fuels. In 2013, WestRock placed into service a cogeneration facility that burns open-loop biomass, material not originally intended for use as fuel. Steam from a new biomass-fired boiler and an old paper mill boiler are comingled and fed into a steam turbine generator. Electricity is generated after WestRock diverts some steam to the paper mill for use in the industrial paper process. In 2013, WestRock submitted an American Recovery and Reinvestment Act of 2009 Section 1603 application seeking a grant; it claimed that its qualifying property cost $286,191,571 and requested $85,857,471. The National Renewable Energy Laboratory determined that WestRock used only 49.1 percent of the steam energy to produce electricity and that fossil fuel still comprised about 0.22 percent of its boiler fuel. The Department of Treasury reduced the cost basis by 51.2 percent and awarded WestRock $38,881,758—30 percent of the cost of what Treasury deemed qualifying property. The Claims Court affirmed, finding that Section 1603 provides for reimbursement of only costs associated with electricity production at WestRock’s facility. The court afforded deference to nonbinding Treasury guidance, which provides for allocation of the cost basis between qualifying and non-qualifying activities. The Federal Circuit affirmed. Section 1603 provides for a grant in the amount of 30 percent of the basis or cost of any qualified property that is used as an integral part of a facility that uses open-loop biomass to produce electricity. View "WestRock Virginia Corp. v. United States" on Justia Law

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Cellspin sued Fitbit, Moov, Nike, Fossil, Garmin, Canon, GoPro, Panasonic, and JKI (defendants) for infringing various claims of four patents that share the same specification and generally relate to connecting a data capture device, e.g., a digital camera, to a mobile device so that a user can automatically publish content from the data capture device to a website.. The district court dismissed, finding the patents ineligible for patent protection under 35 U.S.C. 101, and awarded attorney fees to defendants under 35 U.S.C. 285. The Federal Circuit vacated, concluding that the district court misapplied precedent. The asserted claims are directed to an abstract idea--the idea of capturing and transmitting data from one device to another--but the district court erred with respect to the “second step” inventive concept inquiry, by ignoring allegations that, when properly accepted as true, preclude the grant of a motion to dismiss. Cellspin made specific, plausible factual allegations about why aspects of its claimed inventions were not conventional, e.g., its two-step, two-device structure requiring a connection before data is transmitted. View "Cellspin Soft, Inc. v. Fitbit, Inc." on Justia Law

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Elbit’s 073 patent, entitled “Reverse Link for a Satellite Communication Network,” claims a system for transmitting information from user terminals to a central hub using satellite communication—a “reverse link.” Add “a forward link,” i.e., satellite communication from the hub to user terminals, and the result is “a complete two-way communication system via satellite.” To transmit data to the hub, user terminals employ a “transmitter means,” which has two communication means, one for “transmitting short bursty data,” and a second for “continuous transmission of data.” Elbit sued Hughes for infringement. The jury found system claims 2–4 of the patent infringed and not invalid, and awarded damages. The district court found that the case was exceptional and that Elbit is entitled to attorney’s fees, but the court has not quantified the fees. The Federal Circuit affirmed as to infringement and damages but concluded it lacked jurisdiction over the unquantified attorney’s fees decision. Substantial evidence supported the jury’s findings. Elbit and its expert did what case law requires in explaining the relevance of a prior settlement to this case. Hughes, which introduced no expert damages testimony, did not demonstrate either “faulty assumptions” or “a lack of reliable economic testimony” that would warrant disturbing the jury’s award. View "Elbit Systems Land & C4I Ltd v. Hughes Network Systems, LLC" on Justia Law

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UCB’s 434 patent, entitled “Transdermal therapeutic system which contains a d2 agonist and which is provided for treating Parkinsonism, and a method for the production thereof,” claims a polymorph of rotigotine. UCB’s 414 patent is entitled “Polymorphic form of rotigotine and process for production.” UCB has been selling the FDA-approved product, Neupro, since 2007. The district court concluded that Actavis’s generic products infringed the patent under the doctrine of equivalents and upheld the 434 patent's validity over obviousness and anticipation challenges. The court invalidated the 414 patent under 35 U.S.C. 102(a) as known and used by others in the U.S. before the date of invention. The Federal Circuit affirmed. There is not enough evidence to conclude that UCB surrendered polyisobutylene as a possible equivalent; UCB’s claiming of acrylates and silicates does not bar treating polyisobutylenes as an equivalent for infringement purposes and vitiation does not bar application of the doctrine of equivalents here. Actavis offers no examples of prior art that would be ensnared by the addition of polyisobutylene to the claim, in contrast to the claim as is. The court upheld fact findings as to polyisobutylene’s characteristics as compared to silicates and acrylates and as to what a skilled artisan would have known about the interchangeability of polyisobutylene-based adhesives and silicone-based adhesives and the conclusion that the accused products infringe the claims under the doctrine of equivalents. View "UCB, Inc. v. Watson Laboratories Inc." on Justia Law

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NOVA challenged a 2017 Veterans Administration (VA) amendment to 38 C.F.R. 3.321(b)(1), confining the preexisting regulation (as interpreted by a 2014 Federal Circuit ruling) and authorizing the VA “[t]o accord justice to the exceptional case where the schedular evaluation is inadequate to rate a single service-connected disability,” by adopting “an extra-schedular evaluation commensurate with the average impairment of earning capacity due exclusively to the disability.” The regulation does not permit the VA to award extra-schedular disability compensation by considering the synergistic impact of multiple disabilities together. The Federal Circuit upheld the regulation. The VA’s explanation for the change was adequate; the regulation is not on its face arbitrary and capricious. It does not limit “extraschedular rating to a single service-connected disability” but provides for combining multiple disabilities, but not in the manner opponents prefer. The VA explained that the amendment is consistent with the agency’s historical interpretation of the regulation and its predecessors. The VA reasonably concluded that determination of an extra-schedular rating with respect to a single disability is likely to result in a more logical and consistent system of extra-schedular rating than one in which the decision-maker must determine on an ad hoc basis whether extra-schedular rating is appropriate for the synergistic effect of combined disabilities. View "National Organization of Veterans' Advocates, Inc. v. Secretary of Veterans Affairs" on Justia Law