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

CeramTec GmbH manufactures artificial hip components made from zirconia-toughened alumina (ZTA) ceramic, which contains chromium oxide (chromia) and is marketed under the name "Biolox Delta." The addition of chromia gives the ceramic a pink color. CeramTec held U.S. Patent 5,830,816 (the '816 patent) for the chemical composition of Biolox Delta until it expired in January 2013. In January 2012, CeramTec applied for trademarks for the pink color of its ceramic hip components, which were registered on the Supplemental Register in April 2013. CoorsTek Bioceramics LLC, a competitor, manufactures similar ceramic hip implants and filed a lawsuit and a cancellation petition with the Trademark Trial and Appeal Board (the Board) in 2014, arguing that the pink color was functional and should not be trademarked.The Board found in favor of CoorsTek, concluding that the pink color was functional for ceramic hip components. The Board analyzed the functionality under the four factors from In re Morton-Norwich Products, Inc., and found that CeramTec's patents and public communications disclosed the functional benefits of chromia, including increased hardness. The Board also found that there was no probative evidence of functionally equivalent designs and conflicting evidence regarding the cost of manufacturing. The Board rejected CeramTec's unclean hands defense, which argued that CoorsTek should be precluded from challenging the trademarks due to its previous statements about chromia's lack of material benefits.The United States Court of Appeals for the Federal Circuit reviewed the case and affirmed the Board's decision. The court held that the Board's findings were supported by substantial evidence and that the Board correctly applied the burden of proof. The court also addressed CeramTec's arguments regarding the Board's analysis of the Morton-Norwich factors and the unclean hands defense, finding no reversible error. The court concluded that the pink color of CeramTec's ceramic hip components was functional and not eligible for trademark protection. View "CERAMTEC GMBH v. COORSTEK BIOCERAMICS LLC " on Justia Law

Honeywell International Inc., Telit Cinterion Deutschland GmbH, and Sierra Wireless, ULC (collectively, "Honeywell") appealed a decision by the Patent Trial and Appeal Board (PTAB) regarding U.S. Patent No. 7,319,718 (the '718 patent). The '718 patent involves a coding method for Channel Quality Indicator (CQI) in third-generation mobile communication systems. The PTAB had declined to hold claims 1, 2, 4-7, 9-13, and 15-23 of the '718 patent unpatentable as obvious.The PTAB found that Honeywell had not shown that a person of ordinary skill in the art would have been motivated to switch the last two bits in the basis sequence table of the Philips reference to provide more protection to the most significant bit (MSB). The PTAB also held that even if such a motivation existed, it had not been demonstrated that this change would be desirable. Honeywell argued that the PTAB's decision was based on multiple legal errors and was not supported by substantial evidence.The United States Court of Appeals for the Federal Circuit reviewed the PTAB's decision. The court found that the PTAB improperly based its conclusion on the '718 patent's primary motivation to maximize system throughput rather than minimizing root-mean-square error or bit error rate. The court noted that the motivation to modify a prior art reference need not be the same as the patentee's motivation. The court also found that the PTAB's finding that Honeywell had not shown a motivation to switch the bits was not supported by substantial evidence, as the Philips reference itself recognized the benefit of protecting the MSB.The court concluded that the PTAB's decision was based on a misunderstanding of the relevant standards for obviousness and anticipation. The court held that the PTAB erred in requiring a consensus among the working group members and in failing to recognize that the claimed modification needed only to be desirable, not the best or preferred approach. The decision of the PTAB was reversed. View "HONEYWELL INTERNATIONAL INC. v. 3G LICENSING, S.A. " on Justia Law

Thomas Rodenhizer, a U.S. Army veteran, sought an earlier effective date for his veteran benefits, which the Board of Veterans’ Appeals denied. He appealed to the United States Court of Appeals for Veterans Claims. During the appeal, Mr. Rodenhizer passed away, and his mother, Deborah Rodenhizer, moved to be substituted in his place. The Veterans Court denied her motion, vacated the Board’s decision, and dismissed the appeal, stating that Ms. Rodenhizer had not established her right to the benefits.The Veterans Court’s decision was based on the fact that Ms. Rodenhizer had not provided evidence that she requested a determination of accrued-benefits eligibility from the VA within one year of her son’s death, as required by 38 U.S.C. § 5121(c). Additionally, the VA had not made a determination about her eligibility to receive accrued benefits. The Veterans Court concluded that it could not make the factual determination of her eligibility in the first instance.The United States Court of Appeals for the Federal Circuit reviewed the case. The court held that the Veterans Court erred in denying the motion to substitute and dismissing the appeal before a final decision was made in the parallel VA proceeding regarding Ms. Rodenhizer’s eligibility as an accrued-benefits claimant. The Federal Circuit vacated the Veterans Court’s judgment and remanded the case with instructions to hold the appeal and motion to substitute in abeyance pending the outcome of the VA’s determination of Ms. Rodenhizer’s eligibility. The court emphasized that this approach would prevent unnecessary reworking of the same claim and save families from facing unnecessary administrative hurdles. View "RODENHIZER v. MCDONOUGH " on Justia Law

Andrew J. Winterbottom, a veteran, was awarded a 30% disability rating for his service-connected post-traumatic stress disorder (PTSD), which was later increased to 50%. He appealed to the Board of Veterans’ Appeals seeking a higher rating. During a Board hearing in June 2021, the judge questioned Winterbottom about specific violent episodes, which he later claimed demonstrated judicial bias. In May 2022, the Board denied a higher rating, concluding that his violent behavior was not unprovoked.Winterbottom appealed to the Court of Appeals for Veterans Claims, arguing that the Board failed to provide adequate reasons for its decision and exhibited bias. The Veterans Court partially agreed, remanding the case because the Board did not adequately explain why it gave less weight to a private counselor's opinion. However, the court found no bias warranting reassignment, stating the judge's questions aimed to determine if the violent conduct was provoked.Winterbottom then appealed to the United States Court of Appeals for the Federal Circuit. The Federal Circuit dismissed the appeal, stating it lacked jurisdiction to review non-final orders from the Veterans Court. The court noted that exceptions to the finality requirement, as outlined in Williams v. Principi, did not apply to Winterbottom's case. The court also declined to create a new exception for judicial bias claims, suggesting that such claims should be raised through a mandamus petition or after a final judgment. Thus, the appeal was dismissed. View "WINTERBOTTOM v. MCDONOUGH " on Justia Law

CKY, Inc. entered into a fixed-price construction contract with the United States Army Corps of Engineers (Corps) in October 2012. CKY encountered unexpected conditions, including heavy rainfall and undisclosed culverts, which led to additional expenses. CKY sought compensation for these expenses, but the Corps denied the requests. CKY then filed a claim under the Contract Disputes Act, seeking $1,146,226 for the additional costs incurred. The Armed Services Board of Contract Appeals (Board) ruled in favor of CKY regarding the undisclosed culverts but denied compensation for other claims.The Board awarded CKY $185,000 plus interest for the expenses related to the undisclosed culverts. CKY then applied for attorney’s fees and expenses under the Equal Access to Justice Act (EAJA). The Board granted the application, concluding that the government’s position regarding the undisclosed culverts was not substantially justified. The Board limited its substantial-justification inquiry to the government’s litigation position on the specific claim where CKY prevailed.The United States Court of Appeals for the Federal Circuit reviewed the case. The court held that the Board erred by categorically narrowing its substantial-justification inquiry to the government’s litigation position and to the specific claim on which CKY prevailed. The court emphasized that the substantial-justification inquiry should consider both the agency’s pre-litigation conduct and its litigation position, and should treat the case as an inclusive whole rather than focusing on individual claims. The court vacated the Board’s decision and remanded the case for reconsideration without the categorical limitations previously applied. View "In Re SECRETARY OF THE ARMY " on Justia Law

Teva Branded Pharmaceutical Products R&D, Inc., Norton (Waterford) Ltd., and Teva Pharmaceuticals USA, Inc. (collectively, Teva) filed an NDA for their ProAir® HFA Inhalation Aerosol, which contains the active ingredient albuterol sulfate. Teva listed several patents in the FDA's Orange Book, including patents related to the inhaler's dose counter and canister. Amneal Pharmaceuticals of New York, LLC, Amneal Ireland Ltd., Amneal Pharmaceuticals LLC, and Amneal Pharmaceuticals, Inc. (collectively, Amneal) filed an ANDA to market a generic version of ProAir® HFA, asserting that their product did not infringe Teva's patents.The United States District Court for the District of New Jersey ruled in favor of Amneal, ordering Teva to delist its patents from the Orange Book. The court found that Teva's patents did not claim the active ingredient albuterol sulfate but were directed to components of the inhaler device. Teva appealed the decision, arguing that their patents were properly listed because they claimed parts of the NDA product.The United States Court of Appeals for the Federal Circuit reviewed the case and affirmed the district court's decision. The Federal Circuit held that for a patent to be listed in the Orange Book, it must claim the drug for which the application was submitted and approved, which includes the active ingredient. The court rejected Teva's argument that a patent claims the drug if it reads on any part of the NDA product. The court concluded that Teva's patents, which claimed only the device components of the inhaler, did not meet the statutory requirement of claiming the drug, as they did not claim the active ingredient albuterol sulfate. Therefore, the court affirmed the order requiring Teva to delist its patents. View "TEVA BRANDED PHARMACEUTICAL PRODUCTS R&D, INC. v. AMNEAL PHARMACEUTICALS OF NEW YORK, LLC" on Justia Law

CloudofChange, LLC sued NCR Corporation, alleging infringement of U.S. Patent Nos. 9,400,640 and 10,083,012, which disclose an online web-based point-of-sale (POS) builder system. The system allows non-expert business operators to assemble and manage POS systems. NCR's product, NCR Silver, was accused of infringing these patents. NCR Silver is a web-based POS solution that requires merchants to use their own internet connection and POS hardware, although NCR occasionally provides the hardware.The United States District Court for the Western District of Texas found that NCR's merchants' use of the system could be attributed to NCR under principles of vicarious liability and denied NCR's motion for judgment as a matter of law (JMOL) of no direct infringement. The jury found NCR directly infringed the asserted claims, awarded CloudofChange $13.2 million in damages, and found NCR's infringement willful. NCR renewed its motion for JMOL, arguing that it did not use the claimed system as a matter of law, but the district court denied the motion.The United States Court of Appeals for the Federal Circuit reviewed the case and reversed the district court's denial of JMOL. The Federal Circuit held that it is NCR's merchants, not NCR, who use the claimed system by putting it into service and benefiting from it. The court also concluded that NCR is not vicariously liable for its merchants' use of the system, as NCR does not direct or control the merchants' actions in putting the system to use. Consequently, the Federal Circuit vacated the jury verdict and reversed the district court's decision. View "CLOUDOFCHANGE, LLC v. NCR CORPORATION " on Justia Law

In 2014, due to severe drought conditions, the United States Bureau of Reclamation (Reclamation) was unable to meet its water delivery obligations to both the Exchange Contractors and the Friant Contractors under the Central Valley Project (CVP). Reclamation prioritized delivering water to the Exchange Contractors, including water from the San Joaquin River, which resulted in a near-zero allocation to the Friant Contractors. The Friant Contractors and individual growers sued the United States, alleging breach of contract and takings without just compensation.The United States Court of Federal Claims dismissed the Friant Growers' breach of contract claims for lack of standing and dismissed the takings claims for lack of a property interest. The court granted summary judgment to the government on the Friant Contractors' breach of contract claims, concluding that the Exchange Contractors' rights under the Exchange Contract were superior and that Reclamation's actions were not arbitrary, capricious, or unreasonable.The United States Court of Appeals for the Federal Circuit reviewed the case and affirmed the lower court's decision. The court held that the Exchange Contract allowed Reclamation to deliver San Joaquin River water to the Exchange Contractors when necessary, and that the government did not breach the Friant Contract by doing so. The court also found that the government was immune from liability under the Friant Contract because its actions were not arbitrary, capricious, or unreasonable. Finally, the court affirmed the dismissal of the takings claims, concluding that the Friant Contractors and Growers did not have a property interest in the water delivered by Reclamation under California law. View "CITY OF FRESNO v. US " on Justia Law

The United States Department of the Navy issued a solicitation requesting technical support for its electromagnetic spectrum resources, requiring proposals to be submitted via email by a specified deadline. eSimplicity, Inc. submitted its proposal before the deadline, but it was not received by the Contracting Officer due to the email exceeding the maximum file size and being bounced back. The Navy deemed eSimplicity's proposal untimely and did not consider it.eSimplicity filed a pre-award bid protest with the United States Court of Federal Claims. The Claims Court ruled in favor of eSimplicity, concluding that the file size was an unstated evaluation criterion and that the government control exception could apply to electronically submitted proposals. The court remanded the case for the Navy to reconsider its decision or to take other actions consistent with the court's opinion. Subsequently, the Navy issued an amended solicitation and awarded the contract to eSimplicity.The United States Court of Appeals for the Federal Circuit reviewed the case. The court determined that the appeal was moot because the original solicitation had expired, and the contract had been awarded under a new solicitation. The court found that there was no longer a live controversy, as the issues presented on appeal concerned the now-expired solicitation. The court also rejected the government's argument that the case fell under the "capable of repetition yet evading review" exception to mootness, noting that the government had other opportunities to appeal similar issues in the past but chose not to do so. Consequently, the appeal was dismissed. View "ESIMPLICITY, INC. v. US " on Justia Law

Palo Alto Networks, Inc. (PAN) petitioned for inter partes review (IPR) of claims 1–18 of Centripetal Networks, LLC’s U.S. Patent No. 10,530,903, asserting that the claims were unpatentable for obviousness based on three prior-art references. The United States Patent and Trademark Office Patent Trial and Appeal Board (the Board) concluded that PAN had not established by a preponderance of the evidence that the claims would have been obvious over the relevant prior art combination.The Board found that PAN’s argument regarding the motivation to combine the references was not sufficiently articulated in the petition. Specifically, the Board determined that PAN had not provided sufficient evidence to show that a person of ordinary skill in the art would have been motivated to modify Paxton’s computing system to include Sutton’s step of transmitting a notification of malicious activity after Paxton’s correlation step. The Board concluded that PAN had not established that the claims would have been obvious.The United States Court of Appeals for the Federal Circuit reviewed the case and found that the Board erred by failing to clearly explain its holding or rationale regarding the motivation to combine and whether the proposed combination teaches the final limitation of claim 1. The court noted that the Board did not make a clear finding on whether a person of ordinary skill in the art would have been motivated to modify Paxton by adding Sutton’s step of transmitting a notification of malicious activity after Paxton’s correlation step. The court vacated the Board’s decision and remanded the case for further proceedings to clarify and explain its holding on the motivation to combine the references. View "PALO ALTO NETWORKS, INC. v. CENTRIPETAL NETWORKS, LLC " on Justia Law