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

CSIRO, a research arm of the Australian government, owns six U.S. patents, concerning the engineering of plants, particularly canola, to produce specified oils not native to the plants. After the resolution of jurisdiction and venue issues in an infringement case against BASF and Cargill, the case proceeded to trial on eight claims of the six patents. The parties stipulated to infringement of five patents; the jury found infringement of the sixth. The jury rejected invalidity challenges, including the challenge that the asserted patent claims lacked adequate written-description support. The jury found that BASF co-owned one patent (precluding infringement of that patent) but not the others. The district court ruled that the evidence would not support a finding of willfulness, denied a conduct-stopping injunction, and granted an ongoing royalty on all five patents found infringed.The Federal Circuit affirmed that Eastern District of Virginia venue was proper and affirmed the verdict rejecting the written-description challenge to the claims that are limited to canola plants but reversed as to the broader genus claims. The court agreed that five patents were not co-owned by BASF but reversed the contrary verdict as to the sixth, so that infringement of all valid claims of the six patents is now settled. The court upheld the district court’s refusal to submit willfulness to the jury and its decision on an evidentiary issue concerning past damages but remanded for reconsideration of the remedy. View "BASF Plant Science, LP v. Commonwealth Scientific and Industrial Research Organisation" on Justia Law

Almirall’s patent relates to methods of treating acne or rosacea with dapsone formulations that include an acrylamide/sodium acryloyldimethyl taurate copolymer (A/SA) thickening agent and the solvent diethylene glycol monoethyl ether (DGME), which allows compositions to be prepared with increased solubilized concentrations of dapsone. A polymeric viscosity builder such as an A/SA, can minimize the yellowing of the composition and can reduce the particle size, and minimize a gritty feel upon application. The Almirral patent includes 62 generalized composition embodiments and eight specific example formulations.On inter partes review, the Patent Trial and Appeal Board agreed that claims 1–8 would have been obvious over prior art at the time the alleged invention was made. The Federal Circuit affirmed. The Board’s decision sets forth factual findings of similarity between carbomers and A/SA agents that support its conclusion that prior art discloses a range for each component of the composition that either fully encompasses or overlaps/abuts the ranges and amounts for those components recited in the challenged claims, sufficient to create a presumption of obviousness. The court upheld the Board’s analysis of whether a skilled artisan would have had a reasonable expectation of success in combining prior art teachings to achieve the claimed invention. View "Almirall, LLC v. Amneal Pharmaceuticals, LLC" on Justia Law

The Department of Commerce initiated an administrative review of the antidumping order on oil country tubular goods from the Republic of Korea. Commerce generally compares the price at which the subject merchandise is sold in the U.S. to the “normal value,” the price of like products in the exporting country or a third country, Commerce found no“viable home market or third-country market” and calculated normal value using constructed value, 19 U.S.C. 1677b(a)(4), based on the costs of producing and selling the merchandise, allowing for profits. Commerce found five circumstances that created a “particular market situation” affecting inputs. The Court of International Trade “direct[ed] Commerce to reverse its finding of a particular market situation.”The Federal Circuit affirmed in part. Three of the five circumstances Commerce used to show a particular market situation are not supported by substantial evidence but the Trade Court lacks authority to reverse Commerce. The court vacated the opinion to the extent that it directed Commerce to reach a certain outcome. Comparing normal value to export price, Commerce relied on its “differential pricing analysis” methodology. The Federal Circuit has previously vacated aspects of Commerce’s differential pricing analysis over concerns about Commerce’s use of statistical methodologies when certain preconditions for their use are not met. Because Commerce’s analysis here raises identical concerns, the Federal Circuit vacated the Trade Court’s decision upholding the methodology. View "NEXTEEL Co., Ltd. v. United States" on Justia Law

Cirrus petitioned for inter partes review of a patent that describes ballistic parachute systems that use a rocket to deploy a parachute, slowing the fall of a crashing aircraft. The Patent Trial and Appeal Board determined that the challenged claims are unpatentable as obvious over a combination of Cirrus Design’s Pilot Operation Handbook (POH) and the James patent. The POH describes the operation of a ballistic parachute system installed on the Cirrus SR22 airplane. The James patent, titled “Semiautonomous Flight Director,” describes a “device for programming industry-standard autopilots” to allow “for the safe operation of any aircraft by an unskilled pilot. The Board determined that proposed amended claims lacked written description.The Federal Circuit affirmed. The determination that the ordinarily skilled artisan would program James’s autonomous system to perform the claimed flight maneuvers suggested by POH is the result of a faithful application of precedent on obviousness, including a directive to consider the creativity of the ordinarily skilled artisan. That the prior art cautioned pilots not to use autopilot in some emergency situations on some aircraft does not mean that the skilled artisan would have been dissuaded from doing so in all emergency situations on all aircraft. Substantial evidence supports the finding of lack of written description. View "Fleming v. Cirrus Design Corp." on Justia Law

Stratos filed patent infringement complaints in the Western District of Texas against Volkswagen and Hyundai, car distributors that are incorporated in New Jersey and California, respectively, and hence do not “reside” for venue purposes in the Western District, 28 U.S.C. 1400(b); The defendants moved to dismiss or transfer the cases under 28 U.S.C. 1406(a). The district court denied the motions, concluding that venue in the Western District was proper. The court cited independent car dealerships located in the Western District that sell and service cars after purchasing them from the defendants under franchise agreements that impose transfer restrictions, staffing and reporting requirements, minimum inventory levels, employee training, and equipment requirements. The district court concluded those agreements gave the defendants sufficient control over the dealerships to establish a regular and established place of business for the defendants, although Texas law prohibits auto manufacturers and distributors from directly or indirectly “operat[ing] or control[ling] a franchised dealer or dealership.” The court noted, “the only way that [Volkswagen and Hyundai] can distribute [their] vehicles to consumers in this District is through [their] authorized dealerships.” The Federal Circuit disagreed, noting disagreement on the issue among the district courts. The district court clearly abused its discretion in failing to properly apply established agency law and reaching a patently erroneous result. View "In Re: Volkswagen Group of America, Inc." on Justia Law

MPH’s challenged patents share a written description and purport to improve secure messaging between arbitrary hosts (e.g., messaging across local area networks (LANs), private and public wide area networks (WANs), or the internet) utilizing Internet Protocol (IP) security protocols. MPH asserted claims of the challenged patents against Apple, which petitioned for inter partes review of each claim of the three patents.The Board held that Apple failed to show that several dependent claims of each patent would have been obvious in view of a combination of prior art. The Federal Circuit affirmed. The court upheld the constructions of “intermediate computer configured to receive from a mobile computer a secure message sent to the first network address” as requiring the mobile computer to send the message to the first network address and of “information fields” as requiring “two or more fields.” Substantial evidence supported the Board’s finding with respect to motivation to modify the combination of prior art to use more than one field; Apple failed to show a motivation to modify the prior art combination to include substitution. View "Apple Inc. v. MPH Technologies Oy" on Justia Law

Broadcom’s 583 patent is directed to reducing power consumption in computer systems by “gating” clock signals with circuit elements to turn the signals ON and OFF for downstream parts of the circuit; its 752 patent is directed to a memory access unit that improves upon conventional methods of requesting data located at different addresses within shared memory. Broadcom alleged violations of 19 U.S.C. 1337 based on Renesas's importation of products that allegedly infringe those patents.An ALJ held that Broadcom failed to demonstrate a violation with respect to the 583 patent, citing the technical prong of the domestic industry requirement; Broadcom failed to identify an actual domestic industry article that practices claim 25. For the 752 patent, the ALJ held that claim 5 would have been unpatentable as obvious. The International Trade Commission affirmed. In inter partes review, the Patent Trial and Appeal Board held that claims 25 and 26 of the 583 patent and claims 1, 2, 5, 7, and 8 of the 752 patent would have been obvious over prior art but that Renesas failed to demonstrate that other claims of the 583 patent would have been obvious.With respect to the 583 patent, the Federal Circuit affirmed the Board’s holding and affirmed the holding that there was no domestic industry. With respect to the 752 patent, the court affirmed the entirety of the Board’s holding. View "Broadcom Corp. v. International Trade Commission" on Justia Law

In 2002-2004, Mohamad was an Atek shareholder with no direct role in its operations. Mohamad timely 2002 and 2003 tax returns, paying the taxes due on shareholder income of $85,010 and $77,813 respectively. In 2007, Mohamad sought a refund for overpaid taxes, claiming he did not receive the full amount of reported shareholder income on which he paid taxes but received only $20,000 before Atek was shut down. He filed amended tax returns deducting the unpaid income as bad debt. The IRS maintains that it never received an amended tax return for 2003 and, consequently, there is no record of the IRS disallowing the 2003 refund claim. In 2018, the Federal Circuit affirmed the dismissal of the 2002 and 2004 refund claims but vacated the dismissal of the 2003 claim and remanded to the Claims Court the questions: whether Mohamad filed a timely 2003 claim, and, if so, whether it was timely, and whether the IRS disallowed that claim.The Federal Circuit affirmed the Claims Court’s holding that IRC 7502, as interpreted by Treasury Regulation 301.7502–1(e)(2)(i), displaced the common-law mailbox rule for determining IRS filing dates and, alternatively, that dismissal was appropriate for failure to show that the tax refund claim was filed within the three-year limitations period, IRC 6511. The issue was not “business debt” so Mohamad was not entitled to a seven-year limitations period. View "Taha v. United States" on Justia Law

The government solicited bids for the provision of food and dining room operation services at the Fort Knox U.S. Army base and awarded the contract to the Kentucky Office of Vocational Rehabilitation (KOVR). Mitchco, previously KOVR’s subcontractor and its predecessor under a 2015 contract award, challenged the award. The contract was designated as set aside for small businesses and was subject to the Randolph-Sheppard Act (RSA), which provides that “[i]n authorizing the operation of vending facilities on Federal property, priority shall be given to blind persons licensed by a State agency [SLA],” 20 U.S.C. 107(b).Mitchco argued that KOVR was not a “small business concern,” and therefore was not eligible to receive the award. The Small Business Administration determined that KOVR was “other than a small business concern for the applicable size standard” Mitchco filed two unsuccessful protests with the Government Accountability Office, alleging that the agency improperly evaluated KOVR’s proposal and that KOVR violated the Procurement Integrity Act (PIA).After determining that the case was not moot, the Federal Circuit affirmed summary judgment in favor of the government. Mitchco was aware of the SLA priority notwithstanding the small business set-aside and did not protest the terms of the solicitation prior to bid submission and cannot challenge its applicability now. Nothing in the RSA requires a blind person at each facility. Mitchco did not establish a PIA violation. View "Mitchco International, Inc. v. United States" on Justia Law

In 2015, the Federal Circuit affirmed summary judgment invalidating BriarTek’s patent claims, which BriarTek had asserted against DBN in a parallel investigation by the International Trade Commission (ITC). The court upheld the ITC’s imposition of a $6,242,500 civil penalty for DBN’s violation of a consent order, in which it agreed not to import or sell in the U.S. any two-way global satellite communication devices that infringe those claims. The court stated that the invalidation of the asserted claims did not negate DBN’s pre-invalidation violations of the consent order.DBN petitioned the ITC to rescind or modify the civil penalty order. Following a remand, the ITC again denied DBN’s petition. The ITC reassessed the relevant factors for determining civil penalties and concluded that the invalidation of the asserted claims did not change its original assessment, citing: the good or bad faith of the respondent, the injury to the complainant, respondent’s ability to pay, the extent to which respondent has benefited from its violations, the need to vindicate the ITC’s authority; and the public interest. The ITC again noted that the consent order expressly accounted for the subsequent invalidation of the patent claims. The Federal Circuit affirmed the determination as supported by substantial evidence. View "DBN Holding, Inc. v. International Trade Commission" on Justia Law