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

The Patent Trial and Appeal Board conducted covered business method (CBM) review and found all of the claims of Bozeman’s patents, directed to methods for authorizing and clearing financial transactions to detect and prevent fraud, ineligible under 35 U.S.C. 101.1. Bozeman challenged the Board’s authority to decide the petitions, arguing that the Federal Reserve Banks are not “persons” under the America Invents Act (AIA).The Federal Circuit affirmed, holding that the Banks are “persons” who may petition for post-issuance review under the AIA. While the Supreme Court has held that federal agencies are not “persons” able to seek post-issuance review of a patent under the AIA, the Banks are distinct from the government for purposes of the AIA. They are operating members of the nation’s Federal Reserve System, which is a federal agency, but they are not government-owned and are operationally distinct from the federal government. The claims at issue are directed to the abstract idea of “collecting and analyzing information for financial transaction fraud or error detection” and do not contain an inventive concept sufficient to “transform the nature of the claims into patent-eligible applications of an abstract idea.” View "Bozeman Financial LLC v. Federal Reserve Bank" on Justia Law

Air Force officers who hold the grade of major must appear before a promotion board, 10 U.S.C. 611(a), 628(k); an officer who is twice passed over for promotion is typically discharged. An officer who would otherwise be discharged may remain in active service upon selection by a continuation board. Department of Defense Instruction (DoDI) 1320.08 provides that an officer “shall normally be selected for continuation if the officer will qualify for retirement . . . within 6 years… [except] in unusual circumstances.”In 2011, then-Major Engle, who had served in active duty for over 14 years, was passed over for promotion for the second time. A Selective Continuation Board met. Engle would have been within DoDI 1320.08’s protective window and had no disqualifying information in his record. The Secretary of the Air Force had, however, instructed Boards to decrease the protective threshold and reversed the presumption in favor of continuation.Engle was discharged. Months later, Engle was involuntarily called up from the reserves, deployed to Kyrgyzstan, and promoted to Lieutenant Colonel. Engle continues to serve, without the retirement benefits and additional active duty pay for which he would have qualified if he had been continued.The Federal Circuit reversed with respect to Engle’s claim, citing the Administrative Procedures Act. The Secretary does not have the discretion to rewrite the DoDI. While the military has wide decision-making discretion, it is not wide enough to justify the process employed here. The regulation is meant to protect individuals who have spent most of their lives in service to this country View "Baude v. United States" on Justia Law

In an earlier appeal from inter partes review, the Federal Circuit vacated-in-part the Patent Trial and Appeal Board’s decision denying Nike’s motion to amend and remanded for the Board to address errors underlying its conclusion that Nike’s proposed substitute claims 47–50 were unpatentable for obviousness. On remand, the Board denied Nike’s request to enter substitute claims 47–50 of its patent on the ground that those claims are unpatentable under 35 U.S.C. 103. Nike asserts that the Board violated the notice provisions of the Administrative Procedure Act by finding that a limitation of substitute claim 49 was well-known in the art based on a prior art reference that, while in the record, was never cited by Adidas for disclosing that limitation. Nike also challenged the Board’s finding that Nike’s evidence of long-felt but unmet need was insufficient to establish the nonobviousness of substitute claims 47–50. The Federal Circuit affirmed in part. Substantial evidence supports the finding that Nike failed to establish a long-felt need for substitute claims 47–50. The court vacated in part. No notice was provided for the Board’s theory of unpatentability for substitute claim 49. View "Nike, Inc. v. Adidas AG" on Justia Law

Nevro sued, alleging infringement of 18 claims across seven patents that are directed to high-frequency spinal cord stimulation therapy for inhibiting pain. Conventional spinal cord stimulation systems deliver electrical pulses to the spinal cord to generate sensations, such as tingling or paresthesia, that mask or otherwise alter the patient’s pain. The claimed invention purportedly improves conventional spinal cord stimulation therapy by using waveforms with high-frequency elements or components, which are intended to reduce or eliminate side effects. The district court issued a joint claim construction and summary judgment order, holding certain claims invalid as indefinite. As to the remaining six claims, found not indefinite, the court granted summary judgment of noninfringement.The Federal Circuit vacated and remanded. The district court erred in holding invalid as indefinite the “paresthesia-free” system and device terms and in holding indefinite the claims reciting the term “configured to.” The Federal Circuit construed “configured to” to mean “programmed to” and construed “means for generating” as a means-plus-function term, having a function of “generating” and a structure of “a signal/pulse generator configured to generate” the claimed signals. The district court erred in its claim construction but correctly determined that the term “therapy signal” does not render the claims indefinite; a “therapy signal” is “a spinal cord stimulation or modulation signal to treat pain.” View "Nevro Corp. v. Boston Scientific Corp." on Justia Law

Valeant’s patent claims stable methylnaltrexone pharmaceutical preparations; methylnaltrexone, a quaternary amine opioid antagonist derivative, can be useful for reducing the side effects of opioids but is unstable in aqueous solution. The inventors discovered that when the pH of a methylnaltrexone solution is adjusted, the percentage of total degradants drops significantly. The patent is listed in the Orange Book for Relistor®, an injectable drug used to treat constipation as a side effect of taking opioid medication. Mylan filed an Abbreviated New Drug Application seeking FDA approval to market a generic version of Relistor®. Mylan conceded that its ANDA product would infringe claim 8 of the patent.The district court entered the parties’ stipulation to the construction of claim 8’s stability limitation: the phrase “the preparation is stable to storage for 24 months at about room temperature” means “the methylnaltrexone degradation products in the preparation do not exceed 2.0% of the total methylnaltrexone present in the preparation and the preparation is suitable for pharmaceutical use when stored for 24 months at room temperature” and granted summary judgment that claim 8 would not have been obvious. The court rejected Mylan’s expert testimony and cited references and Mylan’s theory that the claimed pH range would have been obvious to try.The Federal Circuit reversed. Mylar raised at least a prima facie case of obviousness. The district court’s obvious-to-try analysis is inconsistent with precedent. View "Valeant Pharmaceuticals International, Inc. v. Mylan Pharmaceuticals Inc." on Justia Law

In 2011, Sistek was appointed as a director at the VA’s Chief Business Office Purchased Care. Sistek subsequently made several protected disclosures to the VA’s Office of the Inspector General (OIG) questioning various financial practices and perceived contractual anomalies. Sistek’s supervisor became aware of Sistek’s concerns. Sistek was subsequently subjected to an investigation. Sistek filed a complaint with the Office of Special Counsel (OSC) alleging whistleblower reprisal based on several personnel actions, including the letter of reprimand. Sistek later filed an individual right of action appeal with the Merit Systems Protection Board, alleging retaliation under the Whistleblower Protection Act. The Administrative Judge declined to order any corrective action, finding that a retaliatory investigation, in itself, does not qualify as a personnel action eligible for corrective action under the Act. The OIG subsequently confirmed that the concerns raised by Sistek were justified. Sistek retired from the VA in 2018.The Federal Circuit affirmed. The Act defines qualifying personnel actions at 5 U.S.C. 2302(a)(2)(A); retaliatory investigations, in and of themselves, do not qualify. The Act provides that a retaliatory investigation may provide a basis for additional corrective action if raised in conjunction with one or more of the qualifying personnel actions. View "Sistek v. Department of Veterans Affairs" on Justia Law

SF’s 329 patent is directed to an improved process for preparing high-molecular-weight polymers for use as super-absorbers in fields such as waste treatment and paper manufacturing. The district court entered summary judgment that certain claims were invalid as anticipated and that another was invalid as obvious. The court concluded that a process performed by a third party, Celanese’s “Sanwet® Process,” evidenced prior art knowledge and use of the patented invention under 35 U.S.C. 102(a), and constituted both a public-use bar and an on-sale bar to the patented invention under 35 U.S.C. 102(b).The Federal Circuit reversed. The district court misinterpreted section 102(a) and the public-use bar of section 102(b); under the proper legal standard, genuine issues of material fact precluded summary judgment. The “known or used” prong of 102(a) means “knowledge or use which is accessible to the public.” Members of the public had access to the plant, where they could view the shape of the conical taper; no evidence suggests that any of these guests was a skilled artisan. The parties dispute whether the remaining elements of the Sanwet® Process were known, and to the extent they were not, whether they were concealed from the public on these tours, in newspaper articles, and in the commemoration video. View "BASF Corp. v. SNF Holding Co." on Justia Law

Forney sells welding and machining products in packaging that displays its proposed mark. Forney applied for a trademark based on use in commerce under the Lanham Act, 15 U.S.C. 1051(a). Forney sought to register the mark without showing acquired distinctiveness, identifying its mark as a “color mark.” Forney stated: “[t]he mark consists of a solid black stripe at the top. Below the solid black stripe is the color yellow which fades into the color red. These colors are located on the packaging and or labels.” The examining attorney refused registration, finding the mark “not inherently distinctive” and stating that “[s]uch marks are registrable only ... with sufficient proof of acquired distinctiveness.” Forney revised the description: “The mark consists of the colors red into yellow with a black banner located near the top as applied to packaging for the goods. The dotted lines merely depict placement of the mark on the packing backer card.” The examining attorney again refused registration. The Trademark Trial and Appeal Board affirmed, treating the proposed mark as a color mark consisting of multiple colors applied to product packaging.The Federal Circuit vacated. The Board erred in finding that a color mark can never be inherently distinctive in the trade dress context and that, even if a color mark could be inherently distinctive, it cannot be absent a well-defined peripheral shape or border. View "In Re: Forney Industries, Inc." on Justia Law

The 968 patent is directed to replacement light-emitting diode (LED) light fixtures and seeks to minimize the need for customization by creating “low profile downlighting for retrofit applications” that accommodates various housing shapes and sizes. TCP petitioned for inter partes review of several claims. The Patent Trial and Appeal Board determined that TCP did not demonstrate by a preponderance of the evidence that claims 1–4, 6, 14, and 15 were anticipated by the “Chou” patent or that claims 3, 4, 7, 8, 11, 12, 16, 17, and 19–23 would have been obvious over Chou alone or in view of other prior art. The Board based its determinations exclusively on its finding that Chou does not disclose a single limitation (H/D limitation) in claims 1 and 20 of the 968 patent, the only independent claims at issue.The Federal Circuit vacated as to claims 2– 4, 6–8, 12, and 16. The Board’s determination that Chou does not disclose the H/D limitation in claim 1 of the 968 patent is not supported by substantial evidence. The Board’s conclusions regarding the H/D limitation resulted from an erroneous interpretation of the claim language and a misunderstanding of case law. The Board did not address any other arguments regarding the other limitations of claim 1 or of the rest of the challenged claims. View "Technical Consumer Products, Inc. v. Lighting Science Group Corp." on Justia Law

Keith sued its former employee, Butterfield, after he filed a patent application for what eventually issued as the 520 patent. The employer alleged that the patent was based on inventions made during Butterfield’s employment and sought declaratory judgments of noninfringement and invalidity; alleged breach of contract and misappropriation of trade secrets; and sought correction of inventorship. Butterfield later sent the employer a covenant not to sue and moved to dismiss in part, arguing that the covenant not to sue mooted the declaratory judgment claims and that the applicable statutes of limitation and the doctrine of laches barred the state-law claims. The court dismissed the declaratory judgment claims but allowed the state-law claims to proceed. The parties later filed a stipulation of dismissal with prejudice (Rule 41(a)(1)(A)(ii)), which required no court order.Days later, Butterfield moved for attorney’s fees under Fed. R. Civ. P. 54(d). In denying the motion, the court cited the 2017 Supreme Court decision, “Microsoft” and held that Rule 54 requires a judgment, “a decree and any order from which an appeal lies,” and that the parties’ stipulation to dismiss did not satisfy Rule 54’s judgment requirement because it was not an appealable order. The Federal Circuit vacated, holding that Microsoft did not apply. Judgment in the context of Rule 54 does not raise the same concerns about finality and piecemeal litigation that motivated the Microsoft opinion. View "Keith Manufacturing Co. v. Butterfield" on Justia Law