Luminara appeals from three inter partes review (“IPR”) decisions, in which the PTAB held unpatentable a total of 31 claims across Luminara’s three patents relating to making flameless candles that look and behave like real candles. On appeal, Luminara challenges the Board’s decisions as to one claim from each patent and asserts that the Board’s application of the 35 U.S.C. § 315(b) time-bar was improper as to the ’319 patent. The CAFC vacates the decision as to the ’319 patent and remands for dismissal of that IPR, holding that the section 315(b) time-bar applies when the underlying complaint alleging infringement has been voluntarily dismissed without prejudice, and affirms the other IPRs because substantial evidence supports the Board’s obviousness determinations.
Click-to-Call (“CTC”) contends that the PTAB erred in determining that an inter partes review (“IPR”) petition challenging claims of CTC’s patent relating to an anonymous telephone communication system was not time-barred under § 315(b). The CAFC concludes that the Board committed legal error in rendering its § 315(b) determination, and rejects the proposed, alternative grounds for affirmance. Because the subject petition was time-barred, the Board lacked jurisdiction to institute the IPR proceedings. Accordingly, the CAFC vacatesthe Board’s Final Written Decision and remands with instructions to dismiss. Judge Taranto issued a concurring opinion and Judges Dyk and Lourie dissent.
Power Integrations filed petitions for a writ of mandamus. The petitions challenge the decisions of the Patent Trial and Appeal Board denying the institution of inter partes review of claims from three patents relating to power conversion integrated circuits owned by Semiconductor Components Industries, LLC. The CAFC holds that mandamus does not lie in this case, both because PI has not shown a clear and indisputable right to issuance of the writ and because relief by way of mandamus would not be appropriate here and thus denies the petitions.
Core Wireless brought an action for infringement of U.S. Patent Nos. 6,477,151 and 6,633,536 and appeals the district court’s judgment with respect to one claim from each patent. Both patents concern technology for wireless communications in a digital network. Following trial, the jury found that the defendant, Apple Inc., infringed both asserted claims, and that neither claim was invalid. Following a concurrent bench trial, the district court rejected Apple’s argument that the ’151 patent was unenforceable due to implied waiver. The CAFC affirms in part, reverses in part, vacates in part, and remands.
BSG sued BuySeasons for infringement of several patents related to systems and methods for indexing information stored in wide access databases. BuySeasons sought dismissal of the suit based on its contention that none of the asserted patent claims were patent-eligible under 35 U.S.C. § 101. The district court ultimately agreed with BuySeasons and held all asserted claims invalid as ineligible under § 101. The CAFC agrees with the district court that the asserted claims are directed to the abstract idea of considering historical usage information while inputting data and lack an inventive concept, and thus, affirms.
This appeal derives from a multitude of patent infringement actions that plaintiffs-appellants Rembrandt filed in the mid-2000s against dozens of cable companies, cable equipment manufacturers, and broadcast networks. The cases were consolidated and after several years of litigation, the district court entered final judgment against Rembrandt as to all claims. Many of the defendants thereafter filed a motion requesting attorney fees under 35 U.S.C. § 285. Nearly four years after the litigation ended, the district court issued a brief order granting that motion and declaring the case exceptional. The court then granted the bulk of Appellees’ requests for fees, including nearly all of the attorney fees Appellees incurred in the litigation. In total, the court awarded Appellees more than $51 million in fees. Rembrandt appeals both the district court’s exceptional-case determination and its fee award. The CAFC concludes that the district court did not abuse its discretion in deeming this case exceptional, but that the court erred by failing to analyze fully the connection between the fees awarded and Rembrandt’s misconduct. The CAFC thus affirms the district court’s exceptional-case determination, vacates the district court’s fee award, andremands for further proceedings.
Lannett appeals from the District Court’s decision concluding that certain claims of U.S. Patent 6,760,237 and U.S. Patent 7,220,767 relating to formulations of zolmitriptan for intranasal administration were not shown to be invalid, entering judgment in favor of Impax, and entering an injunction against Lannett. Finding no clear error in the District Court’s obviousness conclusion (including secondary consideration analysis), the CAFC affirms.
Power Integrations sued Fairchild Semiconductor Corporation and Fairchild (Taiwan) Corporation (collectively “Fairchild”) for infringement of U.S. Patent Nos. 6,212,079 (“the ’079 patent”) and 6,538,908 (“the ’908 patent”) relating to switching regulators in power supply controller chips used in power supplies, such as chargers for electronic devices. A jury found Fairchild literally infringed claims of both the ’079 patent and the ’908 patent under the doctrine of equivalents. In a second trial, a jury awarded damages of roughly $140 million, finding that the entire market value rule applied in calculating damages for infringement of the ’079 patent. The district court denied Fairchild’s motions for judgment as a matter of law. Fairchild appeals. The CAFC affirms the district court’s judgments of infringement and vacates the damages award and remands for further proceedings, concluding that the entire market value rule cannot be used here to calculate damages.
Mylan petitioned for inter partes review of various patents owned by Allergan relating to its dry eye treatment Restasis. Teva Pharmaceuticals USA, Inc., and Akorn, Inc. (together with Mylan, “Appellees”) joined. While the IPR was pending, Allergan transferred title of the patents to the Saint Regis Mohawk Tribe, which asserted sovereign immunity. The Board denied the Tribe’s motion to terminate on the basis of sovereign immunity and Allergan’s motion to withdraw from the proceedings. Allergan and the Tribe appeal, arguing the Board improperly denied these motions. The CAFC affirms. Judge Dyk issued a concurring opinion.
The District Court determined that claims 15–18 of U.S. Patent No. 6,034,652 (relating to the operation of an “attention manager” that makes use of unused capacity of a display device, by displaying content in that unused capacity) fail to recite patent-eligible subject matter under 35 U.S.C. § 101. The CAFC affirms , concluding that the claims are directed to an abstract idea and that, considered as a whole, the claims fail under § 101’s abstract idea exception because they lack any arguable technical advance over conventional computer and network technology for performing the recited functions of acquiring and displaying information. Judge Plager concurs-in-part and dissents-in-part.
Texas Advanced Optoelectronic Solutions, Inc., (TAOS) and Intersil Corporation each develop and sell ambient light sensors, which are used in electronic devices to adjust screen brightness in response to incident light. In the summer of 2004, the parties confidentially shared technical and financial information during negotiations regarding a possible merger. The parties ultimately went their separate ways, but soon after, Intersil released new sensors with the technical design TAOS had disclosed in the confidential negotiations. TAOS then sued Intersil for patent infringement, as well as for trade secret misappropriation, breach of contract, and tortious interference with prospective business relations under Texas state law. A jury returned a verdict for TAOS and awarded damages on all four claims. The court ruled on the parties’ post-trial motions and entered final judgment, and both parties appealed. The CAFC affirms liability for trade secret misappropriation and liability for patent infringement for certain claims, reverses the verdict of infringement for other certain other claims, vacates the monetary awards, and remands.
Raytheon Company filed suit against Indigo Systems Corporation and FLIR Systems (collectively, Indigo) for trade secret misappropriation and patent infringement. The patent infringement claims were settled by the parties and dismissed. After a three week trial, a jury found that Indigo did not misappropriate Raytheon’s trade secrets relating to the production of infrared cameras. The district court then entered final judgment in favor of Indigo. Raytheon appeals from the district court’s denial of its motion for judgment as a matter of law and motion for new trial regarding two of the alleged trade secrets. Indigo cross-appeals from the district court’s decision denying its motion for attorney fees. The CAFC affirms the judgment of no liability in favor of Indigo and the district court’s denial of attorney fees.
TF3 Limited appeals the decision of the PTAB in an inter partes review of U.S. Patent No. 8,651,118 that relates to a “hair styling device” that automates the curling of hair. Tre Milano challenged the validity of claims 1–5 and 11, and did not challenge the validity of claims 6–10 and 12–15 of the ’118 Patent. The PTAB instituted review of all of the claims that were challenged. The CAFC concludes that the Board erred in its finding of anticipation by erroneously construing, thereby broadening the claims beyond the description in the ’118 Patent specification. On the correct claim construction, the CAFC found that the claims are not anticipated and conclusion of invalidity on the ground of anticipation was reversed.
Jazz Pharmaceuticals, Inc. appeals from six IPR decisions of the PTAB. Collectively, the decisions held certain claims of Jazz’s Patents relating to a drug distribution system for tracking prescriptions of a “sensitive drug” (e.g., Xyrem®) invalid as obvious. Finding that background material, meeting minutes, transcript, and slides from the FDA advisory committee meeting during the regulatory review process for Xyrem® were publicly accessible to persons of ordinary skill exercising reasonable diligence before the critical date of the patents, the CAFC concludes that the PTAB did not err in its conclusions of obviousness and affirms.
Blackbird Tech LLC appeals the District Court’s entry of judgment of noninfringement of claim 12 of U.S. Patent No. 7,086,747 relating to energy efficient lighting apparatuses based on its construction of “attachment surface.” Because the court erred in construing “attachment surface,” the CAFC vacates and remands. Judge Reyna dissents.
Endo Pharmaceuticals Solutions, Inc. holds the approved New Drug Application for Aveed®, a testosterone undecanoate intramuscular injection. Bayer owns the two patents listed in the Orange Book for Aveed®. Custopharm Inc.’s predecessor-in-interest, Paddock Laboratories, LLC, submitted an ANDA for approval to produce and market a generic version of Aveed®. In connection with the ANDA filing, Custopharm made a Paragraph IV certification and gave notice of the certification to Endo and Bayer. Endo and Bayer brought an action alleging infringement of the patents. During the proceedings, Custopharm stipulated to infringement, and Endo and Bayer limited their assertions to certain claims. After a trial on invalidity, the district court concluded that Custopharm had not proven that the claims were invalid under 35 U.S.C. § 103. Custopharm appealed. The CAFC finds, inter alia, that the district court did not err in rejecting Custopharm’s “overdose theory,” did not err in finding that Custopharm did not show the formulation was inherent in certain prior art, and properly found that Custopharm failed to show that a skilled artisan would combine the lowered dose with the injection schedule in the manner claimed. In summary, the CAFC found no reversible errors in the district court’s conclusion and accordingly, affirms.
Campbell Company appeals from the District Court’s final judgment entering judgment in favor of Polara Engineering Inc. on its claim for infringement of U.S. Patent 7,145,476 (relating to a two-wire control system for push-button crosswalk stations for a traffic-light controlled intersection with visual, audible, and tactile accessible signals), and its decision, following a jury trial, denying Campbell’s post-trial motions for judgment as a matter of law of invalidity and no, and granting Polara’s motion to enhance the damages award. The CAFC affirms the district court’s denial of judgment as a matter of law of invalidity (experimental use negates application of the public use bar and prior art did not teach or suggest the “digital data signals” limitation) and no willful infringement willfulness (Campbell offered little, if any, support for the contention that it acted in good faith or had a reasonable basis to believe that the asserted claims are invalid or would not be infringed), vacates the award of enhanced damages, and remands.
When the Patent Office’s Patent Trial and Appeal Board (“Board”) affirms an examiner’s rejection of a patent application, § 145 of the Patent Act permits the disappointed applicant to challenge the Board’s decision in district court. Applicants who invoke § 145 are required by statute to pay “[a]ll the expenses of the proceedings” incurred by the Patent Office in defending the Board’s decision, regardless of the outcome. Historically, the agency relied on this provision to recover sums it spent on travel and printing and, more recently, expert witnesses. Now, 170 years after Congress introduced § 145’s predecessor, the agency argues that § 145 also compels applicants to pay its attorneys’ fees. The CAFC holds that it does not, for the American Rule prohibits courts from shifting attorneys’ fees from one party to another absent a “specific and explicit” directive from Congress. The phrase “[a]ll the expenses of the proceedings” falls short of this stringent standard. Accordingly, the CAFC affirms the district court’s judgment in this en banc decision. Chi ef Judge Prost, dissents, with Judges Dyk, Reyna, and Hughes joining.
Boston University (“BU”) sued Everlight Electronics Co. and others for infringing BU’s U.S. Patent No. 5,686,738 relating to the preparation of monocrystalline GaN films via molecular beam epitaxy. A jury found that Defendants infringed the ’738 patent and failed to prove the patent’s invalidity. Defendants then renewed their motion for judgment as a matter of law that the ’738 patent is invalid for not meeting the enablement requirement of 35 U.S.C. § 112. The district court denied Defendants’ motion, and Defendants appeal that denial. BU cross-appeals on other issues. The CAFC reverses because the asserted claim of the ’738 patent is not enabled as a matter of law and dismisses BU’s cross-appeal as moot.
Appellant ZUP, LLC appeals the District Court’s decision granting summary judgment in favor of Appellee Nash Manufacturing, Inc. The district court invalidated claims 1 and 9 of U.S. Patent No. 8,292,681 relating to a water recreational board and a method of riding such a board as obvious and, in the alternative, held that Nash does not infringe claim 9. The CAFC affirms the district court’s holding that claims 1 and 9 are invalid as obvious and does not reach the infringement question. Judge Newman dissents.
GoPro, Inc. appeals from final written decisions of the Patent Trial and Appeal Board in two inter partes reviewproceedings. In the proceedings, the Board found that the petitioner, GoPro, did not demonstrate that the challenged claims are unpatentable as obvious. The Boardbased this decision on its finding that a certain GoPro catalog is not a prior art printed publication. The CAFC disagrees, vacates and remands.
Advantek owns design patent No. D715,006 for a portable animal kennel. Advantek sued its former manufacturer, Shanghai Walk-Long Tools Co. and others for patent infringement, breach of contract, and aiding and abetting breach of fiduciary duty. The district court granted Walk-Long’s motion for judgment on the pleadings, holding that prosecution history estoppel bars Advantek from enforcing the D’006 patent. The CAFC concludes that prosecution history estoppel does not preclude enforcement of the patent and reverses and remands, finding that regardless of whether Advantek surrendered claim scope during prosecution, the accused product falls outside the scope of the purported surrender, contrary to the district court’s conclusion.
InvestPic’s U.S. Patent No. 6,349,291 relates to systems and methods for performing certain statistical analyses of investment information. The CAFC previously construed key claim terms and partly reversed and partly vacated the PTAB’s cancellations of various claims in two reexamination proceedings involving issues of anticipation and obviousness. In this appeal, SAP America alleges, among other things, that the claims of the ’291 patent are invalid because their subject matter is ineligible for patenting under 35 U.S.C. § 101. When SAP moved for a judgment on the pleadings on that ground, the district court granted the motion, holding all claims ineligible under § 101 and hence invalid. The CAFC affirms, noting that no matter how much of an advance in the finance field, the subject matter of the claims is nothing but a series of mathematical calculations based on selected information and the presentation of the results of those calculations (in the plot of a probability distribution function).
GKN Automotive owns U.S. Patent No. 8,215,440 relating to a drivetrain for a four-wheel drive vehicle that is made up of primary and secondary drivetrains. In inter partes review, the PTAB found claims 2 and 3 of the ’440 patent not unpatentable. JTEKT, the petitioner in the IPR, appealed. Because JTEKT has not established at this stage of the development that its product creates a concrete and substantial risk of infringement or will likely lead to claims of infringement, the CAFC concludes that JTEKT lacks standing to appeal, and dismisses the appeal.
Appellant Worlds Inc. appeals the final decisions of the PTAB invalidating three patents (generally relating to the computer-generated display of avatars in a virtual world) in three inter partesreviews (“IPRs”). Because Worlds presented evidence sufficient to put Bungie’s identification of itself as the sole real party in interest into dispute, the Board could no longer merely rely upon Bungie’s initial identification of the real parties in interest. Thus, the CAFC finds that the Board erred in its real-party-in-interest analysis, and vacates the Board’s decisions and remands.
Intellectual Ventures appeals from a grant of summary judgment by the District Court that T-Mobile and the other defendants have not infringed U.S. Patent No. 6,640,248 relating to an application-aware resource allocator that allocates bandwidth resources to transmit information from software applications over a packet-switched network. The CAFC holds that the district court’s grant of summary judgment resulted from an erroneous claim construction, and vacates and remands. The CAFC also affirms the district court’s determination regarding indefiniteness.
