Justia Civil Procedure Opinion Summaries

The 109 patent, entitled “Gelatinous Elastomer Compositions and Articles,” is directed to composite articles of a thermoplastic gel and a substrate, such as foam or fabric, used as a protective liner between an amputated limb and a prosthetic limb. According to the patent, prosthetic liners that incorporate the claimed composite articles are comfortable and skin-friendly, and more durable than previous liners. Alps licensed several AEI patents, including the 109 patent. Shortly thereafter, Alps, without naming AEI as a co-plaintiff, filed a patent infringement suit against OWW. Alps declined to join as co-plaintiff. OWW moved to dismiss for lack of standing. Alps and AEI executed an amended license agreement 16 months after Alps commenced the action, listing the effective date of the original agreement. The court denied the motion, finding that the terms of the original agreement was sufficed to provide Alps with standing and that, under the nunc pro tunc amended agreement, Alps “clearly possesses the substantial rights to proceed without [AEI].” A jury found the patent valid and infringed. The Federal Circuit reversed the denial of OWW’s motion to dismiss and vacated the judgment. Alps possessed neither legal title nor all substantial rights at the outset of the litigation, and was required to join AEI, as a co-plaintiff. View "Alps South, LLC v. Ohio Willow Wood Co." on Justia Law

Beginning in 1983, interferences were declared between Fiers and Sugano generally relating to claims to DNA sequences that encode the precursor and/or mature forms of human fibroblast interferon proteins, which promote viral resistance in human tissue, and in the case of the most recent interference, to claims for the proteins themselves. All of Fiers’ applications claimed priority to a United Kingdom Patent Application filed in April 1980, while Sugano’s applications and patents claimed priority to a Japanese Patent Application, filed in March 1980. In the first and second interferences, the Board of Patent Appeals and Interferences awarded priority to Sugano. In 2013, in response to a third interference the Board declared that Fiers was estopped from proceeding, given that Fiers lost the prior interferences and the subject matter was the same as in the prior interferences. The district court held that it lacked subject matter jurisdiction because the Leahy-Smith America Invents Act, 125 Stat. 284, eliminated district court jurisdiction under 35 U.S.C. 146 with respect to interferences commenced after September 15, 2012. The district court transferred the case to the Federal Circuit, which concluded that the district court correctly decided that it lacked jurisdiction and that the Board’s decision was not erroneous. View "Biogen Ma, Inc. v. Japanese Found. for Cancer Research" on Justia Law

Oplus filed a patent infringement suit in Illinois that was transferred to California. Oplus moved the Judicial Panel on Multidistrict Litigation to transfer the case back and consolidate it with other cases. The Panel denied the motion. Ultimately, the district court granted summary judgment of noninfringement. Defendant sought attorneys’ and expert witness fees under 35 U.S.C. 285 and 28 U.S.C. 1927. The court made numerous findings regarding misconduct, found the case exceptional under section 285, and held that Oplus and its counsel were vexatious litigants. The court nonetheless denied the request, stating that “[a]though Oplus’s behavior has been inappropriate, unprofessional, and vexatious, an award of attorney fees must take the particular misconduct into account,” the “case has been fraught with delays and avoidance tactics to some degree on both sides,” and “[t]here is little reason to believe that significantly more attorney fees or expert fees have been incurred than would have been in the absence of Oplus’s vexatious behavior.” Concerning section 1927, the court stated that “there is no evidence suggesting that Oplus’s behavior stemmed from bad faith or a sufficient intent to harass,” although there was “ample evidence of Oplus’s litigation misconduct.” The Federal Circuit vacated, finding the denial an abuse of discretion. View "Oplus Techs., Ltd. v. Vizio, Inc." on Justia Law

AMS sued Crane for infringement of four patents. In 2011, Crane requested an inter partes reexamination of each patent under 35 U.S.C. 311–318. Finding that Crane raised substantial new questions of patentability, the PTO initiated four inter partes reexaminations. While they were underway, AMS and Crane settled their suit. The court issued a consent judgment stating that “[t]he parties stipulate that [the patents] are valid,” that “[a]ll claims . . . are dismissed with prejudice,” and that “[t]his judgment is final.” AMS argued that the reexaminations must stop because, under 35 U.S.C. 317(b), the judgment was a “final decision . . . entered against a party in a civil action . . . that the party has not sustained its burden of proving the invalidity of any patent claim in suit.” The PTO denied AMS’s petition. The district court reasoned that the consent judgment, though final, was not a decision that Crane failed to prove invalidity of the patents, but only that the parties stipulated to validity. The Federal Circuit affirmed, holding that the PTO’s refusal to terminate pending reexaminations is not subject to judicial review because it is not a “final agency action” under the APA, 5 U.S.C. 704. View "Automated Merch. Sys., Inc. v. Lee" on Justia Law

IV alleged infringement of five patents. A year later, JPMC moved to stay the case pending the result of four covered business method reviews (CBMR) JPMC planned to file with respect to the patents. JPMC filed CBMR petitions for two patents, but never filed the other two promised petitions. Before the Patent Trial and Appeal Board acted on the petitions, the district court denied JPMC’s motion to stay, applying the four-factor test from the America Invents Act, 125 Stat. 284, 329–31. The court stated that, because there are multiple patents and claims in suit, it would be inappropriate to stay the entire litigation while waiting to see if the PTAB would initiate review of only two; that the litigation would likely be resolved more quickly than any extended CBM review; that it was largely speculative to argue that the PTAB’s resolutions of the CBMR petitions would reduce the court’s workload; and that any reduction was offset by IV’s right to a speedy trial. The Federal Circuit dismissed for lack of jurisdiction to consider an interlocutory appeal from a decision on a motion to stay until the PTAB institutes a CBMR proceeding. View "Intellectual Ventures II LLC v. JPMorgan Chase & Co." on Justia Law

Exela petitioned the Patent and Trademark Office to “reconsider and withdraw” its revival of the national stage application and to cancel the 218 patent, assigned to SCR Pharmatop. The PTO declined to consider Exela’s petition, stating that no law or regulation authorizes non-party challenge to a PTO ruling to accept a tardy filing. Exela then brought suit under the Administrative Procedure Act, arguing that the PTO’s action was ultra vires and that Exela’s petition should have been considered and favorably decided. The district court, on reconsideration and in view of new Fourth Circuit precedent, dismissed Exela’s complaint for failing to meet the statute of limitations for claims filed against the United States, including APA claims. The Federal Circuit affirmed the dismissal, on the ground that PTO revival rulings are not subject to third party collateral challenge, thereby precluding review regardless of whether Exela’s claims were time-barred. View "Exela Pharma Sciences, LLC v. Lee" on Justia Law

TWM filed a patent infringement suit against AT&T. A jury awarded damages. The district court entered judgment consistent with the verdict and denied all of AT&T’s post-trial motions. AT&T failed to file timely notice of appeal. The Federal Circuit held that the district court did not abuse its discretion or clearly err in refusing to extend or reopen the appeal period. With respect to F.R. App. P. 4(a)(5), the court found that the AT&T had failed to show good cause or excusable neglect for its failure to read the underlying orders and check the docket for more than a month after the court issued the final orders. Refusing to reopen the appeal period under Rule 4(a)(6), where a party actually received a final judgment, but failed to monitor the electronic docket for a compliant entry of the judgment, the court stated: “In this era of electronic filing … we find no abuse of discretion in a district court’s decision to impose an obligation to monitor an electronic docket for entry of an order which a party and its counsel already have in their possession and know that the clerk at least attempted to enter.” View "Two-Way Media, LLC v. AT&T, Inc." on Justia Law

United owns three patents that recite systems for using a landline telephone connection for both voice communication and data transmission. They are directed to the use of exchanges that combine the voice and data components of the signal for transmission over the telephone line, and filters that separate those components so that they can be received as separate voice and data signals by a user. In 2002, United’s predecessor sued EarthLink, charging direct infringement because EarthLink offered its customers an Internet connection service based on a broadband digital communications technology, Asymmetrical Digital Subscriber Line (ADSL). EarthLink argued that the accused ADSL system did not include a “telephone device” as required by all asserted claims. The jury returned a general verdict of non-infringement. The Federal Circuit affirmed without opinion. In 2011, United sued CenturyTel and Qwest for infringing the same claims of the three patents. The district court dismissed on collateral estoppel grounds, noting that United did not articulate how the defendants’ systems were different from the systems that were the subjects of the Earthlink trial other than that the defendants’ services included telephone devices. The Federal Circuit reversed, reasoning that the earlier verdict could have been based on several grounds. View "United Access Techs., LLC v. CenturyTel Broadband Servs., LLC" on Justia Law

Teva’s patent covers a multiple sclerosis drug. When Sandoz tried to market a generic version of the drug, Teva sued for infringement. Sandoz countered that the patent was invalid because a claim that the active ingredient had “a molecular weight of 5 to 9 kilodaltons” was indefinite under 35 U. S. C. 112, for not stating which of three methods was used to determine that weight. The district court upheld the patent. Reversing, the Federal Circuit reviewed all aspects of claim construction de novo, including the determination of subsidiary facts. The Supreme Court vacated. When reviewing a district court’s resolution of subsidiary factual matters made during construction of a patent claim, the Federal Circuit must apply a “clear error,” not a de novo, standard of review. FRCP 52(a)(6) states: a court of appeals must not set aside “[f]indings of fact” unless they are “clearly erroneous.” Clear error review is particularly important in patent cases because a district judge has more opportunity to gain “familiarity with specific scientific problems and principles” than an appeals judge who must read a written transcript. When reviewing only evidence intrinsic to the patent, the judge’s determination is a determination of law, and the court of appeals will review that construction de novo; where the court needs to consult disputed extrinsic evidence to understand, for example, background science, courts need to make subsidiary factual findings about the extrinsic evidence. The ultimate construction of the claim is a legal conclusion subject to de novo review, but to overturn resolution of an underlying factual dispute, the appellate court must find that the judge, in respect to those findings, committed clear error. Here, the district court made a factual finding, crediting Teva’s expert’s account about how a skilled artisan would understand molecular weights. When the Federal Circuit reviewed the decision, it failed to accept that explanation without finding that the determination was “clearly erroneous.” View "Teva Pharma. USA, Inc. v. Sandoz, Inc." on Justia Law

In 2005, NeuroRepair retained Nath Law Group for prosecution of patent applications. NeuroRepair became dissatisfied and requested that Nath transfer its files to another law firm to continue prosecution before the USPTO. Nath withdrew from representation of NeuroRepair before the USPTO, but continued to assist NeuroRepair with other matters. NeuroRepair filed suit in 2009, alleging professional negligence, breach of fiduciary duty, breach of written contract, breach of oral contract, breach of implied covenant of good faith and fair dealing, negligent misrepresentation, and false promise. Nath removed the case to federal court on the ground that it was “a civil action relating to patents.” After judgment in Nath’s favor in 2012, NeuroRepair appealed, challenging the court’s subject matter jurisdiction in light of the Supreme Court’s 2013 pronouncement in Gunn v. Minto. The Federal Circuit vacated, with instructions to remand to California state court; no federal issue is necessarily raised, because any federal issues raised are not substantial in the relevant sense. Federal court resolution of malpractice claims that do not raise substantial issues of federal law would usurp the important role of state courts in regulating the practice of law within their boundaries, disrupting the federal-state balance approved by Congress. View "NeoroRepair, Inc. v. Nath Law Grp." on Justia Law