Justia Civil Procedure Opinion Summaries

Stauffer, pro se, filed a qui tam action against Brooks Brothers under the then-version of the false-marking statute, 35 U.S.C. 292, claiming that Brooks Brothers marked its bow ties with expired patent numbers. In 2011, while the action was pending, the President signed into law the America Invents Act, 125 Stat. 284A, which eliminated the false-marking statute’s qui tam provision, so that only a “person who has suffered a competitive injury” may bring a claim. The AIA also expressly states that marking a product with an expired patent is not a false-marking violation and that the amendments apply to all pending cases. Stauffer argued that the AIA amendments were unconstitutional because they amounted to a pardon by Congress, violating the doctrine of separation of powers, and also violated the common-law principle that prohibits use of a pardon to vitiate a qui tam action once the action has commenced. The district court dismissed for lack of standing. The Federal Circuit affirmed, finding that the amendments did not constitute a pardon and that even if the law had not changed, Stauffer might have lost his lawsuit, and, therefore, could not have acquired a private-property interest in his share of the statutory penalty. View "Stauffer v. Brooks Brothers, Inc." on Justia Law

VA alleged infringement of the 413 patent. One defendant, Salesforce, filed a petition with the Patent Trial and Appeal Board (PTAB) for post-grant review of all claims of that patent under the Covered Business Method Patents (CBM) program, of the America Invents Act, 125 Stat. 284. Salesforce argued that it had standing to bring the petition because it was sued for infringement and that the PTAB should institute CBM review because all the patent claims were more likely than not patent-ineligible under 35 U.S.C. 101 and invalid under 35 U.S.C. 102, 103 in view of prior art references. Defendants moved to stay district court proceedings. In August 2013, while the motion was pending, the court issued a discovery order and held a scheduling conference, setting an April 2014 date for a claim construction hearing and a November 2014 date for jury selection. In November 2013, the PTAB granted-in-part Salesforce’s petition, concluding that all claims of the 413 patent are directed to a covered business method, and are more likely than not patent-ineligible and invalid, and set a July 2014 date for a trial on the validity of the claims. In January 2014, the district court denied Defendants’ motion to stay the case pending CBM review. The Federal Circuit reversed. View "VirtualAgility Inc. v. Salesforce.com, Inc." on Justia Law

Retractable sued, alleging that Becton’s 1 mL and 3 mL IntegraTM syringes infringed claims of Retractable’s patents. Becton had commercially launched its 3 mL syringe in 2002 and the 1 mL syringe in 2003. At trial, Retractable argued that infringement began in 2000 and that a hypothetical negotiation then would have resulted in a lump sum payment of $72 million for a 10-year license. Becton countered with a lost profits theory that would limit recovery to about $5 million based on the sales of the syringes, or, alternatively, that a reasonable royalty would have been no more than $3 million.. The jury found that both syringes infringed and that reasonable royalty damages were $5,000,000. The district court entered judgment in Retractable’s favor and a permanent injunction against the continued sale of both syringes. Becton appealed the infringement and validity determinations but neither appealed nor requested a remand of the damages determination. The Federal Circuit concluded that the district court misconstrued one claim term and that the 3 mL syringe did not infringe; no remand was ordered. Becton requested the district court to modify the injunction and the damages award in light of the decision, citing Fed. R. Civ. P. 60(b)(5). Retractable consented to modification of the injunction to exclude the 3 mL syringe. The district court concluded that the mandate rule precluded it from revisiting damages because the award was within the scope of the original judgment and was not raised in the prior appeal nor remanded. The Federal Circuit affirmed. View "Retractable Techs, Inc. v. Becton Dickinson & Co." on Justia Law

CEATS filed a patent infringement suit against airlines and ticket agencies. After the parties failed to reach a settlement during court ordered mediation, a jury found that CEATS’s patents were infringed, but invalid. The Federal Circuit affirmed the finding of invalidity. While its first appeal was pending, CEATS filed sought relief from the judgment under FRCP 60(b) based on an alleged relationship between the court-appointed mediator and the law firm representing most of the accused infringers. The alleged relationship was brought to light in the unrelated Karlseng litigation. The district court denied CEATS’s Rule 60(b) motion. The Federal Circuit affirmed, stating that it disagreed with the district court’s finding that the mediator had no duty to disclose his dealings with one of the firms involved in the litigation, but that the three “Liljeberg factors” did not establish that this case presents an “extraordinary circumstance” where relief from judgment is warranted View "CEATS, Inc. v. Cont'l Airlines, Inc." on Justia Law

Defendant appealed the district court's remand to state court. Plaintiff moved to dismiss the case. At issue was whether the district court has jurisdiction over an inventorship dispute where the contested patent has not yet been issued. The court concluded that, regardless of whether the removed complaint included an inventorship dispute, that dispute was inadequate to establish the district court's jurisdiction because the allegations indicated that no patent had issued; by raising a timely objection to removal, plaintiff properly preserved its jurisdictional argument; and because removal was improper and the case had not yet been tried on the merits, binding precedent dictated that the court remand the case to state court. Accordingly, the court affirmed the district court's remand order as amended and dismissed plaintiff's motion and cross-motion. View "Camsoft Data Sys., Inc. v. Southern Electronics Supply, et al." on Justia Law

The 321 patent, titled “Method for Manufacture of Quantum Sized Periodic Structures in Si Materials,” resulted from contributions of Brueck, Zaidi, Chu, employed by UNM, and Draper, employed by Sandia, and issued in 1998. In 1996, the four executed an assignment to UNM that defined all assignors as employees of UNM. UNM executed an assignment to Sandia to correct Draper’s assignment. While the 321 application was pending, in 1997, Brueck and Zaidi filed the application that led to the 998 patent, titled “Method and Apparatus for Extending Spatial Frequencies in Photolithography Images.” The application incorporated the 321 patent by reference, but did not claim priority to any earlier application. Draper was not listed as an inventor and had no inventive contribution. UNM obtained assignments from Brueck and Zaidi. During prosecution the PTO rejected claims for double patenting. UNM filed a terminal disclaimer, which specified that “any patent granted on this instant application shall be enforceable only for and during such period” that the 998 and 321 patents “are commonly owned.” UNM stated that it was the owner of a 100 percent interest in the application. The 998 patent issued in 2000. In 2008 successfully sought a certificate of correction indicating that the 998 patent is a continuation-in-part of the 321 patent. In 2010 UNM filed an infringement suit concerning the 998 patent. Although Sandia had an ownership interest since the Draper Assignment, Sandia had never claimed any interest in the 321 patent. The district court dismissed for lack of standing. The Federal Circuit affirmed. Sandia did not voluntarily join as a co-plaintiff and could not be involuntarily joined. All co-owners must ordinarily join in an infringement suit .View "STC.UNM v. Intel Corp." on Justia Law

Source manufactures water reservoirs in which drinking water can be stored inside backpacks for use during outdoor activities and is the assignee of the 276 patent, which focuses on a reservoir with a hermetic seal to prevent leakage and a wide opening for easier cleaning and filling. Attorney Yonay prosecuted the 276 patent application. Yonay and his partner signed the complaints in an infringement action against Hydrapak, which also manufactures a flexible hydration reservoir, the Reversible Reservoir. Hydrapak served a sanctions motion under Federal Rule of Civil Procedure 11, which allows the party against whom the sanctions will be sought 21 days to withdraw the offending claim. Source declined to withdraw its amended complaint. The district court granted Hydrapak summary judgment and sanctions, stating that there was “nothing complicated or technical” about the claim limitation “slot being narrower than the diameter of the rod,” and that none of the words of this limitation “requires definition or interpretation beyond its plain and ordinary meaning.” The court determined that in Hydrapak’s products the slot is larger than the diameter of the rod, even under Source’s proposed construction. After the Federal Circuit affirmed and denied Hydrapak sanctions for a frivolous appeal, the district court imposed a sanction of $200,054.00. The Federal Circuit affirmed.View "Source Vagabond Sys., Ltd. v. Hydrapak, Inc." on Justia Law

P&G owns patents that claim systems or methods for whitening teeth. P&G sued TT, alleging infringement of the three patents; in another district, Clio, which manufactured the accused products, sought a declaratory judgment action against P&G, alleging that the patents were invalid, unenforceable, or not infringed. In its declaratory-judgment action. P&G amended its complaint in the Ohio action to add Clio as a defendant. When TT and Clio then moved for a stay or a transfer to New Jersey, the Ohio district court denied both motions. The New Jersey district court dismissed Clio’s declaratory-judgment action there without prejudice. Clio then timely petitioned the PTO to institute inter partes reviews of the patents under 35 U.S.C. 311-319. P&G responded, arguing that Clio’s earlier declaratory judgment action involving the same three patents, though it had been voluntarily dismissed, barred the institution of inter partes reviews under section 315(a). The Patent Trial and Appeal Board disagreed and granted all three petitions, because 35 U.S.C. 315(a)(1) states: “An inter partes review may not be instituted if, before the date on which the petition for such a review is filed, the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent.” P&G sought a writ of mandamus under 28 U.S.C. 1651. The Federal Circuit denied the petition, stating that mandamus action is not available. View "In re: Procter & Gamble Co." on Justia Law

In 2010, St. Jude sued Volcano, alleging infringement of five patents. Volcano counterclaimed, asserting infringement of the 994 patent. More than two years later, the district court, based on the stipulations of the parties, dismissed all claims relating to the 994 patent. Six months after the dismissal, St. Jude sought inter partes review of the 994 patent. The Director of the U.S. Patent & Trademark Office, through the Board, denied the petition, stating that a counterclaim alleging infringement constitutes a “complaint alleging infringement of the patent” under 35 U.S.C. 315(b), which bars institution of an inter partes review of a patent if the petitioner was served with a complaint alleging infringement of the patent more than one year before filing the petition. Accordingly, the 2010 counterclaim against St. Jude barred the Director from instituting an inter partes review. The Federal Circuit dismissed, based on the structure of the inter partes review provisions, on the language of section 314(d) within that structure, and on its jurisdictional statute read in light of those provisions. View "St. Jude Medical, Cardiology Div., Inc. v. Volcano Corp." on Justia Law

Vaillancourt obtained ownership of the 221 patent from his mother through an assignment recorded with the PTO in 2011. Vaillancourt represents that the assignment took effect in 2005. In 2010, BD requested an inter partes reexamination of the 221 patent. During the reexamination proceedings, Vaillancourt added claims 21 through 37 to the original 20 claims. The patent examiner rejected all 37 claims. While an appeal was pending, Vaillancourt assigned to VLV “the entire right, title and interest in and to” the 221 patent, “including full and exclusive rights to sue upon and otherwise enforce” the patent. VLV sued BD for infringement in its own name and did not join Vaillancourt. The Board subsequently affirmed all of the examiner’s rejections. Despite no longer being the owner of the patent, Vaillancourt unsuccessfully requested rehearing in his own name. Vaillancourt appealed to the Federal Circuit, identifying himself in the notice of appeal as both the patent owner and appellant. BD moved to dismiss for lack of jurisdiction. The Federal Circuit ultimately dismissed for lack of standing. View "Vaillancourt v. Becton Dickinson & Co." on Justia Law