Justia Civil Procedure Opinion Summaries

Security obtained the 180 patent in 2003. After being sued for patent infringement, Security’s competitor sought review of certain claims of the patent in 2015. The Patent Trial and Appeal Board instituted an inter partes review (IPR) and found the sole instituted claim unpatentable. The Federal Circuit summarily affirmed. The Supreme Court then denied a petition for certiorari, which did not raise any constitutional arguments.Security then sought a declaratory judgment that the retroactive application of an IPR proceeding to cancel claims of its patent violated its due process rights. The district court dismissed the suit for lack of subject matter jurisdiction. The America Invents Act, 35 U.S.C. 319, 141(c), provides for “broad Federal Circuit review” of the Board’s final written decisions and allows for review “only” in the Federal Circuit. The court concluded Congress intended to preclude district court review of Board decisions under the Administrative Procedures Act (APA). The Federal Circuit affirmed. Congress foreclosed the possibility of collateral APA review of IPR decisions by district courts. Security cannot bring an APA challenge when the statutory scheme separately establishes an adequate judicial remedy for its constitutional challenge. The APA authorizes judicial review of final agency actions only if there is no other adequate remedy. View "Security People, Inc. v. Iancu" on Justia Law

Decker developed the patented inventions while employed at the University of Texas and assigned the patents to UT. Gensetix obtained an exclusive license in the patents. The license agreement provides that, Gensetix must enforce the patents. The parties agreed to cooperate in any infringement suit and that nothing in the agreement would waive UT's sovereign immunity. Gensetix sued Baylor, alleging infringement and requested that UT join as a co-plaintiff. UT declined. Gensetix named UT as an involuntary plaintiff under FRCP 19(a). The district court dismissed, finding that UT is a sovereign state entity, so that the Eleventh Amendment barred joinder of UT, and that the suit could not proceed without UT.The Federal Circuit affirmed in part. UT did not voluntarily invoke federal jurisdiction; the Eleventh Amendment prevents “the indignity of subjecting a State to the coercive process of judicial tribunals” against its will. It is irrelevant that the license agreement requires the initiation of an infringement suit by Gensetix or cooperation by UT. The court erred in dismissing the suit without adequate analysis of Rule 19(b)'s factors: the extent to which a judgment might prejudice the missing required party or the existing parties; the extent to which any prejudice could be lessened; whether a judgment rendered in the required party’s absence would be adequate; and whether the plaintiff would have an adequate remedy if the action were dismissed. View "Gensetix, Inc. v. Baylor College of Medicine" on Justia Law

Uniloc filed patent infringement actions against Apple, which moved to dismiss, arguing that Uniloc had granted its creditor a license with the right to sublicense in the event of a Uniloc default. According to Apple, Uniloc had defaulted and “lacked the right to exclude Apple from using the patents.” Apple’s motion referenced material that Uniloc had designated as highly confidential. Uniloc asked the court to seal most of the materials in the parties’ filings, including citations to case law, quotations from published opinions, and 23 entire exhibits, including matters of public record. The court denied that motion. Uniloc sought reconsideration, stating that it was willing to make public more than 90 percent of the material it had originally sought to shield; it submitted a declaration including individual grounds for redacting or sealing the remaining materials and declarations from third-party licensees that disclosure would cause them significant competitive harm. The court denied Uniloc’s motion.The Federal Circuit affirmed with respect to Uniloc’s requests to seal its purportedly confidential information and that of its related entities and vacated with respect to licensees. In denying Uniloc’s “sweeping motion,” the court sent a strong message that litigants should submit narrow, well-supported sealing requests and “took seriously the presumption of public access.” The court failed to make sufficient findings on balancing the public’s right of access against the interests of the third parties in shielding their financial and licensing information from public view. View "Uniloc 2017 LLC v. Apple, Inc." on Justia Law

Valencell’s patent, entitled “Methods and Apparatus for Generating Data Output Containing Physiological and Motion-Related Information,” concerns systems for monitoring information such as blood oxygen level, heart rate, and physical activity. Apple sought inter partes review (IPR) of claims 1–13. The Patent Board instituted review of several claims but denied review of claims 3–5. Fitbit then filed an IPR petition for claims 1, 2, and 6–13 and moved for joinder with Apple’s IPR. The Board granted Fitbit’s petition, terminating Fitbit’s separate proceeding. The Supreme Court then held that all patent claims challenged in an IPR petition must be reviewed by the Board if the petition is granted. The Board re-instituted conducted further proceedings and issued a Final Written Decision, finding claims 1, 2, and 6–13 unpatentable, and claims 3–5 not unpatentable. Following the decision, Apple withdrew from the proceeding. Valencell challenged Fitbit’s right to appeal as to claims 3–5.The Federal Circuit held that Fitbit has a right to appeal but vacated as to claims 3–5. Fitbit’s rights as a joined party apply to the entire proceedings and include the right of appeal, conforming to the statutory purpose of avoiding redundant actions by facilitating consolidation, while preserving statutory rights, including judicial review. The court remanded for review of the patentability of claims 3-5 in light of claims of obviousness. View "Fitbit, Inc. v. Valencell, Inc." on Justia Law

Odyssey filed the 678 patent application in 2004. After several procedural disputes and appeals, the Patent Board reversed an examiner’s rejections. The Technology Center Director issued an “examiner’s request for rehearing.” Odyssey did not address the merits, objecting to the procedural propriety of the request, and requesting reconsideration. Odyssey eventually made merits arguments, but without waiting for the Board’s decision, it sought judicial review.Odyssey filed its 603 application in 2006. After a final rejection of all claims, Odyssey appealed and filed a petition demanding that the examiner make certain evidence part of the written record and supplement his responses. The examiner further explained his decision. The Technology Center Director dismissed the petition as moot. Odyssey believed that the examiner’s answer to its appeal brief included new grounds for rejection. The Technology Center Director dismissed that assertion. Rather than filing a brief replying to the examiner’s answer, Odyssey sought judicial review.The PTO amended its rules of practice in ex parte appeals; final rules were published in November 2011, applicable to all ex parte appeals filed on or after January 23, 2012. Odyssey challenged the legality of these amendments.The Federal Circuit affirmed the dismissal of all three claims. In the first two counts, Odyssey was challenging actions not yet final before the Board; the Board could provide Odyssey with an adequate remedy, and if not, Odyssey had remedies under 35 U.S.C. 141 or 145. Count III was untimely under 28 U.S.C. 2401, the six-year statute of limitations for a facial APA challenge, which runs from the date the regulations were published. The complaint was filed in January 2018. View "Odyssey Logistics & Technology Corp. v. Iancu" on Justia Law

Oyster sued, alleging that Ciena infringed several patents. Ciena petitioned the Patent Trial and Appeal Board for inter partes review of the asserted patents. The district court stayed the litigation. The Board concluded that Ciena had failed to demonstrate by a preponderance of the evidence that any of the challenged claims were unpatentable.The Federal Circuit denied Ciena’s motion to vacate the decision. Ciena forfeited its argument that the members of the Board panel that issued the decision were not appointed in compliance with the Appointments Clause. Ciena requested that the Board adjudicate its petition and affirmatively sought a ruling from the Board members, regardless of how they were appointed. Ciena was content to have the assigned Board judges adjudicate its invalidity challenges until the Board ruled against it. View "Ciena Corp. v. Oyster Optics, LLC" on Justia Law

Inter partes review (IPR) permits a patent challenger to ask the U.S. Patent and Trademark Office to reconsider the validity of earlier granted patent claims. If a request comes more than a year after a patent infringement lawsuit against the requesting party, IPR “may not be instituted,” 35 U.S.C. 315(b). The agency’s determination of whether to institute IPR is “final and nonappealable” under section 314(d).Thryv sought IPR of Click-to-Call’s patent. The Patent Trial and Appeal Board rejected Click-to-Call’s argument that the suit was untimely, instituted review, and canceled 13 of the patent’s claims as obvious or lacking novelty. Treating the Board’s application of section 315(b) as judicially reviewable, the Federal Circuit concluded that the petition was untimely and vacated the Board’s decision.The Supreme Court vacated. Section 314(d) precludes judicial review of the agency’s application of section 315(b)’s time prescription. A challenge based on section 315(b) constitutes an appeal of the agency’s decision “to institute” an IPR. Allowing section 315(b) appeals would unwind agency proceedings determining patentability and leave bad patents enforceable. Section 314(d)’s text does not limit the review bar to section 314(a)’s question of whether the petitioner has a reasonable likelihood of prevailing. Click-to-Call’s contention is, essentially, that the agency should have refused to institute IPR. View "Thryv, Inc. v. Click-To-Call Technologies, LP" on Justia Law

Intellisoft sued Acer in California state court, asserting state law claims, including misappropriation of trade secrets. After more than three years of litigation, Acer sought to plead a patent inventorship counterclaim under federal law and thereafter removed the action to a federal district court, which denied Intellisoft’s motion to remand and later entered final judgment in favor of Acer.The Federal Circuit reversed. Removal was not proper under 28 U.S.C. 1441. Acer’s arguments do not establish that Intellisoft’s trade secret claim necessarily raised patent law issues. Intellisoft did not need to establish patent infringement to prove trade secrets misappropriation. A plaintiff’s reliance on a patent as evidence to support its state law claims does not necessarily require the resolution of a substantial patent question. Removal was not proper under section 1454, which requires that the claim supporting removal must be contained in an operative pleading. Acer’s cross-complaint was not operative, the counterclaim was never “asserted” under section 1454. View "Intellisoft, Ltd. v. Acer America Corp." on Justia Law

Myco believed its competitor, BlephEx, made false and misleading statements about Myco’s product and whether it infringed BlephEx’s patent, entitled “Method and Device for Treating an Ocular Disorder.” The district court preliminarily enjoined BlephEx from making allegations of patent infringement and from threatening litigation against Myco’s potential customers.The Federal Circuit reversed. Federal law requires a showing of bad faith before a patentee can be enjoined from communicating his patent rights. A showing of “bad faith” must be supported by a finding that the claims asserted were objectively baseless. There was no adequate basis to conclude that allegations of patent infringement would be false or misleading. Even if the injunction were narrowly tailored to allegations of infringement and threats of litigation against Myco’s potential customers, the “medical practitioner immunity” provision of 35 U.S.C. 287(c) does not blanketly preclude a patent owner from stating that a medical practitioner’s performance of a medical activity infringes a patent. Myco asked the court to assume, without any supporting evidence, that a doctor would have interpreted general statements as an accusation of patent infringement and a threat of litigation against the doctor herself. View "Myco Industries, Inc. v. Blephex, LLC" on Justia Law

CTDI is a worldwide engineering, repair, and logistics company with its principal place of business in Pennsylvania. Since 2007, CTDI has developed, manufactured, and used its “Gen3” and “Gen5” test systems within the U.S. for testing set-top boxes and multimedia devices. The test systems were designed and developed at CTDI’s Pennsylvania facility. Contec “provides repair, test and reverse logistics for electronics hardware used in a broad range of markets.” Contec owns patents for the “Arrangement and Method for Managing Testing and Repair of Set-Top Boxes” and for a “Multimedia Device Test System.” The patented systems were designed and developed at Contec’s New York headquarters. Three of the six inventors of the patents reside in New York; another left Contec and works in CTDI’s, New York facility. CTDI sought a declaratory judgment in a Pennsylvania federal court that its test systems do not infringe Contec’s patents. Six days later, Contec sued CTDI for infringement in the Northern District of New York. The Pennsylvania court dismissed, finding that CTDI’s anticipatory filing was made in bad faith during active licensing discussions; the court found that equitable considerations warranted departure from the first-to-file rule. The Federal Circuit affirmed, finding that the district court did not abuse its broad discretion under the Declaratory Judgment Act, 28 U.S.C. 2201(a) and pursuant to the first-to-file rule. View "Communications Test Design, Inc. v. Contec, LLC" on Justia Law