Justia Civil Procedure Opinion Summaries

Audio’s patent describes a system for organizing audio files, by subject matter, into “program segments.” ’The system arranges the segments through a “session schedule” and allows a user to navigate through the schedule in various ways. Audio sued CBS, alleging infringement. Later that year, a third party sought inter partes review (IPR) of the patent under 35 U.S.C. 311–319. The Patent Trial and Appeal Board instituted review but the district court case proceeded to trial, with the issues limited to infringement and invalidity of claims 31–34. A jury found that CBS had infringed claims 31–34 and failed to establish by clear and convincing evidence that those claims were invalid. The jury awarded Audio $1,300,000. The Board issued a final written decision in the IPR, concluding that claims 31–35 are unpatentable. The district court stayed entry of its judgment until completion of direct review of the Board’s decision. The Federal Circuit affirmed the Board’s decision. The district court then entered a judgment in favor of CBS. The Federal Circuit affirmed, rejecting Audio’s argument that the courts lacked jurisdiction. To the extent that Audio challenged the district court’s determination of the consequences of the affirmed final written decision for the proper disposition of this case, Audio conceded that governing precedent required judgment for CBS. View "Personal Audio, LLC v. CBS Corp." on Justia Law

In “Arthrex,” the Federal Circuit concluded that the appointments of Administrative Patent Judges (APJs) violated the Appointments Clause and vacated a decision made by a panel of APJs. Customedia sought to assert the same challenge. The Federal Circuit denied a motion to vacate, finding that Customedia forfeited its Appointments Clause challenge. Arguments not raised in the opening brief are waived. Appointments Clause challenges are not jurisdictional and must be properly raised on appeal. Customedia did not raise any semblance of an Appointments Clause challenge in its opening brief or raise this challenge in a motion filed prior to its opening brief. View "Customedia Technologies,, LLC v. Dish Network Corp." on Justia Law

Inspired Development sued KidsEmbrace for breach of contract and other related state law claims in federal district court on the basis of diversity jurisdiction under 28 U.S.C. 1332(a). The dispute involved the purported breach of a patent-licensing agreement by failure to pay outstanding royalties. The district court granted summary judgment in KidsEmbrace’s favor on certain claims. On appeal, the Eleventh Circuit discovered that diversity jurisdiction did not exist. The district court concluded on remand that it retained jurisdiction over the suit based on federal question jurisdiction. The Eleventh Circuit transferred the case to the Federal Circuit, which vacated and remanded for dismissal. The parties’ claims did not arise under the patent laws pursuant to 28 U.S.C. 1338(a). No claims allege a cause of action created by federal patent law. This is a state law contract case for past due royalties. Inspired Development need not demonstrate that KidsEmbrace actually practiced the licensed patents, and the question of infringement is not a “necessary element” of the claim. Finding a federal question here merely because this contract implicates a run-of-the-mill question of infringement or validity would undoubtedly impact the wider balance between state and federal courts. View "Inspired Development Group v. Inspired Products Group, LLC" on Justia Law

University of Texas System (UT) sued BSC for patent infringement in the Western District of Texas. The patents resulted from research conducted at UT and are directed to implantable drug-releasing biodegradable fibers. BSC is a Delaware corporation with a principal place of business in Massachusetts. BSC does not own or lease any property or maintain a business address in the Western District of Texas but has 46 employees in the District; all maintain home offices and do not work in spaces that are owned or controlled by BSC. UT asserted that venue was proper because UT has sovereign immunity. The district court transferred the case to the District of Delaware. The Federal Circuit affirmed, first holding that it had jurisdiction to hear the appeal under the collateral order doctrine. State sovereignty principles do not grant UT the right to bring suit in an otherwise improper venue; 28 U.S.C. 1400(b) is the sole and exclusive provision controlling venue in patent infringement actions and venue is proper where a defendant resides or has a regular and established place of business. Sovereign immunity is a shield, not a sword. There was no claim or counterclaim against UT that placed it in the position of a defendant. View "Board of Regents of the University of Texas System v. Boston Scientific Corp." on Justia Law

The University, an agent or instrumentality of the Swiss Confederation, having a place of business in Bern, Switzerland, granted an exclusive license of its 114 patent to the German company LABOKLIN, whose principal place of business is in Bad Kissingen, Germany. Under the License Agreement, LABOKLIN was required to commercialize the invention in North America. LABOKLIN entered into sublicenses in the U.S. PPG, a corporation headquartered in Washington State, offers laboratory services. After obtaining the University’s consent, LABOKLIN sent a cease-and-desist letter to PPG in Spokane, Washington. PPG sued LABOKLIN and the University, requesting a declaratory judgment that the Asserted Claims of the 114 patent are ineligible under 35 U.S.C. 101 for failing to claim patent-eligible subject matter. The Federal Circuit affirmed that the district court had jurisdiction over both LABOKLIN and the University. LABOKLIN had sufficient minimum contacts with the U.S. to comport with due process; the University, a foreign sovereign in the U.S., had engaged in “commercial activity” sufficient to trigger an exception to jurisdictional immunity under 28 U.S.C. 1605(a)(2) by “obtain[ing] a patent and then threaten[ing] PPG by proxy with litigation.” PPG had stipulated to infringement of the Asserted Claims; the courts found those Claims patent-ineligible as directed to patent-ineligible subject matter, namely the discovery of the genetic mutation that is linked to HNPK. View "Genetic Veterinary Sciences, Inc. v. LABOKLIN GMBH & Co. KG" on Justia Law

The asserted patents were originally assigned to AMD, which later purported to transfer “all right, title and interest” in the patents to Lone Star, with several limitations. For example, Lone Star agreed to only assert the covered patents against “Unlicensed Third Party Entit[ies]” specifically listed in the agreement. New entities can only be added if both parties agree to add them. If Lone Star sues an unlisted entity, AMD has the right, without Lone Star’s approval, to sublicense the covered patents to the unlisted target. AMD can prevent Lone Star from assigning the patents or allowing them to enter the public domain. AMD and its customers can continue to practice the patents; AMD shares in any revenue Lone Star generates from the patents through “monetization efforts." Lone Star sued parties listed as Unlicensed Third Party Entities in the agreement, asserting infringement and alleging that AMD transferred “all right, title, and interest” in the asserted patents to Lone Star. The district court concluded that Lone Star does not own the patents and could not assert them. The Federal Circuit vacated the dismissal, while agreeing that Lone Star cannot assert the patents on its own. The court should not have dismissed the case without considering whether AMD should have been joined (Federal Rule of Civil Procedure 19. View "Lone Star Silicon Innovations, LLC v. Nanya Technology Corp." on Justia Law

Presidio's 639 patent describes and claims single-layer ceramic capacitors with certain features. Competitor AVX, which manufactures and sells various electronic components, including capacitors, petitioned for an inter partes review (IPR), under 35 U.S.C. 311−319, of all 21 claims of the 639 patent, asserting obviousness (35 U.S.C. 103). The Patent Trial and Appeal Board instituted a review (35 U.S.C. 314), held claims 13–16 and 18 unpatentable, but held that AVX failed to establish unpatentability of all other claims. Presidio did not appeal the as to the unpatentable claims. AVX appealed as to the upheld claims. Presidio responded to AVX on the merits and argued that AVX lacked Article III standing. The Federal Circuit dismissed the appeal, rejecting AVX’s estoppel and “competitor standing” theories and concluding that AVX lacks standing. A person does not need Article III standing to file an IPR petition and obtain a Board decision, because Article III requirements do not apply to administrative agencies, but AVX has no present or nonspeculative interest in engaging in conduct arguably covered by the patent claims at issue. AVX has not shown that it is engaging in or has nonspeculative plans to engage in, conduct arguably covered by the upheld claims of the patent. View "AVX Corp. v. Presidio Components, Inc." on Justia Law

At issue in this case was whether a jury should hear Xitronix's claim that KLA-Tencor violated the Sherman Act's prohibition of monopolies by obtaining a patent through a fraud on the U.S. Patent and Trademark Office (PTO).The Fifth Circuit could not conclude that the Federal Circuit's decision to transfer this case to it was plausible, given the Supreme Court's and Congress's decisions to the contrary. The court held that the case belongs in the Federal Circuit because it presented a standalone Walker Process claim and there are no non-patent theories that would divert it to the Fifth Circuit. The court held that, under any reading of Gunn v. Minton, 568 U.S. 251 (2013), the court would deem it implausible that it could decide this appeal. Therefore, the court transferred the case back to the Federal Circuit. View "Xitronix Corp. v. KLA-Tencor Corp." on Justia Law

Maxchief has its principal place of business in China and distributes one of the plastic tables it manufactures (UT-18) exclusively through Meco, which is located in Tennessee. Meco sells the UT-18 tables to retailers. Wok competes with Maxchief in the market for plastic folding tables, and also has its principal place of business in China. Wok owns patents directed to folding tables. Wok sued Maxchief’s customer, Staples, in the Central District of California, alleging that Staples’ sale of Maxchief’s UT-18 table infringed the Wok patents. Staples requested that Meco defend and indemnify Staples. Meco requested that Maxchief defend and indemnify Meco and Staples. The Staples action is stayed pending the outcome of this case. Maxchief then sued Wok in the Eastern District of Tennessee, seeking declarations of non-infringement or invalidity of all claims of the Wok patents and alleging tortious interference with business relations under Tennessee state law. The district court dismissed the declaratory judgment claim for lack of personal jurisdiction. With respect to the state law tortious interference claim, the district court concluded it lacked subject matter jurisdiction. The Federal Circuit affirmed. Wok lacked sufficient contacts with the forum state of Tennessee for personal jurisdiction as to both the declaratory judgment claim and the tortious interference claim. View "Maxchief Investments Ltd. v. Wok & Pan, Ind., Inc." on Justia Law

Plaintiffs sued Oath in the Eastern District of New York, alleging patent infringement. Oath conducts business in New York, but is incorporated in Delaware; it does not have “a regular and established place of business” in the Eastern District as defined in the patent statute venue provision, 28 U.S.C. 1400(b) In 2016, Oath moved under FRCP 12(b)(6) to dismiss for failure to state a claim but did not object to venue. Oath withdrew its motion and filed an answer, admitting the complaint’s venue allegations but expressly reserving the right to challenge venue based upon any change in law, including the Supreme Court’s "TC Heartland" decision. The Supreme Court subsequently issued that decision, holding that, under section 1400(b), “a domestic corporation ‘resides’ only in its State of incorporation,” rejecting Federal Circuit precedent that a domestic corporation “resides” in any judicial district in which the defendant is subject to personal jurisdiction. Oath moved to dismiss. Plaintiffs argued that Oath had waived the venue defense because it was “available” in 2016. The district court agreed. In November 2017, the Federal Circuit held (Micron) that “TC Heartland changed the controlling law ... making the waiver rule ... inapplicable” but that venue rights might be forfeited by delay in asserting them in some circumstances. On reconsideration, the district court again denied Oath’s motion. The Federal Circuit remanded with instructions to either dismiss or transfer the case. The district court provided no analysis of why these circumstances supported a finding of forfeiture under section 1406(b) and erred in failing to apply the Micron precedent. View "In re: Oath Holdings, Inc." on Justia Law