Justia Civil Procedure Opinion SummariesArticles Posted in U.S. Federal Circuit Court of Appeals
Vermont v. MPHJ Technology Investments
MPHJ Technology Investments, LLC (MPHJ) owned several patents relating to network scanner systems. Through subsidiary licensees, MPHJ wrote to various business and non-profit organizations operating in Vermont, requesting the recipient to confirm it was not infringing MPHJ’s patents or, alternatively, to purchase a license. If there was no response, a Texas law firm sent follow-up correspondence stating that an infringement suit would be filed. The State of Vermont filed suit against MPHJ in Vermont state court alleging MPHJ engaged in unfair and deceptive trade practices under the Vermont Consumer Protection Act, stating that the letters contained threatening, false, and misleading statements. MPHJ removed the case to the United States District Court for the District of Vermont, asserting federal question jurisdiction and diversity jurisdiction. The State moved to remand the case back to state court for lack of subject matter jurisdiction. MPHJ opposed the State’s motion to remand, and filed a motion to dismiss for lack of personal jurisdiction and a motion for sanctions. Finding that it lacked jurisdiction to grant MPHJ its requested relief, the Federal Circuit Court of Appeals dismissed the petition and appeal. View "Vermont v. MPHJ Technology Investments" on Justia Law
Arlington Indus., Inc. v. Bridgeport Fittings, Inc.
Arlington manufactured and sold electrical connectors that could be snapped into place, including the Snap2It® brand connectors. Bridgeport sold a competing line of quick-connect fittings called Snap-In and Speed-Snap connectors. In 2002, Arlington filed suit, alleging that Bridgeport’s connectors infringed claim 1 of its 488 patent. Bridgeport signed a settlement agreement stating that the 488 patent was not invalid, was not unenforceable, and was infringed by Bridgeport’s 590-DCS and 590-DCSI Speed-Snap products. Bridgeport agreed to be “permanently enjoined from directly or indirectly making, using, selling, offering for sale or importing . . . the Speed-Snap products identified … 590-DCS and 590-DCSI or any colorable imitations.” The district court dismissed without prejudice and maintained jurisdiction to enforce the injunction. In 2005, Bridgeport redesigned its connectors to have a frustoconical leading edge and began selling the 38ASP and 380SP connectors (New Connectors), under the Whipper-Snap® brand. In 2012, Arlington filed a motion for contempt, alleging that Bridgeport’s New Connectors violated the 2004 Injunction. The district court acknowledged that the dispute centered around two limitations of claim 1 of the 488 patent, and construed those limitations, finding that Bridgeport directly and indirectly infringed the patent. The Federal Circuit dismissed an appeal for lack of jurisdiction because the contempt order is not a final judgment or otherwise appealable. View "Arlington Indus., Inc. v. Bridgeport Fittings, Inc." on Justia Law
Troy v. Samson Mfg. Corp.
The Board of Patent Appeals and Interferences declared an interference between Troy’s 451 patent, which claims priority to a provisional application filed in February 2005, and Samson’s 665 patent application, claiming priority to a provisional application filed in January 2005. Samson was named senior party. Troy’s priority motion alleged reduction to practice in early February 2004, conception prior to February 2004, inurement, and derivation. Samson’s motion alleged reduction to practice in late February or early March 2004 and conception in early February 2004. The Board concluded that Troy failed to prove actual reduction to practice in February 2004 and ordered all claims of the 451 patent cancelled. Troy had proffered new evidence of prior conception at the dates asserted, new evidence of actual reduction to practice in February 2004, and a claim that Samson engaged in “inequitable conduct” by including in its provisional application confidential drawings misappropriated from Troy. The district court affirmed, refusing to consider new evidence, not raised before the Board. The court acknowledged that Troy had proven, in state court, that Samson improperly submitted as its own at least one drawing of Troy’s and that Samson violated a confidentiality agreement in developing its inventions, but concluded that neither proved that Troy conceived all the elements and timely reduced them to practice. The Federal Circuit vacated. View "Troy v. Samson Mfg. Corp." on Justia Law
Stauffer v. Brooks Brothers, Inc.
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
VirtualAgility Inc. v. Salesforce.com, Inc.
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 Techs, Inc. v. Becton Dickinson & Co.
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
In re: Nintendo of Am., Inc
Nintendo distributes its DS video game systems to stores and online dealers, which retail the system either as a stand-alone product or bundled with video games and other accessories. Secure sued Nintendo and 11 retailers for patent infringement. The district court denied a motion by the defendants to sever and stay the claims against the retailers, and transfer the separate action against Nintendo to the Western District of Washington. The Federal Circuit vacated and directed that the district court grant the motion. Because Nintendo’s liability is predicate to recovery from any of the defendants, the case against Nintendo must proceed first, in any forum. The benefits of trying the case against Nintendo in the Western District of Washington are indisputable. View "In re: Nintendo of Am., Inc" on Justia Law
CEATS, Inc. v. Cont’l Airlines, Inc.
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
STC.UNM v. Intel Corp.
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 Vagabond Sys., Ltd. v. Hydrapak, Inc.
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