In re: Verhoef

Jeff H. VerHoef (“VerHoef”) appeals from the decision of the Patent Trial and Appeal Board (the “Board”) affirming the examiner’s rejection of all claims of VerHoef’s pending application 13/328,201 (the “’201 application”) as unpatentable under 35 U.S.C. § 102(f) (2006). Ex parte VerHoef, No. 2015-005270, 2017 WL 745052 (P.T.A.B. Feb. 23, 2017) (“Decision”). Because the Board correctly concluded that VerHoef did not solely invent the claimed subject matter of the ’201 application on which he claimed sole inventorship, we affirm.

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Disc Disease Solutions Inc. v. VGH Solutions, Inc.

Disc Disease Solutions Inc. appeals an order from the United States District Court for the Middle District of Georgia that dismissed with prejudice its complaint for failure to state a claim and denied its request to file a first amended complaint. The district court erred when it dismissed the complaint for failure to state a claim. We reverse the district court’s grant of the motion to dismiss and remand for further proceedings.

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Texas Advanced Optoelectronic Solutions, Inc. v. Renesas Electronics America, Inc.

Texas Advanced Optoelectronic Solutions, Inc., (TAOS) and Intersil Corporation each develop and sell ambient light sensors, which are used in electronic devices to adjust screen brightness in response to incident light. In the summer of 2004, the parties confidentially shared technical and financial information during negotiations regarding a possible merger. The parties ultimately went their separate ways, but soon after, Intersil released new sensors with the technical design TAOS had disclosed in the confidential negotiations. TAOS then sued Intersil in federal district court for infringement of U.S. Patent No. 6,596,981, as well as for trade secret misappropriation, breach of contract, and tortious interference with prospective business relations under Texas state law. After a trial held in early 2015, a jury returned a verdict for TAOS and awarded damages on all four claims. The court ruled on the parties’ post-trial motions and entered final judgment, and both parties appealed.

We now affirm in part, reverse in part, vacate in part, and remand. Among our rulings, we affirm liability for trade secret misappropriation, though on a more limited basis than TAOS presented to the jury, and we affirm liability for infringement of the asserted apparatus claims of the patent at issue. But we vacate the monetary awards, and we remand for further proceedings.

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01 Communique Laboratory, Inc v. Citrix Online, LLC

01 Communique Laboratory, Inc. (“Communique”) appeals an order of the United States District Court for the Northern District of Ohio denying its motion for a new trial. See 01 Communique Lab., Inc. v. Citrix Sys., Inc., No. 1:06-CV-00253, 2017 WL 1065573 (N.D. Ohio Mar. 21, 2017) (“District Court Order”). We affirm.

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Gilead Sciences, Inc. v. Merck & Co., Inc.

This case involves two patents relating to treatments for Hepatitis C. Merck & Co., Inc. and Ionis Pharmaceuticals, Inc. (formerly Isis Pharmaceuticals, Inc.) collaborated on research in the area and eventually obtained U.S. Patent Nos. 7,105,499 and 8,481,712. The patents, whose specifications are materially the same for present purposes, describe and claim classes of compounds, identified by structural formulas, and the administration of therapeutically effective amounts of such compounds. Gilead Sciences, Inc., developed its own Hepatitis C treatments—marketed now as Solvadi® and Harvoni®, both based on the compound sofosbuvir.

Gilead filed this action against Merck & Co., its subsidiary Merck Sharp & Dohme Corp., and Ionis (collectively, “Merck” unless the context indicates reference just to Merck & Co. and/or Merck Sharp). Gilead sought a declaratory judgment that Merck’s ’499 and ’712 patents are invalid and that Gilead is not infringing by its activities involving its sofosbuvir products. Merck counterclaimed for infringement.

Gilead eventually stipulated to infringement based on the district court’s claim construction, which is not challenged on appeal. A jury trial was held on Gilead’s challenges to the patents as invalid for lack of both an adequate written description and enablement of the asserted claims (claims 1–2 of the ’499 patent and claims 1–3, 5, 7, and 9-11 of the ’712 patent) as well as Gilead’s closely related defense that Merck did not actually invent the subject matter but derived it from another inventor, employed by Gilead’s predecessor. The jury ruled for Merck and awarded damages.

The district court then held a bench trial on Gilead’s equitable defenses, including unenforceability against Gilead based on the allegation that Merck had unclean hands regarding the patents. The district court ruled for Gilead, finding both pre-litigation business misconduct and litigation misconduct attributable to Merck, and it barred Merck from asserting the patents against Gilead. Gilead Scis., Inc. v. Merck & Co., No. 13-cv-04057-BLF, 2016 WL 3143943, at *39 (N.D. Cal. June 6, 2016). Having so concluded, the district court subsequently deemed moot Gilead’s motion for judgment as a matter of law of invalidity for lack of adequate written description and enablement. The court also awarded attorney’s fees, relying on the finding of unclean hands.

Merck appeals the unenforceability judgment based on unclean hands. Gilead cross-appeals the denial of judgment as a matter of law of invalidity, but it asks us to reach that issue only if we set aside the unenforceability judgment. We have jurisdiction under 28 U.S.C. § 1295(a)(1). We affirm the judgment based on unclean hands, concluding that it is sufficiently supported by findings that withstand review for clear error. We therefore do not reach the issues raised by Gilead’s conditional cross-appeal.

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Wi-Fi One, LLC v. Broadcom Corp.

These three consolidated cases return to the panel on remand from the en banc court. That court reviewed, and overturned, the panel’s decision that time-bar determinations by the Patent Trial and Appeal Board (“PTAB” or “Board”) in inter partes review proceedings are not appealable. Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364 (Fed. Cir. 2018) (en banc).

The three cases are related appeals from decisions of the PTAB. In each case, the Board held various claims of three patents owned by Wi-Fi One, LLC (“Wi-Fi”), to be invalid for anticipation.

This panel initially wrote a precedential opinion in appeal No. 2015-1944, and decided Appeal Nos. 2015-1945 and 2015-1946 by summary affirmance. See Wi-Fi One, LLC v. Broadcom Corp., 837 F.3d 1329 (Fed. Cir. 2016); Wi-Fi One, LLC v. Broadcom Corp., No. 2015-1945, 668 F. App’x 893 (Fed. Cir. 2016); Wi-Fi One, LLC v. Broadcom Corp., No. 2015-1946, 668 F. App’x 893 (Fed. Cir. 2016).

Although the en banc court vacated the panel’s judgments in all three cases, the en banc opinion addressed only the appealability of the PTAB’s time-bar determination under 35 U.S.C. § 315(b). The court did not address the remaining portions of the panel’s decision in Appeal No. 2015-1944 or the aspects of the summary affirmances in Appeal Nos. 2015-1945 and 2015-1946 that related to the merits of Wi-Fi’s appeals.

The panel now reaffirms the portions of its three prior decisions that were left unaffected by the en banc court’s decision. Accordingly, in Appeal No. 2015-1944, parts III and IV of the original panel opinion are reinstated and are reproduced in substance as parts III and IV of this opinion. In part II of this opinion, the panel addresses the merits of Wi-Fi’s time-bar claim that the en banc court held to be appealable. On that issue, we affirm the decision of the PTAB. In separate orders, we reinstate the summary affirmances of the PTAB’s decisions in Appeal Nos. 2015-1945 and 2015-1946. Because the time-bar issue raised in those cases is identical to the time-bar issue raised in Appeal No. 2015-1944, we affirm the PTAB’s decision as to the time-bar issue in those cases as well.

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Voter Verified, Inc. v. Election Systems & Software LLC

Voter Verified, Inc. (“Voter Verified”) appeals from the United States District Court for the Northern District of Florida’s dismissal under Fed. R. Civ. P. 12(b)(6) of its claim for patent infringement, holding that the claims of U.S. Reissue Patent RE40,449 (“the ’449 patent”) are directed to patent-ineligible subject matter and are thus invalid under 35 U.S.C. § 101. See Voter Verified, Inc. v. Election Sys. & Software LLC, No. 1:16-cv-267, 2017 WL 3688148, at *2 (N.D. Fla. Mar. 21, 2017) (“Voter Verified NDFL”). For the reasons that follow, we affirm.

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James v. J2 Cloud Services, LLC

In this action against j2 Cloud Services, LLC and Advanced Messaging Technologies, Inc. (AMT), Gregory James asserts a claim for correction of inventorship under 35 U.S.C. § 256, as well as various state-law claims. The district court dismissed the correction-of-inventorship claim for lack of jurisdiction and, consequently, dismissed the state-law claims. We reverse the jurisdictional dismissal and remand for further proceedings.

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Droplets, Inc. v. E*Trade Bank

E*TRADE Bank, E*TRADE Financial Corporation, E*TRADE Securities, LLC, Scottrade Financial Services, Inc., Scottrade, Inc., TD Ameritrade Holding Corp., and TD Ameritrade, Inc. (collectively, “E*TRADE”) filed a petition for inter partes review (“IPR”) of U.S. Patent No. 8,402,115 (“the ’115 Patent”), owned by Droplets, Inc. (“Droplets”). The Patent Trial and Appeal Board (“the Board”) instituted review and issued a final written decision finding all claims of the ’115 Patent invalid as obvious under 35 U.S.C. § 103. E*TRADE Fin. Corp. v. Droplets, Inc., No. IPR2015-00470, 2016 WL 3476939 (P.T.A.B. June 23, 2016) (“Board Decision”). In reaching this conclusion, the Board found that: (1) the ’115 Patent failed to enumerate a priority claim sufficient to avoid fully-invalidating prior art; and (2) incorporation by reference is insufficient to satisfy a patentee’s burden of providing notice of the asserted priority date under 35 U.S.C. § 120. Droplets appealed, and the Director of the U.S. Patent and Trademark Office intervened to defend the Board’s decision on the priority date issue. E*TRADE filed what it characterizes as a conditional cross-appeal, arguing that, if we disagree with the Board regarding the priority issue, there is an alternative ground to determine that at least some of the ’115 Patent claims are invalid. By statute, a claim for benefit of the filing date of an earlier application must include “a specific reference to [an] earlier filed application.” 35 U.S.C. § 120. We agree with the Board that incorporation by reference cannot satisfy this statutory requirement. Because the ’115 Patent expressly claims priority only to an immediately preceding application, and not the provisional application before that, the Board correctly determined that an earlier-filed reference—an international publication with the same specification—invalidated all claims of the ’115 Patent. We therefore affirm the Board’s decision finding all claims of the ’115 Patent invalid as obvious. We dismiss E*TRADE’s cross-appeal as improper.

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John Bean Technologies Corp. v. Morris & Associates, Inc.

John Bean Technologies Corp. appeals from a decision by the United States District Court for the Eastern District of Arkansas holding that its patent infringement claims are barred by the affirmative defenses of equitable estoppel and laches.1 Because the asserted claims in this action were substantively amended or added following ex parte reexamination in 2014, and the plaintiff only sought damages for infringement of the reexamined claims, the district court abused its discretion in finding equitable estoppel based on activity beginning in 2002, twelve years prior to the issuance of the reexamination certificate. We therefore reverse the district court’s grant of summary judgment based on its finding of equitable estoppel, and remand for proceedings consistent with this opinion.

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