Justia International Law Opinion Summaries

Articles Posted in Patents
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Binzel, which manufactures welding equipment, owns the German DE 934 patent, filed in 1997, and the U.S. 406 patent, issued in 2002, which claims priority to the German application, for a method of manufacturing a contact tip for metal inert gas welding. Lismont, a resident of Belgium asserts that, beginning in 1995, he developed the method disclosed in both patents for Binzel and, that by mid-1997, he had disclosed the details to Binzel. Lismont contends that, despite Binzel's representations that he was the first to conceive of this method, Binzel filed the DE 934 application naming its employee, Sattler, as the inventor. In 2000-2002 Lismont initiated suits in the German Federal Court and sought information about the countries in which Binzel was pursuing patents and about the manufacture and sales of contact tips that used the method at issue. The German courts ruled against Lismont, finding that he failed to prove that he had an inventorship interest. The German Supreme Court rejected his appeal in 2009. Lismont then filed actions in the German Constitutional Court and in the European Court of Human Rights. In 2012, Lismont initiated U.S. litigation seeking to correct inventorship of the 406 patent (35 U.S.C. 256(a)). After discovery concerning the issue of laches, the court granted the defendants summary judgment. The Federal Circuit affirmed: Lismont failed to rebut the presumption of laches. View "Lismont v. Alexander Binzel Corp." on Justia Law

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The Tariff Act of 1930 gives the International Trade Commission authority to remedy only those unfair acts that involve the importation of “articles” as described in 19 U.S.C. 1337(a). The Commission instituted an investigation based on a complaint filed by Align, concerning violation of 19 U.S.C. 1337 by reason of infringement of various claims of seven different patents concerning orthodontic devices. The accused “articles” were the transmission of the “digital models, digital data and treatment plans, expressed as digital data sets, which are virtual three-dimensional models of the desired positions of the patients’ teeth at various stages of orthodontic treatment” from Pakistan to the United States. The Federal Circuit reversed, holding that the Commission lacked jurisdiction. The Commission’s decision to expand the scope of its jurisdiction to include electronic transmissions of digital data runs counter to the “unambiguously expressed intent of Congress.” View "ClearCorrect Operating, LLC v. Int'l Trade Comm'n" on Justia Law

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Halo is a supplier of electronic components and owns three patents directed to surface mount electronic packages containing transformers for mounting on a printed circuit board inside electronic devices such as computers and internet routers. Halo alleged that Pulse infringed its patents. The district court entered summary judgment that Pulse did not sell or offer to sell certain accused products within the U.S. and, therefore, did not directly infringe, and that that Pulse’s infringement with respect to accused products that Pulse sold and delivered outside the U.S. was not willful. The Federal Circuit affirmed. Pulse did not sell or offer to sell within the U.S. those accused products that Pulse manufactured, shipped, and delivered outside the U.S., so there was no direct infringement by those products. The court upheld the constructions of the claim limitations “electronic surface mount package” and “contour element,” found the patents not invalid for obviousness, and affirmed the judgment of direct infringement with respect to products that Pulse delivered in the U.S. and the judgment of inducement with respect to products that Pulse delivered outside the U.S. but were ultimately imported by others. View "Halo Elec., Inc. v. Pulse Elec., Inc." on Justia Law

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Nooren owns patent 044, entitled “Use of a Preparation for Insulation/Sealing and Coating Purposes and Method for Sealing Manhole Covers,” which discloses a composition for insulating and protecting substrates, such as manhole covers, underground tanks, pipes, and cable sleeves, from corrosion, water ingress, and mechanical stresses. The patent is licensed exclusively to Stopaq, a Dutch company that designs and manufactures coatings and sealants that exhibit both viscous and elastic properties (visco-elasticity) and are designed for corrosion protection and waterproofing. Kleiss, a Dutch company, manufactures similar products that prevent corrosion and protect against leaks, which are distributed in the U.S. by Amcorr. Kleiss and Amcorr sought a declaratory judgment in the Netherlands that their products did not infringe the 044 patent. Nooren filed suit in the U.S., alleging infringement. The parties agreed to focus on the phrase “a filler comprising a plurality of fractions each comprising different size particles, and wherein said different fractions have different particle size distributions” in the only independent claim in the patent. The court granted summary judgment of noninfringement in favor of Amcorr. The Federal Circuit vacated, holding that the district court erred in at least on claim construction. View "Frans Nooren Afdichtingssystem v. Stopaq Amcorr Inc." on Justia Law

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Solvay’s 817 patent claims an improvement to a method of making a hydrofluorocarbon (HFC-245fa), which does not deplete the ozone layer as legislatively mandated to replace ozone-depleting alternatives. HFC-245fa is especially useful in preparing polymeric materials used for insulation in refrigeration and heat systems. The patent has a 1995 priority date. In 1994, Honeywell and RSCAC entered into a contract, under which RSCAC engineers, in Russia, studied commercial production of HFC-245fa. RSCAC sent Honeywell a report documenting a continuous process capable of producing high yields of HFC-245fa. Honeywell used the report to run the same process in the U.S., before the 817 patent’s priority date. Solvay sued Honeywell, alleging infringement. Honeywell argued that the Russian inventors made the invention in this country by sending instructions to Honeywell personnel who reduced the invention to practice in the U.S. The district court held that the RSCAC engineers should be treated as inventors who made the invention in the U.S. under 35 U.S.C. 102(g)(2), that RSCAC disclosed claim1 in a 1994 Russian patent application such that they did not abandon, suppress, or conceal it. The Federal Circuit affirmed judgment for Honeywell. It is not required that the inventor be the one to reduce the invention to practice if reduction to practice was done on his behalf in the U.S., so Honeywell’s invention qualified as prior art.View "Solvay, S.A. v. Honeywell Int'l, Inc." on Justia Law

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EnOcean owns a patent application that claims a self-powered switch, which can be used to turn on and off lights, appliances, and other devices without a battery or connection to an electrical outlet. The named inventors originally filed a patent application disclosing the switch in Germany in 2000; in 2001 they filed a Patent Cooperation Treaty (PCT) international application with a similar disclosure. The Board of Patent Appeals and Interferences declared an interference in 2010 between EnOcean and Face, the real party of interest in a U.S. Patent that also claims a self-powered switch. The Board found the Face claims were unpatentable under 35 U.S.C. 103 based on prior art. Face did not appeal. The Board then applied a presumption that EnOcean’s claims were unpatentable for the same reasons. EnOcean’s argument for rebutting the presumption required determination that EnOcean’s claims could benefit from the filing dates of its German and PCT applications, eliminating a reference from prior art. The Board accorded no benefit of priority to the claims and found all of EnOcean’s claims unpatentable under section 103. The Federal Circuit vacated in part, finding that the Board erred in treating certain EnOcean claims as means-plus-function claims and in finding that certain EnOcean claim limitations lack support in its priority German and PCT applications.View "EnOcean GmbH v. Face Int'l Corp." on Justia Law

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In 1985, Behringwerke filed a U.S. patent application directed to the use of DNA sequences (enhancers) identified in human cytomegalovirus. An enhancer, when introduced into a cell that produces a drug, can enable the cell to produce the drug at a much higher rate. In 1992, Behringwerke and Genentech entered into a licensing agreement related to enhancers that matured into the patents-in-suit; for fixed annual payments, Genentech could practice the patents for research purposes. Genentech was to pay a royalty on sales of commercially marketable goods incorporating a “Licensed Product.” The Agreement, governed by German law, required that disputes be settled by arbitration. Behringwerke sold its pharmaceutical business to Sanofi, but the Agreement and patent rights stayed with Hoechst; both are German entities. In 2008, Sanofi sued Genentech for infringement based on sales of the allegedly infringing drugs Rituxan and Avastin, which Genentech had not identified as licensed products. Hoechst demanded arbitration before a European arbitrator. The district court found no infringement. The Federal Circuit affirmed. Arbitration continued. On remand, Genentech sought to enjoin Sanofi from continuing the foreign arbitration. The district court denied the motion, finding that Hoechst is a party to the arbitration, but not a party to the litigation and that an injunction would frustrate policies favoring enforcement of forum selection clauses, and would not be in the interest of international comity. The arbitrator determined that German substantive law, not U.S. patent law, would be used, that a drug could be a licensed article even though it did not contain the patented enhancers, if those enhancers were used in its manufacture, and that Genentech was liable for damages. The Federal Circuit affirmed that Genentech was not entitled to an injunction.View "Sanofi-Aventis Deutschland, GMBH v. Genentech, Inc." on Justia Law

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In this interlocutory appeal, Motorola appealed from the district court's preliminary injunction to enjoin Motorola temporarily from enforcing a patent injunction that it obtained against Microsoft in Germany. The underlying case before the district court concerned how to interpret and enforce patent-holders' commitments to industry standard-setting organizations (SSOs), which established technical specifications to ensure that products from different manufacturers were compatible with each other. Specifically, the case involved the H.264 video coding standard set by International Telecommunications Union (ITU), and the 802.11 wireless local area network standard set by the Institute of Electrical and Electronics Engineers (IEEE). The court held that, under the unique circumstances of this case, the district court's narrowly tailored preliminary injunction was not an abuse of discretion. Accordingly, the court affirmed the judgment. View "Microsoft Corp. v. Motorola, Inc., et al" on Justia Law

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A 2007 patent litigation settlement agreement included a covenant not to sue that stated that it applied to customers of the defendants, who were intended beneficiaries, and a governing law/venue provision specifying New Mexico. In September 2010, plaintiff filed a complaint with the International Trade Commission alleging infringement by defendant and its U.S. distributors and filed a complaint in the Northern District of California alleging infringement of the same two patents, which issued after the settlement agreement but are continuations depending from the applications that were at issue in the settlement. The New Mexico district court entered a preliminary injunction, enforcing the forum selection clause. Plaintiff dismissed its ITC and California claims. The Federal Circuit affirmed the entry of the injunction; the issues relate to and arise out of the settlement agreement district court correctly applied the factors of irreparable harm, balance of hardships, and public interest. View "Gen. Protecht Grp., Inc. v. Leviton Mfg. Co." on Justia Law

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The company filed a claim under the Tariff Act of 1930, 19 U.S.C. 1337, asserting infringement of its patents on microchip encapsulation innovations. The ITC found no violation. The Federal Circuit affirmed. Substantial evidence supported the finding of no infringement of one patent by 17 of 18 defendants. The court also affirmed the ITC's determination that the patent was not anticipated and its finding of patent exhaustion with respect to the eighteenth defendant. The claims with respect to other patents, which have expired, are moot.