Justia U.S. 9th Circuit Court of Appeals Opinion SummariesArticles Posted in Patents
Hyatt v. Office of Management and Budget
The Ninth Circuit affirmed the district court's grant of summary judgment in favor of OMB in an action brought by plaintiff and AAET, contending that patent applicants should not have to comply with certain U.S. Patent & Trademark Office (USPTO) rules because the USPTO is violating the Paperwork Reduction Act (PRA). Plaintiff and AAET argue that patent applicants need not follow the rules because the USPTO is violating the PRA by failing to obtain OMB approval and a control number each time the USPTO makes a request to an applicant during the back-and-forth communications process concerning a particular patent. The OMB rejected this argument and concluded that the rules are not subject to the PRA.The panel held that the challenged rules do not impose "collections of information" subject to the PRA's procedural requirements. Rather, the PRA and the regulations expressly exclude from coverage individualized communications just like those between a patent examiner and a patent applicant. Furthermore, even if they impose "collections," most of the rules are exempted from the PRA under Exemption 6. View "Hyatt v. Office of Management and Budget" on Justia Law
Attia v. Google, LLC
Attia developed architecture technology called “Engineered Architecture” (EA). Google and Attia worked together on “Project Genie” to implement EA. Attia disclosed his EA trade secrets with the understanding that he would be compensated if the program were successful. After Attia executed patent assignments Google filed patent applications relating to the EA trade secrets and showed a prototype of the EA technology to investors. The patents were published in 2012. Google then allegedly excluded Attia from the project and used Attia’s EA technology to create a new venture. Attia sued Google for state law trade secret and contract claims. After Congress enacted the Defend Trade Secrets Act of 2016 (DTSA), 130 Stat. 376, making criminal misappropriation of a trade secret a predicate act under the Racketeer Influenced and Corrupt Organizations Act (RICO), Attia added RICO claims, 18 U.S.C. 1962(c). The Ninth Circuit affirmed the dismissal of the RICO and DTSA claims. The misappropriation of a trade secret before the enactment of the DTSA does not preclude a claim arising from post-enactment misappropriation or continued use of the same trade secret but Attia lacked standing to assert a DTSA claim. Google’s 2012 patent applications placed the information in the public domain and extinguished its trade secret status. The court rejected an argument that Google was equitably estopped from using the publication of its patent applications to defend against the DTSA claim. View "Attia v. Google, LLC" on Justia Law
Magnetar Techs. v. Intamin, Ltd.
Magnetar filed suit alleging that Intamin maliciously prosecuted a patent infringement action against it and claiming that Intamin prosecuted the action even though the ‘350 Patent was invalid pursuant to the on-sale bar of 35 U.S.C. 102 (on-sale bar). The district court granted summary judgment to Intamin. The court concluded that a reasonable attorney could have determined that the on-sale bar did not apply due to the genuine dispute concerning whether the magnetic braking system had been (1) offered for sale before the critical date; and (2) was ready for patenting before the critical date. Therefore, the court affirmed as to this issue. The court also affirmed the district court's conclusion that Magnetar has not alleged sufficient facts to show a causal antitrust injury stemming from Intamin’s actions. Finally, the court concluded that the district court properly refused to sanction Magnetar for filing a frivolous action where Magnetar proceeded in good faith in not admitting facts related to the antitrust injury. Accordingly, the court affirmed the district court's judgment in its entirety. View "Magnetar Techs. v. Intamin, Ltd." on Justia Law
Microsoft, Corp. v. Motorola, Inc.
Microsoft, a third-party beneficiary to Motorola’s reasonable and non-discriminatory (RAND) commitments, filed suit against Motorola for breach of its obligation to offer RAND licenses to its patents in good faith. Motorola filed infringement actions in a variety of fora to enjoin Microsoft from using its patents without a license. As a preliminary matter, the court rejected Motorola's challenge to its jurisdiction, concluding that there was no error or manifest injustice that would justify disrupting the court's and the Federal Circuit's prior determinations that it has jurisdiction. Further, there is no other exception to the law-of-the-case doctrine applicable. On the merits, the court rejected Motorola's challenge that the district court lacked the legal authority to decide the RAND rate issue in a bench trial, severing it from the ultimate breach of contract issue tried to the jury. Motorola also challenged the district court’s legal analysis in determining the RAND rate was contrary to Federal Circuit precedent. As to Motorola's first challenge, the court concluded that Motorola was quite aware, when it agreed with Microsoft in June to a RAND determination bench trial, that the RAND determination was being made to set the stage for the breach of contract trial. Nor did Motorola ever withdraw its affirmative stipulation to a bench trial for that purpose. Therefore, the court did not consider whether, absent consent, a jury should have made the RAND determination. In regards to Motorola's second challenge, the court reiterated that this is not a patent law action and that the Federal Circuit's patent law methodology can serve as a guidance in contracts cases on questions of patent valuation. In this case, the district court's analysis properly adapted that guidance. The court rejected Motorola's remaining arguments, concluding that the district court's factual findings were properly admitted at the jury trial, the jury's verdict was supported by substantial evidence, and its damages award was proper. Accordingly, the court affirmed the judgment. View "Microsoft, Corp. v. Motorola, Inc." on Justia Law
Posted in: Patents
Amity Rubberized Pen Co. v. Market Quest Grp.
This appeal stems from a patent dispute involving Amity's patent for a device that dispenses both toothpicks and tablets and Market Quest's alleged infringement of the patent. The court concluded that this case arises under the patent laws and therefore falls within the exclusive appellate jurisdiction of the Federal Circuit. The court lacked jurisdiction to resolve the merits of the appeal, but concluded that, had this appeal been filed with the Federal Circuit at the time it was filed with this court, the Federal Circuit would have had jurisdiction. And because this appeal is neither frivolous nor is there any indication that it was filed in bad faith, the court concluded that transfer is in the interest of justice. Therefore, the court ordered the matter transferred to the Federal Circuit pursuant to 28 U.S.C. 1631. View "Amity Rubberized Pen Co. v. Market Quest Grp." on Justia Law
Kimble v. Marvel Enter., Inc.
Plaintiff sued Marvel for patent infringement and breach of contract, claiming that it had used his ideas in developing a Spider-Man role-playing toy called the "Web Blaster" without compensating him. The parties subsequently agreed to settle the case while appeals were pending and executed a Settlement Agreement. Thereafter, Marvel entered into a licensing agreement with Hasbro giving it the right to produce the Web Blaster. At issue was the calculation of royalties for subsequent iterations of the Web Blaster. The court joined its sister circuits in holding, pursuant to Brulotte v. Thys Co., that a so-called "hybrid" licensing agreement encompassing inseparable patent and non-patent rights was unenforceable beyond the expiration date of the underlying patent, unless the agreement provided a discounted rate for the non-patent rights or some other clear indication that the royalty at issue was in no way subject to patent leverage. Accordingly, the court affirmed the district court's grant of summary judgment in favor of Marvel, concluding that plaintiff could not recover royalties under the Settlement Agreement beyond the expiration date of the patent at issue. View "Kimble v. Marvel Enter., Inc." on Justia Law
Microsoft Corp. v. Motorola, Inc., et al
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
Apple Inc. v. Psystar Corp.
Apple brought this action against Psystar for copyright infringement because Psystar was using Apple's software on Psystar computers. The district court held that Psystar was infringing Apple's federally registered copyrights in its operating software, Mac OS X, because Psystar was copying the software for use in Psystar's computers. Psystar subsequently appealed the district court's rejection of Psystar's copyright misuse defense, the district court's order enjoining Psystar's continuing infringement, and the district court's grant of Apple's motions to seal documents on grounds of maintaining confidentiality. The court held that Psystar's misuse defense failed because it was an attempt to apply the first sale doctrine to a valid licensing agreement. The court affirmed the district court's order enjoining Psystar's continuing infringement and Digital Millennium Copyright Act (DMCA), 17 U.S.C. 1203(b)(1), violations and held that the district court properly applied the Supreme Court's four eBay Inc. v MercExchange, L.L.C. factors. The court held, however, that there was no adequate basis on the record to support the sealing of any Apple records on grounds of confidentiality and applied the presumption in favor of access, vacating the district court's sealing orders.