Justia Government & Administrative Law Opinion Summaries

Causam Enterprises, Inc. owns several patents related to “demand response” technology, which allows electrical utilities to reduce power demand in response to certain conditions. Causam filed a complaint with the United States International Trade Commission (ITC), alleging that Resideo Smart Homes Technology (Tianjin) and its affiliate Ademco, Inc. were importing and selling internet-connected smart thermostats that infringed method claim 1 of U.S. Patent No. 10,394,268, which Causam claimed to own. Causam sought to exclude these products from importation. During the ITC investigation, respondents argued that Causam did not own the patent and that Resideo’s products did not infringe the asserted claims.The assigned administrative law judge (ALJ) at the ITC found that Causam did not own the ’268 patent and that Resideo’s products did not infringe the claims. The full Commission, upon review, adopted only the noninfringement finding and did not address the ownership issue. Causam appealed to the United States Court of Appeals for the Federal Circuit, challenging the noninfringement determination and seeking a ruling on ownership. Meanwhile, the Patent Trial and Appeal Board (PTAB) held, in a separate inter partes review, that claim 1 of the ’268 patent was unpatentable, and the Federal Circuit affirmed that decision in a companion case.The United States Court of Appeals for the Federal Circuit held that Causam owns the ’268 patent, interpreting the relevant assignment agreements to exclude continuations-in-part from a prior assignment, thus leaving ownership with Causam. However, the court did not reach the noninfringement issue because its affirmance of the PTAB’s finding that claim 1 is unpatentable rendered the appeal moot. The court therefore dismissed the appeal as moot. View "CAUSAM ENTERPRISES, INC. v. ITC " on Justia Law

Two advocacy organizations submitted a petition to the United States Patent and Trademark Office (PTO) seeking a rule that would limit the PTO’s discretion to institute inter partes review (IPR) and post-grant review (PGR) proceedings under the America Invents Act. Their proposed rule would have prevented institution of such proceedings in certain circumstances when the patent owner objected and met specific criteria, such as being the original applicant and having small entity status. The PTO denied the petition, stating that the issues overlapped with topics already under consideration in a separate request for public comment and that the suggestions would be considered in any future rulemaking.After the denial, the organizations filed a lawsuit in the United States District Court for the District of Columbia, alleging that the PTO’s denial violated the Administrative Procedure Act and the America Invents Act. They argued that the PTO failed to act within a reasonable time, did not provide adequate reasons for denial, and was required to engage in notice-and-comment rulemaking. The PTO moved to dismiss the complaint for lack of standing. The district court granted the motion, finding that the organizations lacked both organizational and associational standing because they failed to show that any member faced a concrete, non-speculative injury as a result of the PTO’s denial.On appeal, the United States Court of Appeals for the Federal Circuit reviewed the dismissal de novo. The court held that the organizations lacked associational standing because they did not demonstrate that any member suffered an actual or imminent injury traceable to the PTO’s denial of the petition. The court found the alleged injury too speculative, relying on a chain of uncertain future events involving third-party actions. The Federal Circuit affirmed the district court’s dismissal for lack of standing. View "US INVENTOR, INC. v. PTO " on Justia Law

A state port authority and a group of related companies entered into a series of letters of intent (LOIs) regarding the possible expansion and operation of a port facility. The final LOI, signed in December 2019, included provisions for confidentiality, exclusivity, and certain legally binding terms, but also stated that it was not a binding agreement to consummate the potential transaction. The port authority’s board approved the LOI and several subsequent extensions, but the board minutes did not include the terms or conditions of the LOI. After negotiations failed, the port authority terminated the LOI. The companies claimed significant losses and alleged the port authority had breached the LOI and misused confidential information.The Harrison County Circuit Court found that the LOI was unenforceable under Mississippi’s “minutes rule,” which requires that public board contracts be sufficiently detailed in the board’s official minutes. The court dismissed all claims based on the LOI, including breach of contract and quantum meruit, but allowed claims for unjust enrichment and misappropriation of trade secrets to proceed. Both parties sought interlocutory appeal, and the appeals were consolidated.The Supreme Court of Mississippi affirmed the lower court’s ruling that the LOI was unenforceable because the board minutes did not contain enough terms to determine the parties’ obligations, and held that the minutes rule was not superseded by the Open Meetings Act. The court also held that unjust enrichment, as an implied contract claim, was barred by the minutes rule and reversed the trial court’s denial of summary judgment on that claim. However, the court affirmed that the companies’ notice of claim regarding misappropriation of trade secrets was sufficient under the Mississippi Tort Claims Act. The case was remanded for further proceedings on the remaining claim. View "The Mississippi State Port Authority at Gulfport v. Yilport Holding A.S." on Justia Law

CPI Security Systems, Inc. filed a lawsuit against Vivint Smart Home, Inc., alleging that Vivint engaged in deceptive practices to lure away CPI’s customers. Vivint sales representatives falsely claimed that Vivint had acquired CPI, that CPI was going out of business, or that Vivint needed to upgrade CPI’s equipment. These tactics led many CPI customers to switch to Vivint, causing significant losses for CPI. A jury found Vivint liable for violating the Lanham Act, the North Carolina Unfair and Deceptive Trade Practices Act (UDTPA), and for committing the common-law torts of unfair competition and tortious interference with contracts. The jury awarded CPI $49.7 million in compensatory damages and $140 million in punitive damages.The United States District Court for the Western District of North Carolina upheld the jury’s verdict. Vivint appealed, raising several issues, including the requirement of CPI’s reliance on false statements for the UDTPA claim, the sufficiency of evidence supporting the damages award, the application of North Carolina’s cap on punitive damages, and the admission of prejudicial evidence.The United States Court of Appeals for the Fourth Circuit reviewed the case and found no reversible error. The court held that CPI was not required to prove its own reliance on Vivint’s false statements to establish a UDTPA claim, as the claim was based on unfair competition rather than fraud. The court also found that the evidence presented by CPI was sufficient to support the jury’s damages award. Additionally, the court ruled that the district court correctly applied North Carolina’s cap on punitive damages by considering the total compensatory damages awarded. The court further held that the district court did not abuse its discretion in denying Vivint’s motion to bifurcate the trial or in its evidentiary rulings. The reassignment of the trial judge post-trial did not warrant a new trial. Consequently, the Fourth Circuit affirmed the district court’s judgment. View "CPI Security Systems, Inc. v. Vivint Smart Home, Inc." on Justia Law

The case involves Bacardi & Company Limited and Bacardi USA, Inc. (collectively, Bacardi) and the United States Patent and Trademark Office (PTO). Bacardi claimed that the PTO violated Section 9 of the Lanham Act and its own regulations by renewing a trademark registration ten years after it expired. The trademark in question is the "HAVANA CLUB," originally registered by a Cuban corporation, José Arechabala, S.A. In 1960, the Cuban government seized the corporation's assets, and by 1974, the U.S. trademark registrations for HAVANA CLUB rum had expired. Later, a company owned by the Cuban government registered the HAVANA CLUB trademark in the U.S. for itself. Bacardi, which had bought the interest in the mark from Arechabala, filed its own application to register the HAVANA CLUB mark and petitioned the PTO to cancel the Cuban government-owned company's registration.The PTO denied Bacardi's application due to the Cuban government-owned company's preexisting registration, and the Trademark Trial and Appeal Board (TTAB) denied Bacardi's cancellation petition. Bacardi then filed a civil action challenging the TTAB's denial of cancellation. Meanwhile, the Cuban government-owned company's registration was set to expire in 2006, unless it renewed its trademark. However, due to a trade embargo, the company was not permitted to pay the required renewal fee without first obtaining an exception from the Department of the Treasury’s Office of Foreign Assets Control (OFAC). OFAC denied the company's request for an exception, and the PTO notified the company that its registration would expire due to the failure to submit the renewal fee on time.The United States Court of Appeals for the Fourth Circuit reversed the district court's judgment that dismissed Bacardi's lawsuit for lack of subject matter jurisdiction. The court concluded that the Lanham Act does not foreclose an Administrative Procedure Act (APA) action for judicial review of the PTO’s compliance with statutes and regulations governing trademark registration renewal. The court found that the Lanham Act does not expressly preclude judicial review of PTO registration renewal decisions or fairly implies congressional intent to do so. Therefore, the APA’s mechanism for judicial review remains available. The case was remanded for further proceedings. View "Bacardi and Company Limited v. United States Patent & Trademark Office" on Justia Law

The case involves the Medical Imaging & Technology Alliance and the Advanced Medical Technology Association, two trade associations representing medical device manufacturers, who sued the Library of Congress and the Librarian of Congress. The dispute arose from an exemption to the Digital Millennium Copyright Act (DMCA) that allowed some access to the software of advanced medical devices. The trade associations claimed that the exemption violated the Administrative Procedure Act (APA). The district court dismissed the case, ruling that the APA claims were barred by sovereign immunity because the Library of Congress is part of “the Congress” and therefore not an “agency” within the meaning of the APA’s judicial review provision.The United States Court of Appeals for the District of Columbia Circuit reversed the district court's decision. The court held that irrespective of whether the Library is an “agency,” Congress has specified that copyright regulations under Title 17 of the U.S. Code are subject to the APA. The court concluded that DMCA rules are subject to the APA just like other copyright rules, and therefore, the APA provides the necessary waiver of sovereign immunity for this suit. The court remanded the case back to the district court to assess the APA claims. View "Medical Imaging & Technology Alliance v. Library of Congress" on Justia Law

The case revolves around a dispute between Ulrich Speck and Bruno Scheller (collectively, “Speck”) and Brian L. Bates, Anthony O. Ragheb, Joseph M. Stewart IV, William J. Bourdeau, Brian D. Choules, James D. Purdy, and Neal E. Fearnot (collectively, “Bates”) over the priority of a patent related to a drug-coated balloon catheter. The Patent and Trademark Office (“PTO”) Patent Trial and Appeals Board (“Board”) had previously awarded priority to Bates. Speck had argued that the claims of Bates' patent application were time-barred under 35 U.S.C. § 135(b)(1) and invalid for lack of written description. The Board denied these motions.The United States Court of Appeals for the Federal Circuit reviewed the case and concluded that the Board erred in finding that Bates' patent application was not time-barred under 35 U.S.C. § 135(b)(1). The court applied a two-way test to determine if pre-critical date claims and post-critical date claims were materially different. The court found that the post-critical date claims were materially different from the pre-critical date claims, making the patent application time-barred. The court reversed the Board's decision, vacated its order canceling the claims of Speck's patent and entering judgment on priority against Speck, and remanded for further proceedings consistent with its opinion. View "SPECK v. BATES " on Justia Law

This case involves an appeal by Pfizer Inc. from decisions made by the U.S. Patent and Trademark Office Patent Trial and Appeal Board (the Board). The Board concluded that claims 1–45 of U.S. Patent 9,492,559, owned by Pfizer and related to immunogenic compositions comprising conjugated Streptococcus pneumoniae capsular saccharide antigens for use in pneumococcal vaccines, were unpatentable. The Board also denied Pfizer’s proposed amendments to the claims.Pfizer's first challenge pertained to the Board’s conclusion regarding the molecular weight of the glycoconjugate in the patent, arguing that the Board incorrectly applied the "result-effective variable doctrine." The court disagreed, upholding the Board's decision that the molecular weight was a result-effective variable that a person of ordinary skill in the art would have been motivated to optimize.Pfizer's second challenge related to the Board’s finding that the compositions of additional claims incorporating more specific glycoconjugates would have been obvious. The court disagreed with Pfizer's argument that without examples showing the claimed glycoconjugates would have each been immunogenic, there would have been no reasonable expectation of success.Thirdly, Pfizer challenged the Board’s denial of its motions to amend the claims. The court affirmed the Board's decision on some of the proposed claims but vacated the decision on others, remanding them for further consideration due to the Board’s lack of clarity.Lastly, Pfizer challenged the Patent and Trademark Office’s Director Review procedure, alleging it violated the Administrative Procedure Act (APA). The court rejected this argument, finding any potential APA violation was harmless as Pfizer had not demonstrated prejudice.Therefore, the court affirmed the Board’s decisions in part, vacated them in part, and remanded the case back to the Board for further proceedings. View "PFIZER INC. v. SANOFI PASTEUR INC. " on Justia Law

In 2020, the law firm Chestek PLLC applied for a trademark for the mark "CHESTEK LEGAL" but provided only a P.O. box as its domicile address. The United States Patent and Trademark Office (USPTO) refused the application because it did not comply with the domicile address requirement. Chestek argued that the rules enforcing this requirement were improperly promulgated under the Administrative Procedure Act (APA). The Trademark Trial and Appeal Board affirmed the examiner's refusal. On appeal to the United States Court of Appeals for the Federal Circuit, Chestek argued that the domicile address requirement was improperly promulgated for two reasons: the USPTO was required to comply with the requirements of notice-and-comment rulemaking under 5 U.S.C. § 553 but failed to do so because the proposed rule did not provide notice of the domicile address requirement adopted in the final rule, and the domicile address requirement is arbitrary and capricious because the final rule failed to offer a satisfactory explanation for the domicile address requirement and failed to consider important aspects of the problem it purports to address, such as privacy. The Federal Circuit found the domicile address requirement to be a procedural rule that is exempt from notice-and-comment rulemaking. Furthermore, the USPTO's decision to require the address provided by all applicants to be a domicile address was not arbitrary or capricious for failure to provide a reasoned justification. The court affirmed the Board's refusal to register Chestek's mark. View "In Re CHESTEK PLLC " on Justia Law

In this case, the University of South Florida Board of Trustees (USF) sued the United States, claiming that the latter infringed a patent owned by USF regarding genetically modified mice for Alzheimer's Disease research. The USF contended that The Jackson Laboratory, with the government's authorization and consent, had been producing and using mice covered by the patent for the government. The government countered the claim by asserting it had a license to practice the patent under a provision of the Bayh-Dole Act, which addresses patent rights in work funded by the federal government. The United States Court of Appeals for the Federal Circuit determined that the provision does apply and therefore affirmed the judgment of noninfringement. The court confirmed that the April 1997 work, the first actual reduction to practice of the invention, was "in the performance of work under a funding agreement." The court also rejected USF's contention that a funding agreement must be in place at the time of the relevant work, clarifying that the Act can cover work already performed before a funding agreement is executed or becomes effective. View "University of South Florida Board of Trustees v. United States" on Justia Law