Justia Business Law Opinion Summaries

The case concerns a dispute between two companies involved in the production and sale of coiled tubing for the oil and gas industry. One company, having acquired assets and documents from a predecessor, developed a coiled tubing product and obtained several patents (the ’256, ’074, and ’075 patents) covering aspects of this technology. The predecessor’s documents disclosed a product with overlapping technical specifications compared to at least some claims of these patents. During the patent application process, the company submitted a related public reference to the Patent and Trademark Office (Chitwood), but did not disclose the predecessor’s internal documents (the CYMAX Documents) that contained additional details. Internal discussions reflected uncertainty among inventors and counsel about the relevance and necessity of disclosing these documents.After disputes arose in the marketplace over alleged patent infringement, the manufacturer of a competing product initiated litigation in the United States District Court for the Southern District of Texas, seeking a declaration of non-infringement. The patent holder counterclaimed for infringement and, as the case proceeded, the competitor amended its claims to include allegations of inequitable conduct (fraud on the Patent Office by withholding material information) and Walker Process fraud (antitrust liability for enforcing a patent obtained by fraud). The district court granted summary judgment to the competitor on the inequitable conduct claim, finding clear evidence of intent to deceive and materiality, and granted summary judgment to the patent holder on the Walker Process fraud claim, finding insufficient evidence of market power.On appeal, the United States Court of Appeals for the Federal Circuit vacated both summary judgment rulings. The appellate court held that genuine disputes of material fact precluded summary judgment on both inequitable conduct and Walker Process fraud. The court remanded for further proceedings, allowing both claims to proceed, and affirmed the denial of summary judgment for the patent holder on inequitable conduct. View "GLOBAL TUBING LLC v. TENARIS COILED TUBES LLC " on Justia Law

Two companies that manufacture activated carbon honeycombs, used in automotive emission control systems, became embroiled in a legal dispute. One company holds a patent covering certain dual-stage fuel vapor canister systems, but not honeycombs used in air-intake systems. The other company began marketing a competing honeycomb product, prompting a patent infringement lawsuit. In response, the defendant challenged the validity of the patent, argued non-infringement, and asserted counterclaims alleging antitrust violations—specifically, that the patent holder unlawfully tied licenses for the patent to the purchase of its unpatented honeycomb products.The United States District Court for the District of Delaware first granted summary judgment that the patent was invalid due to prior invention. It then denied both parties’ motions for summary judgment on the antitrust and tortious interference counterclaims, finding a factual dispute about whether the honeycomb products had substantial non-infringing uses. At trial, the jury found the patent holder liable for unlawful tying under federal antitrust law, concluding that it had conditioned patent licenses on customers buying its honeycombs, and awarded significant damages. The district court denied the patent holder’s motions for judgment as a matter of law and for a new trial, confirming the jury’s findings that the honeycombs were staple goods with substantial non-infringing uses and that the conduct was not protected by immunity doctrines.On appeal, the United States Court of Appeals for the Federal Circuit affirmed the district court’s judgment. The Federal Circuit held that substantial evidence supported the jury’s findings that the honeycomb products had actual and substantial non-infringing uses, making them staple goods and removing the patent holder’s statutory defense against antitrust liability. The court also rejected the argument that the patent holder’s conduct was immunized from antitrust scrutiny, and upheld the damages award, finding no error in the district court’s rulings or the jury’s determinations. View "INGEVITY CORPORATION v. BASF CORPORATION " on Justia Law

Shareholders of Fannie Mae and Freddie Mac, acting derivatively on behalf of these entities, challenged the federal government’s actions following the 2008 financial crisis. After the housing market collapse, Congress passed the Housing and Economic Recovery Act of 2008 (HERA), creating the Federal Housing Finance Agency (FHFA) and authorizing it to act as conservator for the Enterprises. The FHFA placed both entities into conservatorship, and the U.S. Treasury entered into agreements to provide financial support in exchange for senior preferred stock and other rights. In 2012, a “net worth sweep” was implemented, redirecting nearly all profits from the Enterprises to the Treasury, effectively eliminating dividends for other shareholders. The plaintiffs, as preferred shareholders, alleged that this arrangement constituted an unconstitutional taking under the Fifth Amendment.The United States Court of Federal Claims previously reviewed the case and granted the government’s motion to dismiss. The Claims Court relied on the Federal Circuit’s prior decision in Fairholme Funds, Inc. v. United States, which held that, under HERA, the Enterprises lost any cognizable property interest necessary to support a takings claim because the FHFA, as conservator, had broad authority over the Enterprises’ assets. The Claims Court found the plaintiffs’ claims indistinguishable from those in Fairholme and dismissed them accordingly.On appeal, the United States Court of Appeals for the Federal Circuit reviewed the dismissal de novo. The court affirmed the Claims Court’s decision, holding that claim preclusion barred the plaintiffs’ derivative takings claims because the issues had already been litigated in Fairholme. The court rejected arguments that the prior representation was inadequate or that the Supreme Court’s subsequent decision in Tyler v. Hennepin County fundamentally changed takings law. The Federal Circuit concluded that Fairholme remained binding precedent and affirmed the dismissal. View "FISHER v. US " on Justia Law

Fraunhofer-Gesellschaft zur Förderung der angewandten Forschung e.V. (Fraunhofer) is a non-profit research organization that developed and patented multicarrier modulation (MCM) technology used in satellite radio. In 1998, Fraunhofer granted WorldSpace International Network, Inc. (WorldSpace) an exclusive license to its MCM technology patents. Fraunhofer also collaborated with XM Satellite Radio (XM) to develop a satellite radio system, requiring XM to obtain a sublicense from WorldSpace. XM later merged with Sirius Satellite Radio to form Sirius XM Radio Inc. (SXM), which continued using the XM system. In 2010, WorldSpace filed for bankruptcy, and Fraunhofer claimed the Master Agreement was terminated, reverting patent rights to Fraunhofer. In 2015, Fraunhofer notified SXM of alleged patent infringement and filed a lawsuit in 2017.The United States District Court for the District of Delaware initially dismissed the case, ruling SXM had a valid license. The Federal Circuit vacated this decision and remanded the case. On remand, the district court granted summary judgment for SXM, concluding Fraunhofer's claims were barred by equitable estoppel due to Fraunhofer's delay in asserting its rights and SXM's reliance on this delay to its detriment.The United States Court of Appeals for the Federal Circuit reviewed the case and reversed the district court's summary judgment. The Federal Circuit agreed that Fraunhofer's delay constituted misleading conduct but found that SXM did not indisputably rely on this conduct in deciding to migrate to the high-band system. The court noted that SXM's decision was based on business pragmatics rather than reliance on Fraunhofer's silence. The case was remanded for further proceedings to determine if SXM relied on Fraunhofer's conduct and if it was prejudiced by this reliance. View "Fraunhofer-Gesellschaft v. Sirius XM Radio Inc." on Justia Law

MOVA technology can capture an actor’s facial performance for use in motion picture special effects and video games; it is secured by trademarks, copyrights, and patents, and is reflected in hardware, source code, and physical assets. VGHL claims that Perlman, the head of Rearden, declined to acquire the MOVA assets from OL2 and proposed OL2 sell to a Rearden employee, LaSalle. Perlman introduced LaSalle to Rearden’s corporate attorney who helped LaSalle establish his own company, MO2, and negotiated with OL2. Perlman later demanded that LaSalle convey the MOVA assets to Rearden and terminated LaSalle’s employment when LaSalle refused. MO2 sold the MOVA assets to SHST, which hired LaSalle, and began selling the technology. The Rearden parties claimed that SHST never obtained ownership and that LaSalle was simply hired to handle the acquisition on Rearden’s behalf. SHST sued, alleging that Rearden had made “false or misleading representations ... concerning the ownership of the MOVA Assets ... to mislead the public and actual and prospective users and licensees” and had falsely recorded assignments of the MOVA patents. During discovery, SHST moved to compel Rearden to produce documents exchanged between MO2 and Rearden’s corporate attorney. The district court granted the request, concluding that Rearden had not shown entitlement to assert attorney-client privilege on behalf of MO2 and that LaSalle waived privilege when he shared documents. The Federal Circuit denied a petition for mandamus. Rearden's arguments failed to carry the high burden required on mandamus to overturn the court’s discovery determination. View "In re: Rearden, LLC" on Justia Law

The Internal Revenue Service denied Wells Fargo’s claims for refunds based on interest-netting under 26 U.S.C. 6621(d) between interest on tax underpayments and interest on tax overpayments. Section 6621(d) reads: To the extent that, for any period, interest is payable under subchapter A and allowable under subchapter B on equivalent underpayments and overpayments by the same taxpayer of tax imposed by this title, the net rate of interest under this section on such amounts shall be zero for such period. Absent an interest-netting provision , a taxpayer might make equivalent underpayments and overpayments yet owe the IRS interest because corporate taxpayers pay underpayment interest at a higher rate than the IRS pays overpayment interest. The Claims Court granted Wells Fargo partial summary judgment, finding that it satisfied the “same taxpayer” requirement, although the current embodiment of the company is the result of seven mergers. The companies involved in these mergers made tax underpayments and overpayments. The Federal Circuit identified three merger “situations” and concluded that two qualified for interest netting and one did not. The situations involved consideration of the whether the entities had separate identities at the time of the payments at issue and the amount of change in the entity’s identity as a result of the merger. View "Wells Fargo & Co. v. United States" on Justia Law

SightSound’s patents disclose methods for sale and distribution of digital audio and video signals, requiring: connection, by telecommunications lines, between a party’s memory and a second party’s memory; selling digital signals to the second party for a fee through telecommunications lines; transmitting the signal from the first memory to the second memory by telecommunications lines; and storing the signal in the second memory. Apple sought covered business method (CBM) review under the America Invents Act, 125 Stat. 284, arguing that claims were invalid as anticipated under 35 U.S.C. 102. The Patent Board determined that the patents are CBM patents because they recite an activity that is “financial in nature,” and do not include novel, non-obvious technological features, then determined that there was a reasonable likelihood that the claims were anticipated or obvious by disclosures relating to a 1980s CompuSonics computer system. The petitions did not specifically allege obviousness over CompuSonics. The Board granted SightSound additional time and authorized sur-replies and new declaration testimony on the issue of obviousness, then rejected SightSound’s contention that the term “second memory” is limited to non-removable media and held seven claims invalid as obvious. The Federal Circuit found that it lacked jurisdiction to review the decision to consider issues not explicitly raised in the petitions, but affirmed that the patents are CBM patents and the final decision with respect to claim construction and obviousness. View "Sightsound Techs., LLC v. Apple Inc." on Justia Law