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The patent, covering methods of treating hepatitis C by administering compounds having a specific chemical and stereochemical structure, issued on a final application filed on June 27, 2003, by the inventor, Storer. In an interference proceeding, Storer was initially declared the senior party based on the “S1” provisional application's June 28, 2002 filing date. Clark’s Application was filed September 12, 2007, with priority claimed to a provisional application filed on May 30, 2003. Both were filed before the effective date of the America Invents Act, which abolished the first-to-invent interference rule in favor of a first-to-file rule. Clark moved to deny Storer the priority date of the S1 application and to invalidate Storer’s claims, arguing that the S1 application did not enable compounds having the 2´F(down) substituent. Storer argued that these compounds were generically disclosed in the S1 application, and were readily obtained based on the disclosure in the S1 provisional and prior art. The Board awarded priority to Clark. The Federal Circuit affirmed; substantial evidence supports the Board’s finding that “a high amount of experimentation is necessary to synthesize” the target compound. The record showed sufficient variability and unpredictability to support a conclusion that Storer’s provisional application did not enable the interference subject matter. View "Storer v. Clark" on Justia Law

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NexLearn sued Allen in Kansas, alleging patent infringement and breach of contract. The companies had entered into a nondisclosure agreement to allow Allen to try NexLearn’s software, SimWriter®. Allen accessed SimWriter several times, then stated it was no longer interested in a deal with NexLearn, and developed its software, ZebraZapps. The agreement stated Kansas law governs the agreement. Allen, a Minnesota corporation with its principal place of business in Minnesota, argued it was not subject to Kansas jurisdiction, due to its limited contacts with the forum, which amounted to a single sale unrelated to ZebraZapps, and represented less than 1% of its five-year revenue. It argued the choice-of-law provision did not subject it to Kansas jurisdiction because NexLearn’s contract claim was supplemental to its patent claim, requiring NexLearn to establish personal jurisdiction over its infringement claim to bring its contract claim. NexLearn responded that Allen agreed to a License Agreement when it accessed SimWriter, specifying that “any dispute arising out of or related to this Agreement or the Product” must be brought in Kansas; that Allen “continually sent direct emails regarding ZebraZapps” to NexLearn employees; that Allen included Kansas in the dropdown menu on its ZebraZapps website; and summarized Allen’s activities with a trade association, which disseminated a magazine to Kansas residents that included Allen’s advertisement. The Federal Circuit affirmed dismissal for lack of jurisdiction. Allen’s website, plus its contacts with NexLearn create only an “attenuated affiliation” with Kansas, not a “substantial connection” as required for specific jurisdiction. View "NexLearn, LLC v. Allen Interactions, Inc." on Justia Law

Posted in: Civil Procedure

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Outdry’s 171 patent claims methods of waterproofing leather, particularly for the manufacture of shoes, clothes, or leather accessories. The specification discloses prior art methods of waterproofing leather shoes, including sewing a fabric lining and a semipermeable film to the interior surface of the leather or gluing a semi-permeable membrane inside the leather around the membrane’s perimeter, but states those methods allowed a water cushion to form in which water penetrates the leather and becomes trapped between the membrane and interior surface of the leather. The 171 patent sought to overcome this issue by “directly pressing” a semi-permeable membrane onto the leather via a dotted glue pattern. The Patent Board found that the claims would have been obvious over a combination of prior art. The Federal Circuit affirmed, upholding the Board’s construction of “directly pressing” and finding that a prior reference discloses “directly pressing” and “a process for waterproofing leather.” The Board’s fact finding regarding motivation to combine is supported by substantial evidence. View "Outdry Technologies Corp. v. Geox S.P.A." on Justia Law

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When an artery is damaged or inflamed, the body releases the enzyme myeloperoxidase (MPO). Prior art taught that MPO could be detected in an atherosclerotic plaque or lesion that required a surgically invasive method; could be indirectly detected in blood; or could be detected in blood with results that were not predictive of cardiovascular disease. Cleveland Clinic purportedly discovered how to “see” MPO in blood and correlate that to the risk of cardiovascular disease. True Health, a diagnostic laboratory, purchased the assets of Diagnostics, which had contracted with Cleveland Clinic to perform MPO testing. Rather than continue that relationship, True Health performed its own MPO testing. Cleveland Clinic sued, asserting infringement of the patents. The district court found all the claims patent-ineligible under 35 U.S.C. 101; dismissed the contributory and induced infringement claims of the 260 patent; denied leave to amend; and held that it was proper to consider section 101 at the motion to dismiss stage.. The court found that the claims were directed to a law of nature, with no saving inventive concept. The Federal Circuit affirmed. Cleveland Clinic provided no proposed construction of any terms or proposed expert testimony that would change the analysis. The claims, whether considered limitation-by-limitation or as a whole, do not sufficiently transform the natural existence of MPO in a bodily sample and its correlation to cardiovascular risk into a patentable invention. View "Cleveland Clinic Foundation v. True Health Diagnostics. LLC" on Justia Law

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EmeraChem’s 758 patent claims methods for regenerating a devitalized catalyst/absorber that has absorbed and oxidized nitrates and nitrites after exposure to pollutants in the combustion gases of engines by passing a regeneration gas over the catalyst without removing the catalyst. The application was filed in 1994; the patent issued in 1997, naming Guth and Campbell as co-inventors. The 758 patent incorporates Campbell 558 in its entirety. The application for Campbell 558 was filed months before the 758 application; the patent issued in 1995, disclosing a catalyst/absorber used to absorb and oxidize pollutants from exhaust gas but requiring removal of the catalyst/absorber. Campbell, Danziger, Guth, and Padron are its named co-inventors. Volkswagen sought inter partes review of the 758 patent, alleging anticipation of various claims and that various claims would have been obvious under 35 U.S.C. 103(a) over the combination of Campbell 558 and a prior reference. The Patent Board found that certain claims of the 758 patent would have been obvious over Campbell and another reference. The Federal Circuit affirmed as to several claims and vacated with respect to others. Campbell’s Declaration was insufficient to demonstrate that the cited portions of Campbell are not “by another.” The Board did not err in holding Campbell is section 102(e) prior art. The court remanded for clarification of whether the Board adopted a new rationale for unpatentability in its final written decision. View "EmeraChem Holdings, LLC v. Volkswagen Group of America, Inc." on Justia Law

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Presumptive service connection exists for veterans who served in the Persian Gulf War and have chronic: undiagnosed illness; medically unexplained chronic multisymptom illness (MUCMI); or any diagnosed illness as determined by the Secretary, 38 U.S.C. 1117(a)(2). VA regulations define MUCMI as “a diagnosed illness without conclusive pathophysiology or etiology, that is characterized by overlapping symptoms and signs and has features such as fatigue, pain, disability out of proportion to physical findings, and inconsistent demonstration of laboratory abnormalities. Chronic multisymptom illnesses of partially understood etiology and pathophysiology, such as diabetes and multiple sclerosis, will not be considered medically unexplained.”. Both the statute and regulation identify sleep disturbances and signs or symptoms involving the respiratory system as possible MUCMI manifestations. The VA revised its M21-1 Manual, changing the definition of MUCMI to require “both an inconclusive pathology, and an inconclusive etiology.” Under the subsection “Signs and Symptoms of Undiagnosed Illnesses or MUCMIs,” the VA added, “Sleep apnea cannot be presumptively service-connected (SC) under the provisions of 38 C.F.R. 3.317 since it is a diagnosable condition.” The Federal Circuit dismissed a veterans’ group’s petition for review for lack of jurisdiction, reasoning that the revisions are not binding and not reviewable under 38 U.S.C. 502. View "Disabled American Veterans v. Secretary of Veterans Affairs" on Justia Law

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One-E-Way filed a complaint with the International Trade Commission, alleging infringement of its patents, which disclose a wireless digital audio system designed to let people use wireless headphones privately, without interference, even when multiple people are using wireless headphones in the same space. The specification explains that previous wireless digital audio systems did not provide “private listening without interference where multiple users occupying the same space are operating wireless transmission devices.” The Commission found the claim term “virtually free from interference” indefinite and invalidated the asserted claims of One-E-Way’s patents. The Federal Circuit reversed, finding that the term “virtually free from interference,” as properly interpreted in light of the specification and prosecution history, would inform a person of ordinary skill in the art about the scope of the invention with reasonable certainty. View "One-E-Way, Inc. v. International Trade Commission" on Justia Law

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CAC’s patent includes both system and method claims directed to “provid[ing] financing for allowing a customer to purchase a product selected from an inventory of products maintained by a dealer.” In one embodiment, the products are vehicles for sale at a car dealership. The invention involves “maintaining a database of the dealer’s inventory,” gathering financing information from the customer, and “presenting a financing package to the dealer for each individual product in the dealer’s inventory.” Westlake petitioned for Covered Business Method (CBM) review, asserting that all claims were ineligible for patenting under 35 U.S.C. 101. Three months after the Board instituted review of some claims, the Supreme Court vacated precedent on which the Board had relied. In view of the developments in section 101 jurisprudence, Westlake filed a second petition, challenging the remaining claims. In its decision to institute review, the Board rejected CAC’s argument that the existence of the first CBM proceeding estopped Westlake from challenging claims the remaining claims under 35 U.S.C. 325(e)(1). The Board’s determination was based on the fact that the first proceeding had not yet resulted in a final written decision. The Federal Circuit agreed that estoppel did not apply and that the challenged claims were unpatentable. View "Credit Acceptance Corp. v. Westlake Services" on Justia Law

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In 1999, Lyons and Gillette discussed possibly forming a veterinary specialist organization (VSO) for treating athletic animals. For American Veterinary Medical Association accreditation, veterinarians must form an organizing committee and submit a letter of intent. Lyons, Gillette, and others formed a committee. By 2002, the committee began using the mark as the name of the intended VSO. Lyons participated in drafting the letter of intent, the accreditation petition, and bylaws and articles of incorporation. Lyons left the committee and sought registration of the mark for “veterinary education services namely conducting classes, seminars, clinical seminars, conferences, workshops and internships and externships in veterinary sports medicine and veterinary rehabilitation,” based on actual use, alleging first use in commerce in 1996. In 2006, the PTO registered the mark. In 2010, the VSO, “American College of Veterinary Sports Medicine and Rehabilitation” received provisional recognition; it petitioned to cancel Lyons’s registration on grounds of priority of use and likelihood of confusion, 15 U.S.C. 1052(d), misrepresentation of source, 15 U.S.C. 1064, and fraud. Meanwhile, the district court dismissed an infringement action by Lyons and ordered the PTO to reject Lyons’s application for Principal Register registration, but declined to cancel her Supplemental Register registration. The Board later concluded that Lyons was not the mark’s owner and that her underlying application was void. The Federal Circuit affirmed. In ownership disputes surrounding service marks as between a departing member and a remnant group, the factors are: the parties’ objective intentions or expectations; who the public associates with the mark; and to whom the public looks to stand behind the quality of goods or services offered under the mark. View "Lyons v. American College of Veterinary Sports Medicine and Rehabilitation" on Justia Law

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The Wyandot Nation of Kansas, a Native American tribe allegedly tracing its ancestry to the Historic Wyandot Nation, claims to be a federally recognized Indian tribe and a successor-in-interest to treaties between the Historic Wyandot Nation and the United States. Wyandot Nation filed suit, alleging that the government had breached its trust and fiduciary obligations with respect to trusts that resulted from those treaties, including one related to amounts payable under an 1867 treaty and one related to the Huron Cemetery. The Court of Federal Claims dismissed for lack of jurisdiction and standing. The Federal Circuit affirmed. Tribal recognition is within the primary jurisdiction of the Department of Interior; a court cannot independently make a determination of the effects of the various treaties or resolve the various conflicting legal and factual contentions. Wyandot Nation petitioned the Department of Interior in 1996 for federal recognition pursuant to the List Act regulations. Interior preliminarily determined that “the Wyandot Nation of Kansas, which consists of the descendants of the citizen Wyandotts of Kansas terminated in 1855, [does not qualify for] Federal acknowledgment through the administrative process and can only become a Federally recognized Indian Tribe by an act of Congress.” The Nation did not pursue further administrative or judicial review. View "Wyandot Nation of Kansas v. United States" on Justia Law