Justia U.S. Federal Circuit Court of Appeals Opinion Summaries
HZNP Medicines LLC v. Actavis Laboratories UT, Inc.
Horizon’s patents generally relate to methods and compositions for treating osteoarthritis and share a substantially similar specification; there are method-of-use patents and formulation patents. Both groups of patents are listed in the FDA Approved Drug Products with Therapeutic Equivalence Evaluations (Orange Book) for Horizon’s PENNSAID® 2% product, a nonsteroidal anti-inflammatory drug (NSAID) and the first FDA-approved twice-daily topical diclofenac sodium formulation for the treatment of pain of osteoarthritis of the knees. Prior art, PENNSAID® 1.5%, also treats osteoarthritis knee pain but differs from PENNSAID® 2% both in the formulation and recommended dosage. Actavis sought to market a generic version of PENNSAID 2% and filed an Abbreviated New Drug Application (ANDA) with certification under 21 U.S.C. 355(j)(2)(A)(vii)(IV), stating that the patents-at-issue were invalid or would not be infringed by Actavis’s generic product. Horizon filed an infringement suit under 35 U.S.C. 271(e)(2)(A). The Federal Circuit affirmed findings of invalidity and noninfringement, upholding claim construction that the terms “impurity A”; “degrades at less than 1% over 6 months”; and “consisting essentially of” are indefinite. Actavis’s ANDA label did not induce infringement of the method-of-use patent. View "HZNP Medicines LLC v. Actavis Laboratories UT, Inc." on Justia Law
B.E. Technology, L.L.C. v. Facebook, Inc.
B.E. sued Facebook for infringement of B.E.’s 314 patent. Approximately a year into the case, Facebook and two other parties B.E. had accused of infringement, Microsoft and Google, filed petitions for inter partes review of the asserted claims. The district court stayed its proceedings. The Patent Board instituted review and held the claims unpatentable. The Federal Circuit affirmed. Facebook then moved in the district court for a dismissal with prejudice and costs under Rule 54(d). B.E. agreed that dismissal was appropriate but argued that the claims should be dismissed for mootness, rather than with prejudice. The district court agreed with B.E., issuing an Order holding that, in light of the cancellation of claims, B.E. no longer had a basis for the lawsuit. The court ultimately awarded costs under Rule 54(d). The Clerk of Court held a hearing and taxed $4,424.20 in costs against B.E.; the court affirmed, holding that, although the case was dismissed for mootness, Facebook “obtained the outcome it sought: rebuffing B.E.’s attempt to alter the parties’ legal relationship.” The Federal Circuit affirmed, finding Facebook to be the prevailing party in B.E.’s lawsuit. View "B.E. Technology, L.L.C. v. Facebook, Inc." on Justia Law
OSI Pharmaceuticals, LLC v. Apotex Inc
Non-small cell lung cancer (NSCLC) was the leading cause of cancer deaths in 2000. The standard for treating NSCLC was chemotherapy, which ameliorated some lung cancer-related symptoms, but was limited in use due to toxicity. In response to a need for a therapy that would effective and well-tolerated, investigators pursued targeted therapies as alternatives to chemotherapy. A great majority of alternative therapies for NSCLC failed in clinical trials. One compound that ultimately gained FDA approval was erlotinib. OSI markets erlotinib under the name Tarceva®, which is covered by the 221 patent, which issued in 2005. On inter partes review, the Patent Board found certain claims unpatentable under 35 U.S.C. 103, in light of prior art and the 10-K disclosure filed by OSI with the Securities and Exchange Commission. The Federal Circuit reversed. Substantial evidence did not support the Board’s finding that the asserted combinations of prior art or prior art and the 10-K disclosures each would have provided a person of ordinary skill with a reasonable expectation of success in using erlotinib to treat NSCLC in a mammal. View "OSI Pharmaceuticals, LLC v. Apotex Inc" on Justia Law
Mid Continent Steel & Wire, Inc. v. United States
Based on Mid Continent’s petition, the Department of Commerce initiated an antidumping duty investigation into steel nail products from Taiwan and certain other places. Commerce separated the Taiwanese investigation into its own proceeding and named Taiwanese exporter PT and its affiliated nail producer Pro-Team as mandatory respondents. Commerce found that the respondents were “dumping” goods, 19 U.S.C. 1673, and imposed a small antidumping duty on their imports. The Federal Circuit rejected Mid Continent’s argument that Commerce mistakenly rejected its argument that PT was affiliated with certain companies and should have imposed a higher duty. The court partially rejected PT’s argument that Commerce made methodological errors, the correction of which would reduce any dumping margin to a de minimis level so that no duty would be imposed, but remanded for further proceedings on Commerce’s choice of a simple averaging in calculating the pooled variance. View "Mid Continent Steel & Wire, Inc. v. United States" on Justia Law
Posted in: International Trade
American Axle & Manufacturing, Inc. v. Neapco Holdings LLC
AAM’s 911 patent generally relates to a method for manufacturing driveline propeller shafts with liners that are designed to attenuate vibrations transmitted through a shaft assembly. Propshafts are employed in automotive vehicles to transmit rotary power in a driveline. The patent identified a need for an improved method for damping various types of vibrations in a hollow shaft; AAM argued that the inventive concept to which the claims are directed is the tuning of a liner in order to produce frequencies that dampen the shell mode and bending mode vibrations simultaneously. In AAM’s infringement action against Neapco, the district court granted Neapco summary judgment, holding that the asserted claims are patent-ineligible under 35 U.S.C. 101. The Federal Circuit affirmed. The claims’ direction to tune a liner to attenuate to different vibration modes amounted to merely instructing one to apply Hooke’s law to achieve the desired result of attenuating certain vibration modes and frequencies without providing a particular means of how to craft the liner and propeller shaft in order to do so. Hooke’s law is a natural law, an equation that describes the relationship between an object’s mass, its stiffness, and the frequency at which the object vibrates. View "American Axle & Manufacturing, Inc. v. Neapco Holdings LLC" on Justia Law
Montelongo v. Office of Personnel Management
Montelongo was a West Point student cadet, 1973-1977, then served in the Army 1977-1996, from which he retired. From June 21, 2001, to March 28, 2005, Montelongo served as a civilian presidential appointee in the Air Force. An Air Force human resources officer advised Montelongo that his time as a cadet could be “bought back” and credited toward an eventual civil service annuity under the Federal Employees Retirement System (FERS), 5 U.S.C. 8401–8479. Montelongo made the small payment to “buy back” his four years at West Point and, in 2017, applied for a FERS annuity. The Office of Personnel Management and the Merit Systems Protection Board concluded, and the Federal Circuit affirmed, that only his time as a presidential appointee (just under four years) counted as creditable civilian service. Montelongo did not satisfy the five-year threshold requirement for a FERS annuity. Montelongo’s cadet time was “military service” that was creditable service under 5 U.S.C. 8411(c)(1) but was not “civilian service” for which section 8410 sets a five-year minimum for annuity qualification. View "Montelongo v. Office of Personnel Management" on Justia Law
Callaway Manor Apartments v. United States
In 1983-1984, the Farmers Home Administration issued apartment owners (Appellants) 50-year loans to provide low-income housing under 42 U.S.C. 1485. A promissory note provided that prepayments “may be made at any time at the option of the Borrower.” The mortgage stated that the loan must be used in compliance with the statute and that Appellants must use the property for low-income housing for 20 years before they could prepay and exit the program. The documents were contemporaneously executed and cited each other. The Emergency Low Income Housing Preservation Act of 1987 and Housing and Community Development Act of 1992 provided that borrowers could no longer prepay after the 20-year period but must notify FmHA’s successor, which was to make “reasonable efforts" to extend the low-income use,” 42 U.S.C. 1472(c)(4)(A). If the agreement is not extended, the borrower must attempt to sell the property at fair market value to a nonprofit organization or a public agency. Appellants rejected incentive offers and, in 2009-2010, unsuccessfully marketed their properties for the required period. Facing foreclosure and low occupancy due to high unemployment, Appellants submitted deeds in lieu of foreclosure, then filed suit. The Federal Circuit reinstated certain claims. In transferring deeds to the government, Appellants did not assign away their accrued claims for breach of the prepayment right. The Claims Court properly dismissed a contract-based Fifth Amendment “takings” claim. In entering contracts, the government acts in its commercial capacity and remedies arise from the contracts themselves, rather than from constitutional protections. Appellants can succeed under a theory premised on their property interests in the land and buildings before entering the contracts. View "Callaway Manor Apartments v. United States" on Justia Law
Honeywell International Inc. v. Arkema Inc.
Honeywell’s patent, directed to fluoroalkene compounds used in refrigeration systems and other applications, issued in October 2015 and recites a chain of priority applications dating back to 2002, all of which were incorporated by reference. During prosecution of the patent, Honeywell filed a preliminary amendment that canceled all 20 claims recited in the original application and added 20 new claims directed to different subject matter: automobile air conditioning systems. The Patent Trial and Appeal Board initiated post-grant review proceedings, finding that the claims of the patent were only entitled to a priority date of March 2014—the filing date of the application that led to the patent—rather than the 2002 priority date that would result if the priority chain adequately supported the claims. PGR proceedings are available only for patents having at least one claim with an effective filing date on or after March 16, 2013. There were several prior art references dated from the period between 2002 and 2014. The Federal Circuit vacated the Board’s refusal to grant Honeywell leave to seek a Certificate of Correction to correct the challenged patent. The Board abused its discretion by assuming the authority that 35 U.S.C. 255 expressly delegates to the Director: to determine when a Certificate of Correction is appropriate. View "Honeywell International Inc. v. Arkema Inc." on Justia Law
Campbell Soup Co. v. Gamon Plus, Inc.
Gamon owns the 646 and 645 patents, which each claim the ornamental design for a gravity feed dispenser display (a can dispenser). On inter partes review, the Patent Trial and Appeal Board held that Campbell did not demonstrate that the claimed designs of the patents would have been obvious over the Linz and Samways patents. The Federal Circuit vacated in part. Substantial evidence does not support the Board’s finding that Linz is not a proper primary reference. Linz’s design is made to hold a cylindrical object in its display area. Affirming in part, the court noted that Samways has a dual dispensing area, compared to the single dispensing area of the claimed designs, and has a front label area with different dimensions that extends across both dispensing areas. Given these differences, substantial evidence supports the Board’s finding that Samways does not create basically the same visual impression as the claimed designs. View "Campbell Soup Co. v. Gamon Plus, Inc." on Justia Law
Alternative Carbon Resources, LLC v. United States
Alternative Carbon claimed nearly $20 million in energy tax credits meant for taxpayers who sell alternative fuel mixtures under 26 U.S.C. 6426(e)(1). The Internal Revenue Service determined that Alternative Carbon should not have claimed these credits and demanded repayment, with interest and penalties. Alternative Carbon paid back the government, in part, and then filed a refund suit. The Claims Court decided that Alternative Carbon failed to establish that it properly claimed the credits or that it had reasonable cause to do so and granted the government summary judgment. The Federal Circuit affirmed. Although the product at issue, a feedstock/diesel mixture, was a “liquid fuel,” it was not “sold” by Alternative Carbon; the transaction was more of a transfer for disposal. Alternative Carbon cannot show it had reasonable cause for claiming the alternative fuel mixture credits. View "Alternative Carbon Resources, LLC v. United States" on Justia Law