Justia U.S. Federal Circuit Court of Appeals Opinion Summaries

Sigray, Inc. filed a petition with the Patent and Trademark Office (PTO) requesting inter partes review of all claims of U.S. Patent No. 7,400,704, owned by Carl Zeiss X-Ray Microscopy, Inc. The patent claims X-ray imaging systems incorporating projection magnification. The PTO's Patent Trial and Appeal Board (PTAB) granted the petition, finding a reasonable likelihood that at least one of the challenged claims was unpatentable. However, in its final written decision, the PTAB declined to hold any of the asserted claims unpatentable. Sigray appealed the PTAB's decision regarding the unpatentability of claims 1-6 based on the prior art reference Jorgensen.The PTAB found that Sigray had not shown that Jorgensen inherently disclosed projection magnification within the claimed range. The PTAB concluded that there was a dispute about whether Jorgensen taught a diverging X-ray beam and found that Sigray failed to demonstrate that Jorgensen's X-ray beam diverged enough to result in projection magnification between 1 and 10 times.The United States Court of Appeals for the Federal Circuit reviewed the PTAB's decision. The court found that the PTAB had implicitly construed the claim limitation "between 1 and 10" to exclude small amounts of magnification, which was an error. The court held that the plain meaning of "between 1 and 10" includes even tiny, undetectable magnification. The court concluded that Jorgensen inherently contained projection magnification, as the evidence showed that Jorgensen's X-ray beams were not completely parallel and must result in some magnification. Therefore, the court reversed the PTAB's decision regarding claims 1, 3, and 4, finding them anticipated by Jorgensen. The court vacated the PTAB's decision regarding claims 2, 5, and 6 and remanded for further proceedings to determine if these claims would have been obvious in light of the opinion. View "SIGRAY, INC. v. CARL ZEISS X-RAY MICROSCOPY, INC. " on Justia Law

Rebecca Curtin filed an opposition to United Trademark Holdings’ (UTH) registration of the mark RAPUNZEL for dolls and toy figures, claiming the mark was generic, descriptive, and failed to function as a trademark. Curtin, a doll collector and mother, argued that the registration would harm consumers by reducing competition and increasing prices for Rapunzel merchandise. She also claimed it would chill the creation of new Rapunzel-themed dolls and toys.The Trademark Trial and Appeal Board (TTAB) dismissed Curtin’s opposition, concluding she was not statutorily entitled to oppose the registration under 15 U.S.C. § 1063. The TTAB applied the Lexmark framework, which requires a plaintiff to fall within the zone of interests protected by the statute and to show a reasonable belief in damage proximately caused by the registration. The TTAB found that Curtin, as a consumer, did not have a commercial interest protected by the Lanham Act and that her alleged injuries were too remote and speculative.The United States Court of Appeals for the Federal Circuit reviewed the case. The court affirmed the TTAB’s decision, agreeing that the Lexmark framework was correctly applied. The court held that the interests protected by the Lanham Act in this context are commercial, and Curtin, as a consumer, did not fall within the zone of interests. Additionally, the court found that Curtin’s alleged injuries were derivative of harms to commercial actors and too remote to establish proximate causation. Thus, Curtin was not entitled to oppose the registration of the RAPUNZEL mark. View "CURTIN v. UNITED TRADEMARK HOLDINGS, INC. " on Justia Law

Vetements Group AG filed applications to register two marks, "VETEMENTS" in standard characters and in stylized form, for clothing items and online retail store services featuring clothing. The United States Patent and Trademark Office (PTO) Examining Attorney refused the applications, asserting that the marks were generic or merely descriptive without acquired distinctiveness, and thus barred from registration under Section 2(e)(1) of the Trademark Act.The Trademark Trial and Appeal Board (Board) affirmed the Examining Attorney's refusal, applying the foreign equivalents doctrine. The Board found that "VETEMENTS," which translates to "clothing" in English, was generic for the identified goods and services. The Board also determined that the marks were highly descriptive and that Vetements Group AG failed to establish acquired distinctiveness among U.S. consumers.The United States Court of Appeals for the Federal Circuit reviewed the case and upheld the Board's decision. The court agreed that the foreign equivalents doctrine was correctly applied, noting that an appreciable number of Americans are capable of translating "VETEMENTS" from French to English. The court found substantial evidence supporting the Board's conclusion that the marks were generic, as they directly referred to the genus of goods and services in question. Consequently, the court affirmed the Board's decision to refuse registration of the marks. View "In Re VETEMENTS GROUP AG " on Justia Law

The case involves a patent interference proceeding between the Regents of the University of California, the University of Vienna, and Emmanuelle Charpentier (collectively “Regents”) and the Broad Institute, Massachusetts Institute of Technology, and the President and Fellows of Harvard College (collectively “Broad”). The dispute centers on the priority of invention for a CRISPR-Cas9 system that edits DNA in eukaryotic cells using a single-guide RNA.The Patent Trial and Appeal Board (PTAB) issued a final decision concluding that Broad has priority over Regents for the CRISPR-Cas9 system. The PTAB determined that Broad reduced the invention to practice by October 5, 2012, when Broad's scientist, Feng Zhang, submitted a manuscript to Science. The PTAB rejected Regents' earlier asserted dates of conception and reduction to practice, which were based on various disclosures and experiments conducted by Regents' scientists. The PTAB also denied Regents' motion to be accorded the benefit of the filing date of its first and second provisional patent applications, determining that they lacked written description support for the claimed invention.The United States Court of Appeals for the Federal Circuit reviewed the case. The court held that the PTAB legally erred by conflating the standards for conception and reduction to practice, requiring Regents' scientists to know their invention would work to prove conception. The court vacated the PTAB's decision on conception and remanded for reconsideration under the correct legal framework. The court affirmed the PTAB's decision on written description, finding no legal error in the PTAB's analysis. The court dismissed Broad's cross-appeal on claim construction as moot, as the PTAB's denial of Broad's preliminary motions was based on independently sufficient grounds unrelated to claim construction. View "THE BROAD INSTITUTE, INC. v. THE REGENTS OF THE UNIVERSITY OF CALIFORNIA " on Justia Law

Incyte Corporation appealed a post-grant review (PGR) final written decision from the Patent Trial and Appeal Board (Board) which held that Incyte failed to prove claims 1–7 and 9–21 of U.S. Patent No. 10,561,659 were unpatentable. The '659 patent, owned by Sun Pharmaceutical Industries, Inc., discloses a method of treating hair-loss disorders using deuterium-modified ruxolitinib. Incyte petitioned for PGR, arguing the claims were obvious, but the Board found Incyte's arguments unpersuasive and upheld the claims. Incyte's request for rehearing was also denied.The United States Court of Appeals for the Federal Circuit reviewed the case. Sun argued that Incyte lacked Article III standing to appeal. The court noted that standing is a threshold jurisdictional issue that must be addressed before reaching the merits of an appeal. To establish standing, Incyte needed to demonstrate an injury in fact, which it attempted to do by claiming potential infringement liability and invoking the competitor standing doctrine.The court found that Incyte's plans to develop a deuterated ruxolitinib product were too speculative to establish concrete plans for future activity that would create a substantial risk of future infringement. The court also determined that Incyte's reliance on the competitor standing doctrine was insufficient because Incyte did not show it was currently engaging in or had nonspeculative plans to engage in conduct covered by the claims of the '659 patent.Ultimately, the United States Court of Appeals for the Federal Circuit dismissed the appeal for lack of jurisdiction, concluding that Incyte failed to establish an injury in fact sufficient to confer Article III standing. View "INCYTE CORPORATION v. SUN PHARMACEUTICAL INDUSTRIES, INC. " on Justia Law

Thomas D. Foster, APC (Foster) sought to register the trademark "US SPACE FORCE" for various goods and services. The application was filed on March 19, 2018, shortly after President Donald J. Trump announced the creation of a new military branch called the Space Force. The United States Patent and Trademark Office (USPTO) examining attorney refused the registration, citing a false suggestion of a connection with the United States under § 2(a) of the Lanham Act.The Trademark Trial and Appeal Board (Board) affirmed the examining attorney’s refusal, concluding that the mark falsely suggested a connection with the United States. Foster requested reconsideration, arguing that the Board erred by not crediting the filing date of the intent-to-use application as the constructive use date and by relying on evidence post-dating the filing date. The Board denied reconsideration, maintaining that Foster was not the prior user and that there was ample evidence supporting the false connection analysis.The United States Court of Appeals for the Federal Circuit reviewed the case. The court held that the appropriate timing for assessing a false suggestion of a connection includes evidence up to the time of examination, which in this case extended through the Board’s December 12, 2022 decision. The court found substantial evidence supporting the Board’s findings that the mark "US SPACE FORCE" was the same as or a close approximation of a name or identity used by the United States and that it pointed uniquely and unmistakably to the United States. The court affirmed the Board’s decision, concluding that the mark falsely suggested a connection with the United States and was therefore unregistrable under § 2(a) of the Lanham Act. View "In Re FOSTER" on Justia Law

Ingenico Inc. filed a declaratory judgment action against IOENGINE, LLC, in the District of Delaware, asserting that IOENGINE's patents were invalid. The patents in question, U.S. Patent No. 9,059,969 and U.S. Patent No. 9,774,703, relate to a portable device, such as a USB thumb drive, that includes a processor for network communication. IOENGINE counterclaimed, alleging infringement. Ingenico argued that the patents were invalid due to prior art, specifically a USB device known as the DiskOnKey System, which included a Firmware Upgrader.The District Court for the District of Delaware held a jury trial, which resulted in a verdict finding the claims of the patents invalid as anticipated and obvious. IOENGINE filed a motion for judgment as a matter of law (JMOL) and a motion for a new trial, both of which were denied by the district court. IOENGINE then appealed the decision, challenging the jury's findings and the district court's rulings on jury instructions and the introduction of prior art.The United States Court of Appeals for the Federal Circuit reviewed the case. The court found that substantial evidence supported the jury's verdict that the DiskOnKey System, including the Firmware Upgrader, was in public use before the critical date, thus invalidating the patents. The court also held that the district court did not err in its jury instructions or in allowing Ingenico to introduce the prior art at trial. The court clarified that IPR estoppel under 35 U.S.C. § 315(e)(2) did not preclude Ingenico from using the DiskOnKey System to argue that the claimed invention was known or used by others, on sale, or in public use, as these grounds could not have been raised during the IPR.The Federal Circuit affirmed the district court's judgment, upholding the jury's verdict of invalidity. View "INGENICO INC. v. IOENGINE, LLC " on Justia Law

Incyte Corporation and Incyte Holdings Corporation (collectively, Incyte) own U.S. Patent No. 9,662,335, which claims deuterated versions of ruxolitinib, a Janus kinase (JAK) modulator used to treat autoimmune disorders. Sun Pharmaceutical Industries, Ltd. and Sun Pharmaceutical Industries, Inc. (collectively, Sun) secured FDA approval for an oral deuterated ruxolitinib product, branded as Leqselvi, to treat alopecia areata (AA) and planned to launch it in October 2024. Incyte sued Sun for allegedly infringing the ’335 patent and moved for a preliminary injunction to prevent Sun from launching Leqselvi.The United States District Court for the District of New Jersey granted Incyte’s motion for a preliminary injunction, finding that Incyte would suffer irreparable harm if Sun launched Leqselvi. The district court based its decision on the theory that Sun’s launch would give it an unjust head start in the AA market, diminishing the value of Incyte’s investments in developing its own topical deuterated ruxolitinib product.Sun appealed the district court’s decision to the United States Court of Appeals for the Federal Circuit. The Federal Circuit reviewed the grant of the preliminary injunction for an abuse of discretion, focusing on whether the district court made a clear error in its irreparable harm analysis. The Federal Circuit found that the district court clearly erred in its finding of irreparable harm, as it was based on the incorrect assumption that Incyte would be first to market if the injunction were granted. The court noted that Sun’s multi-year head start was inevitable regardless of the injunction, as Incyte’s product would not launch until several years after the ’335 patent expired.The Federal Circuit reversed the district court’s order granting the preliminary injunction, concluding that Incyte failed to provide non-speculative evidence of irreparable harm. View "INCYTE CORPORATION v. SUN PHARMACEUTICAL INDUSTRIES, LTD. " on Justia Law

Miodrag Kostic and Guy Vandevelde, owners and listed inventors of U.S. Patent No. 8,494,950, appealed a decision by the Patent Trial and Appeal Board (PTAB) that sustained the examiner’s rejection of claim 3 of their Reissue Application No. 16/667,530. The '950 patent is directed to methods for buying and selling click-through traffic on internet websites, involving a trial process to measure traffic before a bidding process. Claim 3 of the original patent allowed for a direct exchange of click-through traffic without a trial process.The examiner rejected the reissue application, finding that the reissue claim 3 was broader than the original claim 3 and thus constituted an improper broadening reissue application filed outside the permissible two-year period. The examiner also found the reissue claim 3 to be obvious over prior art. The PTAB affirmed these rejections, agreeing that reissue claim 3 improperly broadened the scope of the original claim by making the trial process optional, which was not allowed under 35 U.S.C. § 251(d).The United States Court of Appeals for the Federal Circuit reviewed the case. The court held that the scope of reissue claim 3 was indeed broader than the original claim 3 because it allowed for either a trial process or a direct exchange without a trial process, whereas the original claim 3 required both. The court emphasized that the proper inquiry under 35 U.S.C. § 251(d) is whether the reissue claim is broader than the actual scope of the original claim, not the intended scope. Consequently, the court affirmed the PTAB’s decision, finding that the reissue application was statutorily barred as it broadened the scope of the original patent claims beyond the permissible period. View "In Re KOSTIC " on Justia Law

Jazz Pharmaceuticals, Inc. and Jazz Pharmaceuticals Ireland Limited (collectively, "Jazz") manufacture and sell sodium oxybate products, Xyrem and Xywav, for treating narcolepsy and idiopathic hypersomnia (IH). Avadel CNS Pharmaceuticals, LLC ("Avadel") sought FDA approval for Lumryz, a sodium oxybate product, for treating narcolepsy. Jazz sued Avadel, alleging that Avadel's FDA submission infringed Jazz's U.S. Patent 11,147,782. The district court found in favor of Jazz, issuing a permanent injunction against Avadel from seeking FDA approval for Lumryz for IH and from marketing Lumryz for that indication.The U.S. District Court for the District of Delaware initially ruled that Avadel's submission of its New Drug Application (NDA) constituted infringement under 35 U.S.C. § 271(e)(2). The court issued a permanent injunction prohibiting Avadel from seeking FDA approval for Lumryz for IH, offering open-label extensions (OLEs) to clinical trial participants, and initiating new clinical trials. Avadel appealed, arguing that the injunction was overly broad and that certain activities were protected under the safe-harbor provision of 35 U.S.C. § 271(e)(1).The United States Court of Appeals for the Federal Circuit reviewed the case. The court reversed the injunction prohibiting Avadel from initiating new clinical trials and offering OLEs, finding these activities to be protected under the safe-harbor provision. The court vacated the injunction preventing Avadel from seeking FDA approval for new indications of Lumryz, remanding the issue to the district court for further consideration. The court instructed the district court to determine whether Avadel's submission of a paper NDA for additional indications would constitute an act of infringement under 35 U.S.C. § 271(e)(2) and to reassess the eBay factors if necessary. View "JAZZ PHARMACEUTICALS, INC. v. AVADEL CNS PHARMACEUTICALS, LLC " on Justia Law