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

Incept’s 723 and 913 patents relate to improved methods for treating cancer, particularly prostate cancer, using radiation. The patents describe methods of introducing a filler between a radiation target tissue and other tissue to increase the distance between the two and thereby decrease the amount of radiation received by the non-targeted tissue. Palette sought inter partes review challenging the claims of the patents as unpatentable over prior art, including “Wallace,” describes a method for the “rapid formation of a biocompatible gel . . . at a selected site within a patient’s body.”The Federal Circuit affirmed the Patent Trial and Appeal Board in holding that the claims were anticipated or obvious, 35 U.S.C. 102, 103. Wallace discloses each element of claim 1 of the 723 patent, arranged as in that claim. The Board’s findings of motivation to combine are supported by substantial evidence in the form of the references themselves and Palette’s expert’s detailed testimony, which the Board found “persuasive.” With respect to Incept’s argument that the Board improperly dismissed the market share data that Incept provided, the court deferred to the Board’s findings concerning the credibility of expert witnesses. View "Incept LLC v. Palette Life Sciences, Inc." on Justia Law

Rembrandt’s 019 patent is directed to test assay devices and methods for testing biological fluids. The test assay device receives a fluid sample “introduced directly to the sample loading zone” of one or more assay test strips. Alere petitioned for inter partes review.The Patent Trial and Appeal Board found that claims 3–6 and 10 would have been unpatentable for obviousness. Rembrandt argues that the Board erred by relying on Alere’s new theories asserted for the first time in its reply brief. The Federal Circuit affirmed. Alere did not offer new theories. Alere’s reply argument was responsive to Rembrandt’s arguments and the Board’s observations. Substantial evidence supports the Board’s determinations. The Board was presented with “two alternative theories” about what the prior art discloses; the court reasoned that it was not its task “to determine which theory we find more compelling.” View "Rembrandt Diagnostics, LP v. Alere, Inc." on Justia Law

Medtronics’s patents, which share a specification, relate to the transcutaneous (through the skin) charging of implanted medical devices. This charging occurs by inductive coupling, whereby energy is transferred between a primary coil in the external charger and a secondary coil in the implanted device when the two coils are placed in proximity to each other. The patents seek to improve charging efficiency by automatically varying the power output of the external charger based on various measured parameters of the current passing through the implanted device.In two inter partes review (IPR) determinations. The Patent Trial and Appeal Board held that the petitioner had failed to show that claims of the patents were unpatentable as anticipated or obvious. In each decision, the Board adopted a "two-input" claim construction first presented in the patent owner’s response after the institution decision and declined to consider the petitioner’s reply arguments and evidence under the new claim construction, reasoning that the petitioner had not identified anywhere in the petition that the two-input anticipation arguments had been made.The Federal Circuit vacated. The Board’s refusal to consider the new arguments and evidence was erroneous. The court remanded for the Board to consider the merits of Axonics’ responsive arguments and evidence under the new claim construction. View "Axonics, Inc. v. Medtronic, Inc." on Justia Law

United Therapeutics holds New Drug Application (NDA) 022387 for Tyvaso®, an inhaled solution formulation of treprostinil approved for the treatment of pulmonary hypertension. It is a vasodilator that reduces vasoconstriction in the pulmonary vasculature, thereby decreasing blood pressure. United’s patents are listed in the FDA’s Orange Book for Tyvaso. Liquidia filed NDA 213005 for Yutrepia™ (21 U.S.C. 355(b)(2)), a dry powder inhalation formulation of treprostinil that is not a generic version of any currently marketed drug. United sued Liquidia, alleging infringement. Liquidia filed a petition for inter partes review (IPR); the Board found all claims of the 793 patent unpatentable as obvious. The district court concluded that seven claims of the 793 patent were not invalid and were infringed by Liquidia; several claims of the 066 patent were invalid as anticipated and would have been infringed by Liquidia but for the finding of anticipation; and claim 8 of the 066 patent was not invalid and not infringed.The Federal Circuit affirmed, upholding the district court’s determination that the meaning of “treating pulmonary hypertension” does not require a showing of safety and efficacy; the claims of the 793 patent are adequately enabled and supported by the written description; and Liquida induced infringement of that patent. View "United Therapeutics Corp. v. Liquidia Technologies, Inc." on Justia Law

Trinity sued Covalent for infringement of patent claims relating to methods and systems for connecting users based on their answers to polling questions. The Federal Circuit affirmed the dismissal of the suit, concluding that the asserted patents do not claim patentable subject matter under 35 U.S.C. 101. Because Trinity did not identify a proposed claim construction or specific facts to be discovered, the district court was not required to conduct claim construction and fact discovery before analyzing the asserted claims. The claims are directed to the abstract idea of matching based on questioning. A human mind could review people’s answers to questions and identify matches based on those answers; the patent’s requirements that the abstract idea be performed on a “hand-held device” or that matches are “reviewable by swiping” does not alter the conclusion that the focus of the asserted claims remains directed to an abstract idea, not an improvement on technology. The claims do not provide an inventive concept by virtue of their use of multiple processors, match servers, unique identifications, or a match aggregator. View "Trinity Info Media, LLC v. Covalent, Inc." on Justia Law

SNIPR's patents, directed to methods of selectively killing bacteria using CRISPR gene editing, claim priority to a 2016 Patent Cooperation Treaty (PCT) Application. Because their effective filing dates are after March 2013, they are pure America Invents Act (AIA) patents, examined and issued under first-inventor-to-file patentability requirements. The Rockefeller Application is also directed to selectively killing bacteria. It claims priority to a 2014 PCT Application and a February 2013 U.S. Provisional Application; it is a pure pre-AIA application.The Patent Board declared an interference to determine which party was the first to invent, then identified Rockefeller as the senior party, with an accorded benefit date of February 2013, and SNIPR as the junior party, with a May 2016 accorded benefit date (the date for which the Board recognizes that a patent application provides a proper constructive reduction to practice of the invention under pre-AIA 35 U.S.C. 102(g)(1)). SNIPR unsuccessfully moved to terminate, arguing that the AIA eliminated interferences for AIA patents. The Board reasoned that pre-AIA patent claims must “comply with [pre-AIA] 35 U.S.C. 102(g),” which requires an interference. SNIPR had not filed any priority statement asserting an invention date earlier than Rockefeller’s earliest accorded benefit date and failed to overcome Rockefeller’s senior party status. The Board canceled the SNIPR Patents.The Federal Circuit reversed. Pure AIA patents may not be part of an interference. SNIPR’s pure AIA patents were examined and issued under the AIA’s first-inventor-to-file patentability requirements and cannot be canceled under the pre-AIA invention priority requirements. View "SNIPR Technologies Ltd. v. Rockefeller University" on Justia Law

Float‘N’Grill's patent is directed to a float designed to support a grill to facilitate a user grilling food while remaining in a body of water. The specification describes a single embodiment. The apparatus includes a float and a pair of grill supports, each of which has a base rod, and an “inverted substantially U-shaped upper support medially attached to a top surface of the base rod.” Each of the supports “includes a plurality of magnets disposed within the middle segment of the upper support of each” grill support. After the patent was issued, FNG, believing that it claimed less than it was entitled to claim in the original patent, filed a reissue application, seeking claims that did not contain the narrow “plurality of magnets” limitation; the claims more generically call for the removable securing of a grill to the float apparatus.The Patent Trial and Appeal Board affirmed an Examiner’s rejections under 35 U.S.C. 112(b) and 251 of the 13 claims of the reissue application. The Federal Circuit affirmed. The reissue claims in question do not cover “the invention disclosed in the original patent” as required by 35 U.S.C. 251. The court did not address the indefiniteness of those claims under section 112(b). View "In Re Float‘N’Grill LLC" on Justia Law

The Medtronic patents describe and claim a neurostimulation lead and a method for implanting and anchoring the lead. Axonics, having been sued by Medtronic for infringement, challenged various claims of the Medtronic patents for obviousness in inter partes reviews (IPRs) under 35 U.S.C. 311–319. In both IPRs, the Patent Trial and Appeal Board concluded that Axonics had failed to prove any of the challenged claims unpatentable.The Federal Circuit vacated and remanded, The Board erred in its obviousness analysis and the errors cannot be regarded as harmless. Even if the Board was correct to treat the Medtronic patents as limited in the problem they address to the sacral-nerve context, it committed a fundamental legal error in confining the motivation inquiry to whether a motivation would exist to make the proposed combination for use in the specific trigeminal-nerve context—to which the Medtronic patents are not limited. The Board was also incorrect in its view that “the relevant art is medical leads specifically for sacral neuromodulation,” as the Medtronic patents’ claims are not limited to the sacral-nerve context; the shared specification, properly read, is not so limited either. View "Axonics, Inc. v. Medtronics, Inc." on Justia Law

Using a patent directed to a method for sorting sperm cells according to specific DNA characteristics to preselect the gender of a domestic animal’s offspring, STGenetics, provided bull semen-processing services to ABS, which sells semen drawn from its own bulls, packaged in small tubes for use in artificial insemination.In 2014, ABS filed an antitrust lawsuit, alleging that ST was maintaining monopoly power for sexed semen processing. ST brought counterclaims for trade secret misappropriation, breach of contract, and patent infringement. ABS stipulated to direct infringement of three claims. A jury awarded ST $750,000 for past infringement and a royalty on future sales of sexed semen tubes sold by ABS. The Seventh Circuit affirmed the validity findings and issued a remand that did not concern the ongoing royalty.ST filed another infringement suit, which was consolidated with the remand proceedings, then learned that ABS had begun selling and licensing ST’s system to third parties. ST filed a third suit, asserting induced infringement (35 U.S.C. 271(b)). The district court dismissed the action, citing claim preclusion.The Federal Circuit reversed. An induced patent infringement claim brought at the time of the first trial would have been based on speculation; the parties stipulated to direct infringement and the question of inducement was not before the jury. The scope of ABS’s direct infringement allegations cannot reasonably be expanded to cover actions of third-party licensees using the technology to make their own tubes. View "Inguran, LLC v. ABS Global, Inc." on Justia Law

Medytox’s patent is directed to the use of an animal-protein-free botulinum toxin composition that exhibits a longer-lasting effect compared to an animal protein-containing botulinum toxin composition and purportedly can be used to treat both cosmetic and non-cosmetic conditions. Galderma requested post-grant review of claims 1–10, which the Patent Trial and Appeal Board granted. Medytox filed a non-contingent motion to amend seeking to cancel claims 1–10 and substitute claims 11–18 and requested that the Board issue a Preliminary Guidance. Galderma argued that the claims added new matter because the claims covered compounds with a 16-week responder rate between 50-100% but the specification only disclosed responder rates of up to 62%.Reversing its Preliminary Guidance, the Board found that the substitute claims impermissibly introduced new matter with the inclusion of the responder rate limitation and failed to meet the requirements for revised motions to amend; that the proposed substitute claims were unpatentable for a lack of written description; and that the full scope of the claims was not enabled.The Federal Circuit affirmed, upholding the Board’s claim construction of the responder rate limitation as a range. The Board provided adequate explanation for its enablement finding. The Board’s revision of its claim construction of the responder rate limitation made between its Preliminary Guidance and final decision was not arbitrary and capricious, depriving Medytox of a full and fair opportunity to litigate. View "Medytox, Inc. v. Galderma S.A." on Justia Law