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

The district court granted summary judgment that all of the claims in plaintiff's patents were ineligible under 35 U.S.C. 101, which excludes from patentability "laws of nature, natural phenomena, and abstract ideas" because they were directed to the "abstract idea" that there is a relation between the infant immunization schedule for infectious diseases and the later occurrence of chronic immune-mediated (non-infectious) disorders. The Supreme Court vacated the Sixth Circuit's 2008 decision. On remand the Federal Circuit affirmed with respect to one patent's ineligibility, but vacated a portion of the judgment granted under the "safe harbor" provision of 35 U.S.C. 271(e)(1). One set of claims did not include putting knowledge to practical use, but was directed to the abstract principle that variation in immunization schedules may have consequences for certain diseases. Others require the further act of immunization in accordance with a lower-risk schedule, moving from abstract scientific principle to specific application.

The examiner rejected claims 11 and 21 of Patent Application No. 505, titled "System and Method for Distribution Chain Management" as anticipated by a 2001 application. The Board of Patent Appeals and Interferences affirmed. The Federal Circuit affirmed on the alternate ground that there is no permissible construction of the claims, so they fail to satisfy the definiteness requirement of 35 U.S.C. 112. The court remanded to afford the applicant the right to amend.

Plaintiff is the exclusive licensee of the patents, which claim tobacco curing methods. The district court found th patents invalid and entered a judgment of non-infringement. The Federal Circuit reversed with respect to validity but affirmed the finding of non-infringement. No reasonable juror could find that the patents were anticipated by prior use under 35 U.S.C. 102(b), nor were they obvious or indefinite.

Plaintiff owns a patent on an FDA-approved (21 U.S.C. 355(b)(2) ) pharmaceutical nasal spray Fortical, used to treat osteoporsis, with the active ingredient salmon calcitonin. In its FDA filing, plaintiff identified the drug as bioidentical to Miacalcin. Defendant filed an Abbreviated New Drug Application with the FDA, stating intent to make, use, offer to sell, sell, and/or import a generic version of Fortical product before the expiration of plaintiff's patent. Plaintiff claimed infringement. Defendant alleged invalidity under 35 U.S.C. 101, 102, 103,and 112, noninfringement and inequitable conduct in failure to disclose an allegedly material piece of prior art and making allegedly misleading statements during patent prosecution. The district court found that the patent would not have been obvious at the time of invention, denied defendant's motion to breach the attorney-client privilege under the crime-fraud exception, and determined that defendant had waived several counter-claims. The Federal Circuit affirmed. Even accepting that there was a design need and market pressure to develop a pharmaceutical formulation bioequivalent to Miacalcin, there was no evidence that the claim would be an obvious solution to those motivations.

Plaintiffs, California grape growers who purchased grapevines covered by the USDA's patents, brought this action to challenge the validity and enforceability of the USDA's patents on three varieties of grapes, as well as the conduct of the California Table Grape Commission (Commission) and the USDA in licensing and enforcing the patents. The court held that the district court correctly held that the USDA was a necessary party to plaintiffs' declaratory judgement claims based on the Patent Act, 35 U.S.C. 1 et seq. The court also held that the waiver of sovereign immunity in section 702 of the Administrative Procedure Act, 5 U.S.C. 500 et seq., was broad enough to allow plaintiffs to pursue equitable relief against the USDA on its patent law claims. The court further held that plaintiffs' claims were sufficient to overcome any presumption of regularity that could apply to a certain USDA employee who was one of the co-inventors of each of the three varieties of grapes. The court finally held that because plaintiffs failed to point to anything other than the issuance of a patent for the Sweet Scarlet grapes that would provide a plausible basis for finding that Sweet Scarlet grapes form a relevant antitrust market, the court upheld the district court's decision dismissing plaintiffs' antitrust claim.

The district court dismissed plaintiff's suit (35 U.S.C. 291) alleging interference with patent claims relating to truncated forms of an essential blood-clotting protein. The Federal Circuit affirmed, after first holding that the expiration of one of the patents following the district court’s final decision did not strip it of jurisdiction over the appeal. The district court properly determined that there was no interference in fact.

Plaintiffs asserted infringement of claims 1 and 3 of the patent, directed to a system and a method for inspecting integrated circuits printed on substrates such as wafers. The jury found that defendant's device infringed both claims, but that the infringement was not willful, and awarded about $6.8 million in lost profits. Because the jury found that plaintiff's NSX-80 wafer inspection machine was not prior art, the court held that there was no need for a separate trial on defendant's inequitable conduct claim, based on plaintiff's nondisclosure of the NSC-80 to the patent office. The Federal Circuit affirmed dismissal of the inequitable conduct claim, but reversed and remanded the determination of infringement and award of damages and injunction. The court improperly construed the claim in defining a wafer as any portion of a wafer having two or more dies. A wafer, as recited in the claims at issue, refers to a thin, discrete slice of semiconductor material with circuitry thereon that is ready for electrical testing having one or more dies. A plurality of wafers means more than one physically distinct wafer.

Plaintiff's patent recites a method for detecting fraud in a credit card transaction over the Internet; the specification explains that prior systems, which generally rely on billing addresses and personal identification information, work well for face-to-face transactions and transactions where the merchant ships a package. For online sales where the product is downloadable, address and identity information do not verify that the purchaser is actually the credit card owner. The patent purports to solve this problem by determining whether an Internet address relating to a transaction is consistent with other Internet addresses that have been used with the same credit card. The district court granted summary judgment of invalidity under 35 U.S.C. 101 for failure to recite patent-eligible subject matter. The Federal Circuit affirmed, holding that the disputed claims attempt to capture unpatentable abstract ideas. One could mentally perform the fraud detection method that underlies the patent, as the method consists of only the general approach of obtaining information about credit card transactions utilizing an Internet address and then using that information in some undefined manner to determine if the credit card transaction is valid.

The owner of patents relating to methods and systems for charging a fee for sending unsolicited and unwanted e-mail (spam) and claimed infringement. The district court construed the claim as containing a drafting error and granted summary judgment of invalidity, holding that the claim indefinite under 35 U.S.C. 112. The Federal Circuit reversed and remanded. The claim is not indefinite, but has an obvious and correctable error, construction of which is not subject to reasonable debate by those skilled in the art. The district court had authority to correct the supposed error. The claim reads: "the computer being programmed to detect analyze the electronic mail communication sent by the sending party to determine whether or not the sending party is an authorized sending party or an unauthorized sending party." The addition of the word "and" between "detect" and "analyze" corrects an obvious error.

The company filed suit against numerous automobile manufacturers for infringement of three patents relating to tire pressure monitoring systems. The patent applications were filed in the 1990s and, in 2007, the inventors signed documents purporting to assign the patents to the company. The district court entered summary judgment of non-infringement of one claim and dismissed the others for lack of standing, based on a prior assignment. The court concluded that the claims at issue were not subject to an exclusion under an earlier assignment by the inventors. The Federal Circuit affirmed in part, holding that the company lacked standing with respect to all of the patents.