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

Sanofi-Aventis’s 614 patent, entitled “Drug Delivery Device and Method of Manufacturing a Drug Delivery Device,” relates to a “drug delivery device” that can be “configured to allow setting of different dose sizes.” Mylan petitioned the Patent Trial and Appeal Board for inter partes review of claims 1–18, citing a combination of three prior art references: Burren, Venezia, and de Gennes. Mylan relied on Burren—cited as prior art within the 614 patent—to teach the use of springs within a drug-delivery device and sought to combine Burren with Venezia to teach the use of spring washers within drug-delivery devices and de Gennes to add “snap-fit engagement grips” to secure the spring washer. Mylan argued that “De Gennes, while concerned with a clutch bearing [in automobiles], addresses a problem analogous to that addressed in Burren (axially [sic] fixation and support of two components relative to one another).”The Board found all challenged claims unpatentable as obvious. The Federal Circuit reversed. Mylan failed to argue that de Gennes constitutes analogous art to the 614 patent and instead compared de Gennes to another prior art reference. Mylan did not meet its burden to establish obviousness premised on de Gennes. The Board’s factual findings regarding analogousness are not supported by substantial evidence. View "Sanofi-Aventis Deutschland GmbH v. Mylan Pharmaceuticals Inc." on Justia Law

Sony petitioned for inter partes review of claims 1–6 of the Bot’s 540 patent, which concerns a gaming machine that authenticates certain data and that has both a motherboard and a different board. Independent claims 1 and 4 require that the “game program” be written to the motherboard only after the game program has been authenticated; the dependent claims (2, 3, 5, and 6) require two different CPUs—one on the motherboard, one on a different board— for executing the “authentication program” and “preliminary authentication program” respectively. The Board determined that the independent claims are unpatentable based on asserted combinations of prior art.The Federal Circuit affirmed. Bot failed to demonstrate that the Board, in making its unpatentability determinations, actually relied—or even might have relied—on a construction that permits writing portions of the game program to the motherboard before authenticating the game program. The Board found that both prior art references disclose writing only non-game-program data to the motherboard before authenticating the game program. Given Sony’s expert’s explanation and the references themselves, it nonetheless would have been obvious to a person of ordinary skill in the art to combine the references to yield the claimed invention. Substantial evidence supports the findings underpinning the obviousness determination. View "Bot M8 LLC v. Sony Interactive Entertainment LLC" on Justia Law

UCANN sued Hemp for infringing its patent, entitled “Cannabis Extracts and Methods of Preparing and Using the Same.” UCANN filed for bankruptcy, which automatically stayed the litigation. After the bankruptcy petition was dismissed, the parties stipulated to the dismissal of the patent case. UCANN’s infringement claims were dismissed with prejudice; Hemp’s invalidity and inequitable conduct counterclaims were dismissed without prejudice.Hemp sought attorney fees under 35 U.S.C. 285, 28 U.S.C. 1927, and the court’s inherent authority, claiming that UCANN’s prosecution counsel had committed inequitable conduct by copying text from a piece of prior art into the specification of the patent and not disclosing it to the Patent and Trademark Office as prior art and UCANN’s litigation counsel purportedly took conflicting positions in its representation of UCANN and another client (the owner of the prior art). Hemp expressly notified the court that it did not seek any further proceedings, including a trial or evidentiary hearing, in connection with its motion. The district court denied the motion based on the existing record.The Federal Circuit affirmed upholding findings that Hemp failed to establish that it is the prevailing party under section 285, that this is an “exceptional” case warranting an attorney’s fee award, or that UCANN’s counsel acted in a vexatious or otherwise unreasonable manner. While Hemp’s position was extremely weak, it was neither “frivolous as filed” nor “frivolous as argued.” View "United Cannabis Corp. v. Pure Hemp Collective Inc." on Justia Law

Hormel met with Howard of HIP, which produced food safety and thermal processing equipment. The parties entered into an agreement to develop an oven for a particular process. Hormel conducted testing relating to color development, using both an infrared oven and a conventional spiral oven. Howard later alleged that it was during the meetings and testing that he disclosed the infrared preheating concept at issue. Hormel conducted additional testing using HIP’s test oven at Hormel's facility. The testing eventually revealed that turning off internal electrical heating elements in the oven solved the charred, off-flavor of bacon, and preheating the bacon with a microwave oven prevented condensation from washing away the flavor. That testing resulted in a two-step cooking process, the first step involving preheating the bacon and the second step involving cooking the meat in a superheated steam oven.Hormel filed a non-provisional patent application for the two-step cooking process in 2011, listing four joint inventors, who assigned their interests to Hormel. The application issued as the 498 patent. HIP sued, alleging that Howard was either the sole inventor or a joint inventor. The district court concluded that he was a joint inventor, 35 U.S.C. 256, based on his alleged contribution of the infrared preheating concept. The Federal Circuit reversed. Howard’s alleged contribution of preheating meat pieces using an infrared oven is “insignificant in quality” to the claimed invention. View "HIP, Inc. v. Hormel Foods Corp" on Justia Law

Corning filed a complaint with the International Trade Commission alleging FS violated 19 U.S.C. 1337 by importing high-density fiber optic equipment that infringed four patents that generally relate to fiber optic technology commonly used in data centers. After investigating, the ALJ found that FS’ importation of high-density fiber optic equipment violated section 337; that FS induced infringement of two claims of the 320 patent, multiple claims of the 456 patent, and four claims of the 153 patent; and that FS’ accused modules directly infringed claims of the 206 patent. The ALJ adopted the Office of Unfair Import Investigations’ construction of “a front opening” as recited in the claims. The ALJ rejected invalidity challenges, including arguments that certain claims of the 320 and 456 patents were not enabled.The Federal Circuit affirmed the Commission’s determination that FS violated section 337, and issuance a general exclusion order prohibiting the importation of infringing high-density fiber optic equipment and components thereof and a cease-and-desist order directed to FS. The court upheld the enablement determination and the claim construction of “a front opening.” View "FS.com Inc. v. International Trade Commission" on Justia Law

Amgen produces apremilast and markets it as a phosphodiesterase-4 (PDE4) inhibitor, which is used for treating psoriasis and related conditions, under the brand name Otezla®. The 638, 101, and 541 patents cover Otezla. Sandoz submitted an Abbreviated New Drug Application (ANDA) seeking FDA approval to market a generic version of apremilast. Amgen’s predecessor brought a Hatch-Waxman suit, asserting that Sandoz’s generic product would infringe the patents.The Federal Circuit affirmed holdings that claims 3 and 6 of Amgen’s 638 patent and claims 1 and 15 of Amgen’s 101 patent had not been shown to be invalid as obvious and that claims 2, 19, and 21 of its 541 patent”) were shown to be invalid as obvious in light of prior art. The court noted that varying a dose in response to the occurrence of side effects is a well-known, standard medical practice that may well lead to a finding of obviousness. View "Amgen Inc. v. Sandoz Inc." on Justia Law

Charger filed an intent-to-use application to register SPARK LIVING on the Principal Register for leasing of real estate; real estate listing; real estate service, namely, rental property management. The examining attorney refused registration under the Lanham Act, 15 U.S.C. 1052(d), on grounds of a likelihood “to cause confusion, or to cause mistake, or to deceive with an earlier registered mark.” The earlier registered mark, SPARK, was registered for “[r]eal estate services, namely, rental brokerage, leasing, and management of commercial property, offices and office space.” Charger amended its description of services to only cover residential real estate services, then disclaimed the term “LIVING,” and again amended the description to “specifically” exclude commercial property and office space—the services of the registrant’s mark. The examining attorney maintained the refusal.The Trademark Trial and Appeal Board and Federal Circuit affirmed, as supported by substantial evidence the refusal to register Charger’s mark based on likelihood of confusion. The Board addressed five of the “Dupont factors”: similarity or dissimilarity of the marks, the nature of the goods or services, established, likely-to-continue trade channels, conditions under which and buyers to whom sales are made, and strength of the mark, focusing on the similarity or dissimilarity of the marks as well as the goods or services. View "In Re Charger Ventures LLC" on Justia Law

Rotigotine is used to treat Parkinson’s disease, which causes difficulty swallowing and slow transit times through intestines, which can frustrate oral treatments. Transdermal therapeutic systems deliver drugs through the patient’s skin and avoid those complications. In 2007, UCB invented and marketed Neupro®, the first FDA-approved patch treatment for Parkinson’s disease. Original Neupro® is covered by several UCB patents, including the Muller patents, which claim priority to an application filed in 1999. The Muller patents are listed in the FDA’s “Orange Book,” as covering reformulated Neupro®.In 2013, Actavis submitted an Abbreviated New Drug Application (ANDA) for FDA approval of a generic transdermal rotigotine patch. UCB sued for infringement. The district court granted UCB an injunction preventing approval of Actavis’s ANDA until March 2021, when the Muller patent expired. In 2018 UCB filed the patent application that matured into the 589 patent, claiming priority from a provisional application filed in 2009, entitled “Polyvinylpyrrolidone for the Stabilization of a Solid Dispersion of the Non-Crystalline Form of Rotigotine.” UCB again filed suit, asserting the 589 patent, to delay FDA approval of a generic for nine additional years.The district court found that the Muller patents anticipate all asserted claims and that the asserted claims would have been obvious in view of multiple prior art references, including the Muller patents. The Federal Circuit affirmed the judgment of invalidity of the 589 patent. The district court’s fact findings on overlapping ranges, teaching away, unexpected results, and commercial success are not clearly erroneous, View "UCB, Inc. v. Actavis Laboratories UT, Inc." on Justia Law

The district court dismissed Sanderling’s infringement suit due to the asserted claims’ lack of patent-eligible subject matter under 35 U.S.C. 101. The patents at issue share the title “Dynamic Promotional Layout Management and Distribution Rules,” and are directed to a method using distribution rules to load digital image branding functions to users when certain conditions are met. The patents share a common specification, which describes the digital image branding function as a transformation, using, for example, an icon or a filter, that displays in a client terminal for the user to apply to a digital image. A distribution rule “is a rule used in determining how to target a group of end users, for instance, a rule that determines that only a group of end users having certain characteristics and/or match a certain requirement.”The Federal Circuit affirmed. The claims are directed to an abstract idea, not a specific improvement in computer functionality. The claims describe the use of computers as a tool to identify when a condition is met and then to distribute information based on satisfaction of that condition. The elements of the representative claim, individually and as an ordered combination, do not constitute an inventive concept. View "Sanderling Management Ltd. v. Snap Inc." on Justia Law

Sequoia’s patent is directed to “a method for managing a logical volume for minimizing a size of metadata and supporting dynamic online resizing,” and “a computer-readable recording medium storing a program or data structure for embodying the method.” The patent describes a preferred embodiment that has three storage virtualizations: extents, disk partitions, and logical volume. The accused product, Red Hat’s software tool, can create and resize logical volumes with units smaller than a whole disk partition, such as extents. Red Hat’s petitions for inter partes reviews were rejected.In infringement litigation, the Federal Circuit reversed a finding of invalidity based on the construction of “computer-readable recording medium” to include transitory media (signals or waves). Transitory media are ineligible statutory subject matter under 35 U.S.C. 101. The district court erred in relying on extrinsic evidence that was clearly at odds with the intrinsic evidence.The Federal Circuit affirmed a finding of noninfringement, upholding the constructions of a “disk partition” to mean a “section of a disk that is a minimum unit of a logical volume” and a “logical volume” to mean an “extensible union of more than one disk partition, the size of which is resized in disk partition units.” View "Sequoia Technology, LLC v. Dell Inc." on Justia Law