Justia U.S. Federal Circuit Court of Appeals Opinion SummariesArticles Posted in Intellectual Property
PACIFIC BIOSCIENCES OF CALIFORNIA, INC. v. PERSONAL GENOMICS TAIWAN, INC.
The United States Court of Appeals for the Federal Circuit affirmed the decisions from the United States Patent and Trademark Office, Patent Trial and Appeal Board in a patent dispute between Pacific Biosciences of California, Inc. (PacBio) and Personal Genomics Taiwan, Inc. (PGI). The core dispute revolved around the interpretation of the term "identifying a single biomolecule" in the claims of PGI’s U.S. Patent No. 7,767,441. The Board interpreted the term to mean that the apparatus must be capable of ascertaining the identity of one single, individual biomolecule by examining only that biomolecule. On appeal, the court affirmed the Board’s interpretation. PacBio challenged the Board’s finding that the Hassibi reference did not disclose “identifying a single biomolecule” under the claim construction, while PGI challenged the Board’s finding that the Choumane reference did disclose “identifying a single biomolecule” under that construction. The court found substantial evidence supporting the Board’s findings for both references and affirmed the decisions. PacBio and PGI bear their own costs. View "PACIFIC BIOSCIENCES OF CALIFORNIA, INC. v. PERSONAL GENOMICS TAIWAN, INC. " on Justia Law
DEXCOM, INC. v. ABBOTT DIABETES CARE, INC.
This case revolves around an interlocutory appeal from a consolidated case between Abbott Diabetes Care, Inc., Abbott Diabetes Care Sales Corp. (collectively, “Abbott”), and DexCom, Inc. at the United States District Court for the District of Delaware. DexCom had sued Abbott for infringing its patents, leading Abbott to petition for inter partes review of the asserted patents before the Patent Trial and Appeal Board. DexCom sought a preliminary injunction to prevent Abbott from proceeding with the inter partes review proceedings based on a forum selection clause in a settlement and license agreement between the parties. DexCom appealed the district court’s denial of the preliminary injunction.The United States Court of Appeals for the Federal Circuit affirmed the district court's decision, holding that the district court did not abuse its discretion in denying the preliminary injunction. The court found that the forum selection clause in the settlement and license agreement did not preclude the filing of inter partes review petitions after the Covenant Period because it allowed them during the Covenant Period. Therefore, DexCom could not succeed on its breach-of-contract counterclaim, making it ineligible for a preliminary injunction. View "DEXCOM, INC. v. ABBOTT DIABETES CARE, INC. " on Justia Law
K-FEE SYSTEM GMBH v. NESPRESSO USA, INC.
In the patent infringement case between K-fee System GmbH and Nespresso USA, Inc., the United States Court of Appeals for the Federal Circuit reversed the district court’s decision. K-fee owns three patents related to coffee-machine portion capsules that display information to prevent their use in incompatible machines. The company alleged that Nespresso infringed these patents. The district court had interpreted the term "barcode" in K-fee's patents to exclude "bit codes," or codes made up of two binary symbols. Based on this interpretation, the court granted Nespresso’s motion for summary judgment of non-infringement.On appeal, the Federal Circuit disagreed with the district court’s interpretation of “barcode.” The court found that a "barcode" is defined by its visual appearance as a lineup of bars with varying widths, and that this definition can include bit codes. The court determined that the district court had erred in its claim construction of "barcode," and consequently, in its grant of summary judgment of non-infringement based on that construction. The case was remanded for further proceedings in line with this interpretation. View "K-FEE SYSTEM GMBH v. NESPRESSO USA, INC. " on Justia Law
PARKERVISION, INC. v. VIDAL
The case involves ParkerVision, Inc. appealing a decision by the Patent Trial and Appeal Board (Board) that invalidated one of its patents, U.S. Patent No. 7,110,444 ('444 patent), owned by ParkerVision, Inc., which relates to wireless local area networks (WLANs) that use frequency translation technology. The Board determined that claim 3 of the patent is unpatentable as obvious in light of prior art. The United States Court of Appeals for the Federal Circuit affirmed the Board's decision. The court found that the Board correctly construed the term “storage element” and did not procedurally err in how it treated certain arguments raised by the parties. The court also found substantial evidence supporting the Board's finding that the patent claim was obvious in light of prior art. The court found no violation of ParkerVision's procedural rights under the Administrative Procedure Act (APA) and no abuse of the Board's discretion in excluding parts of ParkerVision’s sur-reply. View "PARKERVISION, INC. v. VIDAL " on Justia Law
H. LUNDBECK A/S v. LUPIN LTD.
In this case, the United States Court of Appeals for the Federal Circuit considered whether the defendants' Abbreviated New Drug Applications (ANDAs) infringed two patents owned by the plaintiffs. The patents pertained to the use of the drug vortioxetine in the treatment of patients who had previously taken certain other antidepressant medications and had to cease or reduce use due to sexually related adverse events, and for the treatment of cognitive impairment. The defendants were seeking approval to market vortioxetine for the treatment of Major Depressive Disorder (MDD) in adults, a use not covered by the patents. The plaintiffs sought to block the defendants from marketing a generic version of the drug until after the expiration of the patents.The court held that the defendants' ANDA filings did not infringe the plaintiffs' patents. The court found that the defendants' intended use of the drug, for the treatment of MDD in adults, did not infringe the patents which pertained to other specific uses of the drug.Moreover, the court found no induced or contributory infringement. Regarding induced infringement, the court held that the defendants' proposed labels for the drug did not encourage, recommend, or promote an infringing use. Regarding contributory infringement, the court held that the defendants' sale of the drug would have substantial noninfringing uses, thus there would be no contributory infringement.Additionally, the court rejected Lupin's cross-appeal, which challenged the district court's determination that Lupin infringed a patent concerning a process for manufacturing vortioxetine. The court affirmed the district court's construction of the term "reacting" in the patent and its determination of infringement. View "H. LUNDBECK A/S v. LUPIN LTD. " on Justia Law
VLSI TECHNOLOGY LLC v. INTEL CORPORATION
In a case before the United States Court of Appeals for the Federal Circuit involving VLSI Technology LLC and Intel Corporation, the court examined claims of patent infringement and respective damages. VLSI alleged that Intel had infringed two of its patents, U.S. Patent No. 7,523,373 ("373 patent") and U.S. Patent No. 7,725,759 ("759 patent").The jury found that Intel had indeed infringed both patents and awarded separate damages for each. Intel appealed these decisions. The court affirmed the judgment of infringement of the 373 patent but reversed the judgment of infringement of the 759 patent. The court also vacated the award of damages for the 373 patent and remanded the case for a new trial limited to damages. The court further reversed the denial of Intel's motion for leave to amend to add a license defense.The court's decisions hinged on a number of factors, including the interpretation of the patents, the evidence presented by both parties, and the legal conclusions drawn by the district court. The court's decision underscores the complexity of patent infringement cases and the importance of accurately interpreting and applying patent law. View "VLSI TECHNOLOGY LLC v. INTEL CORPORATION " on Justia Law
Purdue Pharma L.P. v. Collegium Pharmaceutical, Inc.
Purdue sued Collegium for infringement of its patent, meant to deter the abuse of opioid analgesics by the inclusion of an aversive agent, Collegium petitioned the Patent Trial and Appeal Board for post-grant review (PGR) of claims 1– 17. The Board found the challenged claims eligible for PGR because the pre-America Invents Act (AIA) 2001 application to which Purdue claimed priority did not contain sufficient written description support for the claimed invention. Under 35 U.S.C. 326(a)(11), the Board had one year to issue a Final Written Decision subject to a six-month extension. In September 2019, Purdue filed a Notice of Bankruptcy. The PGR proceeding and court case were stayed. In October 2019, a six-month extension was approved: “Petitioner should seek any relief it deems appropriate from the Bankruptcy Court.” Neither party sought guidance or an order lifting the stay from the bankruptcy court. The April 2020, extended deadline passed. In July 2020, the bankruptcy court lifted the stay for both proceedings.Rejecting Purdue’s motion to terminate the PGR, the Board concluded that “the AIA’s silence as to a consequence for timely issuing a final written decision does not divest us of our authority” and found claims 1–17 unpatentable for lack of written description and anticipation. The Federal Circuit affirmed. Under Supreme Court precedent, the Board has the authority to issue a Final Written Decision after the deadline proscribed in the statute has passed absent any contrary indication in the language, structure, or legislative history of the statute. View "Purdue Pharma L.P. v. Collegium Pharmaceutical, Inc." on Justia Law
Medtronic, Inc. v. Teleflex Life Sciences Ltd.,
Telefex’s 116 patent. is directed to a method for using a guide extension catheter with a guide catheter. In 2019, Medtronic launched its own allegedly infringing guide extension catheter product, Telescope. Medtronic filed two petitions for inter partes review (IPR) of the 116 patent. The Federal Circuit affirmed the Patent and Trademark Office Patent Trial and Appeal Board in holding that Medtronic had not shown the challenged claims to be unpatentable. In finding that the claimed invention was conceived before the critical date of alleged prior art (Itou), the court determined that the claimed invention was actually reduced to practice before the critical date of Itou and the patent owner diligently pursued work on the invention until its constructive reduction to practice. “In vivo” testing was not required for actual reduction to practice because the claims at issue are method claims reciting “advancing . . . a guide catheter . . . through a main blood vessel to an ostium of a coronary artery.” View "Medtronic, Inc. v. Teleflex Life Sciences Ltd.," on Justia Law
Allgenesis Biotherapeutics Inc. v. Cloudbreak Therapeutics, LLC
Cloudbreak’s patent discloses compositions and methods for treating pterygium, an eye condition in which a tumor-like growth extends from the nasal or temporal side of the eye to the cornea, by administering multikinase inhibitors to the eye to inhibit specific growth factors that contribute to tumor growth and hyperemia (i.e., eye redness). The patent discloses that nintedanib in particular “may be one of the most powerful multikinase inhibitors for reducing corneal neovascularization.”In inter partes review, the Patent Trial and Appeal Board held that the petitioner, Allgenesis, failed to prove two claims of the patent are unpatentable. The Federal Circuit dismissed an appeal. Allgenesis failed to establish an injury in fact sufficient to confer standing to appeal. Allgenesis identified no concrete plans to develop and bring to market a nintedanib treatment for pterygium and has not shown its activities will create a substantial risk of infringement or will likely cause Cloudbreak to assert a claim of infringement. The court rejected an argument that Allgenesis suffered an injury in fact based on the Board’s priority determination that will have a preclusive effect on the scope of its pending patent application. Allgenesis has not established that the Board’s decision will have preclusive effect. View "Allgenesis Biotherapeutics Inc. v. Cloudbreak Therapeutics, LLC" on Justia Law
Actelion Pharmaceuticals LTD v. Mylan Pharmaceuticals Inc.,
Epoprostenol, a naturally occurring substance, useful for treating cardiovascular diseases, was discovered in the early 1980s and was first brought to market under the brand name Flolan® in 1995. Epoprostenol is unstable in water, it was prepared as a freeze-dried, or lyophilized, powder for use in the Flolan composition. Actelion owns two patents directed to improved epoprostenol formulations that can be reconstituted with commercially available IV fluids and do not require refrigeration after reconstitution until use.” The inventor “unexpectedly found that epoprostenol solution in the presence of an alkalinizing agent, and high pH (>11) is very stable compared to Flolan.” Mylan sought approval to manufacture and sell a generic epoprostenol sodium for injection by filing an Abbreviated New Drug Application (ANDA) with the FDA, containing a certification that the Actelion patents’ claims were invalid or would not be infringed by the ANDA product.The Federal Circuit vacated the district court’s claim construction order with respect to the term “a pH of 13 or higher” and its judgment of infringement. The issue involves understanding what the significant digits are for “a pH of 13.” The district court must address extrinsic evidence explaining how a person of ordinary skill in the art would view the significant digits for a pH value. View "Actelion Pharmaceuticals LTD v. Mylan Pharmaceuticals Inc.," on Justia Law