Justia U.S. Federal Circuit Court of Appeals Opinion SummariesArticles Posted in Intellectual Property
Axonics, Inc. v. Medtronic, Inc.
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 Corp. v. Liquidia Technologies, Inc.
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 Info Media, LLC v. Covalent, Inc.
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 Technologies Ltd. v. Rockefeller University
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
In Re Float‘N’Grill LLC
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
Axonics, Inc. v. Medtronics, Inc.
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
Inguran, LLC v. ABS Global, Inc.
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, Inc. v. Galderma S.A.
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
Spireon, Inc. v. Flex Lrd.
In 2018, Spireon sought to register the mark FL FLEX, for “[e]lectronic devices for tracking the locations of mobile assets" such as trailers, cargo containers, and transportation equipment, using global positioning systems and cellular communication networks. An Examining Attorney approved the application. Flex opposed the registration, citing priority and the likelihood of confusion with Flex’s marks, FLEX, FLEX (stylized), and FLEX PULSE, registered in 2016-2017, for services including supply chain management services, transportation logistics services, and inventory management, and computers, computer software for use in supply chain management, logistics and operations management, quality control, inventory management, scheduling, and related services.The Trademark Trial and Appeal Board Board sustained Flex’s opposition. The Federal Circuit vacated. The Board erred in analyzing conceptual strength under the first DuPont factor, the similarity of the marks, rather than the sixth DuPont factor. The existence of third-party registrations on similar goods can bear on a mark’s conceptual strength. Third-party registrations containing an element that is common to both the opposer’s and the applicant’s marks can show that that element has “a normally understood and well-recognized descriptive or suggestive meaning.” Flex failed to show that the identical marks for identical goods were not used in the marketplace, but on remand, should be allowed to make such a showing. The Board also erred by comparing FL FLEX to FLEX PLUS rather than the relevant mark. View "Spireon, Inc. v. Flex Lrd." on Justia Law
In Re Couvaras
The pending claims of the 422 application recite methods of increasing prostacyclin release in the systemic blood vessels of a human with essential hypertension to improve vasodilation. Increased prostacyclin release is achieved by co-administering two well-known antihypertensive agents: a GABA-a agonist and an Angiotensin II Receptor Blocker (ARB). Essentially, the claims relate to combatting hypertension with known anti-hypertensive agents and claiming their previously unappreciated mechanism of action. During prosecution, Couvaras conceded that GABA-a agonists and ARBs “have been known as essential hypertension treatments" for decades. The Examiner agreed, citing 10 references establishing that GABA-a agonists and ARBs lower blood pressure; the claimed results of increased prostacyclin release, activation of uninhibited GABA-a receptors, and smooth muscle relaxation were not patentable because they naturally flowed from the claimed administration of the known antihypertensive agents.The Patent Board affirmed the rejection, holding that the claimed result of an increased prostacyclin release was inherent in the obvious administration of the two known antihypertension agents and that Couvaras’s objective indicia arguments did not overcome the prima facie case of obviousness. The Federal Circuit affirmed, rejecting arguments that the Board erred in affirming that a skilled artisan would have had motivation to combine the art; that the claimed mechanism of action was unexpected, and that the Board erred in discounting its patentable weight; and that the Board erred in weighing objective indicia of nonobviousness. View "In Re Couvaras" on Justia Law