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

Arendi sued LG for infringement. The District of Delaware’s rules required Arendi to “specifically identify the accused products and the asserted patent(s)” and to produce "an initial claim chart relating each accused product to the asserted claims each product allegedly infringes.” Arendi filed its Disclosure, listing hundreds of LG products as infringing four claims of the 843 patent but provided claim charts for only one product—LG’s Rebel 4 phone, labeling the Rebel 4 as “exemplary.” LG objected, stating that, “[s]hould Arendi intend to accuse [non-Rebel 4] products, then Arendi must promptly provide claim charts demonstrating how these products infringe[] or explain why Arendi contends the current claim charts are representative of specific non-charted products.” Arendi did not respond. The parties later agreed on eight representative products to represent all accused products, including seven non-Rebel 4 products. Arendi did not supplement its Disclosure. In response to an interrogatory relating to those eight products, LG reiterated that Arendi only provided infringement contentions for the Rebel 4. Arendi provided its expert report months after the close of fact discovery.The district court granted LG's motion to strike portions of that report because it “disclosed—for the first time—infringement contentions for five of” the non-Rebel 4 representative products. Arendi still did not supplement its Disclosure but filed a second complaint, asserting that LG’s non-Rebel 4 products infringed the 843 patent. The Federal Circuit affirmed the dismissal of the complaint, citing the duplicative-litigation doctrine. View "Arendi S.A.R.L. v. LG Electronics Inc." on Justia Law

INVT alleged that the importation and sale of personal devices, such as smartphones, smartwatches, and tablets, infringed INVT's patents. An ALJ determined that the accused devices did not infringe claims 3 and 4 of the 590 patent and claims 1 and 2 of the 439 patent and that INVT had failed to meet the technical prong of the domestic industry requirement as to those claims.The International Trade Commission affirmed the finding of no 19 U.S.C. 1337 (section 337) violation. The Federal Circuit affirmed the determination with respect to the 439 patent because INVT failed to show infringement and the existence of a domestic industry. The 439 patent relates to wireless communication systems, specifically an improvement to adaptive modulation and coding, which is a technique used to transmit signals in an orthogonal frequency division multiplexing system. The asserted 439 claims are drawn to “capability” but for infringement purposes, a computer-implemented claim drawn to a functional capability requires some showing that the accused computer-implemented device is programmed or otherwise configured, without modification, to perform the claimed function when in operation. INVT failed to establish that the accused devices, when put into operation, will ever perform the particular functions recited in the asserted claims. The determination with respect to the 590 patent is moot based on the patent’s March 2022 expiration. View "INVT SPE LLC v. International Trade Commission" on Justia Law

BMI’s 096 patent is generally directed to a method and apparatus for conformal radiation therapy of tumors using a pre-determined radiation dose. To account for the three-dimensionality of tumors, the gantry of a radiation machine—which houses the radiation beam—rotates around a patient to irradiate the tumor from different angles. The gantry uses a multileaf collimator to narrow the radiation beam and conform it to the shape of the tumor. The 096 patent purports to improve upon prior art by computing an optimal radiation beam arrangement that maximizes radiation of a tumor while minimizing radiation of healthy tissue.The Patent Trial and Appeal Board, in two inter partes reviews, found that a person having ordinary skill in the art would have had formal computer programming experience. Elekta’s expert had that experience; BMI’s did not. The Board accordingly discounted BMI’s expert testimony and determined Elekta had proven that challenged claims 1, 43, 44, and 46 were unpatentable as obvious. Before filing an appeal, BMI finally canceled claim 1 during an ex parte reexamination. The Federal Circuit affirmed unpatentability determinations with respect to the other claims as supported by substantial evidence regarding the level of skill in the art and each of the remaining Graham factors. View "Best Medical International, Inc. v. Elekta Inc.," on Justia Law

Killian’s application relates to a system “for determining eligibility for Social Security Disability Insurance [SSDI] benefits through a computer network.” This process entails looking up information from a Federal Social Security database and a state database containing records for patients receiving treatment for developmental disabilities or mental illness. For those patients identified in the state database as meeting certain criteria but not currently receiving SSDI benefits, the method determines whether the patient is entitled to SSDI benefits.The examiner rejected all pending claims of the application under 35 U.S.C. 101, as directed to the abstract idea of “determining eligibility for social security disability insurance” benefits and lacking additional elements amounting to significantly more than the abstract idea because the additional elements were simply generic recitations of generic computer functionalities. The Patent Trial and Appeal Board and Federal Circuit affirmed. The essential steps recited by claim 1—the “selecting” and “determining” limitations—can be performed in the human mind and are “an abstract mental process.” The remaining steps were merely directed to data gathering or data output and were appropriately categorized as “insignificant extra-solution activity” or “primitive computer operations found in any computer system” “which do not integrate the processes into a ‘practical application,’ and which do not recite an ‘inventive concept.’” View "In Re Killian" on Justia Law

Since 2014 Par has manufactured and sold Vasostrict®, an FDA-approved vasopressin injection product used to treat patients with critically low blood pressure. The Orange Book identifies Par’s 785 and 209 patents as encompassing Vasostrict®. Both patents require the vasopressin composition to have a rounded pH between 3.7–3.9. In 2018, Eagle filed an abbreviated new drug application (ANDA) to manufacture and sell a generic version of Vasostrict® before those patents expired. Eagle represented in its release specification that the pH range would be between 3.4–3.6. Eagle’s ANDA also contained 35 U.S.C. 355(j)(2)(A)(vii)(IV) certification that Par’s patents are invalid or will not be infringed by Eagle’s proposed product.Par sued for infringement under 35 U.S.C. 271(e)(2). Eagle stipulated that its proposed product would meet all asserted claim limitations except the claimed pH range. Par argued that “real-world” evidence shows the pH of Eagle’s product drifts up over time and that Eagle sought authority to release products into the marketplace with a pH of 3.64, just 0.01 beneath the infringing range. The Federal Circuit affirmed the rejection of those arguments. Minor fluctuations in pH value identified by Par did not reveal any discernible trend and the stability specification imposed an additional constraint that Eagle’s proposed product maintain a pH between 3.4–3.6 from the time of its distribution through its entire shelf life. View "Par Pharmaceutical, Inc. v. Eagle Pharmaceuticals, Inc." on Justia Law

In 2012, Click-to-Call sued several entities (including Ingenio) for infringement of its patent. Ingenio filed a petition for inter partes review (IPR) challenging the 16 asserted claims and one additional claim. While the petition was pending, the district court issued a Markman order construing certain claim terms and required plaintiffs to narrow their asserted claims to eight claims. Click-to-Call selected claims 1, 2, 8, 12, 13, 16, 26, and 27. The Board partially instituted IPR, found persuasive unpatentability grounds based on one reference, Dezonno, but refused to consider grounds based on another reference, Freeman. The Freeman grounds challenged asserted claim 27, whereas the Dezonno grounds did not. While appeal of the IPR was pending, the Supreme Court overruled the practice of partial institutions in “SAS” (2018). Ingenio never sought remand under SAS for the Board to consider Ingenio’s challenge to claim 27.In post-IPR district court proceedings, Ingenio moved for summary judgment, arguing that the only asserted claim not finally held unpatentable in the IPR, claim 27, was invalid based on the same reference that Ingenio had used against the other asserted claims in its IPR petition—Dezonno. Click-to-Call unsuccessfully argued that Ingenio was estopped from pressing this invalidity ground against claim 27, citing IPR estoppel, 35 U.S.C. 315(e)(2). The Federal Circuit reversed and remanded. The district court erred in not applying IPR estoppel to claim 27 based on Dezonno. View "Click-to-Call Technologies, LP- v. Ingenio, Inc." on Justia Law

Centripetal filed an infringement complaint against PAN, which then filed an inter partes review (IPR) petition for one patent and a post-grant review (PGR) petition for another. While the petitions were pending, the Patent and Trademark Office (USPTO) updated its interim guidance, noting that the agency “does not accept requests for Director review of decisions on institution.” The Patent Trial and Appeal Board denied institution. PAN filed Requests for Director Rehearing. The agency responded that USPTO "does not accept requests for Director review of decisions on institution ... parties may only request Director review of final written decisions" issued in IPR and PGR and that PAN’s “rehearing requests will not revert to the Board panel and there will be no further review of the Board’s decision.”PAN sought mandamus relief. A newly-appointed Director updated the interim guidance to state that “the Office does not accept requests for Director review of institution decisions” but that “the Director has always retained and continues to retain the authority to review such decisions sua sponte.” The Director has since exercised that authority. PAN argues that the Director’s current policy was contrary to the Appointments Clause, as interpreted by the Supreme Court in “Arthrex,” (2021). The Federal Circuit denied the petition. That the Appointments Clause requires that a Presidentially-appointed, Senate-confirmed officer have review authority does not mean that a principal officer, once bestowed with such authority, cannot delegate it to other agency officers. View "In Re Palo Alto Networks, Inc." on Justia Law

Kamstrup’s 957 patent describes ultrasonic flow meters and housings. The specification discloses that the meters are used for “calculating a consumed quantity of water, heat, cooling, gas or the like.” Ultrasonic flow meters include “housing” to protect electronic components, such as a display or battery. The patent is directed to “an ultrasonic flow meter housing in the form of a monolithic polymer structure being cast in one piece.” It explains that “the present invention can be fabricated with a reduced number of steps compared to existing meters.Axioma petitioned for inter partes review of all 15 claims. The Federal Circuit affirmed the Patent Trial and Appeal Board in finding the challenged claims unpatentable as obvious or anticipated, construing “cast in one piece” as a product-by-process claim element. Kamstrup did not present any evidence showing that the claim element provided structural and functional differences distinguishing it from the prior art. View "Kamstrup A/S v. Axioma Metering UAB" on Justia Law

The 601 patent addresses error rates related to recording data to computer storage devices. Dr. Moon, a UMN professor, and Dr. Brickner, a UMN graduate student, developed maximum transition-run coding to reduce error-prone patterns; their work became the basis for the 601 patent. UMN sued LSI for infringement. On inter partes review, the Patent Trial and Appeal Board concluded that claim 13 was unpatentable in view of prior art (Okada) and that claims 14 and 17 were not unpatentable in view of either Okada or the Tsang prior art reference; the Tsang reference was not prior art because it was not “by another” under 35 U.S.C. 102(e).The Federal Circuit affirmed. The Board properly found that the material in the Tsang patent that exceeded the disclosure of the Seagate Report was not relevant to the anticipation challenge to claims 14 and 17 and that summarizing the Seagate Report in Tsang did not make Tsang an inventor of the material. There is no contention that the Seagate Report can be relied upon as prior art to the 601 patent since Dr. Moon and Dr. Brickner are both listed as the only authors of the Seagate Report and as the only inventors of the 601 patent. View "LSI Corp. v. Regents of the University of Minnesota" on Justia Law

The Federal Circuit previously affirmed summary judgment of no invalidity for claim 1 of the 348 patent in favor of Hologic, applying the doctrine of assignor estoppel against Minerva. The patent covers an endometrial ablation device for the treatment of uterine bleeding that eliminates the problem of “steam and liquid buildup at the ablation site.” The Supreme Court vacated, holding that assignor estoppel remains a valid doctrine, but that it comes with limits. On remand, the Federal Circuit again affirmed.Claim 1 is not “materially broader” than the claims assigned to Hologic such that assignor estoppel should not apply. Minerva is estopped from challenging the validity of claim 1. Minerva did not dispute that Truckai executed a broad assignment of his patent rights to NovaCept and later sold NovaCept to Hologic’s predecessor; that NovaCept received appreciable value for those patent rights; that Truckai founded Minerva and used his expertise to research, develop, and obtain FDA approval for Minerva’s Endometrial Ablation System; that his job responsibilities included bringing the System to market to compete with Hologic; and that he is in privity with Minerva. View "Hologic, Inc. v. Minerva Surgical, Inc." on Justia Law