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

Intuitive filed three inter partes review (IPR) petitions to challenge the patentability of Ethicon’s patent, entitled “Drive Interface for Operably Coupling a Manipulatable Surgical Tool to a Robot.” The Patent Trial and Appeal Board, in two IPRs, upheld the patentability of claims 24-26. Ethicon moved to terminate Intuitive as a party to the remaining IPR, arguing estoppel under 35 U.S.C. 315(e)(1) based on the decisions in the companion IPRs. The Board terminated Intuitive as a petitioner to the final IPR and upheld the patentability of claims 24–26 on the merits.Only a party to an IPR may appeal a Board’s final decision, 35 U.S.C. 141(c). Intuitive argued it could appeal because the Board misinterpreted 35 U.S.C. 315(e)(1) and that estoppel should not apply to simultaneously-filed petitions, noting that it was “once a party” to the IPR. The Federal Circuit dismissed an appeal. The Board did not err. Section 315(e)(1) estops a petitioner as to invalidity grounds for an asserted claim that it failed to raise but “reasonably could have raised” in an earlier-decided IPR, regardless of whether the petitions were simultaneously filed and regardless of the reasons for their separate filing. All three IPRs challenged the same claim; Intuitive actually knew of the cited prior art when it filed the other petitions and knew which claims it wanted to challenge based on that art. Intuitive reasonably could have raised its grounds from the third IPR in either earlier IPR. View "Intuitive Surgical, Inc. v. Ethicon LLC" on Justia Law

Junker, the named inventor of the 839 Design Patent, titled “Handle for Introducer Sheath,” sued MedComp for infringement of the sole claim of the D839 patent. The parties disputed whether a letter sent before the critical date was a commercial offer for sale of the claimed design, rendering the claim invalid under the on-sale bar, 35 U.S.C. 102(b), or merely a quotation signaling the parties were engaged in preliminary negotiations. The district court granted Junker summary judgment of no invalidity under the on-sale bar. After a bench trial, the court rejected each of MedComp’s remaining invalidity challenges, found that each of the accused products infringed the D839 patent claim and that the infringement was willful, and awarded Junker $1,247,910 in damages under 35 U.S.C. 289, which allows recovery of an infringer’s profits from the sale of the infringing products.The Federal Circuit reversed the district court’s summary judgment of no invalidity. The pre-critical date letter was a commercial offer for sale and there is no dispute that the claimed design was ready for patenting. The letter contains a number of necessary terms typical for a commercial contract and specifies different purchase options for its peelable sheath products. View "Junker v. Medical Components, Inc." on Justia Law

Adapt’s patents-in-suit claim methods of treating opioid overdose by intranasal administration of a naloxone formulation, and devices for intranasal administration. Naloxone—the active ingredient in Adapt’s NARCAN® Nasal Spray—is an opioid receptor antagonist that blocks opioids from reaching the opioid receptors, helping reverse the effects of opioid overdose. Before the priority date of the patents-in-suit, numerous naloxone products had been used to treat opioid overdose. The patents-in-suit are listed in the FDA’s “Approved Drug Products with Therapeutic Equivalence Evaluations” “Orange Book.” Teva submitted to the FDA Abbreviated New Drug Application (ANDA) seeking approval to manufacture and sell a generic version of NARCAN®., with a Paragraph IV certification asserting that the patents-in-suit are invalid, unenforceable, and/or not infringed, 21 U.S.C. 355(j)(2)(A)(vii)(IV).Adapt sued Teva for infringement under 35 U.S.C. 271(e)(2). The Federal Circuit affirmed a holding that the asserted claims of the patents-in-suit would have been obvious in view of prior art. The district court’s findings, supported by ample evidence, provide a detailed explanation as to why a skilled artisan would have been motivated to combine the prior art references to arrive at the claimed invention. Prior art, as a whole, did not teach away from the claimed invention. The court rejected Adapt’s argument that its evidence of unexpected results, copying, skepticism, long-felt need, and failure of others indicated nonobviousness. View "Adapt Pharma Operations Ltd. v. Teva Pharmaceuticals USA, Inc." on Justia Law

In litigation between Uniloc and Apple, Uniloc unsuccessfully sought to seal matters of public record, such as quotations of Federal Circuit opinions and a list of patent cases Uniloc had filed. The Federal Circuit affirmed but held that the district court must conduct a detailed analysis on whether confidential licensing information of third-party licensees of Uniloc’s patents should be sealed and remanded for “particularized determinations.”On remand, Uniloc moved to seal or redact third-party documents that revealed licensing terms, licensees’ names, amounts paid, including a Fortress (Uniloc’s financier) investment memorandum, containing Fortress’s investment criteria and other third-party licensing information. The district court ordered that the licensing information, including the licensees' identities, be unsealed in full. explaining that “patent licenses carry unique considerations” that bolster the public’s right of access, including the valuation of patent rights, and that disclosure of patent licensing terms would facilitate “up-front cost evaluations of potentially infringing conduct,” “driv[e] license values to a more accurate representation of the technological value,” and help “inform reasonable royalties.” The Federal Circuit vacated. The district court failed to follow the previous remand instructions to make particularized determinations. Any procedural failings of Uniloc and Fortress cannot justify unsealing the information of third parties in the investment memo. The court should have considered whether the interests of the third parties outweigh the public’s interest in seeing licensing details that are not necessary for resolving this case. View "Uniloc USA, Inc. v. Apple Inc." on Justia Law

Shinyaku and Sarepta executed an Agreement concerning “a potential business relationship relating to therapies for the treatment of Duchenne Muscular Dystrophy.” During the Agreement’s term the parties would “not directly or indirectly assert or file any legal or equitable .. claim or otherwise initiate any … form of legal or administrative proceeding against the other Party . . . in any jurisdiction … concerning intellectual property in the field of Duchenne Muscular Dystrophy,” including “patent infringement litigations, declaratory judgment actions, patent validity challenges” before the U.S. Patent and Trademark Office (PTO) or Japanese Patent Office, and reexamination proceedings before the PTO. A forum selection, governing intellectual property disputes between the parties after the term’s expiration named the District of Delaware. The term ended in June 2021; the two-year forum selection clause took effect. That same day, Sarepta filed seven Patent Trial and Appeal Board petitions for inter partes review (IPR). Shinyaku filed suit in the District of Delaware asserting breach of contract (alleging that the IPR petitions violated the forum selection clause), declaratory judgment of noninfringement and invalidity concerning Sarepta’s patents, and infringement of Shinyaku’s patents.The Federal Circuit directed that the district court enter an injunction, requiring Sarepta to withdraw the petitions. The plain language of the forum selection clause resolved the dispute. View "Nippon Shinyaku Co., Ltd. v. Sarepta Therapeutics, Inc." on Justia Law

Caltech’s patents disclose circuits that generate and receive irregular repeat and accumulate (IRA) codes, a type of error correction code designed to improve the speed and reliability of data transmissions. Wireless data transmissions are ordinarily susceptible to corruption arising from noise or other forms of interference. IRA codes help to identify and correct corruption after it occurs.The Federal Circuit affirmed, in part, a judgment finding infringement. The district court did not err in its construction of the claim limitation “repeat” and substantial evidence supports the jury’s verdict of infringement of the asserted claims of the patents. The court upheld summary judgment findings of no invalidity based on inter partes review estoppel, a determination of no inequitable conduct, and the district court’s decision with respect to its jury instructions on extraterritoriality. The court remanded in part. Claim 13 of the 781 patent is patent-eligible but the court vacated the verdict of infringement because of the district court’s failure to instruct the jury on the construction of the claim term “variable number of subsets.” Caltech’s two-tier damages theory cannot be supported on the record, requiring a new trial on damages. View "California Institute v. Broadcom Ltd." on Justia Law

Laser-based systems for measuring distances, useful for many purposes, are best known for helping autonomous cars sense their surroundings. Velodyne markets products incorporating such systems. Quanergy, which also markets products employing laser systems, challenged the validity of multiple claims in Velodyne’s patent in two inter partes review (IPR) proceedings. The Patent Trial and Appeal Board held that multiple claims are not unpatentable as obvious.The Federal Circuit affirmed, upholding the construction of the term “lidar” to mean pulsed time-of-flight lidar; “lidar” is an acronym for “Laser Imaging Detection and Ranging.” Like radar, lidar determines distance based on the time-of-flight of the transmitted wave. The Board gave substantial weight to Velodyne’s objective evidence of unresolved long-felt need, industry praise, and commercial success. Substantial evidence supports the Board’s presumption of a nexus and its thorough analysis of each objective indicia. View "Quanergy Systems, Inc v. Velodyne Lidar USA, Inc." on Justia Law

Wi-LAN’s 145 patent is directed to allocating bandwidth in a wireless communication system. The 757 patent, while unrelated to the 145 patent, is directed to a similar subject matter and purports to improve signal quality and offer greater error protection in data transmission using a modulation scheme. The district court found that Apple infringed claims in the patents and that those claims had not been proven invalid and awarded Wi-LAN $85.23 million in damages.The Federal Circuit affirmed in part, upholding the district court’s claim construction of subscriber unit as a “module that receives [uplink] bandwidth from a base station, and allocates the bandwidth across its user connections.” Substantial evidence supports the jury’s finding that the accused iPhones contain a subscriber unit as sold. Reversing in part, the court held that the district court abused its discretion in denying Apple’s motion for a new trial on damages. View "Apple, Inc. v. Wi-LAN Inc." on Justia Law

PlasmaCAM sued CNCElectronics for infringing the 441 patent, for which Plasmacam has an exclusive license. In 2019, the parties notified the district court that they had settled the case. When the parties met to draft a formal agreement, however, it became evident that they interpreted the settlement differently, and further negotiations resulted. The parties eventually advised the district court that they had reached a complete agreement. The district court granted the motion to enforce Plasmacam’s version of that agreement and ordered CNC to execute it. The Federal Circuit reversed after holding that the district court order to execute the settlement agreement constituted either an appealable injunction or a final judgment. The court concluded that CNC’s version of the agreement accurately reflects the parties’ understanding. View "PlasmaCAM, Inc. v. CNCElectronics, LLC" on Justia Law

In 2019, Myco began marketing “the AB Max,” a device for treating blepharitis, at a New Orleans trade show. Blepharitis is a chronic inflammatory disease of the eyelids. A month later, BlephEx filed an application that would become the 087 patent, issued in October 2019, and entitled “Instrument for Treating an Ocular Disorder.” BlephEx sued Myco, alleging that the AB Max infringed the 087 patent.The district court enjoined Myco and those acting on its behalf from selling, distributing, or offering to sell or distribute the AB Max. The court found that Myco had not presented a substantial question of anticipation based on prior art. Myco’s obviousness argument was “unsupported with any expert evidence demonstrating that it would have been obvious to one of ordinary skill in the art to attach a swab” to a hand-held device and Myco failed “to explain how one of ordinary skill in the art would have addressed the safety concerns of attaching a swab that is soaked in an abrasive.” The Federal Circuit affirmed. The district court did not abuse its discretion in granting the preliminary injunction, clearly err in its underlying factual findings, or abuse its discretion in setting the scope of the preliminary injunction. View "BlephEx, LLC v. Myco Industries, Inc." on Justia Law