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

Under the 1999 Agreement, Medtronic purchased Dr. Sasso's inventions, agreeing to royalty payments based on Medtronic’s sales of the defined Medical Device until “the last to expire of the patents included in Intellectual Property Rights, or if no patent application(s) issue into a patent having valid claim coverage of the Medical Device, then seven (7) years from the Date of First Sale of the Medical Device.” The initial patent application was filed in November 1999; two patents issued, both entitled “Screw Delivery System and Method.” Medtronic made royalty payments in 2002-2018. Sasso claimed that Medtronic was not paying royalties on sales of all relevant devices, and filed suit in Indiana state court. A judgment in Sasso's favor is on appeal.Medtronic sought a federal declaratory judgment. While Sasso describes the state court action as a contract case for payment for patent rights, Medtronic describes the federal action as a patent case in which payment requires valid patents. The Federal Circuit affirmed the dismissal of the suit without prejudice, based on abstention in view of the concurrent action in Indiana state court between the same parties concerning the same dispute. District courts possess significant discretion to dismiss or stay claims seeking declaratory relief, even when they have subject matter jurisdiction. View "Warsaw Orthopedic, Inc. v. Sasso" on Justia Law

Immunex’s 487 patent is directed to antibodies that bind to the human interleukin-4 receptor, the resulting inhibition of which is significant for treating various inflammatory disorders, such as arthritis, dermatitis, and asthma. Amid infringement litigation, Sanofi filed three inter partes review (IPR) petitions challenging claims 1–17 of the patent. Two were instituted. In one final written decision, the Board concluded that claims 1–17 were unpatentable as obvious over two prior references. Immunex appealed, contesting the construction of the claim term “human antibodies.” In the other IPR, involving a subset of the same claims, the Board did not invalidate the patents for reasons of inventorship. Sanofi contested the Board’s inventorship determination. In consolidated appeals, the Federal Circuit upheld the Board’s claim construction, affirming the invalidity decision, leaving valid no claims at issue in the inventorship appeal. View "Immunex Corp v. Sanofi-Aventis U.S. LLC" on Justia Law

Two named inventors of a patent, directed to portable antenna positioners, assigned their interests to their respective employers, AntennaSys and Windmill. Windmill acquired an exclusive license to AntennaSys’s one-half interest in the patent. Windmill formed GBS to hold its interests in the patent and agreed to pay AntennaSys a royalty; if Windmill fails to meet certain minimum sales requirements, its exclusive license to AntennaSys’s interest becomes non-exclusive. The agreement provides that, if Windmill loses its exclusivity, either party may commence a lawsuit against “third-party” infringers. Windmill failed to meet those requirements; its license to AntennaSys’s one-half interest is now non-exclusive. AntennaSys sued AQYR, Windmill’s wholly-owned subsidiary, for infringement. Following claim construction, AntennaSys conceded that it could not prevail. The court entered judgment for the defendants.The Federal Circuit vacated. On remand, the district court should resolve factual issues pertaining to AntennaSys’s ability to bring its infringement claim against AQYR: whether Windmill waived the right to object to AntennaSys’s failure to meet 35 U.S.C 262's prerequisite that each joint owner of a patent may make, use, offer to sell, sell, or import the patented invention, without the consent of or accounting to other owners; whether GBS or Windmill holds or retains an ownership interest in the patent; and whether AntennaSys’s infringement suit is barred because of an express or implied license from the real patent owner to AQYR. View "AntennaSys, Inc. v. AQYR Technologies, Inc." on Justia Law

GSK’s 067 patent for “carvedilol” issued in 1985. The FDA initially approved carvedilol for treating hypertension; the product was marketed with the brand name Coreg®. Scientists continued to study carvedilol. In 1997, the FDA approved carvedilol for the additional treatment of congestive heart failure. GSK’s 069 patent issued in 1998, describing and claiming treatment with a combination of carvedilol and an angiotensin-converting enzyme (ACE) inhibitor, a diuretic, and digoxin. The patent was listed in the FDA’s Orange Book. In 2003, the FDA approved this Coreg® combination for use by patients suffering from left ventricular dysfunction following myocardial infarction. In 2002, Teva applied for FDA approval of generic carvedilol, certifying in the ANDA that its product would not be launched until the 067 patent expired and that the 069 patent was “invalid, unenforceable, or not infringed.” Teva received FDA tentative approval “for treatment of heart failure and hypertension,” to become effective in 2007. GSK, in 2003, sought reissue of the 069 patent, 35 U.S.C. 251. The 000 patent issued in 2008. In 2011 the FDA required Teva to amend its carvedilol label to be “identical in content to the approved [GSK Coreg®] labeling.GSK sued for infringement.A jury found the 000 patent valid and infringed, assessed damages, and found the infringement willful. The district court granted Teva judgment of non-infringement as a matter of law. The Federal Circuit reinstated the jury verdicts as supported by substantial evidence. View "GlaxoSmithKline LLC v. Teva Pharmaceuticals USA, Inc." on Justia Law

Biogen’s patent is directed to a method of treating a viral condition, a viral disease, cancers, or tumors, by the administration of a pharmaceutically effective amount of a recombinant polypeptide related to human interferon-β (IFN-β). Biogen sued Serono, alleging contributory and induced infringement of the patent by the sale and marketing in the U.S. of Rebif, a recombinant IFN-β product used for the treatment of Multiple Sclerosis. A jury found that the patent claims were anticipated by two references teaching the use of native IFN-β to treat viral diseases; that the asserted claims not invalid for lack of enablement or written description, or for obviousness; that patients and prescribers directly infringed the asserted claims; and that Serono contributorily infringed the claims but did not induce infringement thereof. The district court granted judgment as a matter of law of no anticipation in favor of Biogen and conditionally granted a new trial on anticipation; sustained the jury’s verdict of no invalidity based on written description or enablement; overturned the verdict of no induced infringement; sustained the verdict of contributory infringement; and held that the claims were not patent ineligible.The Federal Circuit reversed with respect to anticipation and the conditional grant of a new trial. A reasonable jury could find the claims of the patent anticipated on the record presented. The court remanded with instructions to reinstate the verdict of anticipation. View "Biogen MA Inc. v. EMD Serono, Inc." on Justia Law

Voip-Pal’s patents, titled “Producing Routing Messages for Voice Over IP Communications,” describe the field of invention as “voice over IP communications and methods and apparatus for routing and billing” and relate to routing communications between two different types of networks—public and private. Voip-Pal sued Apple for infringement. Apple petitioned for inter partes review (IPR) of several claims of the asserted patents in two separate proceedings before the Patent Trial and Appeal Board, which determined that the claims not invalid for obviousness. The Federal Circuit affirmed the Board’s non-obviousness determinations as to certain claims and its sanctions ruling, based on a finding that Voip-Pal engaged in sanctionable ex parte communications. The Board’s decision to allow Apple to petition for rehearing before a new panel, and provide Apple with a meaningful opportunity to respond to VoipPal’s letters was a reasonable course of action. The court vacated with respect to 19 claims, on grounds of mootness. View "Apple Inc. v. Voip-Pal.com, Inc." on Justia Law

Network-1’s 930 patent, titled “Apparatus and Method for Remotely Powering Access Equipment over a 10/100 Switched Ethernet Network,” issued in 2001. Network-1 sued HP for infringement. A jury found the patent not infringed and invalid. Following post-trial motions, the district court denied Network-1’s request for a new trial on infringement but granted Network-1’s motion for judgment as a matter of law (JMOL) on validity, holding that HP was estopped from raising certain validity challenges under 35 U.S.C. 315(e)(2) based on HP’s joinder to an inter partes review (IPR) before the Patent Trial and Appeal Board.The Federal Circuit vacated in part and remanded. The district court correctly construed “low-level current” but erred in its construction of “main power source,” and as a result of that error, Network-1 is entitled to a new trial on infringement. Network-1 was prejudiced by the incorrect claim construction. HP was not statutorily estopped from challenging the asserted claims of the patent based on prior art, which was not raised in the IPR and which could not have reasonably been raised by HP. The court affirmed that certain asserted claims were not improperly broadened. View "Network-1 Technologies, Inc. v. Hewlett-Packard Co." on Justia Law

Egenera sued, alleging that Cisco’s enterprise server systems infringed the 430 patent. Before claim construction, and with Cisco’s inter partes review (IPR) petition pending, Egenera separately petitioned the Patent and Trademark Office to remove one of the 11 listed inventors from the patent. Egenera realized that all claim limitations had been conceived before one listed inventor, Schulter, had started working there. The Patent Board declined to institute IPR; Schulter was removed as an inventor. Following the district court’s claim construction of a “logic to modify” limitation and a trial on inventorship, Egenera asked the district court to add Schulter back to the patent. The court determined that judicial estoppel prevented Egenera from relisting Schulter and found the patent invalid for failing to name all inventors.The Federal Circuit affirmed the claim construction but vacated the invalidity judgment based on judicial estoppel. Egenera advanced no “clearly inconsistent” positions. Inventorship can depend on claim construction. Egenera’s inventorship petition was consistent with the underlying presumption was that Egenera’s claim terms, lacking “means,” were not means-plus-function. Schulter likely would not be an inventor under Egenera’s preferred construction but inventorship under that construction was not decided. Once claim construction issues were decided, it was entirely consistent for Egenera to request an accompanying formal correction of inventorship. In addition, Egenera did not succeed in persuading a court or court-like tribunal to accept its first position. View "Egenera, Inc. v. Cisco Systems, Inc." on Justia Law

Baxalta sued Genentech, asserting that Genentech’s Hemlibra® product used to treat the blood clotting disorder hemophilia infringes claims of its 590 patent. The 590 patent relates to preparations used to treat hemophilia patients who have developed factor VIII inhibitors. After the district court issued a claim construction order, construing the terms “antibody” and “antibody fragment,” the parties stipulated to non-infringement of the asserted claims. The Federal Circuit vacated, finding that the district court erred in construing the terms by selecting a narrower construction, which is inconsistent with the written description and the plain language of the claim. View "Baxalta Inc. v. Genentech, Inc." on Justia Law

Neville’s 708 patent and its parent 236 patent relate to foundation piles, which are tubular structures placed into the ground to provide stability for the foundations built over them. Such foundation piles can be driven into the ground through direct application of force or through rotational torque. The claimed inventions are directed to the screw-type foundation pile. The specification explains that rotational torque is applied through a “helical flight” at the tip of the foundation pile, which “draws the pile into a soil bed,” which is depicted in the figures as a structure similar to the helical structure of a screw.The Federal Circuit affirmed summary judgment, finding that Foundation’s accused products do not infringe. The district court properly construed the terms “end plate having a substantially flat surface,” and “protrusion extending outwardly from the end plate.” View "Neville v. Foundation Constructors, Inc." on Justia Law