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

Kroy IP Holdings, LLC sued Groupon, Inc. in the United States District Court for the District of Delaware, alleging patent infringement of U.S. Patent No. 6,061,660, which relates to providing incentive programs over a computer network. Groupon moved to dismiss the complaint, arguing that Kroy was collaterally estopped from alleging infringement based on two prior inter partes review (IPR) decisions by the Patent Trial and Appeal Board (PTAB) that found other claims of the same patent unpatentable.The district court granted Groupon’s motion to dismiss, determining that the PTAB’s final judgments on the unpatentability of certain claims had preclusive effect on the district court action. The court concluded that collateral estoppel could apply to patent claims not previously adjudicated if the differences between the unadjudicated and adjudicated claims did not materially alter the question of invalidity. The district court found that the newly asserted claims were immaterially different from the previously adjudicated claims and thus dismissed Kroy’s complaint with prejudice.The United States Court of Appeals for the Federal Circuit reviewed the case and reversed the district court’s decision. The Federal Circuit held that collateral estoppel does not apply when the second action involves a different legal standard, such as a different burden of proof. The court noted that in IPR proceedings, the burden of proof is a preponderance of the evidence, whereas in district court, the burden is clear and convincing evidence. Therefore, the PTAB’s findings under a lower burden of proof could not preclude Kroy from asserting the newly asserted claims in district court. The Federal Circuit reversed the district court’s dismissal and remanded the case for further proceedings. View "KROY IP HOLDINGS, LLC v. GROUPON, INC. " on Justia Law

Trudell Medical International Inc. (Trudell) owns U.S. Patent No. 9,808,588, which relates to devices for performing oscillatory positive expiratory pressure (OPEP) therapy. Trudell sued D R Burton Healthcare, LLC (D R Burton) for patent infringement. D R Burton sells OPEP devices, including the vPEP®, vPEP® HC, iPEP®, PocketPEP®, and PocketPEP® Advantage products. Trudell alleged that these products infringed certain claims of the ’588 patent.The United States District Court for the Eastern District of North Carolina allowed D R Burton to present infringement testimony by Dr. John Collins at trial. After a three-day trial, the jury found that the asserted claims of the ’588 patent were valid but not infringed. Trudell filed a renewed motion for judgment as a matter of law (JMOL) on infringement or, alternatively, for a new trial. The district court denied this motion.The United States Court of Appeals for the Federal Circuit reviewed the case. The court held that the district court abused its discretion by allowing Dr. Collins to testify on noninfringement because his testimony was untimely and did not comply with Federal Rule of Civil Procedure 26. Additionally, the court found Dr. Collins' testimony unreliable under Federal Rule of Evidence 702. The Federal Circuit vacated the jury’s finding of noninfringement and remanded for a new trial, excluding Dr. Collins’ noninfringement testimony. The court also affirmed the district court’s denial of Trudell’s motion for JMOL of infringement, as the jury could have reasonably found noninfringement based on the evidence presented.The Federal Circuit ordered that the case be reassigned to a different district court judge on remand to preserve the appearance of justice and fairness, given the trial judge’s statements indicating a predisposition to quickly resolve the case. View "TRUDELL MEDICAL INTERNATIONAL INC. v. D R BURTON HEALTHCARE, LLC " on Justia Law

Wuhan Healthgen Biotechnology Corp. (Healthgen) appealed a final determination from the International Trade Commission (Commission) which found that Healthgen’s clinical grade albumin products infringed claims of U.S. Patent No. 10,618,951, owned by Ventria Bioscience Inc. (Ventria). The patent pertains to cell culture media containing recombinant human serum albumin produced in a genetically modified plant. Healthgen imports clinical and medium grade recombinant human serum albumin (rHSA) products, and Ventria alleged that these imports violated Section 337 of the Tariff Act of 1930 due to patent infringement.The Administrative Law Judge (ALJ) initially found that Healthgen’s clinical and medium grade rHSA products infringed the patent and that Ventria satisfied the domestic industry requirement based on six rHSA products. The Commission affirmed the ALJ’s finding of infringement for the clinical grade products but not for the medium grade products. The Commission also affirmed that Ventria satisfied the domestic industry requirement based on one product, Optibumin, without further analysis of the other five products.The United States Court of Appeals for the Federal Circuit reviewed the case. The court held that substantial evidence supported the Commission’s findings. The court affirmed the Commission’s determination that Healthgen’s clinical grade products infringed the patent based on SEC-HPLC data showing less than 2% aggregated albumin. The court also upheld the Commission’s finding that Ventria satisfied the domestic industry requirement, noting that all investments and activities related to Optibumin occurred within the United States and that the investment-to-revenue ratio indicated significant investment despite low revenue.The Federal Circuit affirmed the Commission’s decision, concluding that Healthgen’s clinical grade products infringed the patent and that Ventria met the domestic industry requirement. View "WUHAN HEALTHGEN BIOTECHNOLOGY CORP. v. ITC " on Justia Law

HD Silicon Solutions LLC (HDSS) appealed a decision by the United States Patent and Trademark Office Patent Trial and Appeal Board (the Board) which held claims 1–7 and 9–17 of U.S. Patent 6,774,033 (the '033 patent) unpatentable as obvious. The '033 patent pertains to a local interconnect layer in an integrated circuit, specifically involving a method of forming this layer using titanium nitride and tungsten films.Microchip Technology Inc. (Microchip) petitioned for inter partes review (IPR), arguing that the claims were obvious over U.S. Patent 5,847,463 (Trivedi). The Board construed the term "comprising tungsten" to include both elemental tungsten and tungsten compounds, and found that the claims were unpatentable based on Trivedi alone or in combination with other references. HDSS appealed this decision, challenging the Board's claim construction and its findings on the motivation to combine references.The United States Court of Appeals for the Federal Circuit reviewed the case. The court agreed with HDSS that the Board's construction of "comprising tungsten" was incorrect, determining that the term should be limited to elemental tungsten. However, the court found that this error was harmless because Trivedi disclosed both elemental tungsten and tungsten-silicide layers, either of which would render the claims obvious. The court also upheld the Board's findings on the motivation to combine references, rejecting HDSS's arguments that the Board misinterpreted Trivedi and failed to explain the motivation to combine references to meet specific claim limitations.Ultimately, the Federal Circuit affirmed the Board's decision, holding that the claims of the '033 patent were unpatentable as obvious. View "HD SILICON SOLUTIONS LLC v. MICROCHIP TECHNOLOGY INC. " on Justia Law

Gesture Technology Partners, LLC owns U.S. Patent No. 8,878,949, which is directed to image capture technology using a portable device with an electro-optical sensor and a digital camera. Apple Inc. filed an inter partes review (IPR) petition challenging the patent's claims as obvious over prior art references Numazaki and Nonaka. The Patent Trial and Appeal Board (the "Board") found claims 1-3, 5-10, and 12-17 unpatentable but upheld claims 4, 11, and 18. Gesture cross-appealed the unpatentability findings, and Apple appealed the findings regarding claims 4, 11, and 18.The Board concluded that claims 1-3 and 5-7 were obvious based on the combination of Numazaki and Nonaka, which disclosed a device that captures images in response to detected gestures. However, the Board found that claim 4, which required the electro-optical sensor to be "fixed" in relation to the digital camera, was not obvious because Numazaki did not disclose this limitation.The United States Court of Appeals for the Federal Circuit reviewed the case. The court affirmed the Board's determination that claims 1-3 and 5-7 were unpatentable. The court found that the Board had substantial evidence to support its conclusion that a person of ordinary skill in the art would combine the teachings of Numazaki and Nonaka to render these claims obvious.However, the court reversed the Board's determination regarding claim 4. The court found that the Board had improperly ignored Apple’s expert testimony, which demonstrated that fixing the electro-optical sensor and digital camera in relation to each other was desirable and obvious to a person of ordinary skill in the art. The court concluded that the record showed that the fixed relationship was necessary to maintain overlapping fields of view, which was essential for the device's functionality.The Federal Circuit affirmed the Board's findings for claims 1-3 and 5-7 and reversed the finding for claim 4, holding it unpatentable. View "APPLE INC. v. GESTURE TECHNOLOGY PARTNERS, LLC " on Justia Law

Regeneron Pharmaceuticals, Inc. holds a Biologics License Application (BLA) for EYLEA®, a therapeutic product containing aflibercept, a VEGF antagonist used to treat angiogenic eye diseases. Regeneron also owns U.S. Patent No. 11,084,865, which covers VEGF-trap formulations suitable for intravitreal injection. Several companies, including Samsung Bioepis Co., Ltd. (SB), filed abbreviated Biologics License Applications (aBLAs) seeking approval to market EYLEA® biosimilars. Regeneron sued these companies, including SB, for patent infringement in the Northern District of West Virginia.The district court consolidated the cases and granted Regeneron’s motion for a preliminary injunction against SB, enjoining it from marketing its biosimilar product in the U.S. without a license from Regeneron. The court found it had personal jurisdiction over SB based on SB’s aBLA filing and its distribution agreement with Biogen, which indicated plans for nationwide marketing, including West Virginia. The court also found that Regeneron was likely to succeed on the merits, as SB had not raised a substantial question of invalidity of the ’865 patent for obviousness-type double patenting or lack of written description.The United States Court of Appeals for the Federal Circuit reviewed the case and affirmed the district court’s decision. The appellate court agreed that the district court had personal jurisdiction over SB, as SB’s actions indicated plans to market its biosimilar nationwide. The court also upheld the district court’s findings that SB had not raised a substantial question of invalidity for the ’865 patent. The court found that the patent’s specific stability and glycosylation requirements were patentably distinct from the reference patent and adequately supported by the specification. The court also agreed that Regeneron had established a causal nexus between SB’s infringement and the irreparable harm it would suffer without an injunction. View "REGENERON PHARMACEUTICALS, INC. v. MYLAN PHARMACEUTICALS INC. " on Justia Law

Steuben Foods, Inc. (Steuben) filed a complaint in 2010 in the United States District Court for the Western District of New York, alleging that Shibuya Hoppmann Corp. infringed claims of U.S. Patent Nos. 6,209,591, 6,536,188, and 6,702,985. Shibuya Kogyo Co., Ltd. was added as a defendant in 2012, and a similar complaint was filed against HP Hood LLC. The cases were consolidated and later transferred to the District of Delaware in 2019. The district court issued a claim construction order in 2020 and denied cross-motions for summary judgment in 2021. A five-day jury trial resulted in a verdict that the asserted patents were valid and infringed, awarding Steuben $38,322,283.78 in damages.The district court granted Shibuya’s motion for judgment as a matter of law (JMOL) of noninfringement for all asserted patents, found the invalidity arguments waived, and conditionally granted a new trial. Steuben appealed the JMOL and the conditional grant of a new trial.The United States Court of Appeals for the Federal Circuit reviewed the case. The court reversed the JMOL of noninfringement for the ’591 and ’188 patents, finding substantial evidence supported the jury’s verdict of infringement. The court affirmed the JMOL of noninfringement for the ’985 patent, holding that the continuous addition of sterilant could not be equivalent to the claim’s requirement of intermittent addition. The court also reversed the conditional grant of a new trial on noninfringement and vacated the conditional grant of a new trial on invalidity and damages, remanding for further proceedings.The main holdings were: reversing the JMOL of noninfringement for the ’591 and ’188 patents, affirming the JMOL of noninfringement for the ’985 patent, reversing the conditional grant of a new trial on noninfringement, and vacating the conditional grant of a new trial on invalidity and damages. View "STEUBEN FOODS, INC. v. SHIBUYA HOPPMANN CORPORATION " on Justia Law

Lynk Labs, Inc. owns U.S. Patent No. 10,687,400, which relates to light-emitting diodes (LEDs) and LED drivers, specifically alternating current (AC) driven LEDs and LED circuits. Samsung Electronics Co., Ltd. filed a petition for inter partes review (IPR) challenging claims 7-20 of the '400 patent for obviousness. Lynk Labs disclaimed claims 14 and 18-20, leaving claims 7-13 and 15-17 in dispute. The Patent Trial and Appeal Board (Board) determined that claims 7-13 and 17 were unpatentable for obviousness based on prior art, including U.S. Patent Application Publication No. 2004/0206970 (Martin), which was filed before the '400 patent's priority date but published after.The Board found that Martin could serve as prior art under 35 U.S.C. § 102(e)(1), which allows a published patent application to be deemed prior art as of its filing date. The Board also determined that claims 15 and 16 were unpatentable based on other grounds not involving Martin. Lynk Labs appealed, arguing that Martin could not be prior art because it was published after the '400 patent's priority date and that the Board erred in its claim constructions.The United States Court of Appeals for the Federal Circuit affirmed the Board's decision. The court held that under § 102(e)(1), a published patent application can be deemed prior art as of its filing date, thus Martin was properly considered prior art. The court also upheld the Board's claim constructions, concluding that the term "a plurality of LEDs connected in series" includes both individual LEDs and groups of LEDs connected in series, and that "matches" in the context of the forward voltage limitation includes both equivalence and a rectified input AC voltage output that is less than the forward voltage of the LEDs. The court found substantial evidence supporting the Board's findings and affirmed the unpatentability of claims 7-13 and 17. View "LYNK LABS, INC. v. SAMSUNG ELECTRONICS CO., LTD. " on Justia Law

BearBox LLC and Austin Storms alleged that Lancium LLC and its co-founders, Michael T. McNamara and Dr. Raymond E. Cline, Jr., improperly used Storms' ideas and patented them. The dispute arose from a conversation at a Bitcoin mining conference and a follow-up email from Storms to McNamara containing BearBox's system details. BearBox claimed that Storms should be named as an inventor on Lancium's U.S. Patent No. 10,608,433.The United States District Court for the District of Delaware granted summary judgment to Lancium, dismissing BearBox's Louisiana state law conversion claim as preempted by federal patent law. The court also excluded BearBox's expert's supplemental report and denied BearBox's claim that Storms was either a sole or joint inventor of the '433 patent.The United States Court of Appeals for the Federal Circuit reviewed the case. The court affirmed the district court's judgment on all issues. It held that BearBox's conversion claim was preempted by federal patent law because it sought patent-like protection for unpatented technology. The court also upheld the exclusion of the expert's supplemental report, finding no abuse of discretion in the district court's decision. Finally, the court agreed with the district court's conclusion that BearBox failed to prove by clear and convincing evidence that Storms was a sole or joint inventor of the '433 patent. The court found that the information Storms shared with Lancium did not establish his contribution to the claimed invention and that Lancium had independently conceived the subject matter of the patent before Storms' communication. View "BEARBOX LLC v. LANCIUM LLC " on Justia Law

Novartis Pharmaceuticals Corporation developed a combination therapy of valsartan and sacubitril, marketed as Entresto®, for treating heart failure. The U.S. Patent 8,101,659 (the ’659 patent) protects this combination. In 2019, several generic manufacturers, including MSN Pharmaceuticals, filed Abbreviated New Drug Applications (ANDAs) to market generic versions of Entresto, prompting Novartis to sue for patent infringement.The United States District Court for the District of Delaware held a three-day bench trial. The court found that the claims of the ’659 patent were not invalid for obviousness, lack of enablement, or indefiniteness but were invalid for lack of written description. Specifically, the court determined that the patent did not adequately describe the combination of valsartan and sacubitril in a complex form, which was a later-discovered form of the combination.The United States Court of Appeals for the Federal Circuit reviewed the case. The court reversed the district court’s determination that the claims lacked an adequate written description, holding that the ’659 patent adequately described the claimed combination of valsartan and sacubitril administered "in combination." The court affirmed the district court’s findings that the claims were not invalid for lack of enablement or obviousness. The court concluded that the patent did not need to enable or describe the later-discovered complex form of the combination, as it was not claimed in the patent. The court also found no clear error in the district court’s determination that the prior art did not provide a motivation to combine valsartan and sacubitril with a reasonable expectation of success.Thus, the Federal Circuit affirmed in part and reversed in part, upholding the validity of the ’659 patent except for the written description finding, which it reversed. View "Novartis Pharmaceuticals Corporation v. Torrent Pharma Inc." on Justia Law