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

UCB’s 650 patent, which covers certain chemical derivatives of 3,3- diphenylpropylamines, including a compound called fesoterodine. Fesoterodine is an antimuscarinic drug marketed as Toviaz® to treat urinary incontinence. In inter partes review, the Patent and Trademark Office Patent Trial and Appeal Board held that certain claims were not unpatentable as obvious, 35 U.S.C. 103. The Federal Circuit affirmed, first rejecting UCB’s argument that Amerigen lacked standing because the FDA will not approve Amerigen’s abbreviated new drug application until the expiration of the 650 patent in 2022, so that there was no possibility of infringement. The evidence supported the Board’s finding that the Amergen neither established a general motivation to make a 5-HMT prodrug nor proved that the specific claimed modifications would have been obvious. View "Amerigen Pharmaceuticals, Ltc. v. UCB Pharma GMBH" on Justia Law

WesternGeco’s patents relate to technologies used to search for oil and gas beneath the ocean floor. The patents relate to controlling streamers and sensors in relation to each other by using winged positioning devices and generating four-dimensional maps with which it is possible to see changes in the seabed over time. WesternGeco manufactures the Q-Marine, and performs surveys for oil companies. ION manufactures the DigiFIN, and sells to its customers, who perform surveys for oil companies. A jury found infringement and no invalidity and awarded WesternGeco $93,400,000 in lost profits and $12,500,000 in reasonable royalties. The Federal Circuit affirmed, rejecting arguments that WesternGeco was not the patents' owner and lacked standing and that the court applied an incorrect standard under 35 U.S.C. 271(f)(1). The court upheld denial of enhanced damages for willful infringement and reversed the award of lost profits resulting from conduct occurring abroad. The Supreme Court subsequently held “that WesternGeco’s damages award for lost profits was a permissible domestic application of [35 U.S.C.] 284,” but did not decide other challenges to the lost profits award. In light of the Supreme Court’s decision and the intervening invalidation of four asserted patent claims that could support the lost profits award, the Federal Circuit remanded to the district court. View "WesternGeco L.L.C. v. Ion Geophysical Corp." on Justia Law

Realtime’s 812 patent discloses “[s]ystems and methods for providing lossless data compression and decompression . . . [that] exploit various characteristics of run-length encoding, parametric dictionary encoding, and bit packing.” ’ Run-length encoding is a form of lossless data compression where a “run” of characters is replaced with an identifier for each individual character and the number of times it is repeated. In inter partes review, the Patent and Trademark Office’s Patent Trial and Appeal Board found that all of the challenged claims would have been obvious over the prior art, 35 U.S.C. 103(a). The Federal Circuit affirmed. The Board was not required to make any finding regarding a motivation to combine given its reliance on the prior art alone, which disclosed every element of claims 1–4, 8, and 28. In relying on the prior art alone, the Board did not violate section 312(a)(3) or other notice requirements. The Board did not expressly construe the phrase “maintaining a dictionary,” but found that the prior art satisfied this limitation because it disclosed all of the steps in dependent claim 4. View "Realtime Data, LLC v. Iancu" on Justia Law

AC’s 680 patent relates generally to data access and management. The Patent Trial and Appeal Board held that certain claims were unpatentable. On reconsideration, it invalidated the remaining claims based on a ground of unpatentability raised by Amazon’s petition but not addressed in the final written decision. AC argued that the Board exceeded its authority and deprived it of fair process by belatedly considering this ground. The Federal Circuit upheld the Board’s decision. Precedent mandates that the Board consider all grounds of unpatentability raised in an instituted petition. The Board complied with due process and did not err in either its claim construction or its ultimate conclusions of unpatentability. As AC admits, after the Board decided to accept Amazon’s rehearing request and consider Ground 3, it permitted AC to take discovery and submit additional briefing and evidence on that ground. View "AC Technologies S.A. v. Amazon.com, Inc." on Justia Law

Marco Guldenaar filed the provisional application from which the 196 patent application claims priority in 2010. The 196 patent application, entitled “Casino Game and a Set of Six-Face Cubic Colored Dice,” relates to “dice games intended to be played in gambling casinos, in which a participant attempts to achieve a particular winning combination of subsets of the dice.” The Patent Trial and Appeal Board affirmed the rejection of claims 1–3, 5, 7–14, 16– 18, and 23–30 the application under 35 U.S.C. 101 for claiming patent-ineligible subject matter. The Federal Circuit affirmed, holding that the claims are directed to the abstract idea of rules for playing a dice game and the only arguably inventive concept relates to the dice markings, which constitute printed matter. View "In re: Marco Guldenaar Holding B.V." on Justia Law

Spineology’s patent describes an “expandable reamer” for use in orthopedic surgery. Wright manufactures a reamer known as the X-REAM®. In 2015, Spineology sued Wright, alleging the X-REAM® infringes its patent. The district court refused to adopt either party’s construction of the term “body” but construed “body” consistent with Wright’s noninfringement position and granted Wright summary judgment. Wright then sought attorney fees, 35 U.S.C. 285, arguing Spineology’s proposed construction of “body,” its damages theories, and its litigation conduct rendered the case “exceptional.” The Federal Circuit affirmed the denial of the motion. While ultimately the court rejected Spineology’s proposed construction, the attempt was not so meritless as to render the case exceptional. The court determined “the arguments made by Spineology to support its damages theory . . . are not so meritless as to render the case exceptional” and “[n]othing about this case stands out from others with respect to the substantive strength of Spineology’s litigating position or the manner in which the case was litigated.” View "Spineology, Inc. v. Wright Medical Technology Inc." on Justia Law

In December 2015, Apple filed two petitions for inter partes review of the 696 patent, challenging certain claims as obvious. VirnetX filed responses arguing that prior art reference RFC 2401 was not a printed publication under 35 U.S.C. 102(b) as of November 1998. The Patent Board found that RFC 2401 was a printed publication and concluded that the 696 patent was unpatentable as obvious. During the pendency of VirnetX’s appeal, the Federal Circuit decided another case between the parties (VirnetX I), upholding the Board’s decision that RFC 2401 was a printed publication as of November 1998. The Federal Circuit then held that VirnetX is collaterally estopped by the VirnetX I judgment from relitigating the printed publication issue. VirnetX did not preserve an issue of whether inter partes review procedures apply retroactively to patents that were filed before Congress enacted the America Invents Act. View "VirnetX Inc. v. Apple, Inc." on Justia Law

Laerdal, which manufactures and distributes medical devices, filed a complaint at the International Trade Commission asserting violations of 19 U.S.C. 1337 by infringement of Laerdal’s patents, trademarks, trade dress, and copyrights by importing, selling for importation, or selling within the U.S. certain medical devices. The Commission investigated Laerdal’s trade dress claims, one patent claim, two copyright claims, and one trademark claim, excluding all others. Despite being served with notice, no respondent responded. An ALJ issued the Order to Show Cause. Respondents did not respond. An ALJ issued an initial determination finding all respondents in default. Laerdal modified its requested relief to immediate entry of limited exclusion orders and cease and desist orders. The Commission requested briefing on remedies, the public interest, and bonding. The Commission's final determination granted Laerdal limited exclusion orders against three respondents and a cease and desist order against one, based on patent and trademark claims; it issued no relief on trade dress and copyright claims, finding Laerdal’s allegations inadequate. As to trade dress claims, the Commission found that Laerdal failed to plead sufficiently that it suffered the requisite harm, the specific elements that constitute its trade dresses, and that its trade dresses were not functional; despite approving the ALJ’s initial determination of default and despite requesting supplemental briefing solely related remedy, the Commission issued no relief on those claims. The Federal Circuit vacated. The Commission violated 19 U.S.C. 1337(g)(1) by terminating the investigation and issuing no relief for its trade dress claims against defaulting respondents. View "Laerdal Medical Corp. v. International Trade Commission" on Justia Law

When the patent owner filed for the 772 patent, the law defined the patent term as 17 years from the date the patent issued. The law was later amended to define the patent term as expiring 20 years from the patent’s earliest effective filing date, Uruguay Round Agreements Act of 1994 (URAA), 108 Stat. 4983. The owner then filed for the related 990 patent. The change in law caused the second patent to expire earlier than the first patent. The owner concedes that the claimed inventions in the two related patents are obvious variants of each other. The district court invalidated the 772 patent based on obviousness-type double patent; the invalidating reference, the 990 patent, was filed and issued after, but expired before, the 772 patent. The Federal Circuit reversed. The patents are governed by different patent term statutory regimes; the correct framework is to apply the traditional obviousness-type double patenting practices extant in the pre-URAA era to the pre-URAA patent and look to that patent’s issuance date as the reference point for obviousness-type double patenting. Under this framework, and because a change in patent term law should not truncate the term statutorily assigned to the pre-URAA 772 patent, the 990 patent is not a proper double patenting reference. View "Novartis Pharmaceuticals Corp. v. Breckenridge Pharmaceutical, Inc." on Justia Law

Ezra filed an Abbreviated New Drug Application (ANDA) for a generic version of Novartis’s multiple sclerosis drug, Gilenya®. Novartis sued for infringement, asserting the 229 patent. Because the 229 patent was filed before the 1994 Uruguay Round Agreements Act (URAA), its patent term was 17 years. It was set to expire in 2014. Novartis secured a patent term extension (PTE) of five years, 35 U.S.C. 156. Section 156 was enacted to restore the value of the patent term that an owner loses because the product cannot be commercially marketed without regulatory, e.g., FDA, approval. Multiple patents may cover the same product, but only one patent’s term can be extended. Novartis also owned the 565 patent covering Gilenya® and sought PTE on the 229 patent, which now expires in February 2019. Because the 565 patent issued from an application filed after the URAA, its 20-year term expired in 2017. The court denied Ezra’s motion for judgment on the pleadings, where Ezra argued that the extension of the 229 patent’s term beyond the life of the 565 patent de facto extended the life of the 565 patent and rendered the 229 patent invalid for double patenting; the two patents' claims are not patentably distinct. Ezra stipulated that its ANDA product infringes and dropped the double patenting issues. The court found the 229 patent valid, unexpired, enforceable, and infringed, and enjoined Ezra’s ANDA product until the 2019 expiration. The Federal Circuit affirmed. Obviousness-type double patenting does not invalidate an otherwise valid PTE. View "Novartis AG v. Ezra Ventures LLC" on Justia Law