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

The framework in 35 U.S.C. 154 allows adjustment a patent’s term “[t]o account for any undue delays in patent examination caused by the PTO,” including an “A Delay,” which “arises when the PTO fails to meet statutory deadlines for events that occur during prosecution, such as providing notice to the applicant of the rejection of a claim or taking action on an applicant’s reply to such a rejection.” The 675 patent granted from the 619 application, which was filed as a national stage application under 35 U.S.C. 371, was allowed 40 A Delay days. The patent holder argued that the accrual of A Delay for the 675 patent should have been calculated based on the 619 application’s filing date, January 12, 2012, or at least based on the 30-month date, January 16, 2012. The Federal Circuit affirmed the Patent and Trademark Office’s calculation. Under either pre- or post- Technical Corrections—Leahy-Smith America Invents Act law, the adjustment for the patent should be the same because the conditions under 35 U.S.C. 371(b) and (f) (national stage application) were not met on the day the 619 application was filed. The national stage did not commence on the 30-month date that fell on a federal holiday View "Actelion Pharmaceuticals, Ltd v. Matal" on Justia Law

TMC owns patents relating to the drug bivalirudin, a synthetic peptide anti-coagulant. TMC sells the drug for injection under the Angiomax® brand and purchased pharmaceutical batches from BV. In 2005, BV created batches of bivalirudin with levels of impurity that exceeded FDA-approved maximums. TMC's consultant discovered that certain methods of adding a pH-adjusting solution during the compounding process minimize the impurity. In 2008, TMC filed patent applications describing this discovery. A year before filing these applications, TMC hired BV to prepare batches of bivalirudin using the patented method. Each was released to TMC for commercial packaging. In 2010, TMC sued Hospira, alleging infringement by Hospira’s ANDA filings. The district court found the patents not infringed and not invalid as obvious, indefinite, or under the on-sale bar under 35 U.S.C. 102(b), which applies when, before the critical date, the claimed invention was the subject of a commercial offer for sale and was ready for patenting. The court found that the claimed invention was ready for patenting but not commercially offered for sale. The Federal Circuit reversed in 2015. In 2018 the Federal Circuit affirmed the noninfringement findings and remanded the case for a determination of whether the on-sale bar applies. The Distribution Agreement was a commercial offer for sale but for the on-sale bar to apply, the invention, as defined by the patent’s claims, must be on sale. The district court did not reach that question, concerning the new process. View "Medicines Co. v. Hospira, Inc." on Justia Law

The 1995 agreement, arising from a research collaboration that resulted in the antibody adalimumab, the active ingredient in the drug Humira, is governed by British law. The agreement licensed AbbVie to practice the 516 patent but AbbVie does not presently practice it. The agreement required AbbVie to pay royalties on certain sales “until the last to expire of [certain] Patents or the expiry of fifteen years from the date of First Commercial Sale of a Product by [AbbVie’s predecessor] . . . (whichever is later).” The last of those patents to expire is the 516 patent, with an expiration date in June 2018. The first commercial sale occurred in January 2003. AbbVie’s obligation to pay royalties either ceased in January 2018 (based on the first commercial sale) or will cease in June 2018 (based on the patent’s expiration date). AbbVie sought a declaratory judgment that the patent is invalid, arguing that a declaration of invalidity would constitute expiration under the contract, but did not seek the contract’s interpretation. The Federal Circuit affirmed dismissal the complaint. AbbVie does not practice the patent and is not at risk of an infringement suit. Even if AbbVie had standing, interpretation of the agreement would implicate the rights of the British government, which jointly owns the patent through one of its research councils. Deciding the invalidity question would not resolve the parties’ ultimate dispute and would raise concerns about foreign law and sovereign immunity. View "AbbVie Inc. v. MedImmune Limited" on Justia Law

Paice’s related 634 and 097 patents, both titled “Hybrid Vehicles,” are directed to a torque-based algorithm for selecting operating modes in a hybrid vehicle having an internal combustion engine and one or more battery-powered electric motors. In six inter partes review (IPR) proceedings, the Patent Trial and Appeal Board held certain challenged claims unpatentable under 35 U.S.C. 102(b). The Federal Circuit vacated the Board’s obviousness determinations as they relate to the 634 patent’s “electrical” claims and remanded for the Board to determine whether those claims find written description support in the priority applications and the references incorporated therein. The court affirmed the Board’s obviousness determinations as to all other claims. View "Paice, LLC v. Ford Motor Co." on Justia Law

Paice’s related 634 and 097 patents, both titled “Hybrid Vehicles,” are directed to a torque-based algorithm for selecting operating modes in a hybrid vehicle having an internal combustion engine and one or more battery-powered electric motors. In six inter partes review (IPR) proceedings, the Patent Trial and Appeal Board held certain challenged claims unpatentable under 35 U.S.C. 102(b). The Federal Circuit vacated the Board’s obviousness determinations as they relate to the 634 patent’s “electrical” claims and remanded for the Board to determine whether those claims find written description support in the priority applications and the references incorporated therein. The court affirmed the Board’s obviousness determinations as to all other claims. View "Paice, LLC v. Ford Motor Co." on Justia Law

The 476 and 020 patents disclose improved display interfaces, particularly for electronic devices with small screens like mobile telephones to allow a user to more quickly access desired data stored in, and functions of applications included in, the electronic devices, by use of an application summary window displaying “a limited list of common functions and commonly accessed stored data which itself can be reached directly from the main menu listing some or all applications.” The Federal Circuit affirmed the district court in rejecting arguments that certain claims were directed to patent ineligible subject matter under 35 U.S.C. 101; that prior art anticipated the asserted claims under 35 U.S.C. 102; and that the claims are not infringed. The asserted claims are directed to an improved user interface for computing devices, not to the abstract idea of an index. The claim language, specification, and prosecution history all support the district court’s construction of “un-launched state” as “not displayed.” Substantial evidence supports the jury’s verdict of infringement based on the “reached directly from the [main] menu” claim limitation. View "Core Wireless Licensing, S.A.R.L. v. LG Electronics, Inc." on Justia Law

Crespe’s 585 patent “relates to a broadband television signal receiver for receiving multi-standard analog television signals, digital television signals and data channels.” A television receiver takes incoming television broadcast signals and processes them into a viewable medium for eventual display. The Patent Trial and Appeal Board, in an inter partes review (IPR), upheld the patentability of claims 1-4, 6-9, and 16-21, based on an analysis of independent claims 1 and 17. However, in the separate 728 IPR, claims 1 and 17 were held to be unpatentable. The 728 decision was affirmed by the Federal Circuit during the pendency of the 585 appeal. The Federal Circuit vacated and remanded because the Board did not address arguments concerning patentability of the dependent claims separately from the now-unpatentable independent claims. View "Maxlinear, Inc. v. CF Crespe LLC" on Justia Law

In an inter partes review proceeding (IPR), Arthrex disclaimed all the subject claims before the Patent and Appeal Board issued an institution decision. The Board entered an adverse judgment. The Federal Circuit affirmed, holding that the decision is appealable and that the Board’s interpretation is consistent with the regulation. The court did not address whether the regulation is authorized by the statute or whether it was properly promulgated. While 37 C.F.R. 42.107(e) states that no IPR "will be instituted based on disclaimed claims,” 37 C.F.R. 42.73(b) provides: A party may request judgment against itself at any time... Actions construed to be a request for adverse judgment include: (1) Disclaimer of the involved application or patent; (2) Cancellation or disclaimer of a claim such that the party has no remaining claim in the trial; (3) Concession of unpatentability or derivation of the contested subject matter; and (4) Abandonment of the contest. Although Arthrex stated that it was not requesting an adverse judgment, the rules permit the Board to construe a statutory disclaimer of all challenged claims as a request for adverse judgment, even when the disclaimer occurs before the Board has entered a decision, The court noted that the adverse judgment has an estoppel effect and that Arthrex had two pending continuation patent applications that have since issued as patents. View "Arthrex, Inc. v. Smith & Nephew, Inc." on Justia Law

The Patent Trial and Appeal Board, in an ex parte reexamination of Janssen’s 471 patent, affirmed the rejection of claims 1–7 as unpatentable under the doctrine of obviousness-type double patenting, which is intended to prevent the extension of the term of a patent by prohibiting the issuance of the claims of a second patent that are not patentably distinct from the claims of the first patent. The Federal Circuit affirmed, rejecting Janssen’s argument that obviousness-type double patenting is not applicable under the safe-harbor provision of 35 U.S.C. 121. The safe harbor, “protects only divisional applications (or the original application) and patents issued on such applications.” A patent owner cannot retroactively bring its challenged patent within the scope of the safe-harbor provision by amendment in a reexamination proceeding. Once the 471 patent issued on the 093 application, which, at the time of issuance included new matter not disclosed in the original application and so was a properly designated a continuation-in-part, the 471 patent was barred from safe-harbor protections. Janssen cannot establish that the PTO is “solely responsible” for any alleged delay associated with the 471 claims, so the two-way test for double patenting does not apply. View "In re: Janssen Biotech, Inc." on Justia Law

Flexuspine sued Globus for infringement. Globus asserted noninfringement and invalidity. After Inter Partes Review and claim construction, the court dismissed several claims and counterclaims and granted Globus summary judgment of noninfringement with respect to one patent. Before trial, Flexuspine submitted a proposed verdict form including a “stop instruction” that conditioned the submission of invalidity on an affirmative finding of infringement. The court's intended final jury instructions and final verdict form adopted Flexuspine’s proposed form, with the stop instruction. During a formal charge conference, the court reviewed the final instructions. Neither party objected to a question concerning invalidity or the stop instruction. The court specifically inquired as to the propriety of the instruction. After the jury returned a verdict, the court determined that the jury had not filled out the verdict form correctly. The jury answered “no” to Question 1 regarding infringement but did not heed the stop instruction and continued, indicating the claims were invalid and submitting “0” for the damages. Neither party objected to sending the jury back to re-execute the form. The second verdict found the claims not infringed and left the other questions unanswered. Globus then lodged its first formal objection. The Federal Circuit affirmed that Globus did not infringe without addressing invalidity; denial of Globus’s Rule 59(e) motion requesting that the judgment include the jury’s invalidity verdict; and dismissal of Globus’s invalidity counterclaims without prejudice. View "Flexuspine, Inc. v. Gobus Medical, Inc." on Justia Law