Justia U.S. Federal Circuit Court of Appeals Opinion SummariesArticles Posted in Patents
In Re Nitro Fluids, L.L.C.
In 2018, Cameron sued Nitro in the Southern District of Texas, where both parties are headquartered, alleging infringement of three of Cameron’s patents. That court has not issued a claim construction ruling and a trial date has not been set. In 2020, Cameron filed this suit against Nitro in the Western District of Texas, alleging that the same accused products infringe two other Cameron patents. The Western District denied a motion to decline jurisdiction or transfer the action, reasoning that when a balance of the 28 U.S.C. 1404(a) transfer factors “does not weigh in favor of transfer" compelling circumstances exist to avoid application of the first-to-file rule. The court concluded that two factors—access to sources of proof and the local interest— favored transfer while the administrative difficulties flowing from court congestion and the practical problems factor weighed against transfer.The Federal Circuit vacated. The district court erred in concluding that the first-to-file rule only applies when the balance of factors favors the first-filed court. Unlike in an ordinary transfer analysis, the focus of the first-to-file rule is to avoid potential interference in the affairs of another court. Requiring that the balance of the transfer factors favor the second-filed court helps to ensure that more compelling concerns exist. The district court erred in not making that adjustment and did not expressly resolve whether balancing the factors favors the second-filed court. View "In Re Nitro Fluids, L.L.C." on Justia Law
TecSec, Inc. v. Adobe Inc.
TecSec’s patents, entitled “Distributed Cryptographic Object Method,” claim particular systems and methods for multi-level security of various kinds of files being transmitted in a data network. The patents describe a method in which a digital object—e.g., a document, video, or spreadsheet—is assigned a level of security that corresponds to a certain combination of access controls and encryption. . The encrypted object can then be embedded or “nested” within a “container object,” which, if itself encrypted and access-controlled, provides a second layer of security.In 2010, TecSec sued several companies, including Adobe, alleging direct and indirect infringement. Before trial, in response to Adobe’s motion in limine, the court excluded all evidence of induced infringement from March 2011, through the October 2013 expiration of the patents. Earlier, the court had rejected Adobe’s challenge to the asserted claims as ineligible under 35 U.S.C. 101. A jury found for TecSec on direct infringement, but not induced infringement; rejected Adobe’s prior-art validity challenges; and awarded damages. The court reduced the damages award to zero on the ground that there was no proof of any damages from direct infringement and the jury had rejected induced infringement.The Federal Circuit remanded, reversing the evidentiary ruling that eliminated TecSec’s inducement case for a substantial period and rejecting Adobe’s challenge to the district court’s eligibility ruling. View "TecSec, Inc. v. Adobe Inc." on Justia Law
St. Jude Medical, LLC v. Snyders Heart Valve LLC
The Snyders patent describes and claims an artificial heart valve and a system for inserting the valve. In 2017, St. Jude filed two petitions under 35 U.S.C. 311–19, seeking inter partes reviews (IPR) of claims 1, 2, 4–8, 10–13, 17–19, 21, 22, and 25–30. The Patent Trial and Appeal Board instituted two reviews, each addressing all the challenged claims. In IPR-105, the Board ruled that St. Jude failed to establish unpatentability of any of the challenged claims, rejecting the contention that all the challenged claims were anticipated by the Leonhardt patent and would have been obvious over Leonhardt plus either the Anderson patent or the Johnson and Imachi patents. In IPR-106, the Board found claims 1, 2, 6, and 8 anticipated by the Bessler patent, but it rejected St. Jude’s contentions as to all other claims, finding that St. Jude had not proved, as to all but claims 1, 2, 6, and 8, anticipation by Bessler or obviousness over Bessler combined with either Anderson or Johnson and Imachi. The Federal Circuit affirmed the decision in IPR-105; reversed the finding in IPR-106 that Bessler anticipated claims 1, 2, 6, and 8; did not reach the anticipation argument as to claim 28; and affirmed the obviousness rejection in IPR-106. View "St. Jude Medical, LLC v. Snyders Heart Valve LLC" on Justia Law
Warsaw Orthopedic, Inc. v. Sasso
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 Corp v. Sanofi-Aventis U.S. LLC
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
AntennaSys, Inc. v. AQYR Technologies, Inc.
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
GlaxoSmithKline LLC v. Teva Pharmaceuticals USA, Inc.
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 MA Inc. v. EMD Serono, Inc.
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
Apple Inc. v. Voip-Pal.com, Inc.
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 Technologies, Inc. v. Hewlett-Packard Co.
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