Justia U.S. Federal Circuit Court of Appeals Opinion SummariesArticles Posted in Patents
Medtronic, Inc. v. Teleflex Innovations S.À.R.L.
The challenged patents, owned by Teleflex, all descend from a common application filed in 2006, share a common specification, and are directed to guide extension catheters that use a tapered inner catheter that runs over a standard coronary guidewire to reduce the likelihood that a guide catheter will dislodge from the coronary artery’s opening. According to Teleflex, the claimed invention was conceived in early 2005 and developed under the “GuideLiner” name. The “rapid exchange” (RX) version of GuideLiner practices the challenged patents. An “over-the-wire” (OTW) version of GuideLiner was similar to prior art guide extension catheters and does not practice the challenged patents. The RX GuideLiner entered the market in 2009. Medtronic filed 13 petitions for inter partes review (IPR). five of which are consolidated in this appeal and asserted Itou as the primary prior art reference under pre-AIA 35 U.S.C. 102(e).The Federal Circuit affirmed the Patent Board, finding that Medtronic did not establish that the challenged claims were unpatentable. The claimed inventions were conceived by August 2005, before Itou’s filing date, and either actually reduced to practice for their intended purpose before that date, or were diligently worked on toward constructive reduction to practice on the challenged patents’ effective filing date. The intended purpose of the claimed inventions was to provide improved backup support for the guide catheter, so Itou did not qualify as prior art. View "Medtronic, Inc. v. Teleflex Innovations S.À.R.L." on Justia Law
OneSubsea IP UK Ltd. v. FMC Technologies, Inc.
FMC and OSS own patents that cover structures for subsea oil and gas recovery. OSS sued, alleging that FMC’s Enhanced Vertical Deepwater Tree equipped with FMC’s Retrievable Choke and Flow Module infringed 95 claims across 10 OSS patents. The infringement question in the suit boiled down to whether fluid flows through FMC’s accused device as required by the OSS Patents. Finding that OSS failed to raise a genuine issue of material fact regarding whether FMC’s accused devices met the “divert” limitations of the OSS Patents, the district court granted FMC summary judgment.FMC sought Attorneys’ Fees and Non-Taxable Costs under 35 U.S.C. 285, which applies to “exceptional cases.” FMC argued that the Markman Order foreclosed any legitimate diverter infringement claims going forward, making OSS’s litigation position on infringement objectively baseless and that the substantive weakness of OSS’s infringement claims is shown by OSS’s failure to produce any admissible evidence. FMC alleged litigation misconduct by OSS as unreasonably prolonging the case.Applying the Supreme Court's “Octane Fitness” test the district court denied FMC’s motion. The Federal Circuit affirmed, rejecting FMC’s arguments that OSS’s case was objectively baseless after the claim construction order and that rejection of OSS’s evidence demonstrated the substantive weakness of OSS’s case. OSS that it had no obligation to revise its litigation strategy just because the Patent Board had invalidated diverter claims in different patents. View "OneSubsea IP UK Ltd. v. FMC Technologies, Inc." on Justia Law
Posted in: Intellectual Property, Legal Ethics, Patents
Sanofi-Aventis Deutschland GmbH v. Mylan Pharmaceuticals Inc.
Sanofi-Aventis’s 614 patent, entitled “Drug Delivery Device and Method of Manufacturing a Drug Delivery Device,” relates to a “drug delivery device” that can be “configured to allow setting of different dose sizes.” Mylan petitioned the Patent Trial and Appeal Board for inter partes review of claims 1–18, citing a combination of three prior art references: Burren, Venezia, and de Gennes. Mylan relied on Burren—cited as prior art within the 614 patent—to teach the use of springs within a drug-delivery device and sought to combine Burren with Venezia to teach the use of spring washers within drug-delivery devices and de Gennes to add “snap-fit engagement grips” to secure the spring washer. Mylan argued that “De Gennes, while concerned with a clutch bearing [in automobiles], addresses a problem analogous to that addressed in Burren (axially [sic] fixation and support of two components relative to one another).”The Board found all challenged claims unpatentable as obvious. The Federal Circuit reversed. Mylan failed to argue that de Gennes constitutes analogous art to the 614 patent and instead compared de Gennes to another prior art reference. Mylan did not meet its burden to establish obviousness premised on de Gennes. The Board’s factual findings regarding analogousness are not supported by substantial evidence. View "Sanofi-Aventis Deutschland GmbH v. Mylan Pharmaceuticals Inc." on Justia Law
Bot M8 LLC v. Sony Interactive Entertainment LLC
Sony petitioned for inter partes review of claims 1–6 of the Bot’s 540 patent, which concerns a gaming machine that authenticates certain data and that has both a motherboard and a different board. Independent claims 1 and 4 require that the “game program” be written to the motherboard only after the game program has been authenticated; the dependent claims (2, 3, 5, and 6) require two different CPUs—one on the motherboard, one on a different board— for executing the “authentication program” and “preliminary authentication program” respectively. The Board determined that the independent claims are unpatentable based on asserted combinations of prior art.The Federal Circuit affirmed. Bot failed to demonstrate that the Board, in making its unpatentability determinations, actually relied—or even might have relied—on a construction that permits writing portions of the game program to the motherboard before authenticating the game program. The Board found that both prior art references disclose writing only non-game-program data to the motherboard before authenticating the game program. Given Sony’s expert’s explanation and the references themselves, it nonetheless would have been obvious to a person of ordinary skill in the art to combine the references to yield the claimed invention. Substantial evidence supports the findings underpinning the obviousness determination. View "Bot M8 LLC v. Sony Interactive Entertainment LLC" on Justia Law
United Cannabis Corp. v. Pure Hemp Collective Inc.
UCANN sued Hemp for infringing its patent, entitled “Cannabis Extracts and Methods of Preparing and Using the Same.” UCANN filed for bankruptcy, which automatically stayed the litigation. After the bankruptcy petition was dismissed, the parties stipulated to the dismissal of the patent case. UCANN’s infringement claims were dismissed with prejudice; Hemp’s invalidity and inequitable conduct counterclaims were dismissed without prejudice.Hemp sought attorney fees under 35 U.S.C. 285, 28 U.S.C. 1927, and the court’s inherent authority, claiming that UCANN’s prosecution counsel had committed inequitable conduct by copying text from a piece of prior art into the specification of the patent and not disclosing it to the Patent and Trademark Office as prior art and UCANN’s litigation counsel purportedly took conflicting positions in its representation of UCANN and another client (the owner of the prior art). Hemp expressly notified the court that it did not seek any further proceedings, including a trial or evidentiary hearing, in connection with its motion. The district court denied the motion based on the existing record.The Federal Circuit affirmed upholding findings that Hemp failed to establish that it is the prevailing party under section 285, that this is an “exceptional” case warranting an attorney’s fee award, or that UCANN’s counsel acted in a vexatious or otherwise unreasonable manner. While Hemp’s position was extremely weak, it was neither “frivolous as filed” nor “frivolous as argued.” View "United Cannabis Corp. v. Pure Hemp Collective Inc." on Justia Law
Posted in: Intellectual Property, Legal Ethics, Patents
HIP, Inc. v. Hormel Foods Corp
Hormel met with Howard of HIP, which produced food safety and thermal processing equipment. The parties entered into an agreement to develop an oven for a particular process. Hormel conducted testing relating to color development, using both an infrared oven and a conventional spiral oven. Howard later alleged that it was during the meetings and testing that he disclosed the infrared preheating concept at issue. Hormel conducted additional testing using HIP’s test oven at Hormel's facility. The testing eventually revealed that turning off internal electrical heating elements in the oven solved the charred, off-flavor of bacon, and preheating the bacon with a microwave oven prevented condensation from washing away the flavor. That testing resulted in a two-step cooking process, the first step involving preheating the bacon and the second step involving cooking the meat in a superheated steam oven.Hormel filed a non-provisional patent application for the two-step cooking process in 2011, listing four joint inventors, who assigned their interests to Hormel. The application issued as the 498 patent. HIP sued, alleging that Howard was either the sole inventor or a joint inventor. The district court concluded that he was a joint inventor, 35 U.S.C. 256, based on his alleged contribution of the infrared preheating concept. The Federal Circuit reversed. Howard’s alleged contribution of preheating meat pieces using an infrared oven is “insignificant in quality” to the claimed invention. View "HIP, Inc. v. Hormel Foods Corp" on Justia Law
FS.com Inc. v. International Trade Commission
Corning filed a complaint with the International Trade Commission alleging FS violated 19 U.S.C. 1337 by importing high-density fiber optic equipment that infringed four patents that generally relate to fiber optic technology commonly used in data centers. After investigating, the ALJ found that FS’ importation of high-density fiber optic equipment violated section 337; that FS induced infringement of two claims of the 320 patent, multiple claims of the 456 patent, and four claims of the 153 patent; and that FS’ accused modules directly infringed claims of the 206 patent. The ALJ adopted the Office of Unfair Import Investigations’ construction of “a front opening” as recited in the claims. The ALJ rejected invalidity challenges, including arguments that certain claims of the 320 and 456 patents were not enabled.The Federal Circuit affirmed the Commission’s determination that FS violated section 337, and issuance a general exclusion order prohibiting the importation of infringing high-density fiber optic equipment and components thereof and a cease-and-desist order directed to FS. The court upheld the enablement determination and the claim construction of “a front opening.” View "FS.com Inc. v. International Trade Commission" on Justia Law
Posted in: Intellectual Property, International Trade, Patents
Amgen Inc. v. Sandoz Inc.
Amgen produces apremilast and markets it as a phosphodiesterase-4 (PDE4) inhibitor, which is used for treating psoriasis and related conditions, under the brand name Otezla®. The 638, 101, and 541 patents cover Otezla. Sandoz submitted an Abbreviated New Drug Application (ANDA) seeking FDA approval to market a generic version of apremilast. Amgen’s predecessor brought a Hatch-Waxman suit, asserting that Sandoz’s generic product would infringe the patents.The Federal Circuit affirmed holdings that claims 3 and 6 of Amgen’s 638 patent and claims 1 and 15 of Amgen’s 101 patent had not been shown to be invalid as obvious and that claims 2, 19, and 21 of its 541 patent”) were shown to be invalid as obvious in light of prior art. The court noted that varying a dose in response to the occurrence of side effects is a well-known, standard medical practice that may well lead to a finding of obviousness. View "Amgen Inc. v. Sandoz Inc." on Justia Law
UCB, Inc. v. Actavis Laboratories UT, Inc.
Rotigotine is used to treat Parkinson’s disease, which causes difficulty swallowing and slow transit times through intestines, which can frustrate oral treatments. Transdermal therapeutic systems deliver drugs through the patient’s skin and avoid those complications. In 2007, UCB invented and marketed Neupro®, the first FDA-approved patch treatment for Parkinson’s disease. Original Neupro® is covered by several UCB patents, including the Muller patents, which claim priority to an application filed in 1999. The Muller patents are listed in the FDA’s “Orange Book,” as covering reformulated Neupro®.In 2013, Actavis submitted an Abbreviated New Drug Application (ANDA) for FDA approval of a generic transdermal rotigotine patch. UCB sued for infringement. The district court granted UCB an injunction preventing approval of Actavis’s ANDA until March 2021, when the Muller patent expired. In 2018 UCB filed the patent application that matured into the 589 patent, claiming priority from a provisional application filed in 2009, entitled “Polyvinylpyrrolidone for the Stabilization of a Solid Dispersion of the Non-Crystalline Form of Rotigotine.” UCB again filed suit, asserting the 589 patent, to delay FDA approval of a generic for nine additional years.The district court found that the Muller patents anticipate all asserted claims and that the asserted claims would have been obvious in view of multiple prior art references, including the Muller patents. The Federal Circuit affirmed the judgment of invalidity of the 589 patent. The district court’s fact findings on overlapping ranges, teaching away, unexpected results, and commercial success are not clearly erroneous, View "UCB, Inc. v. Actavis Laboratories UT, Inc." on Justia Law
Sanderling Management Ltd. v. Snap Inc.
The district court dismissed Sanderling’s infringement suit due to the asserted claims’ lack of patent-eligible subject matter under 35 U.S.C. 101. The patents at issue share the title “Dynamic Promotional Layout Management and Distribution Rules,” and are directed to a method using distribution rules to load digital image branding functions to users when certain conditions are met. The patents share a common specification, which describes the digital image branding function as a transformation, using, for example, an icon or a filter, that displays in a client terminal for the user to apply to a digital image. A distribution rule “is a rule used in determining how to target a group of end users, for instance, a rule that determines that only a group of end users having certain characteristics and/or match a certain requirement.”The Federal Circuit affirmed. The claims are directed to an abstract idea, not a specific improvement in computer functionality. The claims describe the use of computers as a tool to identify when a condition is met and then to distribute information based on satisfaction of that condition. The elements of the representative claim, individually and as an ordered combination, do not constitute an inventive concept. View "Sanderling Management Ltd. v. Snap Inc." on Justia Law