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

Takeda sued Mylan for patent infringement based on Mylan’s Abbreviated New Drug Application (ANDA) for a generic version of Takeda’s Colcrys® version of the drug colchicine. The parties settled, entering into a License Agreement that allows Mylan to sell a generic colchicine product on a specified date or under circumstances defined in Section 1.2, which refers the date of a final court decision holding that all unexpired claims of the licensed patents that were asserted and adjudicated against a third party are not infringed, invalid, or unenforceable. The parties stipulated that Mylar's breach of Section 1.2 “would cause Takeda irreparable harm.”Takeda also sued Hikma based on Hikma’s FDA-approved colchicine product Mitigare®. The district court granted summary judgment of non-infringement. After Mylan launched its product, Takeda sued, alleging breach of contract and patent infringement.The Federal Circuit affirmed the denial of a preliminary injunction. Takeda failed to show it is likely to succeed on the merits or that it will suffer irreparable harm. Section 1.2(d) was triggered by the third-party litigation; all unexpired claims of the three patents that were “asserted and adjudicated” were held to be not infringed. An objective, reasonable third party would not read Section 1.2(d) to be limited to generic equivalents of Colcrys® excluding section 505(b)(2) products like Mitigare®. Because Takeda had not established that Mylan breached the Agreement, the irreparable harm stipulation did not apply. Money damages would remedy any harm Takeda would suffer as a result of Mylan launching its generic product. View "Takeda Pharmaceuticals U.S.A. v. Mylan Pharmaceuticals, Inc." on Justia Law

The patent relates to computer networking and is specifically directed to offloading certain network-related processing tasks from a host computer’s central processing unit (CPU) to an “intelligent network interface card” (INIC) to improve performance by accelerating network communications while freeing the CPU to focus on other tasks. According to the patent, one of the tasks that can be offloaded from the CPU to the INIC is the reassembly of data from packets received by the host computer from the network.The Patent Trial and Appeal Board found certain claims unpatentable as obvious. The Federal Circuit vacated in part. The Board did not adequately support its finding that the asserted prior art combination teaches or suggests a limitation recited in claims 41–43. The court remanded for the Board to reconsider whether the asserted prior art teaches or suggests the entirety of the reassembly limitations, including the requirement that reassembly takes place in the network interface. The court otherwise affirmed. View "Alarcritech, Inc. v. Intel Corp." on Justia Law

XY sued Trans Ova for infringement of seven patents relating to technology for sex selection of non-human mammals. Its 559 patent is titled “Enhancing Flow Cytometry Discrimination with Geometric Transformation.” Flow cytometers can be used as “high-speed jet-in-air sorters to discriminate particles and cells that are only subtly different.” The patent relates to “apparatus and methods for real-time discrimination of particles while being sorted by flow cytometry . . . resulting in enhanced discrimination between populations of particles” and “can be used to separate X from Y bearing sperm,” an application useful in animal husbandry to “guarantee[] the sex of offspring.”The district court found asserted claims 1–23 of the 559 patent-ineligible under 35 U.S.C. 101 and that XY’s patent-infringement allegations with respect to certain claims of other patents were claim-precluded based on a prior lawsuit filed by XY against Trans Ova. The Federal Circuit reversed. The asserted claims of the patent are directed to a patent-eligible improvement to a method of sorting particles using flow cytometry technology, not to an abstract idea. The district court did not apply the proper legal standard to its claim-preclusion analysis. The court vacated the claim-preclusion judgment. View "XY, LLC v. Trans Ova Genetics, LC" on Justia Law

IBSA's patent, entitled “Pharmaceutical Formulations for Thyroid Hormones,” provides “pharmaceutical formulations based on thyroid hormones enabling a safe and stable oral administration in the framework of the strict therapeutic index prescribed in case of thyroid disorders.” It is listed in the FDA’s “Orange Book” for IBSA’s Tirosint® product, a soft gel capsule formulation containing the active ingredient levothyroxine sodium. Teva sought to market a generic version of Tirosint® and filed an Abbreviated New Drug Application (ANDA) that included a “Paragraph IV certification” that the 390 patent is invalid, unenforceable, or will not be infringed by Teva’s generic product. IBSA filed suit, alleging infringement.The Federal Circuit affirmed a holding that certain claims are invalid as indefinite under 35 U.S.C. 112. The intrinsic evidence fails to establish the boundaries of the claim term “half-liquid” and there was no clear error in the court’s determination that the extrinsic evidence does not supply “half-liquid” with a definite meaning under section 112. View "IBSA Institut Biochimique v. Teva Pharmaceuticals USA" on Justia Law

Interactive’s patent describes a gaming system wherein a gaming service provider—such as a casino—wirelessly communicates with users’ mobile devices, allowing them to gamble remotely. The system stores rules to determine the “game configuration” based on the location of a user’s “mobile gaming device” and associates different gaming configurations with different locations, using a “lookup table.”. FanDuel petitioned for inter partes review (IPR) of the patent on several grounds of obviousness. The Patent Trial and Appeal Board found unpatentable all challenged claims except claim 6, finding that FanDuel failed to prove that claim 6 was obvious in view of asserted prior art.The Federal Circuit affirmed, rejecting a claim that the Board violated the Administrative Procedure Act by basing its finding on obviousness issues that Interactive did not raise in its responses. The Board’s purported new theory was merely an assessment of the arguments and evidence FanDuel put forth in its petition. The APA does not require the Board to alert a petitioner that it may find the asserted theory of obviousness lacking in evidence before it actually does so, nor is a petitioner entitled to a pre-decision opportunity to disagree with the Board’s assessment. The obviousness findings are supported by substantial evidence. View "FanDuel, Inc. v. Interactive Games, LLC" on Justia Law

Decker developed the patented inventions while employed at the University of Texas and assigned the patents to UT. Gensetix obtained an exclusive license in the patents. The license agreement provides that, Gensetix must enforce the patents. The parties agreed to cooperate in any infringement suit and that nothing in the agreement would waive UT's sovereign immunity. Gensetix sued Baylor, alleging infringement and requested that UT join as a co-plaintiff. UT declined. Gensetix named UT as an involuntary plaintiff under FRCP 19(a). The district court dismissed, finding that UT is a sovereign state entity, so that the Eleventh Amendment barred joinder of UT, and that the suit could not proceed without UT.The Federal Circuit affirmed in part. UT did not voluntarily invoke federal jurisdiction; the Eleventh Amendment prevents “the indignity of subjecting a State to the coercive process of judicial tribunals” against its will. It is irrelevant that the license agreement requires the initiation of an infringement suit by Gensetix or cooperation by UT. The court erred in dismissing the suit without adequate analysis of Rule 19(b)'s factors: the extent to which a judgment might prejudice the missing required party or the existing parties; the extent to which any prejudice could be lessened; whether a judgment rendered in the required party’s absence would be adequate; and whether the plaintiff would have an adequate remedy if the action were dismissed. View "Gensetix, Inc. v. Baylor College of Medicine" on Justia Law

Entitled “System and Method for Adjustable Licensing of Digital Products,” Uniloc’s 960 patent is directed to the problem that consumers of software use digital products on multiple devices, where consumers have “a legitimate need to install and use the software on every computer.” On Hulu’s petition, the Patent Trial and Appeal Board instituted Inter Partes Review (IPR) and found multiple claims unpatentable over the prior art. During the IPR, Uniloc had filed a Motion to Amend, asking the Board to enter Substitute Claims for specific independent claims if the latter were found unpatentable. Hulu opposed the Motion, arguing that the Substitute Claims are directed to patent-ineligible subject matter. Uniloc replied that Hulu was not permitted to raise an argument under 35 U.S.C. 101 in opposition to the Substitute Claims but did not raise substantive arguments that its Substitute Claims meet the section 101 standards for eligibility. The Board denied Uniloc’s Motion, based solely on ineligibility. The Federal Circuit affirmed the judgment of invalidity of all original claims and subsequently affirmed the denial of Uniloc’s motion for rehearing. The Board correctly concluded that it is not limited by section 311(b) in its review of proposed substitute claims in an IPR and that it may consider section 101 eligibility. View "Uniloc 2017 LLC v. Hulu, LLC" on Justia Law

The 850 patent discloses a self-anchoring beverage container that prevents spills by anchoring the container to a surface. An International Trade Commission complaint, against several respondents (including Mayborn) alleged infringement of the patent and sought a general exclusion order (GEO) barring importation of infringing goods by any party. An ALJ determined that remaining respondents—those with whom the Complainants had not settled—were in default and infringed claim 1 of the patent. The defaulting respondents did not raise invalidity challenges. The ALJ recommended a GEO because it was difficult to gain information about entities selling the containers, and numerous entities were importing the containers, making it “nearly impossible to identify the sources.” The Commission issued the GEO in 2018. Mayborn took no action during the proceedings.In 2019, the Complainants notified Mayborn and its retail partners that Mayborn’s products infringed the patent in violation of the GEO. Mayborn petitioned the Commission to rescind its GEO under 19 U.S.C. 1337(k)(1), which allows the Commission to rescind or modify an order if “the conditions which led to such ... order no longer exist.” Mayborn argued that this requirement was satisfied because claim 1 of the patent was invalid under 35 U.S.C. 102, 103. The Federal Circuit affirmed the Commission’s denial of Mayborn’s petition. The asserted discovery of invalidating prior art after the issuance of a GEO is not a changed condition. View "Mayborn Group, Ltd. v. International Trade Commission" on Justia Law

Packet’s patents teach a method for monitoring packets exchanged over a computer network. A stream of packets between two computers is called a connection flow. Monitoring connection flows cannot account for disjointed sequences of the same flow in a network. The specifications explain that it is more useful to identify and classify “conversational flows,” defined as “the sequence of packets that are exchanged in any direction as a result of an activity.” Conversational flows provide application-specific views of network traffic and can be used to generate helpful analytics to understand network load and usage. The 789 patent recites apparatus claims’ the 725 and 751 patents recite method claims.Packet asserted claims against NetScout’s products under 35 U.S.C. 102. The jury found all claims willfully infringed, rejected NetScout’s invalidity defenses, and awarded pre-suit ($3.5 million) and post-suit ($2.25 million) damages. The court issued findings, rejecting NetScout’s section 101 invalidity defense, enhanced damages by $2.8 million, and awarded an ongoing royalty for post-verdict infringement. The Federal Circuit reversed in part and vacated the award of enhanced damages. The district court erred in denying NetScout’s motion for judgment as a matter of law on pre-suit damages. Packet is barred from recovering damages for pre-suit sales of the NetScout products because it failed to comply with the marking requirement. The court otherwise affirmed. View "Packet Intelligence LLC v. NetScout Systems, Inc." on Justia Law

Each patent at issue claims a method of treating cancer by administering antibodies targeting specific receptor-ligand interactions on T cells, which are responsible for processing information to develop an immune response in the body using receptors on their surfaces. The named inventor Dr. Honjo, a professor at Kyoto University, had shared information with Drs. Wood and Freeman until about 2001. In 2002, Honjo filed his patent application in Japan. Each patent at issue case claims priority from that patent application; none include Freeman and Wood as inventors.The Federal Circuit affirmed that Drs. Freeman and Wood should be deemed inventors of the subject matter of the patents alongside Dr. Honjo, 35 U.S.C. 116(a). The inventorship of a complex invention may depend on partial contributions to conception over time, and there is no principled reason to discount genuine contributions made by collaborators because portions of that work were published prior to conception for the benefit of the public. Earlier publication of an invention is obviously a potential hazard to patentability, but the publication of a portion of a complex invention does not necessarily defeat joint inventorship of that invention. View "Dana-Farber Cancer Institute v. Ono Pharmaceutical Co., Ltd." on Justia Law