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

Almirall markets ACZONE®, a prescription medication used to treat acne. Almirall’s 926 and 219 patents are listed in the FDA Orange Book as claiming ACZONE. Before seeking approval to market a generic version of ACZONE, Amneal sought inter partes review (IPR), challenging claims of the patents. Amneal filed its Abbreviated New Drug Application with the FDA. Almirall sued, alleging infringement of only the 219 patent. Amneal counterclaimed that the 926 patent is invalid and is not infringed. Almirall offered to enter into a covenant-not-to-sue on the 926 patent upon the dismissal of the IPR. With the parties unable to reach a settlement, the underlying IPR on the 926 patent proceeded. The Patent Board found claims of the 926 patent not unpatentable. Amneal appealed but later moved to voluntarily dismiss its appeal.Almirall agreed to the dismissal but argued that Amneal litigated in an unreasonable manner by continuing to pursue the IPR after the covenant-not-to-sue was offered, and Almirall sought removal of the patent from the Orange Book. Almirall sought (35 U.S.C. 285) fees and costs incurred from the date settlement negotiations ended to the date of the IPR trial. The Federal Circuit denied the request. Even if section 285 is not limited to district court proceedings, the plain meaning of its reference to “[t]he court” speaks only to awarding fees incurred during, in close relation to, or as a direct result of, judicial proceedings, not to fees incurred for work in Patent Office proceedings before the court asserted jurisdiction. View "Amneal Pharmaceuticals LLC v. Almirall, LLC" on Justia Law

Odyssey filed the 678 patent application in 2004. After several procedural disputes and appeals, the Patent Board reversed an examiner’s rejections. The Technology Center Director issued an “examiner’s request for rehearing.” Odyssey did not address the merits, objecting to the procedural propriety of the request, and requesting reconsideration. Odyssey eventually made merits arguments, but without waiting for the Board’s decision, it sought judicial review.Odyssey filed its 603 application in 2006. After a final rejection of all claims, Odyssey appealed and filed a petition demanding that the examiner make certain evidence part of the written record and supplement his responses. The examiner further explained his decision. The Technology Center Director dismissed the petition as moot. Odyssey believed that the examiner’s answer to its appeal brief included new grounds for rejection. The Technology Center Director dismissed that assertion. Rather than filing a brief replying to the examiner’s answer, Odyssey sought judicial review.The PTO amended its rules of practice in ex parte appeals; final rules were published in November 2011, applicable to all ex parte appeals filed on or after January 23, 2012. Odyssey challenged the legality of these amendments.The Federal Circuit affirmed the dismissal of all three claims. In the first two counts, Odyssey was challenging actions not yet final before the Board; the Board could provide Odyssey with an adequate remedy, and if not, Odyssey had remedies under 35 U.S.C. 141 or 145. Count III was untimely under 28 U.S.C. 2401, the six-year statute of limitations for a facial APA challenge, which runs from the date the regulations were published. The complaint was filed in January 2018. View "Odyssey Logistics & Technology Corp. v. Iancu" on Justia Law

McRO’s patent describes a method for automatically generating animations, with a three-dimensional appearance, depicting lip movements and facial expressions. The method uses two basic building blocks: “phonemes” and “morph targets.” A “phoneme,” the patent explains, is “the smallest unit of speech, and corresponds to a single sound.” A “morph target” is a model of a mouth position—one “reference model” displays a “neutral mouth position,” while other models display “other mouth positions, each corresponding to a different phoneme or set of phonemes.”McRO sued several video game developers alleging infringement of three method claims of the patent. The district court held the claims invalid for ineligibility under 35 U.S.C. 101, but the Federal Circuit reversed. On remand, the district court ultimately held that the developers were entitled to summary judgment of noninfringement because the accused products do not practice the claimed methods and to summary judgment of invalidity because the specification fails to enable the full scope of the claims.The Federal Circuit affirmed the judgment of noninfringement, agreeing with the developers that the claim term “morph weight set” requires three-dimensional vectors. The court vacated the judgment of invalidity and remanded for further proceedings in light of, among other things, the developers’ offer to withdraw their counterclaims without prejudice. View "McRO, Inc. v. Bandai Namco Games America, Inc." on Justia Law

ESIP’s patent relates to “a novel system and method for combining germicidal protection and aromatic diffusion in enclosed habitable spaces.” ’ Products of this type are commonly known as “vaporizers” or “diffusers.” On inter partes review, the Patent Trial and Appeal Board found that certain claims of ESIP’s patent are invalid as obvious. The Federal Circuit affirmed, first rejecting ESIP’s claim that the Board should not have instituted inter partes review because appellee Puzhen failed to identify “all real parties in interest” as required by 35 U.S.C. 312. The Board’s decision to institute inter partes review is final and not appealable. The Board’s determination of obviousness in light of prior art was supported by substantial evidence. View "ESIP Series 2, LLC v. Puzhen Life USA, LLC" on Justia Law

Cochlear’s patent describes a hearing aid with several parts. A vibration-producing component is implanted and mechanically anchored into a patient’s skull on the patient’s deaf side. An external component, which includes a microphone, picks up sound on the patient’s deaf side, processes the sound, and generates vibrations in the implanted part, which are transmitted through th skull to the patient’s non-deaf ear, which then perceives sound originating from the deaf-ear side. The Patent and Trademark Office instituted two inter partes reviews, 35 U.S.C. 311–319, and concluded that claims 4–6 and 11–12 had been proven unpatentable; claims 7–10 were not unpatentable. Cochlear disclaimed claims 1–3 and 13.The Federal Circuit affirmed except with respect to claim 10, as to which it vacated. The Board correctly held that the preamble phrase “for rehabilitation of unilateral hearing loss” is not a limitation on the scope of the apparatus claims. The court upheld obviousness determinations concerning claims 4-6 and found claims 11-12 anticipated by prior art. On remand with respect to claim 10, the Board should consider whether the directivity-dependent-microphone alternative is outside the scope of 35 U.S.C. 112, because it recites a structure (the directivity dependent microphone) that sufficiently corresponds to the claimed directivity means. View "Cochlear Bone Anchored Solutions AB v. Oticon Medical AB" on Justia Law

Lanard owns Design Patent D167 and the 458 copyright for a work entitled “Pencil/Chalk Holder,” relating to a toy chalk holder designed to look like a pencil. Lanard sold the Chalk Pencil, marked to indicate Lanard’s copyright and patent protections, to national retailers. Ja-Ru designed a toy chalk holder, using the Chalk Pencil as a reference sample. Lanard’s retailers stopped ordering the Chalk Pencil and began ordering Ja-Ru’s product. Lanard sued, asserting copyright infringement, design patent infringement, trade dress infringement, and statutory and common law unfair competition.The Federal Circuit affirmed summary judgment that Ja-Ru’s product does not infringe the patent, that the copyright is invalid and alternatively not infringed, and that Ja-Ru’s product does not infringe Lanard’s trade dress. Lanard’s unfair competition claims failed because its other claims failed. The district court properly construed the claims commensurate with the statutory protection for an ornamental design. Lanard impermissibly seeks to exclude any chalk holder in the shape of a pencil and extend the scope of the patent beyond the “new, original and ornamental design,” 35 U.S.C. 171. Lanard’s copyright is for the chalk holder itself; Lanard’s arguments seek protection for the dimensions and shape of the useful article itself. Because the chalk holder itself is not copyright protectable, Lanard cannot demonstrate that it holds a valid copyright. Lanard cannot establish that the Chalk Pencil has acquired secondary meaning. View "Lanard Toys Ltd. v. Dolgencorp LLC" on Justia Law

ECT sued ShoppersChoice for infringement of its 261 patent, titled “Secure Notification Messaging with User Option to Communicate with Delivery or Pickup Representative.” The Federal Circuit affirmed a judgment on the pleadings that claim 11 of the patent is invalid under 35 U.S.C. 101, as directed to the abstract idea of providing advance notification of the pickup or delivery of a mobile thing. Claims, like claim 11, that are directed to longstanding commercial practices do not pass step one of the two-part section 101 “Alice” test. The process of recording authentication information—such as the customer’s name, address, and telephone number—and including that information in subsequent communications with the customer is abstract not only because it is a longstanding commercial practice, but also because it amounts to nothing more than gathering, storing, and transmitting information, quite unlike the “improvement[s] in computer capabilities” that have been found eligible for patenting at step one. The claims do not include an inventive concept sufficient to transform the claimed abstract idea into a patent-eligible application. View "Electronic Communication Technologies, LLC v. ShoppersChoice.com, LLC" on Justia Law

In 2019, the Federal Circuit (Arthrex) held that the appointment of the APJs by the Secretary of Commerce, 35 U.S.C. 6(a), violated the Appointments Clause. The Patent and Trademark Office and Cisco argued that the Federal Circuit erred in extending Arthrex beyond the context of inter partes reviews to an appeal from a decision of the Patent Trial and Appeal Board in an inter partes reexamination. They claimed that administrative patent judges (APJs) should be deemed constitutionally appointed officers at least when it comes to their duties reviewing appeals of inter partes reexaminations.The Federal Circuit rejected the argument. The fact that an inferior officer on occasion performs duties that may be performed by an employee not subject to the Appointments Clause does not transform his status under the Constitution. Courts should look not only to the authority exercised in the case but to all of the appointee’s duties when assessing an Appointments Clause challenge. An APJs’ duties include both conducting inter partes reviews and reviewing appeals of inter partes reexaminations. Although no discovery is held and no trial conducted in inter partes reexaminations, the proceedings are otherwise similar. The Director’s authority over the Board’s decisions is not meaningfully greater in the context of inter partes reexaminations than in inter partes reviews. View "Virnetx Inc. v. Cisco Systems, Inc." on Justia Law

Starting in 1992, Schwendimann worked at ACT, which manufactured paper coating products. In 1998-2000, Schwendimann and Nasser (ACT's owner) filed the 983 and 845 patent applications; both were named as inventors. Schwendimann filed the 910 application as the sole inventor. All three applications were assigned to ACT. When ACT ceased operations in 2001, it owed significant debts. ACT gave Schwendimann a $282,073.25 promissory note for unpaid wages. ACT agreed to assign its patent applications to Schwendimann to satisfy its outstanding debt to her..Schwendimann agreed to satisfy ACT’s debts to its law firm, SLW. An SLW attorney was instructed to file the necessary documents. SLW filed an incorrect assignment for the 845 application.In 2011, Schwendimann sued Arkwright for infringement and became aware of the incorrect assignment; ACT's assignment to Schwendimann was then recorded with the Patent Office. The district court rejected a claim that Schwendimann lacked standing, finding that ACT assigned the 845 application to Schwendimann in 2002. A judgment of willful infringement was entered; the jury awarded Schwendimann damages of $2,624,228.00. The court awarded prejudgment interest of $1,915,328.00, applying a 10 percent interest rate, under Minnesota law.The Federal Circuit affirmed. Arkwright’s proposed 1.42 percent interest rate was insufficient to place Schwendimann in as good a position as she would have been in, had Arkwright entered into a reasonable royalty agreement; the prejudgment interest rate should be calculated based on the amount of damages awarded, not of Arkwright’s final settlement offer. Arkwright failed to provide a written offer. View "Schwendimann v. Arkwright Advanced Coating, Inc." on Justia Law

Eage filed suit, alleging infringement of four patents under the doctrine of equivalents, stemming from Slayback’s new drug application for a generic version of Eagle’s branded bendamustine product, BELRAPZO®. Bendamustine is used to treat chronic lymphocytic leukemia and indolent B-cell non-Hodgkin lymphoma. The district court entered a judgment of non-infringement on the pleadings.The Federal Circuit affirmed, rejecting Eagle’s arguments that the district court erred when it concluded that the asserted patents disclose, but do not claim, ethanol—and therefore dedicated ethanol to the public and that the district court improperly applied the dedication disclosure doctrine at the pleadings stage, in the presence of factual disputes and without drawing all inferences in Eagle’s favor. The disclosure-dedication doctrine bars application of the doctrine of equivalents: “when a patent drafter discloses but declines to claim subject matter, . . . this action dedicates the unclaimed subject matter to the public.” The application of the doctrine is a question of law. The asserted patents disclose ethanol as an alternative to propylene glycol in the “pharmaceutically acceptable fluid” claim limitation. The only reasonable inference that can be made from the disclosures is that a skilled artisan would understand the patents to disclose ethanol as an alternative to the claimed propylene glycol. View "Eagle Pharmaceuticals Inc. v. Slayback Pharma LLC" on Justia Law