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

Prisua’s patent, entitled “Video Enabled Digital Devices for Embedding User Data in Interactive Applications,” is directed to “generating an edited video data stream from an original video stream” by “substituting at least one object . . . in said original video stream by at least a different object.” The claims at issue are directed to methods and apparatuses for “generating a displayable edited video data stream from an original video data stream.” The Patent Trial and Appeal Board instituted inter partes review (IPR) and held that claim 11 was unpatentable for obviousness but declined to analyze whether other challenged claims were unpatentable as anticipated or obvious, finding those claims indefinite.The Federal Circuit affirmed in part. The IPR statute does not authorize the Board to cancel challenged claims for indefiniteness. The scope of IPR is found in section 311(b), Chapter 31 of Title 35. The scope of post-grant review is in section 321(b), Chapter 32. The use of the word “patentability” in the final written decision provision of each chapter refers to the previously defined scope of the particular review in question. Patentability under section 318(a) refers to the limited grounds of unpatentability described in section 311(b); patentability under section 328(a) refers to the broader grounds of unpatentability described in section 321(b). Reversing in part, the court rejected the Board’s conclusion that the term “digital processing unit” invoked means-plus-function claiming, and that for that reason the remaining claims could not be analyzed for anticipation or obviousness. View "Samsung Electronics America, Inc. v. Prisua Engineering Corp." on Justia Law

Koninklijke's patent identifies prior art technologies for delivering digital content for playback on a client device: downloading and streaming. It states that downloading suffers from delay because the user cannot playback the digital content until after the entire file finishes downloading; streaming generally requires “two-way intelligence” and a “high level of integration between client and server software,” which “mostly excludes third parties from developing custom server software.” On Google’s petition, the Patent Board instituted inter partes review (IPR) and construed the claim term “a given segment of [a/the] media presentation” to mean “a media presentation with multiple segments.” The Board concluded that Google had not demonstrated that any of the claims were anticipated but that Google had demonstrated that claims 1–11 would have been obvious. The Federal Circuit affirmed, first holding that the Board erred by instituting IPR of claims 1–11 based on obviousness over two prior references because Google did not advance such a combination of references in its petition. The Board did not violate 35 U.S.C. 311(b) or the IPR statute in determining that the claims would have been obvious over a prior reference in light of the general knowledge of a skilled artisan. The Board’s factual findings underlying its obviousness determination are supported by substantial evidence. View "Koninklijke Philips N.V. v. Google, LLC" on Justia Law

ARM’s 320 patent describes an adaptor for use with Keurig® single-brew coffee machines or similar brewers, configured to effect operative compatibility between a single-serve beverage brewer [for use with cup-shaped cartridges] and beverage pods. ARM filed an International Trade Court (ITC) complaint against Eko and others. In proceedings involving others, the ITC found that several claims of the 320 patent were invalid for lack of written description. The Federal Circuit affirmed. The ITC made no invalidity determination concerning claims 8 and 19. Eko defaulted in the ITC with respect to ARM’s allegations that it infringed claims 8 and 19. The ITC issued a limited exclusion order and cease and desist order. Eko filed suit in the district court, seeking a declaratory judgment of noninfringement as to claims 8 and 19 and that the claims were invalid as obvious. Eko also asserted infringement of Eko’s 855 patent, which describes a reusable filter cartridge device for single-serve beverage brewing machines. The district court issued a Markman ruling construing various claim terms and granted Eko declaratory judgment of noninfringement. A jury found claims 8 and 19 of the 320 patent invalid as obvious. The court awarded Eko attorney’s fees associated with those judgments. The Federal Circuit affirmed the judgment of invalidity as to the 320 patent, the fee award, and the judgment of infringement as to the 855 patent. View "Eko Brands, LLC v. Adrian Rivera Maynez Enterprises, Inc." on Justia Law

Genentech’s patent is directed to methods of purifying antibodies and other proteins containing a CH2/CH3 region from impurities by protein A affinity chromatography. Protein A affinity chromatography is a standard purification technique employed in the processing of therapeutic proteins, especially antibodies, which involves “using protein A . . . immobilized on a solid phase.” The Patent Trial and Appeal Board instituted inter partes review (IPR) and determined that all the challenged claims were unpatentable as anticipated or obvious in light of prior art references. The Federal Circuit affirmed, finding substantial evidence in support of the findings. The court also rejected Genentech’s argument that retroactive application of IPR to a patent issued prior to the passage of the America Invents Act violates the Fifth Amendment’s Takings Clause; pre-AIA patents were issued subject to both district court and Patent Office validity proceedings. Though IPR differs from district court and pre-AIA Patent Office reexamination proceedings, those differences are not sufficiently substantive or significant such that a “constitutional issue” is created when IPR is applied to pre-AIA patents. View "Genentech, Inc. v. Hospira, Inc." on Justia Law

Audio’s patent describes a system for organizing audio files, by subject matter, into “program segments.” ’The system arranges the segments through a “session schedule” and allows a user to navigate through the schedule in various ways. Audio sued CBS, alleging infringement. Later that year, a third party sought inter partes review (IPR) of the patent under 35 U.S.C. 311–319. The Patent Trial and Appeal Board instituted review but the district court case proceeded to trial, with the issues limited to infringement and invalidity of claims 31–34. A jury found that CBS had infringed claims 31–34 and failed to establish by clear and convincing evidence that those claims were invalid. The jury awarded Audio $1,300,000. The Board issued a final written decision in the IPR, concluding that claims 31–35 are unpatentable. The district court stayed entry of its judgment until completion of direct review of the Board’s decision. The Federal Circuit affirmed the Board’s decision. The district court then entered a judgment in favor of CBS. The Federal Circuit affirmed, rejecting Audio’s argument that the courts lacked jurisdiction. To the extent that Audio challenged the district court’s determination of the consequences of the affirmed final written decision for the proper disposition of this case, Audio conceded that governing precedent required judgment for CBS. View "Personal Audio, LLC v. CBS Corp." on Justia Law

Molon sued Merkle-Korff, for infringement of the 785 patent. Merkle-Korff filed counterclaims relating to Molon’s 915 and 726 patents. Molon unilaterally executed the 2006 Covenant, agreeing not to sue Merkle-Korff for infringement of the 915 and 726 patents. After the dismissal of the counterclaims, the parties entered into the 2007 Settlement. Merkle-Korff agreed to pay a lump sum for an exclusive license to multiple Molon patents including the 785, 915, and 726 patents, within the Kinetek Exclusive Market. The Settlement granted Merkle-Korff “the right, but not the duty, to pursue an infringement claim” and contains a statement that all prior covenants “concerning the subject matter hereof” are “merged” and “of no further force or effect.” Merkle-Korff later became Nidec. Molon sued, alleging that Nidec is infringing the 915 patent outside the licensed Market. Nidec argued that Molon is barred from enforcing the patent under the 2006 Covenant. Molon responded that the Covenant was extinguished by the 2007 Settlement.The court granted Nidec partial summary judgment after comparing the subject matters of the agreements. The Federal Circuit affirmed; the agreements concern different subject matter and do not merge. The 2006 Covenant gives Nidec a right to avoid infringement suits on two patents. The 2007 Settlement is in some ways broader, as an exclusive license, covering multiple patents and applications and providing Nidec with some enforcement rights, and in other ways narrower, being limited to a defined market. The 2006 Covenant remains in effect because it does not concern the same subject matter as the 2007 Settlement. View "Molon Motor & Coil Corp. v. Nidec Motor Corp." on Justia Law

Farmos developed and patented Dexmedetomidine, a compound that is effective as a sedative, in the 1980s, and conducted human studies using intravenous administration of 20 µg/mL dexmedetomidine hydrochloride. Farmos abandoned its testing based on adverse effects. In 1994, Farmos’s successor granted Abbott an exclusive license to make, use, and sell dexmedetomidine in the U.S. In 1999, Abbott received FDA approval for “Precedex Concentrate,” a 100 µg/mL concentration too strong to be directly administered to patients; the label provides dilution instructions. In 2002, the European Medicines Evaluation Agency authorized the use of Dexdomitor, a ready-to-use 500 µg/mL formulation of dexmedetomidine hydrochloride. Hospira’s 106 patent, entitled “Dexmedetomidine Premix Formulation,” is directed to a liquid for parenteral administration, “wherein the composition is disposed within a sealed container as a premixture.” Fresenius sought FDA approval for a generic ready-to-use dexmedetomidine product. Hospira sued for infringement. Fresenius stipulated to infringement of the 106 patent. The Federal Circuit upheld a finding that a claim in that patent is invalid as obvious over prior art. The patent states that the invention was based on “the discovery that dexmedetomidine prepared in a premixed formulation . . . remains stable and active after prolonged storage.” It does not recite any manufacturing limitations related to stability or an added component that enhances stability; it recites a composition, with a “wherein” clause that describes the stability of that recited composition, a result that was inherent in prior art. View "Hospira, Inc. v. Fresenius Kabi USA, LLC" on Justia Law

Amgen holds an approved New Drug Application for Sensipar®, a formulation of cinacalcet hydrochloride used to treat secondary hyperparathyroidism in adult patients with chronic kidney disease who are on dialysis and to treat hypercalcemia in patients with parathyroid cancer and primary and secondary hyperparathyroidism. Amneal, Piramal, and Zydus each filed an Abbreviated New Drug Application (ANDA) seeking to enter the market with a generic version of Sensipar®. Amgen sued each ANDA filer, alleging that the proposed ANDA products would infringe its 405 patent, which is directed to a rapid dissolution formulation of cinacalcet. The district court entered a judgment of non-infringement. The Federal Circuit vacated in part, finding that the district court construed the claims incorrectly and erred in its analysis of infringement by Amneal. The court affirmed with respect to Piramal and Zydus, finding that the district court properly applied prosecution history estoppel to Amgen’s arguments regarding Piramal and otherwise did not err in its factual findings for Zydus. View "Amgen Inc. v. Amneal Pharmaceuticals LLC" on Justia Law

Persion’s 760 and 499 patents, both entitled “Treating Pain in Patients with Hepatic Impairment” share a common written description and priority date and are directed to methods of treating pain in patients with mild or moderate compromised liver functionality, using extended-release hydrocodone-only formulations. Hydrocodone is an opioid, widely used to treat pain, and has been FDA-approved since 1943. The patents cover the formulation for Zohydro ER.4. Persion sued, alleging that Alvogen infringed the patents by filing an Abbreviated New Drug Application seeking to market a generic version of Zohydro ER.4. The Federal Circuit affirmed a finding that the patents are invalid as obvious. The district court did not err by finding that the pharmacokinetic limitations of the asserted claims were inherent and added no patentable weight to the pharmacokinetic claims. Regardless of whether the court’s consideration of the FDA’s statement was proper, there was no clear error in the court’s finding that there was a motivation to combine prior art in light of the evidence as a whole. The district court considered Persion’s evidence of objective indicia together with the other evidence on the issue of obviousness and there is no inconsistency between the district court’s findings underlying its obviousness and lack of written description determinations. View "Persion Pharmaceuticals LLC v. Alvogen Malta Operations Ltd." on Justia Law

IV alleged infringement of patents directed to filtering data files (such as email messages) based on content. The court severed the defendants. During claim construction in the Symantec action, IV’s expert consistently opined that a “characteristic” as used in asserted claims is “an attribute of the document such as whether it contains a virus or is SPAM or bulk email or includes copyrighted content.” The court adopted that construction. At the Symantec trial, IV’s expert changed his opinion, testifying that bulk email was not a characteristic. During a clarification hearing, IV’s counsel maintained that the expert had not changed his opinion and that bulk email “never was” within the scope of claim 9. The court clarified its claim constructions, stating that it “learn[ed] only at the last minute” that IV understood the construction to mean “that bulk email was excluded from claim 9 when it was clearly in the other claims ... a surprise inconsistent with the representations from” IV, and not what was intended. The court granted Micro judgment in part, holding the asserted claims invalid, canceled the Micro trial, and concluded that IV’s conduct was exceptional “solely with respect to” the changed testimony but that the case overall was not exceptional under 35 U.S.C. 285 and awarded Micro $444,051.14 in attorney fees.The Federal Circuit vacated. The district court should have determined whether the circumstances surrounding the expert’s changed opinion were such that, when considered as part of the totality of circumstances, the case stands out as exceptional, i.e., the case stands out among others with respect to the substantive strength of a party’s litigating position or the unreasonable manner in which the case was litigated. View "Intellectual Ventures I LLC v. Trend Micro Inc." on Justia Law