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The 865 application is directed to an elastic knee brace having a framework and a hinge with a strut and arm components. The elastic nature of the knee brace allows for and aids in the flexing of the knee. The specification describes the “injection molded” aspect of the invention in a section titled “Preferred Manufacturing Methods” near the end of the written description. During prosecution, the examiner rejected claims 1 and 14 as being anticipated by a patent that teaches a knee brace with a sleeve containing a stiffener having a connector portion that connects a proximal and a distal portion. The examiner concluded that “injection molded” is “a method of manufacturing an apparatus.” Nordt appealed, arguing that “injection molded” conveys a structural limitation in that it describes the structural relationship between the framework and the strut and arm components. The Board affirmed. The Federal Circuit vacated; the claim term at issue is structural and should have been afforded weight when assessing patentability View "In re: Nordt Development Co., LLC" on Justia Law

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The 713 patent relates to digitally processing and archiving files in a digital asset management system that parses files into multiple objects and tags the objects to create relationships between them. These objects are analyzed and compared, manually or automatically, to archived objects to determine whether variations exist based on predetermined standards and rules. The system eliminates redundant storage of common text and graphical elements and improves system operating efficiency, reducing storage costs. Berkheimer sued HP, alleging infringement. Following a Markman hearing, the district court concluded that the term “archive exhibits minimal redundancy” in claim 10 is indefinite and renders claim 10 and its dependents invalid and granted HP summary judgment that claims 1–7 and 9 are patent ineligible under 35 U.S.C. 101. The Federal Circuit affirmed the determination that claims 10–19 are invalid as indefinite. Because claims 1–3 and 9 do not capture the purportedly inventive concepts, those claims are ineligible. The court did not decide whether claims 4–7 are patent eligible but held that summary judgment was improper, given the fact questions created by the specification’s disclosure. Claims 4–7 contain limitations directed to the arguably unconventional inventive concept described in the specification. View "Berkheimer v. HP Inc." on Justia Law

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MACOM’s predecessor developed semiconductors using gallium nitride (GaN), obtained patents related to that technology, and sold those patents to Infineon's predecessor, retaining rights under separate license agreement. That agreement defines a “Field of Use” characterized by GaN-on-silicon technology and licenses MACOM to practice the GaN patents within the “Field of Use only.” MACOM and Infineon share rights to practice the patents in the Field of Use. The agreement defines an “Exclusive Field” within the Field of Use in which MACOM has exclusive rights to practice the patents—even as against Infineon. Infineon notified MACOM that it believed MACOM had breached the agreement by making and selling products using GaN-on-silicon-carbide technology, which is distinct from GaN-on-Si technology and outside the Field of Use. MACOM responded that the GaN-on-SiC sales were minimal and that any breach had been cured. Infineon terminated the Agreement. MACOM sued, asserting contract claims and seeking a declaratory judgment of noninfringement and obtained a preliminary injunction. The Federal Circuit affirmed in part, agreeing that MACOM could likely establish that its activity outside the Field of Use did not breach the agreement and that MACOM would suffer irreparable harm in the absence of a preliminary injunction. The court vacated two sentences in the injunction for lacking specificity. View "MACOM Technology Solutions Holdings, Inc. v. Infineon Technologies Americas Corp." on Justia Law

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The framework in 35 U.S.C. 154 allows adjustment a patent’s term “[t]o account for any undue delays in patent examination caused by the PTO,” including an “A Delay,” which “arises when the PTO fails to meet statutory deadlines for events that occur during prosecution, such as providing notice to the applicant of the rejection of a claim or taking action on an applicant’s reply to such a rejection.” The 675 patent granted from the 619 application, which was filed as a national stage application under 35 U.S.C. 371, was allowed 40 A Delay days. The patent holder argued that the accrual of A Delay for the 675 patent should have been calculated based on the 619 application’s filing date, January 12, 2012, or at least based on the 30-month date, January 16, 2012. The Federal Circuit affirmed the Patent and Trademark Office’s calculation. Under either pre- or post- Technical Corrections—Leahy-Smith America Invents Act law, the adjustment for the patent should be the same because the conditions under 35 U.S.C. 371(b) and (f) (national stage application) were not met on the day the 619 application was filed. The national stage did not commence on the 30-month date that fell on a federal holiday View "Actelion Pharmaceuticals, Ltd v. Matal" on Justia Law

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Entitled “Motion-Tracking,” the 159 patent generally relates to “tracking motion relative to a moving platform, such as motion-base simulators, virtual environment trainers deployed on board ships, and live vehicular applications including helmet-mounted cueing systems and enhanced vision or situational awareness displays” and purportedly “enables the use of inertial head-tracking systems onboard moving platforms by computing the motion of a ‘tracking’ Inertial Measurement Unit (IMU) mounted on [a head-mounted display] relative to a ‘reference’ IMU rigidly attached to the moving platform.” This eliminates the need to calculate an object’s position relative to the ground, which improves functionality when “tracking on moving vehicles, where millimeter-level vehicle position data is generally not available.” On inter partes review, the Patent Trial and Appeal Board rejected a claim of obviousness. The Federal Circuit affirmed. Substantial evidence supports the PTAB’s conclusion of nonobviousness. View "Elbit Systems of America, LLC v. Thales Visionix Inc." on Justia Law

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TMC owns patents relating to the drug bivalirudin, a synthetic peptide anti-coagulant. TMC sells the drug for injection under the Angiomax® brand and purchased pharmaceutical batches from BV. In 2005, BV created batches of bivalirudin with levels of impurity that exceeded FDA-approved maximums. TMC's consultant discovered that certain methods of adding a pH-adjusting solution during the compounding process minimize the impurity. In 2008, TMC filed patent applications describing this discovery. A year before filing these applications, TMC hired BV to prepare batches of bivalirudin using the patented method. Each was released to TMC for commercial packaging. In 2010, TMC sued Hospira, alleging infringement by Hospira’s ANDA filings. The district court found the patents not infringed and not invalid as obvious, indefinite, or under the on-sale bar under 35 U.S.C. 102(b), which applies when, before the critical date, the claimed invention was the subject of a commercial offer for sale and was ready for patenting. The court found that the claimed invention was ready for patenting but not commercially offered for sale. The Federal Circuit reversed in 2015. In 2018 the Federal Circuit affirmed the noninfringement findings and remanded the case for a determination of whether the on-sale bar applies. The Distribution Agreement was a commercial offer for sale but for the on-sale bar to apply, the invention, as defined by the patent’s claims, must be on sale. The district court did not reach that question, concerning the new process. View "Medicines Co. v. Hospira, Inc." on Justia Law

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The 1995 agreement, arising from a research collaboration that resulted in the antibody adalimumab, the active ingredient in the drug Humira, is governed by British law. The agreement licensed AbbVie to practice the 516 patent but AbbVie does not presently practice it. The agreement required AbbVie to pay royalties on certain sales “until the last to expire of [certain] Patents or the expiry of fifteen years from the date of First Commercial Sale of a Product by [AbbVie’s predecessor] . . . (whichever is later).” The last of those patents to expire is the 516 patent, with an expiration date in June 2018. The first commercial sale occurred in January 2003. AbbVie’s obligation to pay royalties either ceased in January 2018 (based on the first commercial sale) or will cease in June 2018 (based on the patent’s expiration date). AbbVie sought a declaratory judgment that the patent is invalid, arguing that a declaration of invalidity would constitute expiration under the contract, but did not seek the contract’s interpretation. The Federal Circuit affirmed dismissal the complaint. AbbVie does not practice the patent and is not at risk of an infringement suit. Even if AbbVie had standing, interpretation of the agreement would implicate the rights of the British government, which jointly owns the patent through one of its research councils. Deciding the invalidity question would not resolve the parties’ ultimate dispute and would raise concerns about foreign law and sovereign immunity. View "AbbVie Inc. v. MedImmune Limited" on Justia Law

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Paice’s related 634 and 097 patents, both titled “Hybrid Vehicles,” are directed to a torque-based algorithm for selecting operating modes in a hybrid vehicle having an internal combustion engine and one or more battery-powered electric motors. In six inter partes review (IPR) proceedings, the Patent Trial and Appeal Board held certain challenged claims unpatentable under 35 U.S.C. 102(b). The Federal Circuit vacated the Board’s obviousness determinations as they relate to the 634 patent’s “electrical” claims and remanded for the Board to determine whether those claims find written description support in the priority applications and the references incorporated therein. The court affirmed the Board’s obviousness determinations as to all other claims. View "Paice, LLC v. Ford Motor Co." on Justia Law

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Paice’s related 634 and 097 patents, both titled “Hybrid Vehicles,” are directed to a torque-based algorithm for selecting operating modes in a hybrid vehicle having an internal combustion engine and one or more battery-powered electric motors. In six inter partes review (IPR) proceedings, the Patent Trial and Appeal Board held certain challenged claims unpatentable under 35 U.S.C. 102(b). The Federal Circuit vacated the Board’s obviousness determinations as they relate to the 634 patent’s “electrical” claims and remanded for the Board to determine whether those claims find written description support in the priority applications and the references incorporated therein. The court affirmed the Board’s obviousness determinations as to all other claims. View "Paice, LLC v. Ford Motor Co." on Justia Law

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A 2004 IRS regulation excluded medical residents from the FICA tax student exception for services provided after April 1, 2005. In 2010, the IRS decided that residents could qualify for the exception for tax periods ending before April 1, 2005, such that “hospitals and [medical] residents who had filed protective refund claims for tax periods before April 1, 2005[,] would be able to obtain refunds of the FICA taxes.” Former residents sued, alleging that the Hospital had not filed protective refund claims 1995-2001. The Hospital and residents entered into a settlement: the Hospital agreed to pay the residents $6,632,000, stating that the payment “can be appropriately characterized as a refund for the amount of FICA taxes previously withheld.” The Hospital then sued the United States, alleging that Internal Revenue Code 3102(b) entitled it to indemnification for the settlement. The Claims Court dismissed, holding that section 3102(b) is not a money-mandating source of substantive law, as required for Tucker Act jurisdiction, 28 U.S.C. 1491(a)(1). The Federal Circuit reversed. Section 3102(b), which states “[e]very employer required so to deduct the tax shall be liable for the payment of such tax, and shall be indemnified against the claims and demands of any person for the amount of any such payment made by such employer,” is reasonably amenable to an interpretation that mandates the government to reimburse FICA taxes paid by an employer. View "New York and Presbyterian Hospital v. United States" on Justia Law