Justia U.S. Federal Circuit Court of Appeals Opinion Summaries
Valeant Pharmaceuticals North America LLC v. Mylan Pharmaceuticals Inc.
The Valeant plaintiffs reside in Japan, Ireland, and Delaware. The defendants are incorporated and have principal places of business in West Virginia, Pennsylvania, and India. The brand-name FDA-approved drug Jublia® has nine patents listed in the Orange Book. Defendant, a generic drug company, executed an Abbreviated New Drug Application (ANDA) seeking approval to market a generic version of Jublia®, sending the ANDA from its West Virginia office to the FDA in Maryland. Valeant sued for infringement in the District of New Jersey, alleging that the district is a likely destination for the generic solution; each defendant does business in New Jersey and is registered to do so; each defendant has previously submitted to the court's jurisdiction and has a place of business in New Jersey; the generic drug will be “purposefully directed at … New Jersey. The district court dismissed for improper venue, finding that the ANDA was submitted from West Virginia, rendering venue proper there, while acknowledging that MLL, a foreign entity, was subject to venue in every judicial district.The Federal Circuit affirmed in part, citing the 2017 Supreme Court “TC Heartland” holding: the general venue provision in 28 U.S.C. 1391, which provides that a corporation is deemed to “reside” in any judicial district in which it is subject to personal jurisdiction, does not modify the term “resides” in 28 U.S.C. 1400, the specific patent venue statute; “resides” refers only to a corporation’s state of incorporation. A corporation may be sued for patent infringement in districts in the state of its incorporation and those in which it has a regular and established place of business and an act of infringement has occurred. In Hatch-Waxman Act, 35 U.S.C. 271(e)(2)(A) infringement cases, section 1400 “acts of infringement” occur only in districts where actions related to the ANDA submission occur, not in all locations where future distributions of the products specified in the ANDA is contemplated. The court remanded the dismissal of the foreign defendant. View "Valeant Pharmaceuticals North America LLC v. Mylan Pharmaceuticals Inc." on Justia Law
Chevron U.S.A. Inc. v. University of Wyoming Research Corp.
The University of Wyoming’s 425 patent is directed to a procedure whereby solvents of increasing strength are successively passed over asphaltenes that have been segregated in a packed column from a hydrocarbon such as oil and amounts of asphaltenes dissolved and eluted from the column by the various solvents yield information about the oil. Chevron was also studying the analysis of asphaltene impurities in crude oil. Wyoming initiated an interference by copying into its pending application claims from a pending Chevron application.The Patent Trial and Appeal Board held that Wyoming’s 425 patent had an adequate written description for the count limitation and held that Wyoming was entitled to the benefit of the earlier filing dates of two patent applications, Because Chevron had filed a Priority Statement that indicated its earliest corroborated conception coupled with diligence date was March 1, 2009, the Board determined that Chevron was unable to prevail on priority and assigned Wyoming status as the senior party and entered judgment in its favor in the interference. The Federal Circuit affirmed, upholding the Board’s constructions of the limitation “gradually and continuously changing the alkane mobile phase solvent to a final mobile phase solvent.” View "Chevron U.S.A. Inc. v. University of Wyoming Research Corp." on Justia Law
In Re Nitro Fluids, L.L.C.
In 2018, Cameron sued Nitro in the Southern District of Texas, where both parties are headquartered, alleging infringement of three of Cameron’s patents. That court has not issued a claim construction ruling and a trial date has not been set. In 2020, Cameron filed this suit against Nitro in the Western District of Texas, alleging that the same accused products infringe two other Cameron patents. The Western District denied a motion to decline jurisdiction or transfer the action, reasoning that when a balance of the 28 U.S.C. 1404(a) transfer factors “does not weigh in favor of transfer" compelling circumstances exist to avoid application of the first-to-file rule. The court concluded that two factors—access to sources of proof and the local interest— favored transfer while the administrative difficulties flowing from court congestion and the practical problems factor weighed against transfer.The Federal Circuit vacated. The district court erred in concluding that the first-to-file rule only applies when the balance of factors favors the first-filed court. Unlike in an ordinary transfer analysis, the focus of the first-to-file rule is to avoid potential interference in the affairs of another court. Requiring that the balance of the transfer factors favor the second-filed court helps to ensure that more compelling concerns exist. The district court erred in not making that adjustment and did not expressly resolve whether balancing the factors favors the second-filed court. View "In Re Nitro Fluids, L.L.C." on Justia Law
Corcamore, LLC v. SFM, LLC
SFM owns the federal registration for SPROUTS for use in connection with grocery store services. The SPROUTS mark was first used in commerce not later than April 2002. Corcamore owns a federal trademark registration for SPROUT for use in connection with vending machine services, claiming a first use date of May 2008. Corcamore’s SPROUT mark is used on a cashless payment card, an associated customer loyalty program, and a website for customers.SFM filed a petition with the Trademark Trial and Appeal Board to cancel Corcamore’s registration. Corcamore argued that SFM lacked standing. The Board determined that the Supreme Court’s Lexmark decision was not applicable; Lexmark was limited to civil actions for false advertising (15 U.S.C. 1125(a)) and does not extend to cancellation of registered marks (section 1064). The court concluded that SFM had standing because it sufficiently alleged a real interest in the proceeding and a reasonable belief of damage. Corcamore informed SFM’s counsel that it would bring “procedural maneuvers,” then proceeded to file motions in violation of Board orders, to refuse to cooperate with discovery, and to disregard Board-imposed sanctions.The Board granted SFM default judgment, citing 37 C.F.R. 2.120(h) and its inherent authority to control its docket. The Board concluded that a lesser sanction would be inappropriate because Corcamore had already violated sanctions and had engaged in willful, bad-faith tactics, consistent with its “procedural maneuvers” letter, taxing Board resources. The Federal Circuit affirmed. SFM was entitled to maintain a petition for cancellation of trademark registrations. The Board did not abuse its discretion in imposing default judgment. View "Corcamore, LLC v. SFM, LLC" on Justia Law
TecSec, Inc. v. Adobe Inc.
TecSec’s patents, entitled “Distributed Cryptographic Object Method,” claim particular systems and methods for multi-level security of various kinds of files being transmitted in a data network. The patents describe a method in which a digital object—e.g., a document, video, or spreadsheet—is assigned a level of security that corresponds to a certain combination of access controls and encryption. . The encrypted object can then be embedded or “nested” within a “container object,” which, if itself encrypted and access-controlled, provides a second layer of security.In 2010, TecSec sued several companies, including Adobe, alleging direct and indirect infringement. Before trial, in response to Adobe’s motion in limine, the court excluded all evidence of induced infringement from March 2011, through the October 2013 expiration of the patents. Earlier, the court had rejected Adobe’s challenge to the asserted claims as ineligible under 35 U.S.C. 101. A jury found for TecSec on direct infringement, but not induced infringement; rejected Adobe’s prior-art validity challenges; and awarded damages. The court reduced the damages award to zero on the ground that there was no proof of any damages from direct infringement and the jury had rejected induced infringement.The Federal Circuit remanded, reversing the evidentiary ruling that eliminated TecSec’s inducement case for a substantial period and rejecting Adobe’s challenge to the district court’s eligibility ruling. View "TecSec, Inc. v. Adobe Inc." on Justia Law
Monk v. Wilkie
Veterans sought certification for the class of veterans whose disability claims had not been resolved by the Board of Veterans Appeals within one year of the filing of a Notice of Disagreement (NOD), requesting judicial action to compel the Secretary of Veterans Affairs to decide all pending appeals within one year of receipt of a timely NOD. The Veterans Court requested that they separate or limit the requested class action into issues that meet the Federal Rule of Civil Procedure 23(b)(2) “commonality” standard. The veterans declined, stating that “systemic delay” exists in the VA claims system, and broad judicial remedy is required.The Veterans Court denied the requested class certification. While the case was pending, the Veterans Appeals Improvement and Modernization Act of 2017, 131 Stat. 1105 purportedly improved processing times by allowing claimants to choose: higher-level review, a supplemental claim, board review with a hearing and opportunity to submit additional evidence, board review without a hearing, but with an opportunity to submit additional evidence, or board review without a hearing or additional evidence, based on their priorities on appeal.The Federal Circuit affirmed the denial of class certification, citing the lack of proof of commonality. When Congress has crafted a comprehensive remedial structure, that structure warrants evaluation in practice before judicial intervention is contemplated. View "Monk v. Wilkie" on Justia Law
Posco v. United States
The U.S. Court of International Trade affirmed the Department of Commerce’s final affirmative determination in the countervailing duty investigation on cold-rolled steel flat products from the Republic of Korea. Commerce determined that the Korean government provided the respondents no financial assistance “because the prices charged to these respondents under the applicable industrial tariff were consistent with KEPCO’s [Korea Electric Power Corporation] standard pricing mechanism.” KEPCO is the state-owned sole provider of electricity in Korea. Commerce found no evidence suggesting that that the respondents received preferential treatment over other industrial users of electricity that purchase comparable amounts of electricity. Commerce did not review quality, availability, marketability, transportation, or other conditions affecting KEPCO’s purchase or sale of electricity.The Federal Circuit vacated. The 1994 Uruguay Round Agreements Act, 19 U.S.C. 3511, changed the definition of what constitutes a benefit conferred. Commerce’s reliance on a preferential-rate standard is inconsistent with the statute, particularly the less-than-adequate-remuneration requirement, and is therefore contrary to law. Commerce’s cost-recovery analysis was limited to discussion of KEPCO’s costs. That limited analysis does not support its conclusion that electricity prices paid to KEPCO by respondents are consistent with prevailing market conditions because Commerce failed to evaluate the Korea Power Exchange’s impact on the Korean electricity market. View "Posco v. United States" on Justia Law
St. Jude Medical, LLC v. Snyders Heart Valve LLC
The Snyders patent describes and claims an artificial heart valve and a system for inserting the valve. In 2017, St. Jude filed two petitions under 35 U.S.C. 311–19, seeking inter partes reviews (IPR) of claims 1, 2, 4–8, 10–13, 17–19, 21, 22, and 25–30. The Patent Trial and Appeal Board instituted two reviews, each addressing all the challenged claims. In IPR-105, the Board ruled that St. Jude failed to establish unpatentability of any of the challenged claims, rejecting the contention that all the challenged claims were anticipated by the Leonhardt patent and would have been obvious over Leonhardt plus either the Anderson patent or the Johnson and Imachi patents. In IPR-106, the Board found claims 1, 2, 6, and 8 anticipated by the Bessler patent, but it rejected St. Jude’s contentions as to all other claims, finding that St. Jude had not proved, as to all but claims 1, 2, 6, and 8, anticipation by Bessler or obviousness over Bessler combined with either Anderson or Johnson and Imachi. The Federal Circuit affirmed the decision in IPR-105; reversed the finding in IPR-106 that Bessler anticipated claims 1, 2, 6, and 8; did not reach the anticipation argument as to claim 28; and affirmed the obviousness rejection in IPR-106. View "St. Jude Medical, LLC v. Snyders Heart Valve LLC" on Justia Law
Warsaw Orthopedic, Inc. v. Sasso
Under the 1999 Agreement, Medtronic purchased Dr. Sasso's inventions, agreeing to royalty payments based on Medtronic’s sales of the defined Medical Device until “the last to expire of the patents included in Intellectual Property Rights, or if no patent application(s) issue into a patent having valid claim coverage of the Medical Device, then seven (7) years from the Date of First Sale of the Medical Device.” The initial patent application was filed in November 1999; two patents issued, both entitled “Screw Delivery System and Method.” Medtronic made royalty payments in 2002-2018. Sasso claimed that Medtronic was not paying royalties on sales of all relevant devices, and filed suit in Indiana state court. A judgment in Sasso's favor is on appeal.Medtronic sought a federal declaratory judgment. While Sasso describes the state court action as a contract case for payment for patent rights, Medtronic describes the federal action as a patent case in which payment requires valid patents. The Federal Circuit affirmed the dismissal of the suit without prejudice, based on abstention in view of the concurrent action in Indiana state court between the same parties concerning the same dispute. District courts possess significant discretion to dismiss or stay claims seeking declaratory relief, even when they have subject matter jurisdiction. View "Warsaw Orthopedic, Inc. v. Sasso" on Justia Law
Immunex Corp v. Sanofi-Aventis U.S. LLC
Immunex’s 487 patent is directed to antibodies that bind to the human interleukin-4 receptor, the resulting inhibition of which is significant for treating various inflammatory disorders, such as arthritis, dermatitis, and asthma. Amid infringement litigation, Sanofi filed three inter partes review (IPR) petitions challenging claims 1–17 of the patent. Two were instituted. In one final written decision, the Board concluded that claims 1–17 were unpatentable as obvious over two prior references. Immunex appealed, contesting the construction of the claim term “human antibodies.” In the other IPR, involving a subset of the same claims, the Board did not invalidate the patents for reasons of inventorship. Sanofi contested the Board’s inventorship determination. In consolidated appeals, the Federal Circuit upheld the Board’s claim construction, affirming the invalidity decision, leaving valid no claims at issue in the inventorship appeal. View "Immunex Corp v. Sanofi-Aventis U.S. LLC" on Justia Law