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

Oren’s patent covers a system for storing and discharging proppant—a material, such as sand or other particulates, that prevents ground fractures from closing during hydraulic fracturing. Oren sued Grit for infringement, Grit transferred ownership of all the products accused of infringement. Oren and Grit jointly stipulated to dismissal without prejudice of all claims and counterclaims related to the patent. Grit sought inter partes review of claims 1–7. The Board ultimately determined that Grit had not established that any of the challenged claims were unpatentable as obvious over prior art or that the challenged claims were unpatentable, reasoning that neither of the prior references disclosed the patent's configuration. The Federal Circuit vacated, first holding that Grit had standing because Oren previously sued for infringement and is free to reassert those infringement claims. The Board’s determination that prior art does not disclose the patent’s configuration is unsupported by substantial evidence. The Board failed to adequately explain its reasoning. View "Grit Energy Solutions, LLC v. Oren Technologies, LLC" on Justia Law

Uniloc’s patent is directed to a communication system comprising a primary station (base station) and at least one secondary station (computer mouse or keyboard). In conventional systems, such as Bluetooth networks, two devices that share a common communication channel form ad hoc networks called “piconets.” Joining a piconet requires the completion of “inquiry” procedure and “page” procedures, which can take tens of seconds to complete. The invention improves conventional communication systems by including a data field for polling as part of the inquiry message, thereby allowing primary stations to send inquiry messages and conduct polling simultaneously, enabling “a rapid response time without the need for a permanently active communication link” between a parked secondary station and the primary station.In an infringement action, the district court held that the patent’s claims were ineligible under 35 U.S.C. 101. The Federal Circuit reversed, applying the “Alice” test. The claims are directed to a patent-eligible improvement to computer functionality--the reduction of latency experienced by parked secondary stations in communication systems. The claims do not merely recite generalized steps to be performed on a computer using conventional computer activity but are directed to “adding to each inquiry message prior to transmission an additional data field for polling at least one secondary station.” View "Uniloc USA, INC. v. LG Electronics USA, INC." on Justia Law

Walby was born in Michigan, and, in 2014-2018, lived and worked in Michigan. For the 2014 taxable year, Walby’s employer, Baker, withheld $9,751.60 in federal income taxes. In 2015, Walby claimed exemption from all withholdings and executed an “Affidavit of Citizenship,” which she submitted to the State Department, declaring that she was a sovereign citizen of the state of Michigan and, “because she was not restricted by the 14th Amendment ... she was not a United States citizen thereunder but rather a nonresident alien not subject to income taxes.” In 2016, at the direction of the IRS, Baker resumed withholding. Walby did not file federal tax returns for 2014–2018 but, in 2019, filed claims for refunds of the taxes withheld from her 2014 and 2016–2018 paychecks.The Federal Circuit affirmed the dismissal of Walby’s tax refund lawsuit concerning her 2014 return as untimely. A timely administrative refund claim must be filed within two years of the taxes being paid. The claims for the years 2016–2018 were timely but were properly dismissed as meritless. Walby could not establish a loss of U.S. nationality and even if she were a nonresident alien, Walby qualified as a U.S. resident for tax purposes under I.R.C. 7701 by virtue of her substantial presence. The court rejected a request for sanctions. View "Walby v. United States" on Justia Law

In 1989, Rudy originally filed the 360 application, entitled “Eyeless, Knotless, Colorable and/or Translucent/Transparent Fishing Hooks with Associatable Apparatus and Methods.” Its lengthy prosecution included numerous amendments and petitions, and four Board appeals. In 2014, the Sixth Circuit affirmed the obviousness of all claims then on appeal. Several claims were the subject of a 2015 office action in which the Examiner rejected them as ineligible for patenting under 35 U.S.C. 101. The Board upheld the determination.The Federal Circuit affirmed, stating that it was applying its own law and the relevant Supreme Court precedent, not the Office Guidance, in analyzing subject matter eligibility. Claim 34 is directed to the abstract idea of selecting a fishing hook based on observed water conditions; its three elements (observing water clarity, measuring light transmittance, and selecting the color of the hook) are each abstract, being mental processes akin to data collection or analysis. Claim 34 fails to recite an inventive concept at step two of the “Alice/Mayo test,” and.nothing in the remaining claims meaningfully distinguishes them from claim 34 in a patent eligibility analysis. View "In Re Rudy" on Justia Law

Apotex filed a petition for inter partes review of Novartis’s patent. The Board instituted proceedings and granted Sun, Teva, Actavis, and Argentum (with Apotex, the petitioners) joinder. The Board concluded that the petitioners had not demonstrated unpatentability of the claims. During the appeal process, all petitioners other than Argentum settled with Novartis. Before opening briefs were filed, Novartis moved to dismiss Argentum’s appeal for lack of standing. Argentum argued that its standing need not be addressed because only one party must have standing for an action to proceed in an Article III Court; the other petitioners undisputedly had standing. Following the settlement of all the other parties, Apotex argued that “now that Argentum is the only appellant, Article III standing has become a threshold issue.”The Federal Circuit dismissed for lack of Article III standing. Argentum argued that it demonstrated concrete injuries in fact: a real and imminent threat of litigation as it jointly pursues, with its partner KVK-Tech, a generic version of Novartis’ Gilenya® product for which they are in the process of filing an ANDA. Argentum failed to provide sufficient evidence that it invested in KVK’s generic Gilenya® product or ANDA. View "Argentum Pharmaceuticals LLC v. Novartis Pharmaceuticals Corp." on Justia Law

GMI is the parent corporation of several partners of General Mills, an LLC that is treated as a partnership for tax purposes (the Partnership). GMI alleges that after certain partnership-level audits of the Partnership’s returns for the 2002–2006 tax years were settled with the IRS, the IRS erroneously collected $5,958,695 in “large corporate underpayments” (LCU) interest (I.R.C. 6621(c)), by selecting incorrect “applicable dates” to start interest accrual. GMI paid the interest and filed unsuccessful administrative refund claims, then sued the government. The Claims Court dismissed for lack of subject matter jurisdiction, concluding that GMI failed to file its claims within the six-month limitations period, I.R.C. 6230(c). GMI argued that the general two-year tax refund limitations period (I.R.C. 6511(a)) applied. Section 6230(c) provides that “[a] partner may file a claim for refund on the grounds that . . . the [IRS] erroneously computed any computational adjustment necessary . . . to apply to the partner a settlement” and that any such claim “shall be filed within 6 months after the day on which the [IRS] mails the notice of computational adjustment to the partner.”The Federal Circuit affirmed. The essence of GMI’s challenge is to the IRS’s computation of the change in its tax liability resulting from the Partnership’s settlement of partnership items; interest was “clearly contemplated” as part of the Partnership settlement agreements. GMI received adequate notice but filed its refund claims well outside the six-month period, View "General Mills, Inc. v. United States" on Justia Law

GIP purchased property from a steel mill’s bankruptcy estate, omitting the “Eastern Excluded Property” (EEP). GIP purchased some personal property located on the EEP, which contains two piles comprising slag (a steel manufacturing byproduct), kish (a byproduct of a blast furnace operation), and scrap. Each pile occupied more than 10 acres and was more than 80 feet high. GIP's "Itemization of Excluded Item from Sale” referred to: “All by-products of production other than kish and 420,000 cubic yards of slag” on the EEP “with a reasonable period of time to remove such items.” The EPA began investigating contaminants leaching from the piles. While GIP was negotiating for the separation of recoverable metals, the EPA decided to reduce the size of the piles. In 2009-2013, EPA contractors recovered and sold 245,890 tons of material and recovered and used 92,500 cubic yards of slag onsite for environmental remediation; they processed approximately 50% of the piles, spending about $14.5 million, about a million more than income from sales. The EPA compacted the materials to minimize leachate, leaving further remediation to state environmental authorities. GIP did not attempt its own recovery operation during the EPA remediation.GIP sued, alleging “takings” of the slag, kish, and scrap. The trial court awarded GIP $755,494 for the slag but awarded zero damages for the kish and scrap. The Federal Circuit vacated in part. GIP had no claim to any particular subset of slag. The trial court erred in finding that the EPA somehow prevented GIP from recovering its full allotment of slag; GIP cannot establish a cognizable property interest in the slag that was recovered. The court affirmed in part. GIP’s unreliable calculations left the trial court without competent evidence relating to a critical component of the damages calculation with respect to the kish and scrap. View "Gadsden Industrial Park, LLC v. United States" on Justia Law

Truckai and his NovaCept team developed NovaSure, which was FDA-approved to detect perforations in the uterus. NovaCept incorporates the 183 and 348 patents, which list Truckai as an inventor. Truckai assigned to NovaCept his interests in the applications from which those patents claim priority and all continuation applications. Hologic is the current assignee of the patents and markets NovaSure. Truckai left NovaCept and founded Minerva, which developed EAS; EAS received FDA approval for the same indication as NovaSure. Hologic sued Minerva for infringement. In addition to asserting defenses of lack of enablement and failure to provide an adequate written description, Minerva sought inter partes review (IPR).The Patent Board instituted IPR of the 183 patent but denied IPR of the 348 patent and found the 183 claims unpatentable as obvious. Hologic appealed to the Federal Circuit. The district court declined to dismiss the infringement claim as moot and granted Hologic summary judgment that the doctrine of assignor estoppel bars Minerva from challenging the patents' validity, of no invalidity, and of infringement. A jury awarded damages.The Federal Circuit affirmed the Board’s decision that the 183 patent claims are invalid. The district court determined that the decision did not affect the verdict.The Federal Circuit affirmed that assignor estoppel bars the assignor from asserting the invalidity of the 348 patent in district court. Assignor estoppel does not preclude Minerva from relying on the Board's decision to argue that the 183 patent claims are void ab initio, justifying the denial of a permanent injunction, enhanced damages, and ongoing royalties. View "Hologic, Inc. v. Minerva Surgical, Inc." on Justia Law

Dragon sued 10 defendants, alleging patent infringement. Based on petitions by DISH and SXM (collectively, “DISH”), the Board instituted inter partes review (IPR) of the patent. The district court stayed proceedings as to DISH but proceeded as to the other defendants. After the court issued a claim construction order, Dragon, DISH, and the other defendants stipulated to noninfringement as to the accused products. The court entered judgment in favor of all defendants. In the parallel IPR, the Board issued a final decision holding unpatentable all asserted claims.DISH sought attorneys’ fees under 35 U.S.C. 285 and 28 U.S.C. 1927. Before the motions were resolved, Dragon appealed both the judgment of noninfringement and the Board’s decision. The Federal Circuit affirmed the Board’s decision and dismissed the district court appeal as moot. On remand, the district court vacated the judgment of noninfringement as moot but denied DISH’s motions for attorneys’ fees, holding that “success in a different forum is not a basis for attorneys’ fees” in the district court. The Federal Circuit vacated. The judgment of noninfringement was vacated only because DISH successfully invalidated the claims in parallel IPR proceedings, rendering moot Dragon’s infringement action. DISH’s success in obtaining a judgment of noninfringement, although later vacated because of its success in IPR, supports holding that they are prevailing parties. View "Dragon Intellectual Property LLC v. DISH Network LLC" on Justia Law

Biogen holds the New Drug Application for the active ingredient dimethyl fumarate (DMF), which was FDA-approved in 2013 as Tecfidera®, a twice-daily pill for the treatment of relapsing forms of multiple sclerosis at a daily dose of 480 mg. The 001 patent, “Utilization of Dialkylfumarates,” discloses that dialkyl fumarates may have therapeutic uses “in transplantation medicine and for the therapy of autoimmune diseases,” including multiple sclerosis. After the five-year data exclusivity for Tecfidera® expired, Banner submitted an application under 21 U.S.C. 355(b)(2) to market a twice-daily monomethyl fumarate (MMF) pill at a daily dose of 380 mg. Biogen alleged infringement of the 001 patent. Banner argued that section 156(b)(2) limits the scope of the patent’s extension to methods of using the approved product as defined in 156(f)—DMF, its salts, or its esters—and that MMF is none of those things. Biogen responded that section 156(b)(2) limits extension only to uses of any product within the original scope of the claims. The patent will expire in June 2020.The Federal Circuit affirmed the district court’s finding of non-infringement. The monomethyl ester, covered by claim 1, is not covered by the extension. The scope of a patent term extension under 35 U.S.C. 156 only includes the active ingredient of an approved product, or an ester or salt of that active ingredient; the product at issue does not fall within those categories. View "Biogen International GmbH v. Banner Life Sciences, LLC" on Justia Law