Justia Patents Opinion Summaries
Intra-Cellular Therapies, Inc. v. Iancu
In September 2010, IntraCellular filed the application leading to the 077 patent. In October 2012, the Patent Office issued a non-final office action including rejections under 35 U.S.C. 103 and 112. Intra-Cellular argued against section 103 rejections without amendment. In April 2013, the Patent Office mailed a final Office action, allowing no claims. In July 2013, on the last day for filing a “reply” to the final Office action without accruing applicant delay, 36 U.S.C. 154(b)(2)(C)(ii), Intra-Cellular responded with “Amendments and Response,” repeating the same arguments and adding a new claim. Nine days later, the Patent Office mailed an Advisory Action: Intra-Cellular’s after-final submission overcame some of the previous rejections but failed to overcome the section 103 rejection for the prior reasons of record. The examiner suggested amending or cancelling certain claims. Ten days later, Intra-Cellular filed its second after-final submission adopting all of those suggestions. A Notice of Allowance was mailed on August 20, 2013. In January 2017, the Patent Office issued a determination that the patent was entitled to 264 days of patent term adjustment ( for agency delays, after subtracting 21 days for applicant delay based on the time it took Intra-Cellular to file its second after-final submission after the response deadline, reasoning that Intra-Cellular’s first after-final submission did not constitute a proper “reply” under 37 CFR 1.704(b). The clock stopped with the second after-final submission, 21 days later. The Federal Circuit affirmed that determination. While timely, Intra-Cellular’ initial response continued to argue the merits of the final rejections, failing to comply with regulatory requirements for what constitutes a proper “reply” to a final Office action. View "Intra-Cellular Therapies, Inc. v. Iancu" on Justia Law
Inspired Development Group v. Inspired Products Group, LLC
Inspired Development sued KidsEmbrace for breach of contract and other related state law claims in federal district court on the basis of diversity jurisdiction under 28 U.S.C. 1332(a). The dispute involved the purported breach of a patent-licensing agreement by failure to pay outstanding royalties. The district court granted summary judgment in KidsEmbrace’s favor on certain claims. On appeal, the Eleventh Circuit discovered that diversity jurisdiction did not exist. The district court concluded on remand that it retained jurisdiction over the suit based on federal question jurisdiction. The Eleventh Circuit transferred the case to the Federal Circuit, which vacated and remanded for dismissal. The parties’ claims did not arise under the patent laws pursuant to 28 U.S.C. 1338(a). No claims allege a cause of action created by federal patent law. This is a state law contract case for past due royalties. Inspired Development need not demonstrate that KidsEmbrace actually practiced the licensed patents, and the question of infringement is not a “necessary element” of the claim. Finding a federal question here merely because this contract implicates a run-of-the-mill question of infringement or validity would undoubtedly impact the wider balance between state and federal courts. View "Inspired Development Group v. Inspired Products Group, LLC" on Justia Law
Posted in: Civil Procedure, Intellectual Property, Patents, US Court of Appeals for the Federal Circuit
Mayo Foundation for Medical Education and Research v. Iancu
The patent term length is 20 years from the effective filing date of the application, 35 U.S.C. 154. Applicants are compensated for three classes of prosecution delay: a “B Delay” generally entitles the applicant to patent term adjustment (PTA) for each day the application is pending beyond three years. Limitations reduce PTA for "time during which the applicant failed to engage in reasonable efforts to conclude prosecution.” Mayo’s 310 application had a November 1999, effective filing date. The PTO issued a final rejection for anticipation (757 patent) in October 2010. In September 2011, Mayo requested continued examination (RCE) arguing that Mayo had priority of invention over the 757 patent. Mayo cancelled certain claims and pursued them in a separate continuation application, which later issued as the 927 patent. In February 2012, an interference was declared. In February 2014, the Board awarded priority to Mayo’s 310 application and canceled the 757 patent. In June 2014, an examiner rejected the 310 application, citing double patenting in view of the 927 patent. Mayo argued that the claims were patentably distinct. The examiner mailed a Notice of Allowance in November 2014. The 310 application issued as the 063 patent in March 2015. The PTO calculated 621 days of PTA, with no B Delay. Mayo claimed 685 days, arguing the examiner’s reopening of prosecution after termination of the interference was not RCE under 35 U.S.C. 154(b)(1)(B)(i). The PTO concluded that RCE time (which is deducted from B Delay) did not end when the interference was declared, but instead when the Notice of Allowance was mailed. The Federal Circuit affirmed, upholding the PTO’s interpretation of “any time consumed by continued examination of the application requested by the applicant under section 132(b),” 35 U.S.C. 154(b)(1)(B)(i). View "Mayo Foundation for Medical Education and Research v. Iancu" on Justia Law
Henny Penny Corp. v. Frymaster LLC
During frying, cooking oil gradually degrades and loses its cooking capacity, generating impurities called total polar materials (TPMs). Frymaster’s patent describes a system for measuring the state of cooking oil degradation with a TPM sensor. When the sensor detects that TPM levels are too high, the system instructs the fryer operator to change the oil. On inter partes review, the Patent and Trademark Office Patent Trial and Appeal Board found multiple claims not unpatentable as obvious under 35 U.S.C. 103. The Federal Circuit affirmed, agreeing that industry praise is probative of nonobviousness even if it was not precisely limited to the point of novelty of the claimed combination. Substantial evidence supports the Board’s finding of no motivation to combine prior references and Frymaster’s evidence of secondary considerations supports nonobviousness. View "Henny Penny Corp. v. Frymaster LLC" on Justia Law
Curver Luxembourg, SARL v. Home Expressions Inc.
Curver’s 946 patent, filed in 2011, entitled “Pattern for a Chair” claims an “ornamental design for a pattern for a chair” with an overlapping “Y” design. The design patent’s figures, however, merely illustrate the design pattern disembodied from any article of manufacture. Curver sued Home Expressions, alleging that Home Expressions made and sold baskets that incorporated Curver’s claimed design pattern and infringed the 946 patent. The Federal Circuit affirmed the dismissal of the suit. The accused baskets could not infringe because the asserted design patent was limited to chairs only. The scope of the design patent was limited to the illustrated pattern applied to a chair. View "Curver Luxembourg, SARL v. Home Expressions Inc." on Justia Law
Intellectual Ventures I LLC v. Capital One Financial Corp.
The Intellectual Ventures (IV) patents are directed to tracking and storing information relating to a user’s purchases and expenses; methods and systems for providing customized Internet content to a user as a function of user-specific information and the user’s navigation history; and methods of scanning hardcopy images onto a computer. IV unsuccessfully sued Capital One for infringement in the Eastern District of Virginia and in the District of Maryland. Capital filed antitrust counterclaims, alleging monopolization and attempted monopolization (Sherman Act, 15 U.S.C. 2) and unlawful acquisition of assets (Clayton Act, 15 U.S.C. 18), claiming that IV is principally engaged in the business of acquiring patents and asserting them in litigation. IV acquired approximately 3,500 patents relating to commercial banking and attempted to obtain large licensing fees from banks by threatening infringement suits. Capital alleged that IV concealed the identity of its patents and insisted that banks license IV’s entire portfolio of financial services patents, knowing that many were invalid, unenforceable, and not infringed. The Virginia court dismissed the antitrust counterclaims for failure to state a claim on which relief could be granted. The Maryland district court granted summary judgment against Capital on all the antitrust claims. The Federal Circuit affirmed the Maryland holding, citing collateral estoppel. The Virginia decision that Capital failed to plausibly allege a proper relevant antitrust market and failed to plausibly allege that IV wields monopoly power within that market was conclusive in the Maryland action. View "Intellectual Ventures I LLC v. Capital One Financial Corp." on Justia Law
Posted in: Antitrust & Trade Regulation, Intellectual Property, Patents, US Court of Appeals for the Federal Circuit
Board of Regents of the University of Texas System v. Boston Scientific Corp.
University of Texas System (UT) sued BSC for patent infringement in the Western District of Texas. The patents resulted from research conducted at UT and are directed to implantable drug-releasing biodegradable fibers. BSC is a Delaware corporation with a principal place of business in Massachusetts. BSC does not own or lease any property or maintain a business address in the Western District of Texas but has 46 employees in the District; all maintain home offices and do not work in spaces that are owned or controlled by BSC. UT asserted that venue was proper because UT has sovereign immunity. The district court transferred the case to the District of Delaware. The Federal Circuit affirmed, first holding that it had jurisdiction to hear the appeal under the collateral order doctrine. State sovereignty principles do not grant UT the right to bring suit in an otherwise improper venue; 28 U.S.C. 1400(b) is the sole and exclusive provision controlling venue in patent infringement actions and venue is proper where a defendant resides or has a regular and established place of business. Sovereign immunity is a shield, not a sword. There was no claim or counterclaim against UT that placed it in the position of a defendant. View "Board of Regents of the University of Texas System v. Boston Scientific Corp." on Justia Law
Posted in: Civil Procedure, Intellectual Property, Patents, US Court of Appeals for the Federal Circuit
Allergan Sales, LLC v. Sandoz, Inc.
Allergan’s patents, entitled “Combination of Brimonidine and Timolol for Topical Ophthalmic Use,” the Patents-in-Suit share a common specification that relates “to the topical ophthalmic use of brimonidine in combination with timolol . . . for treatment of glaucoma or ocular hypertension.” Allergan sued Sandoz, asserting that Sandoz’s Abbreviated New Drug Application (ANDA) for a generic version of Allergan’s ophthalmic drug Combigan® infringed those patents. The district court granted Allergan a preliminary injunction. The Federal Circuit affirmed, limiting a number of “wherein” clauses in the patents. Both Allergan and the Examiner explicitly relied on the “wherein” clauses to distinguish the claimed methods over the prior art during prosecution. The “wherein” clauses were neither unnecessary nor irrelevant. View "Allergan Sales, LLC v. Sandoz, Inc." on Justia Law
Posted in: Drugs & Biotech, Intellectual Property, Patents, US Court of Appeals for the Federal Circuit
BioDelivery Sciences International, Inc. v. Aquestive Therapeutics, Inc.
In 2014, BioDelivery filed three petitions for inter partes review (IPR) of Aquestive’s 167 patent. The Patent Trial and Appeal Board instituted review on a single ground in each petition. For the 14 non-instituted grounds, the Board found that BioDelivery failed to establish a reasonable likelihood of prevailing on the merits. The Board sustained the patentability of the three claims. The Supreme Court then issued its SAS Institute (2018) holdings that IPR proceedings must proceed in accordance with the petition including the grounds on which the challenge to each claim is based. On remand, the Board modified the institution decisions, denied the petitions, and terminated the proceedings, emphasizing its discretion to institute IPR under 35 U.S.C. 314(a) even upon a showing of a reasonable likelihood of prevailing on at least one challenged claim. The Board considered the merits of the previously noninstituted grounds, finding that BioDelivery had not “establish[ed] a reasonable likelihood of success in relation to those claims and grounds.” The Federal Circuit dismissed BioDelivery’s appeals as barred by 35 U.S.C. 314(d). In following the remand order to “implement SAS,” the Board corrected its partial institution errors by revisiting its institution decisions and properly exercising its discretion not to institute review at all. Nothing in the order divested the Board of that discretion. View "BioDelivery Sciences International, Inc. v. Aquestive Therapeutics, Inc." on Justia Law
Guangdong Alison Hi-Tech Co. v. International Trade Commission
Guangdong is a foreign manufacturer of aerogel insulation products currently subject to a limited exclusion order entered by the U.S. International Trade Commission following an unfair competition investigation. The exclusion order is based in part on the Commission’s final determination that Alison’s products infringe Aspen’s 359 patent, 19 U.S.C. 1337. The Commission found that certain claims of the 359 patent are not indefinite based on their use of the term “lofty . . . batting” and that certain claims of the patent are not invalid on anticipation and obviousness grounds. The Federal Circuit affirmed. The written description of the 359 patent informs the meaning of “lofty . . . batting” with reasonable certainty and the Commission’s factual findings regarding anticipation are supported by substantial evidence View "Guangdong Alison Hi-Tech Co. v. International Trade Commission" on Justia Law
Posted in: Intellectual Property, International Trade, Patents, US Court of Appeals for the Federal Circuit