Justia Patents Opinion Summaries

by
Vectura sued GSK in 2016, alleging direct infringement of claim 3 of the 991 patent, which concerns the production of “composite active particles” for use in pulmonary administration, such as in dry-powder inhalers. The composite active particles described in the patent consist of additive material that is adhered to particles of the active ingredient. The active ingredient produces the desired chemical or biological effect, while the additive particles promote the dispersion and delivery of the active ingredient into the lungs when the inhaler is activated.The Federal Circuit affirmed holdings that the patent was infringed and not invalid. The court rejected arguments that Vectura failed to present substantial evidence that the accused inhalers use additive material that “promotes the dispersion” of the active material, that the district court’s construction of the term “composite active particles” was erroneous, that there were flaws in the calculation of the royalty proposed by Vectura’s damages expert, and that Vectura made prejudicial references to GSK’s sales and advanced an improper “pennies on the dollar” argument in comparing Vectura’s royalty request to GSK’s sales. View "Vectura Ltd. v. GlaxoSmithKline, LLC" on Justia Law

by
Alleshouse and Yeh are named as the inventors on the 685 and 189 patents, which claim water-park attractions that individuals may ride as if surfing, and on the 433 patent, which claims nozzle configurations for regulating water flow in such attractions. Pacific, the company Alleshouse and Yeh formed to develop and market such attractions, is the assignee of the patents. Whitewater is the successor of Wave, which employed Alleshouse until just before he went into business with Yeh and the patented inventions were conceived. Whitewater sued Alleshouse, Yeh, and Pacific, claiming that Alleshouse had to assign each of the patents to Whitewater, as Wave’s successor, under the terms of Alleshouse’s employment contract with Wave. Whitewater also claimed that Yeh, who had not been employed by Whitewater or its predecessors and therefore was not under any alleged assignment duty, was improperly listed as an inventor on each of the patents.The district court held that Alleshouse breached the employment agreement, so Whitewater was entitled to an assignment of the patent interests, and Yeh was improperly joined as an inventor. The Federal Circuit reversed, The contract’s assignment provision is void under California law, (Labor Code 2870, 2872; Business and Professions Code 16600), so Whitewater lacks standing to contest inventorship. View "Whitewater West Industries Ltd. v. Alleshouse" on Justia Law

by
SIPCO’s patent explains communicating information from a previously unconnected, remote device to a central location by setting up a two-step communication path through intermediate nodes to use the nodes’ already-provided link (e.g., a public-switched telephone network) to the central location. The remote device communicates wirelessly to an intermediate node. The Patent Board found that the patent was not exempt from covered business method (CBM) review under the “technological invention” exception and found five claims patent-ineligible under 35 U.S.C. 101 and unpatentable for obviousness under section 103. The Federal Circuit vacated.The Supreme Court remanded for further consideration in light of the Court’s 2020 “Thryv” decision. The Federal Circuit then affirmed the Board’s obviousness determination and did not address the Board’s patent-ineligibility decision under section 101. The Thryv decision makes clear that the threshold determination that the patent qualifies for CBM review is non-appealable under 35 U.S.C. 324(e); SIPCO’s challenge is nothing more than a contention that the agency should have refused to institute CBM review View "SIPCO, LLC v. Emerson Electric Co." on Justia Law

by
Google’s 765 application relates to “distributed caching for video-on-demand systems, and in particular to a method and apparatus for transferring content within such video-on-demand systems.” The proposed invention presents a solution for determining how to stream content to set-top boxes and where to store said content among the content servers, be it at one or more video server offices or smaller, partial-content libraries at local servers (video home offices). The examiner rejected certain claims under 35 U.S.C. 103, as obvious in view of prior art. The Federal Circuit affirmed, declining to address certain of Google’s arguments as waived. View "In Re Google Technology Holdings LLC" on Justia Law

by
Fein was a consultant for Ferring Pharmaceuticals, involved in a project involving desmopressin, a synthetic analog of the naturally occurring hormone arginine vasopressin, which regulates the body’s retention of water. Fein suggested administration as a waterless orodispersible form to improve the bioavailability of the desmopressin. In 2002, Ferring filed a Great Britain Patent Application, covering an orodispersible desmopressin formulation but did not list any inventors. When Ferring experienced production delays, it undertook another clinical study with an intravenous desmopressin formulation. Fein was selected to oversee the U.S. study and suggested certain changes. After Ferring terminated Fein’s consulting agreement, both parties continued to test various formulations. Both Ferring and Fein filed patent applications. Fein’s company sold the right to commercialize a low-dose desmopressin intranasal spray.Ferring unsuccessfully requested reexamination of Fein’s patent, then filed a complaint asserting state law claims and claims for correction of inventorship of the Fein patents under 35 U.S.C. 256. The district court granted the defendants summary judgment, finding that conduct occurring before the issuance of Fein's patents could give rise to equitable estoppel of claims for correction of inventorship. The court noted Ferring’s inaction for over seven years following letters from Fein’s attorney. On counterclaims for correction of inventorship of Ferring’s patents, the court granted Ferring judgment. The Federal Circuit vacated and remanded for further development of the record, noting the fact-laden equitable issue and the need to avoid a rush to judgment. View "Ferring B.V. v. Allergan, Inc." on Justia Law

by
Bard and AngioDynamics both manufacture vascular access ports, devices implanted underneath a patient’s skin that allow the injection of fluid into the patient’s veins on a regular basis without starting an intravenous line each time. Vascular access ports were traditionally used to administer injections at low pressure and flow rates. Certain procedures, like computed tomography (CT) imaging, required the injection of fluids into patients at high pressure and high flow rates (power injection). As of 2005, vascular access ports were not FDA-approved for power injection but certain medical providers were using existing ports for power injection; in some cases, the pressure ruptured the port, seriously injuring the patient. Bard obtained FDA approval for PowerPort as the first vascular access port labeled for power injection and obtained the patents-in-suit. AngioDynamics then obtained FDA approval to market its own vascular access port products as suitable for power injection.Bard sued AngioDynamics for infringement. During the trial, the court granted judgment that the asserted claims were not infringed, were not willfully infringed, and were invalid as directed to printed matter. The Federal Circuit reversed. There was substantial evidence to support a jury finding of infringement and willfulness; the asserted claims are not directed solely to printed matter and are patent-eligible under 35 U.S.C. 101. A genuine dispute of material fact precludes summary judgment as to anticipation. View "C R Bard Inc. v. AngioDynamics, Inc." on Justia Law

by
Uniloc sued Apple for patent infringement in the Western District of Texas (WDTX). Apple moved to transfer the case to the Northern District of California (NDCA), arguing that it would be clearly more convenient to litigate the case there, 28 U.S.C. 1404(a). Apple moved to stay activity in the case unrelated to its transfer motion. The district court denied the stay motion without explanation, then held a hearing on Apple’s transfer motion and stated that it would deny the motion and issue a written order soon. After the hearing, but before issuing a written order, the court held a Markman hearing, issued its claim construction order, held a discovery hearing regarding protective order, and issued a corresponding discovery order.Apple filed a petition for a writ of mandamus, which the Federal Circuit granted. The “district court barreled ahead on the merits in significant respects” and clearly abused its discretion in denying transfer. The district court erred by failing to meaningfully consider the wealth of important information in NDCA and misapplied the law by giving too much significance to the fact that the inventors and patent prosecutor live closer to WDTX than NDCA and in concluding that judicial economy weighed against transfer because NDCA has more pending cases than WDTX. View "In Re Apple Inc." on Justia Law

by
Guitar effects pedals are electronic devices that affect the amplified sound of a guitar., usually placed on a pedalboard and controlled by foot operation. Pro Stage’s 023 patent asserts that prior art pedalboards were essentially wooden boards to which guitar effects pedals were mounted. IThe patent explained that there was a need for “an improved pedal effects board which allows easy positioning and changing of the individual guitar effects while providing a confined and secure area for cable routing and placement.”On inter partes review, the Patent Trial and Appeal Board rejected Donner’s arguments that the claims were invalid as obvious under 35 U.S.C. 103, finding that Donner did not prove that “Mullen” is analogous art. The Federal Circuit vacated and remanded. While the 023 patent and Mullen are not from the same field of endeavor, the Board also failed to properly identify and compare the purposes or problems to which Mullen and the patent relate. The Board’s articulation of the purpose of or problem to be solved by the 023 patent is so intertwined with the patent’s field of endeavor that it would effectively exclude consideration of any references outside that field. View "Donner Technology, LLC v. Pro Stage Gear, LLC" on Justia Law

by
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

by
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