by
Plaintiff’s asserted RE940 patent, a reissue of its 805 patent, relates to boron steel sheets with an aluminum-based coating that, when hot-stamped, become highly mechanically resistant. In 2010, plaintiff sued AK Steel for infringement. The primary issue was whether steel sheets produced by AK met the mechanical resistance limitation of the 805 patent after thermal treatment. While the 2010 case was on remand, Plaintiff filed the complaint related to this appeal, asserting the RE940 patent. According to AK, the accused products in this case—steel sheets marketed and sold under the trade name ULTRALUME—are the same as the AXN steel sheets in the 2010 case. The district court granted AK summary judgment, citing collateral estoppel. The Federal Circuit vacated and remanded. Evidence indicates a material difference in the accused products, so collateral estoppel does not apply. Differences with respect to the claimed limitations constitute changes in controlling facts. Discovery is necessary to determine whether and to what extent AK supplied auto manufacturers with steel sheets with ultimate tensile strength in excess of 1,500 megapascals after thermal treatment, its knowledge and intent in doing so, and the relationships between AK, the hot-stampers, and the auto manufacturers during the relevant timeframe. View "Arcelormittal Atlantique v. AK Steel Corp." on Justia Law

by
Plaintiffs sued Oath in the Eastern District of New York, alleging patent infringement. Oath conducts business in New York, but is incorporated in Delaware; it does not have “a regular and established place of business” in the Eastern District as defined in the patent statute venue provision, 28 U.S.C. 1400(b) In 2016, Oath moved under FRCP 12(b)(6) to dismiss for failure to state a claim but did not object to venue. Oath withdrew its motion and filed an answer, admitting the complaint’s venue allegations but expressly reserving the right to challenge venue based upon any change in law, including the Supreme Court’s "TC Heartland" decision. The Supreme Court subsequently issued that decision, holding that, under section 1400(b), “a domestic corporation ‘resides’ only in its State of incorporation,” rejecting Federal Circuit precedent that a domestic corporation “resides” in any judicial district in which the defendant is subject to personal jurisdiction. Oath moved to dismiss. Plaintiffs argued that Oath had waived the venue defense because it was “available” in 2016. The district court agreed. In November 2017, the Federal Circuit held (Micron) that “TC Heartland changed the controlling law ... making the waiver rule ... inapplicable” but that venue rights might be forfeited by delay in asserting them in some circumstances. On reconsideration, the district court again denied Oath’s motion. The Federal Circuit remanded with instructions to either dismiss or transfer the case. The district court provided no analysis of why these circumstances supported a finding of forfeiture under section 1406(b) and erred in failing to apply the Micron precedent. View "In re: Oath Holdings, Inc." on Justia Law

by
Cisco’s 597 patent, titled “Method and Apparatus for Securing a Communications Device using a Logging Module,” relates generally to ensuring network device security by using a logging module with restricted configurability to detect and communicate changes to a network device’s configuration. Arista petitioned for an inter partes review (IPR) of certain claims of the patent. The Patent Trial and Appeal Board upheld some of those challenged claims as patentable but invalidated others. On appeal, Arista argued that the Board erred in construing the term “broadcast,” and that this error caused the Board to improperly reject Arista’s obviousness challenge to five claims. Cisco’s cross-appeal concerned the Board’s refusal to apply the doctrine of assignor estoppel. The Federal Circuit reversed as to Arista’s appeal, finding that the Board applied incorrect claim construction, and affirmed Cisco’s cross-appeal. While the issue of assignor estoppel was reviewable, section 311(a), by allowing “a person who is not the owner of a patent” to file an IPR, unambiguously dictates that assignor estoppel has no place in IPR proceedings. View "Arista Networks, Inc. v. Cisco Systems, Inc." on Justia Law

by
The patents at issue are directed to a broadcast technique in which a broadcast channel overlays a point-to-point communications network. The communications network consists of a graph of point-to-point connections between host computers or “nodes,” through which the broadcast channel is implemented. Blizzard filed six inter partes review (IPR) petitions regarding the three patents based principally on two different prior art references: one set of IPRs challenged claims based on the Shoubridge article 2 alone or combined with a prior art book DirectPlay3 and another set of IPRs challenged claims based on the Lin article 4 alone or combined with DirectPlay. The Patent Trial and Appeal Board held that multiple claims were unpatentable but upheld others and held that the Lin article is not a printed publication under 35 U.S.C. 102(a). The Federal Circuit affirmed, rejecting arguments that the Board erred by construing the term “participant” according to its plain meaning; that the terms “game environment” and “information delivery service,” appearing in two patents should have been given patentable weight; and that the Board failed to identify a broadcast channel in Shoubridge in its anticipation and obviousness analyses. The Board’s finding that Lin was not publicly accessible before the critical date was supported by substantial evidence. View "Acceleration Bay, LLC v. Activision Blizzard Inc." on Justia Law

by
The Federal Circuit affirmed the decision of the United States District Court of the District of Delaware invalidating all asserted claims of patents directed to COPAXONE® 40mg/mL, holding that the district court correctly held that the asserted claims were invalid as obvious under 35 U.S.C. 103. The patents at issue, collectively referred to as the “Copaxone patents,” shared a common specification and claim priority to the same two provision applications. The Copaxone patents described and claimed COPAXONE® 40 mg/mL, a product marketed for treatment of patients with relapsing forms of multiple sclerosis. This appeal arose out of five consolidated district court cases. Appellants sued Appellees, general drug manufacturers who sought to engage in the manufacture and sale of generic versions of COPAXONE® 40 mg, three times a week dosage, alleging that Appellees’ respective Abbreviated New Drug Applications infringed claims of the subject patents. The district court held all asserted claims of the Copaxone patents invalid as obvious under section 103. The Federal Circuit affirmed, holding that the district court did not err in invalidating all asserted claims of the Copaxone patents as obvious. View "Teva Pharmaceuticals USA, Inc. v. Sandoz Inc." on Justia Law

by
The Federal Circuit affirmed the final written decisions of the Patent Trial and Appeal Board finding the claims of U.S. Patent Nos. 8,232,250, 8,399,413, and 8,969,302 unpatentable as obvious in three inter partes review proceedings, holding that the Board did not err in finding the claims of the patents unpatentable as obvious. Yeda Research and Development Co., Ltd was the assignee of the patents at issue, all entitled “Low Frequency Glatiramer Acetate Therapy.” The so-called “Copaxone patents” shared a common specification and claim priority to the same two provisional applications. Mylan Pharmaceuticals, Inc. filed petitions for inter partes review challenging all claims of the Copaxone patents on grounds pursuant to 35 U.S.C. 102 and 103. The Board concluded that the claims were unpatentable as obvious. The Federal Circuit affirmed, holding that the Board’s actions were in accordance with law and supported by substantial evidence. View "Yeda Research & Development Co. v. Mylan Pharmaceuticals Inc." on Justia Law

by
Roche’s 723 patent, titled “Detection of a Genetic Locus Encoding Resistance to Rifampin in Microbacterial Cultures and in Clinical Specimens,” is directed to methods for detecting the pathogenic bacterium Mycobacterium tuberculosis, a major cause of tuberculosis. In 1994, before the priority date of the 723 patent, the general method of MTB detection in a tuberculosis patient was known as sputum examination by the acid-fast bacilli smear. The diagnostic test of the 723 patent involves subjecting DNA extracted from a biological sample taken from a patient to amplification by polymerase chain reaction using a short, single-stranded nucleotide sequence that can hybridize (bind) to at least one of the eleven position-specific signature nucleotides in the MTB rpoB gene. The Federal Circuit affirmed summary judgment, holding that the patent’s claims are directed to patent-ineligible subject matter and are therefore invalid under 35 U.S.C. 101. Roche’s discovery of the signature nucleotides on the MTB rpoB gene and the designing of corresponding primers are valuable contributions to science and medicine, allowing for faster detection of MTB in a biological sample and testing for rifampin resistance but groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the section 101 inquiry. The primers can be found in nature. View "Roche Molecular Systems, Inc. v. Cepheid" on Justia Law

by
The district court entered judgment on the pleadings, finding the Tab Patents, titled “System and Methods for Improved Spreadsheet Interface With User-Familiar Objects,” patent-ineligible under 35 U.S.C. 101, as directed to abstract concepts and failing to provide an inventive concept. The patents claim systems and methods for making complex electronic spreadsheets more accessible by providing familiar, user-friendly interface objects—specifically, notebook tabs—to navigate through spreadsheets while circumventing the arduous process of searching for, memorizing, and entering complex commands. The Federal Circuit reversed in part, finding all but one claim to be patent eligible. The claims are not abstract, but rather are directed to a specific improved method for navigating through complex three-dimensional electronic spreadsheets. The asserted claims of one patent, reciting methods for tracking changes to data in spreadsheets, are directed to the abstract idea of collecting, recognizing, and storing changed information; nothing in these claims that provides an inventive concept sufficient to render the claims patent eligible. View "Data Engine Technologies LLC v. Google LLC" on Justia Law

by
Bolson develops products and processes for use in 3D printing. Soarus is a distributor of specialty polymers, including G-Polymer. In 2009, Bolson and Soarus began discussing Bolson’s acquisition and use of GPolymer in connection with developing a new 3D printing process. Soarus sought to protect its rights in G-Polymer while also allowing for its potential entry into the lucrative 3D printing market. The parties executed a nondisclosure agreement (NDA). Soarus then provided Bolson with confidential information regarding G-Polymer and samples. Shortly after executing the NDA, Bolson filed a provisional patent for the 3D printing process it developed using G-Polymer; the 171 Patent issued in 2013. Soarus claimed that Bolson’s patent application revealed confidential information about G-Polymer, in violation of the NDA. The district court granted Bolson summary judgment, concluding that the plain meaning of the NDA, while conferring generally broad confidentiality protection on Bolson’s use of information about G-Polymer, authorized Bolson to use such confidential information in pursuing a patent in the specific area of the fused deposition method of 3D printing. The Seventh Circuit affirmed. The NDA clearly authorise Bolson to freely patent and protect new applications of GPolymer in the specified 3D printing process, not confined by the NDA’s confidentiality restrictions. View "Soarus L.L.C. v. Bolson Materials International Corp." on Justia Law

by
In 1997-2011, NAI filed eight patent applications. In each continuing application, NAI included a statement (35 U.S.C. 120) claiming priority to the filing date of the first application, which issued in 1999, as the 596 patent. While the fourth application was pending NAI filed the 2003 provisional application and the fifth application, claiming priority to the fourth through first applications and to the 2003 provisional application. The sixth application, filed in 2008, during the fifth application’s pendency, claimed priority to the fifth application, and the fifth application claimed priority to the fourth, and so on. After filing its sixth application, NAI amended the fifth application to delete the benefit claim to the fourth through the first applications and to claim priority to only the 2003 provisional application. The sixth through the eighth applications subsequently issued as patents, but with a statement seeking the benefit of the fifth through the first applications, and the 2003 provisional application. On inter partes reexamination of the 381 patent (from the eighth application), NAI insisted that the sixth application maintained priority back to the first application because it was irrelevant what happened to the fifth application once the sixth application became entitled to the first application’s filing date. The examiner rejected the reexamined claims in view of prior art including the 596 patent, issued from the first application. The Federal Circuit affirmed. Because the eighth application claimed priority to the first application via the fifth application, the 381 patent was not entitled to the benefit of the fourth through the first applications. Under NAI’s theory it could gain patent term on its fifth application while simultaneously shielding its child applications (including the eighth application) from their former parents; NAI cannot have it both ways. View "Natural Alternatives International, Inc. v. Iancu" on Justia Law