Justia Patents Opinion Summaries

P&G owns patents that claim systems or methods for whitening teeth. P&G sued TT, alleging infringement of the three patents; in another district, Clio, which manufactured the accused products, sought a declaratory judgment action against P&G, alleging that the patents were invalid, unenforceable, or not infringed. In its declaratory-judgment action. P&G amended its complaint in the Ohio action to add Clio as a defendant. When TT and Clio then moved for a stay or a transfer to New Jersey, the Ohio district court denied both motions. The New Jersey district court dismissed Clio’s declaratory-judgment action there without prejudice. Clio then timely petitioned the PTO to institute inter partes reviews of the patents under 35 U.S.C. 311-319. P&G responded, arguing that Clio’s earlier declaratory judgment action involving the same three patents, though it had been voluntarily dismissed, barred the institution of inter partes reviews under section 315(a). The Patent Trial and Appeal Board disagreed and granted all three petitions, because 35 U.S.C. 315(a)(1) states: “An inter partes review may not be instituted if, before the date on which the petition for such a review is filed, the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent.” P&G sought a writ of mandamus under 28 U.S.C. 1651. The Federal Circuit denied the petition, stating that mandamus action is not available. View "In re: Procter & Gamble Co." on Justia Law

In 2010, St. Jude sued Volcano, alleging infringement of five patents. Volcano counterclaimed, asserting infringement of the 994 patent. More than two years later, the district court, based on the stipulations of the parties, dismissed all claims relating to the 994 patent. Six months after the dismissal, St. Jude sought inter partes review of the 994 patent. The Director of the U.S. Patent & Trademark Office, through the Board, denied the petition, stating that a counterclaim alleging infringement constitutes a “complaint alleging infringement of the patent” under 35 U.S.C. 315(b), which bars institution of an inter partes review of a patent if the petitioner was served with a complaint alleging infringement of the patent more than one year before filing the petition. Accordingly, the 2010 counterclaim against St. Jude barred the Director from instituting an inter partes review. The Federal Circuit dismissed, based on the structure of the inter partes review provisions, on the language of section 314(d) within that structure, and on its jurisdictional statute read in light of those provisions.View "St. Jude Medical, Cardiology Div., Inc. v. Volcano Corp." on Justia Law

Vaillancourt obtained ownership of the 221 patent from his mother through an assignment recorded with the PTO in 2011. Vaillancourt represents that the assignment took effect in 2005. In 2010, BD requested an inter partes reexamination of the 221 patent. During the reexamination proceedings, Vaillancourt added claims 21 through 37 to the original 20 claims. The patent examiner rejected all 37 claims. While an appeal was pending, Vaillancourt assigned to VLV “the entire right, title and interest in and to” the 221 patent, “including full and exclusive rights to sue upon and otherwise enforce” the patent. VLV sued BD for infringement in its own name and did not join Vaillancourt. The Board subsequently affirmed all of the examiner’s rejections. Despite no longer being the owner of the patent, Vaillancourt unsuccessfully requested rehearing in his own name. Vaillancourt appealed to the Federal Circuit, identifying himself in the notice of appeal as both the patent owner and appellant. BD moved to dismiss for lack of jurisdiction. The Federal Circuit ultimately dismissed for lack of standing.View "Vaillancourt v. Becton Dickinson & Co." on Justia Law

AVS filed a patent infringement suit in the Eastern District of Texas, five months after AVS was incorporated in the Western District of Texas. AVS is a subsidiary of a patent-licensing company Acacia and shares an office in the Eastern District of Texas with other Acacia subsidiaries of Acacia. Some of the patents at issue are in the same family as patents that were the subject of cases previously litigated in the Eastern District of Michigan. A few months later, Toyota and Gulf States moved to sever claims against Gulf States; to transfer the claims against Toyota to the Eastern District of Michigan under 28 U.S.C. 1404(a); and to stay claims against Gulf States s pending resolution of the transferred case. Gulf States is located in Houston, Texas (the Southern District of Texas), and is an independent distributor of Toyota vehicles in five states. The district court denied the motions. The Federal Circuit vacated. Nothing favors the transferor forum, but several factors favor the transferee forum. Toyota has a clear right to transfer. View "In re: Toyota Motor Corp." on Justia Law

Benefit Funding sued Advance America, Regions Financial Corporation, CNU Online, and U.S. Bancorp, alleging infringement of the 582 patent, which covers a “system and method for enabling beneficiaries of retirement benefits to convert future benefits into current resources to meet current financial and other needs and objectives.” Several months into the litigation, U.S. Bancorp filed a petition with the Patent Trial and Appeal Board for post-grant review of the asserted claims under the Transitional Program for Covered Business Method Patents, America Invents Act, 125 Stat. 284, 329–31. The district court denied motions to stay. The Board instituted the requested covered business method review on the sole basis of subject matter eligibility under 35 U.S.C. 101, holding that “it is more likely than not that the challenged claims are unpatentable.” The district court then orally granted motions to stay. On interlocutory appeal, the Federal Circuit affirmed the stay. The only real argument against a stay concerned the authority of the Board to conduct the CBM review, those circumstances, so the district court did not abuse its discretion in granting the stay. View "Benefit Funding Sys., LLC v. Advance Am. Cash Advance Ctrs., Inc." on Justia Law

Endo sells Opana® ER extended-release tablets containing a painkiller, oxymorphone. In earlier litigation, Endo sued Roxane and Actavis for patent infringement, 35 U.S.C. 271(e)(2)(A), based on their Abbreviated New Drug Applications to market generic versions of Opana® ER. The lawsuits settled; Endo granted defendants a license and a covenant not to sue. After making the agreements the 122 and 216 patents issued to Endo. They are continuations of the same parent application and directed to extended-release oxymorphone compositions and methods of treating pain using those compositions. Endo also acquired the unrelated 482 patent, concerning purified oxymorphone compositions and methods of making those compositions. The asserted patents are listed in the Approved Drug Products with Therapeutic Equivalence Evaluations (Orange Book) entry for Opana® ER. Endo again sued for infringement and sought a preliminary injunction to prevent marketing or sales of generic oxymorphone formulations. The district court held that Endo was estopped from claiming that the activity of defendants, “which has gone on for a substantial period of time, is now suddenly barred because of these new patents.” The Federal Circuit vacated, finding that the defendants did not have an express or implied license to practice the patents at issue.View "Endo Pharm. Inc. v. Actavis, Inc." on Justia Law

Senju’s patent covers an ophthalmic solution for eye drops containing Gatifloxacin, an antimicrobial agent, to kill bacteria. Tear dilution and the outer layer of the eye can prevent Gatifloxacin from passing into and treating the aqueous humor. The patent discloses a solution combining Gatifloxacin with disodium edetate, to expand the intercellular spaces of the cornea, accelerating passage of Gatifloxacin solution into the eye. In 2007, Apotex filed an Abbreviated New Drug Application with the FDA (Hatch-Waxman Act, 98 Stat. 1585), requesting approval to manufacture and sell a generic version of the solution. Senju filed an infringement action. The district court held that, though the ANDA product infringed claims 1–3, 6, 7, and 9, claim 7 was invalid as obvious. The Federal Circuit affirmed. In the gap between the court’s 2010 issuance of findings and its December 2011 entry of final judgment, Senju requested reexamination of claims 1–3, 6, 8, and 9; amended claim 6 to include additional limitations; and added new independent claim. In October 2011, the PTO issued a reexamination certificate cancelling claims 1–3 and 8–11, and certifying amended claim 6, new independent claim 12, and new dependent claims as patentable. Before entry of final judgment in the first action, Senju sought a declaratory judgment that Apotex’s manufacture, use, or sale of Gatifloxacin ophthalmic solution infringed claims set forth in the reexamination certificate. The district court dismissed. The Federal Circuit affirmed, finding the suit barred by claim preclusion.View "Senju Pharm. Co., Ltd. v. Apotex, Inc." on Justia Law

Jang assigned his patent rights to the companies in exchange for an upfront payment and a promise under defined circumstances to pay additional compensation if the companies sold stents covered by Jang’s patents. In 2005, Jang sued for breach of contract. In the first two appeals, the Federal Circuit addressed claim construction disputes relevant to whether the accused stents were covered by Jang’s patents. In the meantime, the companies sought ex parte reexamination with the U.S. Patent and Trademark Office, asserting invalidity. An examiner rejected the claims, which were canceled in issued reexamination certificates. In 2014, the district court denied the companies’ motion for summary judgment, finding that a patentee is not precluded from recovering royalties until the date the assignee first challenges the validity of the patent, so Jang could seek royalties prior to the challenge. The district court certified an interlocutory appeal. The Federal Circuit declined to transfer the petition to the Ninth Circuit despite the underlying contract claim and denied the petition for interlocutory review, stating that it is not clear that the identified legal issues will in fact be controlling, and each question depends on the resolution of factual issues not yet addressed by the district court. View "Jang v. Boston Scientific Corp." on Justia Law

B.E. sued Barnes & Noble in the Western District of Tennessee, alleging that Barnes & Noble’s Nook® devices infringed a B.E. patent. B.E.’s CEO, Hoyle, the named inventor on that patent, has lived in the Western District of Tennessee since 2006 and run the company from there since 2008. Barnes & Noble is incorporated in Delaware and headquartered in New York, but has an office in California, where most of its activities related to Nook® take place. Barnes & Noble moved to transfer the case pursuant to 28 U.S.C. 1404(a) “for the convenience of parties and witnesses, in the interest of justice.” The district court denied the motion, agreeing that the case should remain in Tennessee. The court found that party and non-party witnesses reside in California, but that transfer would impose the burden of travel and time away for any witness in Tennessee. The court faulted Barnes & Noble for not addressing how many employees would be unavailable to testify in Tennessee or why deposition testimony would not suffice. Barnes & Noble sought a writ of mandamus. The Federal Circuit denied its petition, stating that it saw no clear abuse of discretion in the district court’s decision to deny transfer. View "In re: Barnes & Noble, Inc." on Justia Law

Arlington manufactured and sold electrical connectors that could be snapped into place, including the Snap2It® brand connectors. Bridgeport sold a competing line of quick-connect fittings called Snap-In and Speed-Snap connectors. In 2002, Arlington filed suit, alleging that Bridgeport’s connectors infringed claim 1 of its 488 patent. Bridgeport signed a settlement agreement stating that the 488 patent was not invalid, was not unenforceable, and was infringed by Bridgeport’s 590-DCS and 590-DCSI Speed-Snap products. Bridgeport agreed to be “permanently enjoined from directly or indirectly making, using, selling, offering for sale or importing . . . the Speed-Snap products identified … 590-DCS and 590-DCSI or any colorable imitations.” The district court dismissed without prejudice and maintained jurisdiction to enforce the injunction. In 2005, Bridgeport redesigned its connectors to have a frustoconical leading edge and began selling the 38ASP and 380SP connectors (New Connectors), under the Whipper-Snap® brand. In 2012, Arlington filed a motion for contempt, alleging that Bridgeport’s New Connectors violated the 2004 Injunction. The district court acknowledged that the dispute centered around two limitations of claim 1 of the 488 patent, and construed those limitations, finding that Bridgeport directly and indirectly infringed the patent. The Federal Circuit dismissed an appeal for lack of jurisdiction because the contempt order is not a final judgment or otherwise appealable. View "Arlington Indus., Inc. v. Bridgeport Fittings, Inc." on Justia Law