Justia Patents Opinion Summaries

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

The Board of Patent Appeals and Interferences declared an interference between Troy’s 451 patent, which claims priority to a provisional application filed in February 2005, and Samson’s 665 patent application, claiming priority to a provisional application filed in January 2005. Samson was named senior party. Troy’s priority motion alleged reduction to practice in early February 2004, conception prior to February 2004, inurement, and derivation. Samson’s motion alleged reduction to practice in late February or early March 2004 and conception in early February 2004. The Board concluded that Troy failed to prove actual reduction to practice in February 2004 and ordered all claims of the 451 patent cancelled. Troy had proffered new evidence of prior conception at the dates asserted, new evidence of actual reduction to practice in February 2004, and a claim that Samson engaged in “inequitable conduct” by including in its provisional application confidential drawings misappropriated from Troy. The district court affirmed, refusing to consider new evidence, not raised before the Board. The court acknowledged that Troy had proven, in state court, that Samson improperly submitted as its own at least one drawing of Troy’s and that Samson violated a confidentiality agreement in developing its inventions, but concluded that neither proved that Troy conceived all the elements and timely reduced them to practice. The Federal Circuit vacated. View "Troy v. Samson Mfg. Corp." on Justia Law

Stauffer, pro se, filed a qui tam action against Brooks Brothers under the then-version of the false-marking statute, 35 U.S.C. 292, claiming that Brooks Brothers marked its bow ties with expired patent numbers. In 2011, while the action was pending, the President signed into law the America Invents Act, 125 Stat. 284A, which eliminated the false-marking statute’s qui tam provision, so that only a “person who has suffered a competitive injury” may bring a claim. The AIA also expressly states that marking a product with an expired patent is not a false-marking violation and that the amendments apply to all pending cases. Stauffer argued that the AIA amendments were unconstitutional because they amounted to a pardon by Congress, violating the doctrine of separation of powers, and also violated the common-law principle that prohibits use of a pardon to vitiate a qui tam action once the action has commenced. The district court dismissed for lack of standing. The Federal Circuit affirmed, finding that the amendments did not constitute a pardon and that even if the law had not changed, Stauffer might have lost his lawsuit, and, therefore, could not have acquired a private-property interest in his share of the statutory penalty. View "Stauffer v. Brooks Brothers, Inc." on Justia Law

VA alleged infringement of the 413 patent. One defendant, Salesforce, filed a petition with the Patent Trial and Appeal Board (PTAB) for post-grant review of all claims of that patent under the Covered Business Method Patents (CBM) program, of the America Invents Act, 125 Stat. 284. Salesforce argued that it had standing to bring the petition because it was sued for infringement and that the PTAB should institute CBM review because all the patent claims were more likely than not patent-ineligible under 35 U.S.C. 101 and invalid under 35 U.S.C. 102, 103 in view of prior art references. Defendants moved to stay district court proceedings. In August 2013, while the motion was pending, the court issued a discovery order and held a scheduling conference, setting an April 2014 date for a claim construction hearing and a November 2014 date for jury selection. In November 2013, the PTAB granted-in-part Salesforce’s petition, concluding that all claims of the 413 patent are directed to a covered business method, and are more likely than not patent-ineligible and invalid, and set a July 2014 date for a trial on the validity of the claims. In January 2014, the district court denied Defendants’ motion to stay the case pending CBM review. The Federal Circuit reversed. View "VirtualAgility Inc. v. Salesforce.com, Inc." on Justia Law

Retractable sued, alleging that Becton’s 1 mL and 3 mL IntegraTM syringes infringed claims of Retractable’s patents. Becton had commercially launched its 3 mL syringe in 2002 and the 1 mL syringe in 2003. At trial, Retractable argued that infringement began in 2000 and that a hypothetical negotiation then would have resulted in a lump sum payment of $72 million for a 10-year license. Becton countered with a lost profits theory that would limit recovery to about $5 million based on the sales of the syringes, or, alternatively, that a reasonable royalty would have been no more than $3 million.. The jury found that both syringes infringed and that reasonable royalty damages were $5,000,000. The district court entered judgment in Retractable’s favor and a permanent injunction against the continued sale of both syringes. Becton appealed the infringement and validity determinations but neither appealed nor requested a remand of the damages determination. The Federal Circuit concluded that the district court misconstrued one claim term and that the 3 mL syringe did not infringe; no remand was ordered. Becton requested the district court to modify the injunction and the damages award in light of the decision, citing Fed. R. Civ. P. 60(b)(5). Retractable consented to modification of the injunction to exclude the 3 mL syringe. The district court concluded that the mandate rule precluded it from revisiting damages because the award was within the scope of the original judgment and was not raised in the prior appeal nor remanded. The Federal Circuit affirmed. View "Retractable Techs, Inc. v. Becton Dickinson & Co." on Justia Law

CEATS filed a patent infringement suit against airlines and ticket agencies. After the parties failed to reach a settlement during court ordered mediation, a jury found that CEATS’s patents were infringed, but invalid. The Federal Circuit affirmed the finding of invalidity. While its first appeal was pending, CEATS filed sought relief from the judgment under FRCP 60(b) based on an alleged relationship between the court-appointed mediator and the law firm representing most of the accused infringers. The alleged relationship was brought to light in the unrelated Karlseng litigation. The district court denied CEATS’s Rule 60(b) motion. The Federal Circuit affirmed, stating that it disagreed with the district court’s finding that the mediator had no duty to disclose his dealings with one of the firms involved in the litigation, but that the three “Liljeberg factors” did not establish that this case presents an “extraordinary circumstance” where relief from judgment is warranted View "CEATS, Inc. v. Cont'l Airlines, Inc." on Justia Law