Justia Patents Opinion SummariesArticles Posted in Intellectual Property
In Re Palo Alto Networks, Inc.
Centripetal filed an infringement complaint against PAN, which then filed an inter partes review (IPR) petition for one patent and a post-grant review (PGR) petition for another. While the petitions were pending, the Patent and Trademark Office (USPTO) updated its interim guidance, noting that the agency “does not accept requests for Director review of decisions on institution.” The Patent Trial and Appeal Board denied institution. PAN filed Requests for Director Rehearing. The agency responded that USPTO "does not accept requests for Director review of decisions on institution ... parties may only request Director review of final written decisions" issued in IPR and PGR and that PAN’s “rehearing requests will not revert to the Board panel and there will be no further review of the Board’s decision.”PAN sought mandamus relief. A newly-appointed Director updated the interim guidance to state that “the Office does not accept requests for Director review of institution decisions” but that “the Director has always retained and continues to retain the authority to review such decisions sua sponte.” The Director has since exercised that authority. PAN argues that the Director’s current policy was contrary to the Appointments Clause, as interpreted by the Supreme Court in “Arthrex,” (2021). The Federal Circuit denied the petition. That the Appointments Clause requires that a Presidentially-appointed, Senate-confirmed officer have review authority does not mean that a principal officer, once bestowed with such authority, cannot delegate it to other agency officers. View "In Re Palo Alto Networks, Inc." on Justia Law
Kamstrup A/S v. Axioma Metering UAB
Kamstrup’s 957 patent describes ultrasonic flow meters and housings. The specification discloses that the meters are used for “calculating a consumed quantity of water, heat, cooling, gas or the like.” Ultrasonic flow meters include “housing” to protect electronic components, such as a display or battery. The patent is directed to “an ultrasonic flow meter housing in the form of a monolithic polymer structure being cast in one piece.” It explains that “the present invention can be fabricated with a reduced number of steps compared to existing meters.Axioma petitioned for inter partes review of all 15 claims. The Federal Circuit affirmed the Patent Trial and Appeal Board in finding the challenged claims unpatentable as obvious or anticipated, construing “cast in one piece” as a product-by-process claim element. Kamstrup did not present any evidence showing that the claim element provided structural and functional differences distinguishing it from the prior art. View "Kamstrup A/S v. Axioma Metering UAB" on Justia Law
LSI Corp. v. Regents of the University of Minnesota
The 601 patent addresses error rates related to recording data to computer storage devices. Dr. Moon, a UMN professor, and Dr. Brickner, a UMN graduate student, developed maximum transition-run coding to reduce error-prone patterns; their work became the basis for the 601 patent. UMN sued LSI for infringement. On inter partes review, the Patent Trial and Appeal Board concluded that claim 13 was unpatentable in view of prior art (Okada) and that claims 14 and 17 were not unpatentable in view of either Okada or the Tsang prior art reference; the Tsang reference was not prior art because it was not “by another” under 35 U.S.C. 102(e).The Federal Circuit affirmed. The Board properly found that the material in the Tsang patent that exceeded the disclosure of the Seagate Report was not relevant to the anticipation challenge to claims 14 and 17 and that summarizing the Seagate Report in Tsang did not make Tsang an inventor of the material. There is no contention that the Seagate Report can be relied upon as prior art to the 601 patent since Dr. Moon and Dr. Brickner are both listed as the only authors of the Seagate Report and as the only inventors of the 601 patent. View "LSI Corp. v. Regents of the University of Minnesota" on Justia Law
Hologic, Inc. v. Minerva Surgical, Inc.
The Federal Circuit previously affirmed summary judgment of no invalidity for claim 1 of the 348 patent in favor of Hologic, applying the doctrine of assignor estoppel against Minerva. The patent covers an endometrial ablation device for the treatment of uterine bleeding that eliminates the problem of “steam and liquid buildup at the ablation site.” The Supreme Court vacated, holding that assignor estoppel remains a valid doctrine, but that it comes with limits. On remand, the Federal Circuit again affirmed.Claim 1 is not “materially broader” than the claims assigned to Hologic such that assignor estoppel should not apply. Minerva is estopped from challenging the validity of claim 1. Minerva did not dispute that Truckai executed a broad assignment of his patent rights to NovaCept and later sold NovaCept to Hologic’s predecessor; that NovaCept received appreciable value for those patent rights; that Truckai founded Minerva and used his expertise to research, develop, and obtain FDA approval for Minerva’s Endometrial Ablation System; that his job responsibilities included bringing the System to market to compete with Hologic; and that he is in privity with Minerva. View "Hologic, Inc. v. Minerva Surgical, Inc." on Justia Law
In Re McDonald
In 2008, McDonald filed a patent application for methods and systems related to the display of search results. Several original claims did not recite a “processor” for conducting the claimed searches. The examiner rejected those claims as directed to patent-ineligible subject matter under 35 U.S.C. 101. McDonald amended the claims, adding a “processor” to certain claim limitations. The examiner withdrew the rejection. While the application leading to the 901 patent was pending, McDonald filed a continuation application, which resulted in the 111 patent; the claims in the continuation application included “processor” limitations. In 2015, McDonald filed a reissue application seeking to broaden the claims of the 111 patent, including amendments to remove the “processor” limitations. The examiner rejected multiple claims as obvious.The Patent Board affirmed, rejecting the reissue claims as being based on a defective reissue declaration lacking an error correctable by reissue and rejecting certain claims as impermissibly attempting to recapture subject matter that the patentee intentionally surrendered to overcome an eligibility rejection. The Federal Circuit affirmed. The Board properly applied the recapture rule; McDonald deliberately—not erroneously or inadvertently—added the “processor” limitations during the prosecution of the original claims to overcome the rejection. The error pinpointed in the Inventor Reissue Declaration—the existence of the allegedly unnecessary “processor” limitations—is uncorrectable because doing so would violate the recapture rule. View "In Re McDonald" on Justia Law
Thaler v. Vidal
The Federal Circuit affirmed the judgment of the United States Patent and Trademark Office (PTO) denying Plaintiff's patent applications, which failed to list any human as an inventor, holding that the Patent Act requires an "inventor" to be a natural person.Plaintiff, who developed and ran artificial intelligence systems that generate patentable inventions, sought patent protection for two putative inventions by filing two patent applications with the PTO, listing DABUS, "a collection of source code or programming and a software program," as the sole inventor. The PTO denied the petitions on the ground that "a machine does not qualify as an inventor." The district court affirmed, concluding that an "inventor" under the Patent Act must be an "individual" and that an "individual" is a natural person. The Federal Circuit affirmed, holding that the plain meaning of "inventor" in the Patent Act is limited to natural persons. View "Thaler v. Vidal" on Justia Law
Realtime Adaptive Streaming LLC v. Netflix, Inc.
Realtime filed patent infringement actions against Netflix in the District of Delaware. While that action was ongoing, Netflix filed petitions for inter partes review (IPR) and moved to dismiss the complaint, arguing patent ineligibility under 35 U.S.C. 101. Following the institution of the IPR proceedings and a recommendation from the Delaware magistrate finding certain claims ineligible, Realtime voluntarily dismissed the Delaware action—before the district court ruled on the magistrate’s findings. The next day, Realtime reasserted the same patents against Netflix in the Central District of California—despite having previously informed the Delaware court that transferring the Delaware action to the Northern District of California would be an unfair burden on Realtime. Netflix then moved for attorneys’ fees and to transfer the actions back to Delaware. Before a decision on either motion, Realtime again voluntarily dismissed its case.Netflix renewed its motion for attorneys’ fees for the California actions, the Delaware action, and IPR proceedings. The district court awarded fees for both California actions under 35 U.S.C. 285, and, alternatively, the court’s inherent equitable powers. The court declined to award fees for the Delaware action or IPR proceedings The Federal Circuit affirmed. The district court did not abuse its discretion in awarding fees under its inherent equitable powers or in denying fees for the related proceedings The court did not address whether the award satisfies section 285's requirements. View "Realtime Adaptive Streaming LLC v. Netflix, Inc." on Justia Law
CareDx, Inc. v. Natera, Inc
The patents share the same specification and are entitled “Non-Invasive Diagnosis of Graft Rejection in Organ Transplant Patients.” They discuss diagnosing or predicting organ transplant status by using methods to detect a donor’s cell-free DNA (cfDNA). When an organ transplant is rejected, the recipient’s body, through its natural immune response, destroys the donor cells, releasing cfDNA from the donated organ’s dying cells into the blood. These increased levels of donor cfDNA—which occur naturally as the organ’s condition deteriorates—can be detected and then used to diagnose the likelihood of an organ transplant rejection.In an infringement action, the district court found the patents ineligible under 35 U.S.C. 101. The Federal Circuit affirmed. The court applied the Supreme Court’s two-part “Alice” test to determine whether the claims were patent-eligible applications of laws of nature and natural phenomena or claims that impermissibly tie up such laws and phenomena. The claims boil down to collecting a bodily sample, analyzing the cfDNA using conventional techniques, including PCR, identifying naturally occurring DNA from the donor organ, and then using the natural correlation between heightened cfDNA levels and transplant health to identify a potential rejection, none of which was inventive. This is not a case involving a method of preparation or a new measurement technique. View "CareDx, Inc. v. Natera, Inc" on Justia Law
LG Electronics Inc. v. Immervision, Inc.
LG filed petitions for inter partes review (IPR), each challenging a dependent claim of the 990 patent, which relates to capturing and displaying digital panoramic images. The Federal Circuit affirmed the Patent Trial and Appeal Board’s findings that LG had not shown the challenged claims were unpatentable. Substantial evidence supports the Board’s finding that prior art disclosure critical to both of LG’s IPR petitions was an apparent error that would have been disregarded or corrected by a person of ordinary skill in the art. The Board correctly identified several aspects of the disclosure that would alert the ordinarily skilled artisan that the disclosure was an obvious error of a typographical or similar nature, notwithstanding the amount of time that preceded detection of the obvious error. The corrected disclosure does not satisfy the language of the challenged claims; LG did not meet its burden to prove the challenged claims unpatentable as obvious. View "LG Electronics Inc. v. Immervision, Inc." on Justia Law
Novartis Pharmaceuticals Corp. v. Accord Healthcare, Inc.
Novartis markets a 0.5 mg daily dose of fingolimod hydrochloride under the brand name Gilenya, for treating relapsing-remitting multiple sclerosis, a debilitating immune-mediated demyelinating disease. There is currently no cure for MS. The disease is managed by reducing or preventing relapses and thereby slowing disability. HEC filed an Abbreviated New Drug Application (ANDA) seeking approval to market a generic version of Gilenya. Novartis sued, alleging that HEC’s ANDA infringes all claims of its patent. The Federal Circuit initially affirmed a holding that the patent is not invalid and that HEC’s ANDA infringes that patent.On rehearing, the Federal Circuit reversed. Because the Novartis patent fails to disclose the absence of a loading dose, the district court clearly erred in finding that the negative claim limitation “absent an immediately preceding loading dose” added during prosecution to overcome prior art satisfied the written description requirement of 35 U.S.C. 112(a). The specification nowhere describes “initially” administering a daily dosage. View "Novartis Pharmaceuticals Corp. v. Accord Healthcare, Inc." on Justia Law