Justia Patents Opinion Summaries

IPS’s founder and CEO (King) and Chief Technical Officer (Schwarz) are electrical engineers. IPS manufactured multi-space parking meters. King claims he conceived the idea for a credit-card enabled, solar-powered, single-space parking meter in 2003, consulted with Schwarz, and decided that IPS would offer a retrofit device that replaces the internal components of an existing parking meter. IPS engaged a design firm, D+I, in 2004, providing it with King's list of desired components and functionalities. Schwarz compiled a list of electrical components and product specifications and drew a block diagram conceptualizing the electrical connections. The 054 patent issued in 2013 from a 2006 application, naming King and Schwarz as inventors. It claims a credit card-enabled, solar-powered, single-space parking meter that can retrofit the internal components of existing parking meters. The 310 patent issued in 2010 from a 2008 application, naming as inventors King and three D+I engineers. It claims a credit card-enabled, solar-powered, single-space parking meter. In 2015, IPS sued DPT for infringement. The court granted summary judgment that DPT’s Liberty® Single-Space Meter does not infringe either patent. DPT successfully petitioned the Patent and Trademark Office for inter partes review under 35 U.S.C. 102(e). The Board rejected an anticipation argument, holding that King was the sole inventor of the anticipating disclosure of the 054 patent. The Federal Circuit reversed the decision that the 310 patent claims are not unpatentable as anticipated; affirmed summary judgment of noninfringement of the 310 patent; and vacated summary judgment of noninfringement of the 054 patent; the district court erred in construing the claims too narrowly. View "Duncan Parking Technologies, Inc. v. IPS Group, Inc." on Justia Law

Until recently, Sexing Tech held a monopoly on the market for sexed cattle semen in the United States. Sperm‐sorting technology separates bull semen into X‐chromosome bearing and Y‐chromosome bearing sperm cells; the resulting “sexed semen” is used to inseminate cows artificially so that dairy farmers can breed only milk‐producing cows. ABS, a bull‐stud operation, sued, alleging that Sexing Tech had unlawfully monopolized the domestic sexed‐semen market in violation of section 2 of the Sherman Act by using its market power to impose coercive contract terms. ABS sought a declaratory judgment proclaiming those contracts invalid, to permit its own entry into that market. Sexing Tech counterclaimed that ABS infringed its patents and breached the contract by misappropriating trade secrets in developing ABS’s competing technology. Three claims went to trial: ABS’s antitrust claim and Sexing Tech’s patent infringement and breach of contract counterclaims. The Seventh Circuit affirmed the district court, holding that ABS violated a confidentiality agreement it had with Sexing Tech and that Sexing Tech’s patent was not invalid on obviousness grounds. The jury’s assessments of two of the three patent claims still at issue cannot be reconciled under the rules governing dependent claims and enablement, and so a new trial is necessary on them. View "ABS Global, Inc. v. Inguran, LLC" on Justia Law

Dr. Barry’s patents, entitled “System and Method for Aligning Vertebrae in the Amelioration of Aberrant Spinal Column Deviation Conditions,” claim methods and systems for correcting spinal column anomalies, such as those due to scoliosis, by applying force to multiple vertebrae at once. Dr. Barry sued Medtronic, alleging that Medtronic induced surgeons to infringe the patents. The jury found infringement of method claims 4 and 5 of the 358 patent and system claims 2, 3, and 4 of the 121 patent, rejected Medtronic’s several invalidity defenses, and awarded damages. In post-trial rulings on the jury issues, the district court upheld the verdict, rejecting challenges as to induced infringement and associated damages for domestic conduct, invalidity of the asserted 358 patent claims under the public-use and on-sale bars, and invalidity of all asserted claims due to another’s prior invention. The district court then rejected Medtronic’s inequitable-conduct challenge and enhanced damages by 20 percent while denying attorney’s fees to Dr. Barry, The Federal Circuit affirmed, rejecting several arguments by Medtronics, principally concerning the public-use and on-sale statutory bars, but also concerning prior invention, inequitable conduct, and induced infringement and associated damages. View "Barry v. Medtronic, Inc." on Justia Law

In April 2006, Supernus filed the “100 application” In August 2010, the USPTO issued a final rejection. In February 2011, Supernus filed a request for continued examination (RCE), 35 U.S.C. 132(b). Also in April 2006, Supernus filed an international application, claiming priority from the 100 application, which was subject to opposition. Supernus notified USPTO of the opposition. In October 2011, the European Patent Office issued European Patent EP2010189. The 100 application issued in June 2014, as the 897 patent, titled “Osmotic Drug Delivery System,” reflecting a patent term adjustment (PTA), adding 1,260 days to the patent’s 20-year term. The USPTO attributed 2,321 days to USPTO delay: 1,656 days for USPTO’s failure to meet the mandated statutory response deadlines and 665 days for failure to issue the patent within three years of the application’s filing date. The USPTO reduced the PTA by 175 days to account for overlapping delays, and by 886 days for applicant delay. Of the 886 "applicant delay" days attributed, 646 days were assessed for the period Supernus did not attempt to invoke the protections of the 30-day safe harbor established by 37 C.F.R. 1.704(d)(1). Supernus argued that “37 C.F.R. 1.704(c)(8) does not govern post-RCE submissions.” The USPTO rejected a request for reconsideration. The district court granted USPTO summary judgment. The Federal Circuit reversed. The PTA went beyond the period during which the applicant failed to undertake reasonable efforts, exceeding the limitations set by the PTA statute. View "Supernus Pharmaceuticals, Inc. v. Iancu" on Justia Law

Helsinn makes a treatment for chemotherapy-induced nausea using the chemical palonosetron. While developing that product, Helsinn granted another company the right to market a 0.25 mg dose of palonosetron in the United States; that company was required to keep proprietary information confidential. Nearly two years later, in 2003, Helsinn filed a provisional patent application covering a 0.25 mg dose of palonosetron. Helsinn filed four patent applications that claimed priority to the 2003 date. Helsinn’s fourth application, filed in 2013 (the 219 patent), is covered by the Leahy-Smith America Invents Act (AIA). In 2011, Teva sought approval to market a generic 0.25 mg palonosetron product. Helsinn sued for infringement. Teva countered that the 219 patent was invalid under the “on sale” provision of the AIA, which precludes a person from obtaining a patent on an invention that was “in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention,” 35 U.S.C. 102(a)(1), arguing the 0.25 mg dose was “on sale” more than one year before Helsinn filed the 2003 application.The Federal Circuit held, and the Supreme Court unanimously agreed, that the sale was publicly disclosed, regardless of whether the details of the invention were publicly disclosed in the agreements. A commercial sale to a third party who is required to keep the invention confidential may place the invention “on sale” under section 102(a). The patent statute in force immediately before the AIA included an on-sale bar. Supreme Court and Federal Circuit precedent interpreting that provision indicated that a sale or offer of sale need not make an invention available to the public to constitute invalidating prior art. The Court applied the presumption that when Congress reenacted the “on sale” language in the AIA, it adopted earlier judicial constructions. View "Helsinn Healthcare S. A. v. Teva Pharmaceuticals USA, Inc." on Justia Law

UCB’s 650 patent, which covers certain chemical derivatives of 3,3- diphenylpropylamines, including a compound called fesoterodine. Fesoterodine is an antimuscarinic drug marketed as Toviaz® to treat urinary incontinence. In inter partes review, the Patent and Trademark Office Patent Trial and Appeal Board held that certain claims were not unpatentable as obvious, 35 U.S.C. 103. The Federal Circuit affirmed, first rejecting UCB’s argument that Amerigen lacked standing because the FDA will not approve Amerigen’s abbreviated new drug application until the expiration of the 650 patent in 2022, so that there was no possibility of infringement. The evidence supported the Board’s finding that the Amergen neither established a general motivation to make a 5-HMT prodrug nor proved that the specific claimed modifications would have been obvious. View "Amerigen Pharmaceuticals, Ltc. v. UCB Pharma GMBH" on Justia Law

WesternGeco’s patents relate to technologies used to search for oil and gas beneath the ocean floor. The patents relate to controlling streamers and sensors in relation to each other by using winged positioning devices and generating four-dimensional maps with which it is possible to see changes in the seabed over time. WesternGeco manufactures the Q-Marine, and performs surveys for oil companies. ION manufactures the DigiFIN, and sells to its customers, who perform surveys for oil companies. A jury found infringement and no invalidity and awarded WesternGeco $93,400,000 in lost profits and $12,500,000 in reasonable royalties. The Federal Circuit affirmed, rejecting arguments that WesternGeco was not the patents' owner and lacked standing and that the court applied an incorrect standard under 35 U.S.C. 271(f)(1). The court upheld denial of enhanced damages for willful infringement and reversed the award of lost profits resulting from conduct occurring abroad. The Supreme Court subsequently held “that WesternGeco’s damages award for lost profits was a permissible domestic application of [35 U.S.C.] 284,” but did not decide other challenges to the lost profits award. In light of the Supreme Court’s decision and the intervening invalidation of four asserted patent claims that could support the lost profits award, the Federal Circuit remanded to the district court. View "WesternGeco L.L.C. v. Ion Geophysical Corp." on Justia Law

Realtime’s 812 patent discloses “[s]ystems and methods for providing lossless data compression and decompression . . . [that] exploit various characteristics of run-length encoding, parametric dictionary encoding, and bit packing.” ’ Run-length encoding is a form of lossless data compression where a “run” of characters is replaced with an identifier for each individual character and the number of times it is repeated. In inter partes review, the Patent and Trademark Office’s Patent Trial and Appeal Board found that all of the challenged claims would have been obvious over the prior art, 35 U.S.C. 103(a). The Federal Circuit affirmed. The Board was not required to make any finding regarding a motivation to combine given its reliance on the prior art alone, which disclosed every element of claims 1–4, 8, and 28. In relying on the prior art alone, the Board did not violate section 312(a)(3) or other notice requirements. The Board did not expressly construe the phrase “maintaining a dictionary,” but found that the prior art satisfied this limitation because it disclosed all of the steps in dependent claim 4. View "Realtime Data, LLC v. Iancu" on Justia Law

AC’s 680 patent relates generally to data access and management. The Patent Trial and Appeal Board held that certain claims were unpatentable. On reconsideration, it invalidated the remaining claims based on a ground of unpatentability raised by Amazon’s petition but not addressed in the final written decision. AC argued that the Board exceeded its authority and deprived it of fair process by belatedly considering this ground. The Federal Circuit upheld the Board’s decision. Precedent mandates that the Board consider all grounds of unpatentability raised in an instituted petition. The Board complied with due process and did not err in either its claim construction or its ultimate conclusions of unpatentability. As AC admits, after the Board decided to accept Amazon’s rehearing request and consider Ground 3, it permitted AC to take discovery and submit additional briefing and evidence on that ground. View "AC Technologies S.A. v. Amazon.com, Inc." on Justia Law

Marco Guldenaar filed the provisional application from which the 196 patent application claims priority in 2010. The 196 patent application, entitled “Casino Game and a Set of Six-Face Cubic Colored Dice,” relates to “dice games intended to be played in gambling casinos, in which a participant attempts to achieve a particular winning combination of subsets of the dice.” The Patent Trial and Appeal Board affirmed the rejection of claims 1–3, 5, 7–14, 16– 18, and 23–30 the application under 35 U.S.C. 101 for claiming patent-ineligible subject matter. The Federal Circuit affirmed, holding that the claims are directed to the abstract idea of rules for playing a dice game and the only arguably inventive concept relates to the dice markings, which constitute printed matter. View "In re: Marco Guldenaar Holding B.V." on Justia Law