Justia Patents Opinion Summaries

The Patent Trial and Appeal Board determined there was no interference-in-fact between UC’s Application No. 13/842,859, and the claims of 12 patents and one application owned by Broad. The involved claims relate to the use of a CRISPR-Cas91 system for the targeted cutting of DNA molecules. The Federal Circuit affirmed. Under the relevant test (35 U.S.C. 102(g)) a patent may only be awarded to the first inventor. Whether an interference occurs is determined by comparing the involved claims. The question is whether “the subject matter of a claim of one party would, if prior art, have anticipated or rendered obvious the subject matter of a claim of the opposing party and vice versa.” The Board performed a thorough analysis of the factual evidence and considered a variety of statements by experts for both parties and the inventors, past failures and successes in the field, evidence of simultaneous invention, and the extent to which the art provided instructions for applying the CRISPRCas9 technology in a new environment. Substantial evidence supports the Board’s finding that there was not a reasonable expectation of success, and the Board did not err in its determination that there is no interference-in-fact. View "University of California v. Broad Institute, Inc." on Justia Law

Acorda’s patents claim the administration of a medication containing the active ingredient 4- aminopyridine (4-AP) to improve walking in individuals with multiple sclerosis. Acorda holds an FDA-approved New Drug Application and markets, under the name “Ampyra®,” 10 milligram 4-AP sustained-release tablets for twice-daily oral administration and holds an exclusive license to the earlier, broader “Elan patent,” which is listed in the FDA Orange Book for Ampyra with the Acorda patents, and claims methods of treating patients having certain conditions, including multiple sclerosis, by administering a drug containing a sustained-release formulation of any of certain agents, including 4-AP. Defendants sought FDA approval to market generic versions of Ampyra. In Acorda's infringement suit, the district court held that the asserted claims in the Acorda patents are invalid for obviousness but upheld the Elan patent and enjoined infringement of that patent until it expired in July 2018. The Federal Circuit affirmed that the asserted Acorda patent claims are invalid, discounting the weight of Acorda’s evidence of commercial success, failure of others, and long-felt but unmet need. The court noted the Elan patent issued in 1996 and was licensed exclusively to Acorda in 1997 for spinal cord injury and in 1998 for multiple sclerosis treatment, which blocked others from domestic marketing without risk of infringement and deterred other entities from investing in research whose reward depended on marketing a drug like Ampyra. View "Acorda Therapeutics, Inc. v. Roxane Laboratories, Inc." on Justia Law

Orexo’s 330 Patent, entitled “Abuse-Resistant Pharmaceutical Composition for the Treatment of Opioid Dependence,” claims a product having the brand name Zubsolv®, approved by the FDA for treatment of opioid dependence. Actavis filed an Abbreviated New Drug Application for a generic counterpart of Zubsolv, accompanied by a Paragraph IV certification, leading to Hatch-Waxman litigation under 21 U.S.C. 355(j) and 35 U.S.C. 271(e)(2)(A). The Federal Circuit reversed a finding of obviousness. The question is not whether the references separately taught components of the 330 Patent formulation, but whether the prior art suggested the selection and combination achieved by the 330 inventors. The district court erred in discounting the enhanced bioavailability in the 330 patent’s formulation as “a ‘difference in degree,’ not a difference in ‘kind.’” The clinical studies reported in the 330 Patent show 66% improved bioavailability. In the context of this invention, this is more than a trivial “degree.” View "Orexo AB v. Actavis Elizabeth, LLC" on Justia Law

Samsung filed a petition to institute an inter partes review of certain claims of IXI’s 033 patent, titled “System, Device And Computer Readable Medium For Providing A Managed Wireless Network Using Short-Range Radio Signals.” The patent is directed to “a system that accesses information from a wide area network (WAN), such as the Internet, and local wireless devices in response to short-range radio signals.” The system includes a wireless gateway device (i.e., a cell phone), which is coupled to a cellular network, which in turn connects to the Internet through a carrier backbone. The Patent Trial and Appeal Board instituted the review and determined that the reviewed claims are invalid. The Federal Circuit affirmed, as supported by substantial evidence, the finding that a person of ordinary skill in the art would read prior art as implicitly describing an implementation in which the JINI (a specific architecture designed for deploying and using services in a network) lookup service, which identifies services provided on the network, is located on the gateway device, i.e., the cell phone. View "IXI IP, LLC v. Samsung Electronics Co., Ltd." on Justia Law

Worlds’s patents relate to the computer-generated display of avatars in a virtual world, including methods to determine which avatars are displayed in a given situation. In 2012, Worlds asserted infringement against Activision, which develops, publishes, licenses, and distributes video games. Bungie developed the Destiny products, which are distributed by Activision. In 2014, Worlds notified Activision that it intended to add Destiny as an additional accused product. Six months later, more than a year after Activision was served with the infringement complaint, Bungie filed inter partes reviews petitions, challenging Worlds’s patents. Worlds sought discovery regarding whether Activision should have been named as a real party in interest, making the petitions time-barred under 35 U.S.C. 315(b). Worlds submitted evidence of an agreement between Bungie and Activision: Destiny would be developed by Bungie and published by Activision; Bungie is responsible for “legal reviews,” “subject to prior review and approval of Activision.” The Agreement contemplates financial support from Activision to Bungie for development of Destiny. The Patent Board denied the motion and invalidated the patents. The Federal Circuit vacated. A mere assertion that a third party is an unnamed real party in interest, without any support, is insufficient to put the issue into dispute, but Worlds presented evidence sufficient so the Board was required to make factual determinations necessary to evaluate whether Bungie had established that its petition was not time-barred based on the complaints served upon Activision. View "Worlds, Inc. v. Bungie, Inc." on Justia Law

IV’s 248 patent describes “an application-aware resource allocator” that allocates bandwidth resources to transmit information from software applications over a packet-switched network. The patent explains that quality of service (QoS) requirements may vary among applications, with some types of applications demanding, for instance, error minimization, and others prioritizing speed. To meet these varying requirements, the application-aware resource allocator “allocates bandwidth resource to an application based on an application type.” The district court rejected an infringement suit on summary judgment. The Federal Circuit vacated in part. The plain meanings of “application-aware resource allocator” in claim 1 and “application-aware media access control (MAC) layer” in claim 20 permits the resource allocator to allocate resources based on application type, which can be discerned using information from any of network layer 3, transport layer 4, and application layer 7. The district court’s grant of summary judgment of non-infringement resulted from a contrary construction. The court affirmed a determination that the “allocating means” in claim 20 are indefinite. The patent described QoS as “subjective” and varying based on individual preferences; the patent does not “provide adequate guidance.” View "Intellectual Ventures I LLC v. T-Mobile USA, Inc." on Justia Law

The patent, which expired in 2015, is entitled “Optimizing packet size to eliminate effects of reception nulls,” and is directed to increasing the reliability of a wireless communications system when a wireless receiver is moving by minimizing the effects of burst errors (nulls) that occur at the receiver. Although nulls occur randomly, they can be predicted based on signal drop characteristics, such as the speed the receiver is moving. In describing prior art, the patent notes another technique for reducing the effects of burst errors "involves interleaving multiple message packets together.” On inter partes review, the Patent Trial and Appeal Board found various claims not unpatentable under 35 U.S.C. 103. The Federal Circuit vacated, finding that the Board improperly failed to consider a portion of the petitioner’s (Ericsson) reply brief, having characterized that portion of the reply as raising a new theory of obviousness, not addressed in the Petition or responding to arguments raised in the Patent Owner Response. “The Board’s error was parsing Ericsson’s arguments on reply with too fine of a filter.” Given the acknowledgment in the patent that interleaving was known in the art, Ericsson was entitled to argue on reply that the distinction in the specific type of interleaving between prior art and the patent would have been insubstantial to a person of skill in the art. The error was exacerbated by the fact that the significance of interleaving arose after the Petition was filed. View "Ericsson Inc. v. Intellectual Ventures I LLC" on Justia Law

Maatita filed a design patent application, covering the design of an athletic shoe bottom, with two figures showing a plan view of the claimed shoe bottom design. As is customary, the solid lines of Figure 1 show the claimed design, whereas the broken lines show structure that is not part of the claimed design—the shoe bottom environment in which the design is embodied. An examiner rejected the application’s single claim as non-enabled and indefinite under 35 U.S.C. 112 because the plan left the design open to multiple interpretations regarding the depth and contour of the claimed elements. The Federal Circuit reversed. The Board misapplied section 112 in the design patent context. The standard for indefiniteness is connected to the standard for infringement. A design patent is infringed if “an ordinary observer, familiar with the prior art, would be deceived into thinking that the accused design was the same as the patented design.” Maatita’s decision not to disclose all possible depth choices would not preclude an ordinary observer from understanding the claimed design since the design is capable of being understood from the two-dimensional, plan- or planar-view perspective shown in the drawing. View "In re: Maatita" on Justia Law

Core sued Apple, alleging infringement of two patents concerning technology for wireless communications in a digital network. Claim 14 is directed to a mobile station, such as a mobile telephone, configured to synchronize to a base station using the same timing information for the uplink and downlink channels. Claim 19 is directed to a receiver, such as a mobile telephone, that can detect predetermined control messages where they are not otherwise expected. A jury found that Apple infringed both asserted claims and that neither was invalid. The court rejected Apple’s argument that the 151 patent was unenforceable due to implied waiver. The Federal Circuit affirmed in part. The jury’s finding of infringement of claim 14 was supported by substantial evidence. The issue of validity came down to a disagreement between the experts; the jury could reasonably credit the testimony of Core’s expert over that of Apple’s expert. The court remanded with respect to Apple’s implied waiver theory of unenforceability, based on actions taken by Nokia, the original assignee of one patent, during its participation with the standards-setting organization referenced in the patent. The district court did not make findings regarding whether either party inequitably benefited from Nokia’s failure to disclose, or whether Nokia’s conduct was sufficiently egregious to justify finding implied waiver without regard to any benefit resulting from that misconduct. The court reversed in part; Core’s theory of infringement is inadequate to support a judgment on claim 19. View "Core Wireless Licensing, S.A.R.L. v. Apple, Inc." on Justia Law

Luminara owns three patents for making flameless candles that look and behave like real candles. At Liown’s request, the Patent Trial and Appeal Board instituted inter partes review (IPR) of 31 claims of those patents. The Board first addressed whether the IPR of the 319 patent was time-barred under 35 U.S.C. 315(b), because the petition was filed more than a year after Liown was served with a complaint alleging infringement by Candella, Luminara’s predecessor. The district court had entered a voluntary dismissal without prejudice. Luminara later commenced another lawsuit against Liown, again alleging infringement of the 319 patent as to the same products. The IPR petition was within one year of service of the second action. The Board rejected the timeliness argument because the first action had been voluntarily dismissed without prejudice, ‘leav[ing] the parties as though the action had never been brought.’” The Board found all 31 claims were either anticipated or would have been obvious over the prior art. The Federal Circuit vacated the decision as to the 319 patent and remanded for dismissal of that IPR, holding that the section 315(b) time-bar applies, and affirmed the other IPRs. The Board lacked jurisdiction to institute the time-barred IPR. View "Luminara Worldwide, LLC v. Iancu" on Justia Law