Justia Patents Opinion Summaries

In 2013 the Federal Circuit affirmed the Patent Trial and Appeal Board’s rejection of claims 181, 184, 188-203, 206, 210-25, 228, 232-47, 250, and 254-68 of utility patent application No. 60/211228, as obvious in light of the prior art. The court vacated and remanded as to the Board’s determination that claims 2712 and 272 were anticipated because the Board performed an incorrect enablement analysis.. On remand, the Board looked to Morsa’s specification to determine what a person of ordinary skill in this particular field of art would know and found that the specification showed that only “ordinary” computer programming skills were needed to make and use the claimed invention; the Board determined that the anticipating reference, PMA, was enabled. The Board determined that the PMA disclosure combined with what a skilled computer artisan would know rendered the PMA reference enabling and therefore anticipatory of claims 271 and 272. The Federal Circuit affirmed. View "In re: Morsa" on Justia Law

Leucovorin is a compound used to ameliorate the toxic effects of methotrexate, a chemotherapy treatment; to treat folate deficiency; and to enhance the efficacy of a 5-fluorouracil cancer treatment. Spectrum, the exclusive licensee of the 829 patent, holds the approved New Drug Application for a levoleucovorin formulation, and listed the patent as claiming the drug product in the Food and Drug Administration publication, Approved Drug Products with Therapeutic Equivalence Evaluations (Orange Book), and markets Fusilev®. Sandoz submitted an Abbreviated New Drug Application (ANDA) in 2011, seeking FDA approval for a drug product that will be imported in the form of single-use vials with 175 mg or 250 mg of levoleucovorin, indicated for methotrexate rescue at doses of 7.5–75 mg per dose. Its ANDA contained a certification that the 829 patent was invalid or would not be infringed by the ANDA product, 21 U.S.C. 355(j)(2)(A)(vii)(IV). After receiving notice of that certification, Spectrum filed suit. The district court found certain claims invalid as obvious and others not infringed. The Federal Circuit affirmed, rejecting Spectrum’s argument that an aggregation of Sandoz’s approved product—that is, the total amount of levoleucovorin drug product to be imported—would infringe the claims. View "Spectrum Pharma., Inc. v. Sandoz Inc." on Justia Law

In 1997 Seagate recruited Dr. Shukh, a native of Belarus, to move to the U.S. Shukh executed Seagate’s standard Employment Agreement, assigning to Seagate all “right, title, and interest in and to any inventions” made while at Seagate. Seagate prohibited employees from filing patent applications for their inventions. During his employment, Shukh was named as an inventor on 17 patents. Shukh’s time at Seagate was tumultuous. His performance evaluations indicated that he did not work well with others due to his confrontational style. In 2009, Seagate terminated Shukh and 178 others. Shukh has not yet secured employment and claims that he was told that he would never find employment at certain companies with his reputation. Shukh alleges that Seagate wrongfully omitted him as an inventor from several patents relating to semiconductor technologies; that Seagate discriminated against and terminated him based national origin and in retaliation for complaining about discrimination. He sought correction of inventorship of the disputed patents under 35 U.S.C. 256. The district court held that Shukh had no interest in the patents based on the assignment; dismissed claims for rescission of his Employment Agreement, breach of contract, breach of fiduciary duty, and unjust enrichment; and rejected claims of reputational harm, retaliation, fraud, and discrimination on summary judgment. The Federal Circuit vacated with respect to correction of inventorship, but otherwise affirmed. There is a genuine dispute of material fact as to whether Shukh’s negative reputation is traceable to Seagate’s omission of Shukh as an inventor from disputed patents. View "Shukh v. Seagate Tech., LLC" on Justia Law

The 600 Application, entitled “Web-Integrated OnLine Financial Database System and Method for Debt Recovery,” was filed in 2004, with priority claimed to a provisional application filed on November 13, 2003. The invention is a web-integrated debt records and collection system that can be accessed and operated across the Internet by various users in various roles. The Examiner rejected claims as obvious in view of the Evans publication, entitled “System and Method for Debt Presentment and Resolution.” After unsuccessfully attempting to distinguish the Evans Rejections on the merits, the applicants undertook to remove Evans as a reference by “swearing back” or “swearing behind” under 37 C.F.R. 1.131; the Applicant establishes that it was in possession of the claimed subject matter before the effective date of the reference. The Evans effective date was December 2002. The applicants submitted a Rule 131 Declaration with exhibits and statements to show “diligence continuing to the constructive reduction to practice.” The Examiner found the Declaration and the exhibits insufficient, as showing “only a broad overview of the idea.” The U.S. Patent and Trademark Office Trial and Appeal Board and the Federal Circuit affirmed the rejection on grounds of obviousness, 35 U.S.C. 103.1. View "In re: Steed" on Justia Law

Achates sued QuickOffice, Apple, and others for infringing its patents.Apple sought inter partes review. The Patent and Trademark Office found certain claims invalid, rejecting Achates’s claim that, based on a blank indemnification agreement, Apple had a relationship with QuickOffice and that such relationship caused Apple’s petitions for IPR to be time-barred under 35 U.S.C. 315(b). The Board denied Achates’s motion for discovery of evidence to prove Apple’s specific relationships with the codefendants, finding no basis to believe that even if the blank indemnification agreement had been signed, it would show QuickOffice or any other codefendants to be real parties in interest or in privity with Apple as those terms are used in section 315(b). The Federal Circuit dismissed an appeal for lack of jurisdiction, stating that the decision to institute inter partes review were final and nonappealable under 35 U.S.C. 314(d). View "Achates Reference Publ'g, Inc. v. Apple Inc." on Justia Law

Nordock and Systems are rivals in the loading dock device industry.Both design, manufacture, and sell dock levelers--mechanical devices used to create a bridge between loading dock surfaces and the surfaces of truckload beds.” Nordock sued, alleging infringement of Design Patent 754, which claims the ornamental design of a lip and hinge plate for a dock leveler. A jury found that Systems’ hydraulic dock levelers infringe, and that the patent is not invalid. The district court awarded Nordock $46,825 in damages as a reasonable royalty. The Federal Circuit vacated the award and remanded, finding that the district court erred in its assessment of design patent damages under 35 U.S.C. 289, but otherwise affirmed. View "Nordock, Inc. v. Systems, Inc." on Justia Law

The state filed a complaint, alleging that letters mailed by MPHJ to Vermont businesses informing them that they may be infringing certain patents were deceptive and violated the Vermont Consumer Protection Act, 9 V.S.A. 2451. MPHJ is a non-practicing entity incorporated in Delaware that acts through shell corporations incorporated in many states. MPHJ removed the case twice to federal court, once under the original complaint and once under an amended complaint. The district court remanded the case to state court both times. The Federal Circuit affirmed. While 28 U.S.C. 1442(a)(2), provides jurisdiction “in any civil action arising under, or in any civil action in which a party has asserted a compulsory counterclaim arising under, any Act of Congress relating to patents,” the patents at issue were transferred to MPHJ from the original patent owner; they were not directly “derived from a federal officer.” The complaint neither alleged violation of nor sought relief under the Vermont Bad Faith Assertions of Patent Infringement Act so there is no risk that the state court action can affect the validity of federal law. View "Vermont v. MPHJ Tech. Inv., LLC" on Justia Law

Shire’s patents are directed to derivatives of amphetamines, used to treat various disorders, including attention deficit hyperactivity disorder. A drawback to the use of amphetamines is their potential for abuse. The patents describe modifying amphetamine to decrease its activity when administered in high doses—as when the drug is being abused—but to maintain activity similar to that of unmodified amphetamine when delivered at lower doses. Shire’s FDA-approved capsules are distributed under the brand name Vyvanse®. The FDA’s Approved Drug Products with Therapeutic Equivalence Evaluations (Orange Book) lists all the Vyvanse® patents. Defendants filed Abbreviated New Drug Applications (ANDAs) for generic versions of Vyvanse® before expiration of the patents The ANDAs included Paragraph IV certifications, 21 U.S.C. 355(j)(2)(A)(vii)(IV), stating that the patent claims are invalid or not infringed. Shire sued under 35 U.S.C. 271(e). The court found certain claims not invalid, denied defendants’ motion to amend their invalidity contentions to include an on-sale bar claim, and found that Johnson induced infringement by providing the active pharmaceutical ingredient to the ANDA defendants. The Federal Circuit affirmed in part, finding that defendants failed to raise a genuine issue of material fact that the asserted claims are obvious and that court did not abuse its discretion in denying the motion to amend. In the circumstances of this case Johnson cannot be liable for induced infringement before FDA approval of the ANDA application. View "Shire LLC v. Amneal Pharma., LLC" on Justia Law

Summit owns the 482 patent, entitled “Web-based Media Submission Tool,” relating to the processing of digital content, such as digital photos. The invention “provides an improved web-based media submission tool” that includes “several unique and valuable functions.” The embodiment focuses on a tool used to submit photos to a website; it is described as software that allows a user to place the photo into a website form either by dragging and dropping the photo from the user’s computer or by using a mouse click within the website. The “intelligent preprocessing” taught by the patent includes the “ability to control the width and height of the media object identifier and the ability to preprocess the media objects in any number of ways prior to transporting to a second location.” A jury found the patent not invalid and infringed and awarded $15 million in damages. The Federal Circuit affirmed the district court’s claim construction of “being provided to;” the infringement and invalidity verdicts; the district court’s determination regarding the admissibility of Summit’s damages expert’s testimony; the court’s determination regarding the damages award; and the determination that Summit is not entitled to a running royalty. View "Summit 6, LLC v. Samsung Elecs. Co., Ltd." on Justia Law

SCA owns the 646 patent, relating to adult incontinence products. In 2003 SCA wrote to First Quality, stating that First’s products might infringe the patent. First responded that the patent was invalidated by an earlier patent. SCA then filed an ex parte reexamination request. In 2007, the PTO confirmed the patentability of the original claims and issued new claims. SCA never notified First Quality about the reexamination, believing that it had no obligation to do so because the PTO provides public notice of all reexaminations. First no longer considered the 646 patent “an issue” and, in 2006, expanded its line of incontinence products at a cost of $10 million. SCA did not contact First until 2010, when it filed an infringement suit. SCA claims it spent three years implementing new business structures, evaluating outside counsel, and examining potentially infringing products. The district court dismissed, finding SCA’s claims barred by laches and equitable estoppel. On rehearing, en banc, in light of the Supreme Court’s 2014 decision, Petrella v. MetroGoldwyn-Mayer, the Federal Circuit reversed. Laches remains a defense to legal relief in a patent infringement suit after Petrella; courts must weigh the facts underlying laches when considering an injunction. However, absent extraordinary circumstances, laches does not preclude an ongoing royalty. View "SCA Hygiene Prods. v. First Quality Baby Prods., LLC" on Justia Law