Justia Patents Opinion Summaries

Glaucoma is an eye disease associated with elevated intraocular pressure (IOP). Treatments that effectively reduce IOP can slow the progression of the disease. In 2001, the FDA approved Lumigan 0.03%®, a topical solution developed by Allergan, for treating open angle glaucoma and ocular hypertension. Although Lumigan 0.03% was effective at lowering IOP, it also caused frequent, severe hyperemia. Many patients stopped using it without consulting their physicians, causing gradual vision loss. Allergan explored alternative formulations and developed Lumigan® 0.01%, which has a three-fold lower bimatoprost concentration than Lumigan 0.03%, and a four-fold higher concentration of a preservative for inhibiting bacterial growth. In 2010, the FDA approved Allergan’s New Drug Application for Lumigan 0.01% for the same approved uses as Lumigan 0.03%. Allergan’s patents are listed in the FDA’s Approved Drug Products with Therapeutic Equivalence Evaluations (Orange Book) as claiming Lumigan 0.01% and its approved uses. Generic manufacturers submitted Abbreviated New Drug Applications to the FDA, for generic versions of Lumigan 0.01% before expiration of the patents. Allergan sued, asserting infringement. The district court held, and the Federal Circuit affirmed that, the patents were not shown to be invalid for obviousness under 35 U.S.C. 103, and that claims of two patents were not shown to be invalid for lack of an adequate written description under 35 U.S.C. 112. View "Allergan, Inc. v. Sandoz, Inc." on Justia Law

Microsoft, a third-party beneficiary to Motorola’s reasonable and non-discriminatory (RAND) commitments, filed suit against Motorola for breach of its obligation to offer RAND licenses to its patents in good faith. Motorola filed infringement actions in a variety of fora to enjoin Microsoft from using its patents without a license. As a preliminary matter, the court rejected Motorola's challenge to its jurisdiction, concluding that there was no error or manifest injustice that would justify disrupting the court's and the Federal Circuit's prior determinations that it has jurisdiction. Further, there is no other exception to the law-of-the-case doctrine applicable. On the merits, the court rejected Motorola's challenge that the district court lacked the legal authority to decide the RAND rate issue in a bench trial, severing it from the ultimate breach of contract issue tried to the jury. Motorola also challenged the district court’s legal analysis in determining the RAND rate was contrary to Federal Circuit precedent. As to Motorola's first challenge, the court concluded that Motorola was quite aware, when it agreed with Microsoft in June to a RAND determination bench trial, that the RAND determination was being made to set the stage for the breach of contract trial. Nor did Motorola ever withdraw its affirmative stipulation to a bench trial for that purpose. Therefore, the court did not consider whether, absent consent, a jury should have made the RAND determination. In regards to Motorola's second challenge, the court reiterated that this is not a patent law action and that the Federal Circuit's patent law methodology can serve as a guidance in contracts cases on questions of patent valuation. In this case, the district court's analysis properly adapted that guidance. The court rejected Motorola's remaining arguments, concluding that the district court's factual findings were properly admitted at the jury trial, the jury's verdict was supported by substantial evidence, and its damages award was proper. Accordingly, the court affirmed the judgment. View "Microsoft, Corp. v. Motorola, Inc." on Justia Law

Manufacturers of circuit boards used in electronic devices, use circuit board testers before the boards are integrated into finished products. Many testers require an interface plate, which is a plastic grid with holes that permit connections between the tester and the circuit board. In order to align circuit boards during testing, it is advantageous to mark certain holes on the interface plate. Prior art methods of marking interface plates included placing Mylar masks on the surface of the interface plate, painting the surface of interface plates, and making shallow drill marks on interface plates. The Circuit Check patents claim systems and methods related to marking interface plates. Circuit Check sued QXQ alleging that QXQ’s interface plates infringed its patents. QXQ stipulated to infringement and the parties stipulated that three references describing interface plate marking techniques were prior art to the patents. The jury found the asserted claims not invalid for obviousness, found that the infringement was willful, and awarded damages. The court entered judgment as a matter of law that the asserted claims are invalid as obvious. The Federal Circuit reversed, finding the verdict that the disputed references were not analogous to be supported by substantial evidence. View "Circuit Check, Inc. v. QXQ Inc." on Justia Law

In April 2011, while its patent application was pending with the USPTO, U.S. Water Services, which “sell[s] water treatment and purification equipment, materials, and services,” especially “to ethanol process technologies,” sued its competitor, ChemTreat, for misappropriation of trade secrets. In October 2011, the USPTO issued the 244 patent covering a method to reduce the formation of insoluble scale deposits during the production of ethanol using enzyme, phytase, in its “pHytOUT® system.”Three days before U.S. Water and ChemTreat settled the misappropriation claim, ChemTreat filed counterclaims requesting declaratory judgments of noninfringement and invalidity of the 244 patent. The suit was filed before the Leahy-Smith America Invents Act, 125 Stat. 284, took effect, so the counterclaims independently did not establish appellate jurisdiction for the Federal Circuit. The district court granted ChemTreat summary judgment as to the noninfringement counterclaim and dismissed the invalidity counterclaim. The Eighth Circuit affirmed. Evaluating the “totality of [the] circumstances,” the district court did not err in finding the misappropriation action, together with U.S. Water’s statements to its customers and supplier, produced an objective, “reasonable apprehension of suit,” and did not err in concluding declaratory judgment subject matter jurisdiction existed. The decision did not constitute an advisory opinion. View "U.S. Water Servs., Inc. v. ChemTreat, Inc." on Justia Law

Under the Biologics Price Competition and Innovation Act (BPCIA), 124 Stat. 119, an abbreviated biologics license application (aBLA) requires proof that a product is “biosimilar” to an approved reference product, plus information regarding the FDA’s determination that the reference product is safe. ABLA approval may not take effect until 12 years after licensing of the reference product. BPCIA allows patent infringement suits before approval: the applicant provides confidential access to its aBLA within 20 days after the FDA accepts its application. The parties negotiate a list of patents that would be subject to an immediate infringement action. Under subsection 262(l), the applicant gives notice at least 180 days before commercial marketing, to allow a suit for preliminary injunction. If the applicant discloses information, neither may bring suit based on non-listed patents before notice of commercial marketing. Amgen has marketed Neupogen® since 1991. Sandoz filed an aBLA, for a Neupogen biosimilar. Sandoz notified Amgen that intended to launch its biosimilar upon approval and that it “opted not to provide” its aBLA, so that Amgen was entitled to sue under section 262(l). In 2015, the FDA approved Sandoz’s aBLA. Sandoz gave a “further notice” of commercial marketing. Amgen sued, asserting state law claims of unfair competition based on BPCIA violations; conversion for wrongful use of Amgen’s approved license; and patent infringement. The court held that BPCIA permits an applicant not to disclose its aBLA; that such a decision alone does not permit the reference product owner to obtain relief; and that the applicant may give notice of commercial marketing before FDA approval. The Federal Circuit affirmed dismissal of Amgen’s state law claims, but otherwise vacated and directed the court to consider the patent infringement claims. View "Amgen, Inc. v. Sandoz, Inc." on Justia Law

Firepass owns the 752 patent, directed to using hypoxic compositions for preventing and extinguishing fires and sued Airbus for infringement. Airbus requested inter partes reexamination of the patent, proposing that certain claims were anticipated under 35 U.S.C. 102 by the “Kotliar” patent and by the "Vulnerability Methodology and Protective Measures for Aircraft Fire and Explosion Hazards,” Report. The PTO granted Airbus’s request in part, finding that Kotliar presented a substantial new question of patentability, but that the report did not present a substantial new question. The Examiner ultimately rejected claims 91–94 under 35 U.S.C. 112, for lack of written description. The Board reversed, finding that the claims were supported by an adequate written description, but dismissed Airbus’s cross-appeal relating to the same claims, finding that “the statutory authority for third-party requester appeals is . . . expressly limited to the review of examiner final decisions that are ‘favorable to the patentability’ of a claim," and that “determination of a ‘[l]ack of a substantial new question of patentability is not a favorable decision on patentability.’” The Federal Circuit vacated. Once the Director ordered inter partes reexamination it was section 1.948(a), not a determination of a substantial new question of patentability, that governed the limitations on Airbus’s submission of prior art. View "Airbus S.A.S. v. Firepass Corp." on Justia Law

Attorney John Cogswell appealed the imposition of a Rule 11 sanction. Acting on behalf of Predator International, Inc., Cogswell filed a lawsuit in April 2009 against Gamo Outdoor USA, Inc. and Industrias El Gamo, S.A. (collectively, Gamo). The original complaint alleged patent infringement and other claims. When it appeared that Lee Phillips, a co-inventor of the patent at issue, was asserting that he still owned half the patent, Cogswell moved to dismiss the infringement claim, explaining that Predator would litigate ownership in state court with the expectation of reviving the patent-infringement claim once it had established its ownership. The state litigation expanded after Gamo purchased Phillips’s interest in the patent. Cogswell then moved in federal court to supplement Predator’s complaint with a challenge to Gamo’s claimed interest in the patent and moved to amend the complaint by reviving the patent-infringement claim. The district court denied the motion. Eventually the district court imposed a Rule 11 sanction on Cogswell for filing the motion to supplement and amend Predator’s complaint, justifying the sanction on grounds that he was forum shopping on the claims he wished to add, his motion came too long after he had learned of Gamo’s purchase of Phillips’s interest in the patent, and nothing had changed to justify his reinstating the patent-infringement claim. The Tenth Circuit reversed: the motion to supplement and amend was not unwarranted under existing law. View "Predator International v. Gamo Outdoor" on Justia Law

This appeal stems from a patent dispute involving Amity's patent for a device that dispenses both toothpicks and tablets and Market Quest's alleged infringement of the patent. The court concluded that this case arises under the patent laws and therefore falls within the exclusive appellate jurisdiction of the Federal Circuit. The court lacked jurisdiction to resolve the merits of the appeal, but concluded that, had this appeal been filed with the Federal Circuit at the time it was filed with this court, the Federal Circuit would have had jurisdiction. And because this appeal is neither frivolous nor is there any indication that it was filed in bad faith, the court concluded that transfer is in the interest of justice. Therefore, the court ordered the matter transferred to the Federal Circuit pursuant to 28 U.S.C. 1631. View "Amity Rubberized Pen Co. v. Market Quest Grp." on Justia Law

Versata successfully sued SAP for infringement. The Federal Circuit affirmed a damages award, but vacated an injunction, and remanded. Meanwhile, SAP petitioned the U.S. Patent and Trademark Office to institute covered business method (CBM) review --an administrative review procedure established in the Leahy-Smith America Invents Act (AIA), 125 Stat. 284 (2011), asserting that key claims were unpatentable and invalid. While the Patent Trial and Appeal Board (PTAB) was conducting CBM review, Versata sued to set aside the decision to institute review. The court held that it lacked subject matter jurisdiction: “AIA’s express language, detailed structure and scheme for administrative and judicial review, legislative purpose, and nature of administrative action evince Congress’s clear intent to preclude subject matter jurisdiction over the PTAB’s decision to institute patent reexamination.” The court state that “the decision to institute post-grant review is merely an initial step in the PTAB’s process to resolve the ultimate question of patent validity, not a final agency action. . . . Plaintiff retains an alternative adequate remedy through appeal to the Court of Appeals for the Federal Circuit.” The Federal Circuit affirmed; Versata’s attempt to obtain judicial review was addressed to the decision to institute stage, so the court was correct in barring judicial review, 35 U.S.C. 324(e). View "Versata Dev. Grp. v. Lee" on Justia Law

SFA’s patents relate to a computer sales system that includes multiple subsystems or components; each component corresponds to a different phase of the sales process. The patents disclose “an event manager” that detects “events” and automatically implements operation. SFA sued online retailers, including Newegg, alleging infringement. After other accused infringers settled, the district court held Markman hearings and rejected Newegg’s proposed constructions that limited the asserted claims to systems that assist a salesperson, or are used by a salesperson. Newegg also argued that claims were invalid as indefinite, because the system claims contained method step limitations, making it unclear when infringement occurs. The parties jointly sought extension of the case schedule. The court denied the motion as premature and denied summary judgment that the claims were indefinite. The next day, SFA moved to dismiss with prejudice and covenanted not to sue Newegg on the patents at issue. The court found that Newegg was the prevailing party and granted costs, but denied its 35 U.S.C. 285 motion for attorneys’ fees citing the Supreme Court’s standard in Octane (2014), finding that, “[e]ven under the new, lower standard for an exceptional case designation, Newegg has provided no evidence that this case ‘stands out from others with respect to the substantive strength of [SFA’s] litigating position.’” The Federal Circuit affirmed. View "SFA Sys., LLC v. Newegg, Inc." on Justia Law