Justia Patents Opinion Summaries

Megestrol was used to treat wasting in cancer patients. In 1993, Squibb marketed an oral suspension of micronized megestrol, Megace OS, for treatment of anorexia and cachexia in AIDS patients. Other manufacturers submitted Abbreviated New Drug Applications to market generic versions of Megace OS. Par received approval, but continued to experiment and eventually formulated nanosized megestrol. Patients taking Megace OS with a meal showed a significantly higher rate and extent of absorption compared with patients in a fasting state. The nanosized formulation showed a greatly reduced food effect, especially vital for patients with reduced appetites. The Patent Office rejected Par’s claims covering methods for nanosized megestrol formulations as obvious in light of prior art. Par amended to address the lack of a food effect in the nanosized formulation. The FDA approved Par’s New Drug Application for its nanoparticle formulation, Megace ES, which has generated more than $600M in net sales since 2005. Par pled guilty to marketing Megace ES without FDA approval as an effective weight-gain method for geriatric patients and as having superior clinical efficacy over Megace OS despite lack of clinical studies. TWi filed an ANDA for a generic nanosized megestrol, asserting that the Par patent was invalid or would not be infringed. Par sued under 35 U.S.C. 271(e)(2)(A). The Federal Circuit vacated the district court finding of invalidity; that court incorrectly applied the law on inherency in the context of obviousness. View "Par Pharma., Inc. v TWi Pharma., Inc." on Justia Law

Versata sued Callidus, alleging infringement the 326, 304, and 024 patents, concerning management and tracking of sales information by a financial services company. Seven months after briefing on motions to dismiss or to transfer, the district court denied both. Callidus answered and counterclaimed, asserting its own patents against Versata and stated that it would seek post-grant review of Versata’s patents under the Transitional Program for Covered Business Method (CBM) Patents under the America Invents Act, 125 Stat. 284, 329–31. The district court declined to consider a stay until the Patent Trial and Appeal Board (PTAB) decided to institute CBM review. PTAB instituted CBM review for each patent, finding each challenged claim more likely than not directed to unpatentable subject matter. Callidus renewed its motion. The court granted a stay as to the 326 patent but denied it as to the other patents. The Federal Circuit reversed, finding that the court “clearly erred” in evaluating the burden-of-litigation factor exclusively through a backward-looking lens. The correct test focuses prospectively on the impact of the stay on the litigation, not on the past actions of the parties. Framed appropriately, it is clear that a stay will reduce the future burdens of litigation. View "Versata Software, Inc. v. Callidus Software, Inc." on Justia Law

In a Colorado district court, e.Digital asserted claims 1 and 19 of the 774 patent, disclosing a device with a microphone and a removable, interchangeable flash memory recording medium that allows for audio recording and playback. Claims 1 and 19 recited “flash memory module which operates as sole memory of the received processed sound electrical signals.” The court construed that limitation to require “that the device use only flash memory, not RAM or any other memory system” to store processed sound electrical signals, finding that the use of RAM had been disclaimed during prosecution and that the existence of a microprocessor did not require use of RAM. The parties stipulated to dismissal with prejudice. The Patent and Trademark Office cancelled claims 1 and 19 in an ex parte reexamination, issued reexamined claim 33, which recites the limitations of the cancelled claims, including an identical sole memory limitation, and added limitations like a microprocessor. e.Digital sued in a California district court, asserting reexamined claim 33 and claims of the 108 patent. The court adopted the Colorado court’s construction. The Federal Circuit upheld the application of collateral estoppel with respect to the 774 patent, but reversed as to the unrelated 108 patent. View "eDigital Corp. v. Futurewei Tech., Inc." on Justia Law

Antares’s 015 patent, entitled “needle assisted jet injector,” discloses a system in which a needle punctures the skin before forcefully expelling a medication. With typical injectors the medication itself ruptures the outer layers of skin. During prosecution, the applicants distinguished prior art by emphasizing the “jet injector” limitation. The originally issued claims all contained the “jet injection” limitation. Antares later sought reissue under 35 U.S.C. 251, stating that the patentee claimed “more or less than he had a right to claim.” The 846 reissue patent was granted. Specification and claims 1–22 were unaltered; claims 23–37 were added. The original claims recite embodiments of a jet injection device and specify, for example, the exact plunge depth of the needle assist. The reissue claims are not restricted to jet-injection devices, but concern safety features; they recite a different invention than originally claimed. Defendants submitted an FDA new drug application for pre-filled methotrexate syringes. Antares sought a preliminary injunction. Defendants counterclaimed for invalidity, arguing that the reissue claims were invalid for violating the recapture rule and failing the original patent requirement. The district court denied a preliminary injunction. The Federal Circuit affirmed; the reissue claims are invalid under section 251’s “original patent” requirement. View "Antares Pharma, Inc. v. Medac Pharma, Inc." on Justia Law

The 545 patent claims a method for distributing copyrighted products (songs, movies, books) over the Internet where the consumer receives a copyrighted product for free in exchange for viewing an advertisement, and the advertiser pays for the copyrighted content. The district court dismissed an infringement claim. The Federal Circuit reversed and remanded. The patent claims a "process" within the meaning of 35 U.S.C. 101. The Supreme Court vacated in 2012. In 2013 the Federal Circuit held that the district court erred in dismissing for failure to claim statutory subject matter. Meanwhile, the Supreme Court clarified that a claim that is directed to an abstract idea does not move into section 101 eligibility territory by “merely requir[ing] generic computer implementation” and again vacated. On remand, the Federal Circuit affirmed dismissal, referring to the claim as an abstract idea. View "Ultramercial, Inc. v. Hulu, LLC" on Justia Law

Plaintiffs sued for alleged infringement of the 129 patent, entitled “Personal Area Network with Automatic Attachment and Detachment.” The patent describes a network for wireless communications between a central hub device and a number of surrounding peripheral devices in close proximity with the hub device. The specification details the use of “a wireless personal area network [PAN] that permits a host device to communicate with a varying number of peripheral devices with minimal interference from neighboring networks. The district court dismissed plaintiff Tri-County for lack of standing, finding that Tri-County had effectively assigned the patent to Azure. The court also construed the term “MAC address” in the patent as “a device identifier generated by the hub device” and not, as Azure and Tri-County suggested, “an address that uniquely identifies a device or group of devices on a shared communication medium.” Azure stipulated to a judgment of noninfringement. The Federal Circuit affirmed the dismissal of Tri-County, but vacated and remanded in part, holding that the district court improperly construed the term. View "Azure Networks, LLC v. CSR, PLC" on Justia Law

Williamson's patent describes methods and systems for “distributed learning” that utilize industry standard computer hardware and software linked by a network to provide a virtual classroom). The system includes a presenter computer that controls information that appears on the audience member’s computer screen, audience member computers that display the presentation and can communicate with the presenter and other audience members, and a distributed learning server that implements a “virtual classroom” over a network, such as the Internet.. Williamson accused defendants of infringement based on their alleged manufacture, sale, use, and importation of systems and methods of online collaboration. The district court construed “graphical display representative of a classroom” and “first graphical display comprising . . . a classroom region” as requiring “a pictorial map illustrating an at least partially virtual space in which participants can interact, and that identifies the presenter(s) and the audience member(s) by their locations on the map.” The court concluded that the limitation, “distributed learning control module,” was a means-plus-function term under 35 U.S.C. 112(6) and that the specification failed to disclose necessary algorithms for performing all claimed functions, so that claims were invalid as indefinite. The Federal Circuit vacated, finding the constructions erroneous. View "Williamson v. Citrix Online, LLC" on Justia Law

Halo is a supplier of electronic components and owns three patents directed to surface mount electronic packages containing transformers for mounting on a printed circuit board inside electronic devices such as computers and internet routers. Halo alleged that Pulse infringed its patents. The district court entered summary judgment that Pulse did not sell or offer to sell certain accused products within the U.S. and, therefore, did not directly infringe, and that that Pulse’s infringement with respect to accused products that Pulse sold and delivered outside the U.S. was not willful. The Federal Circuit affirmed. Pulse did not sell or offer to sell within the U.S. those accused products that Pulse manufactured, shipped, and delivered outside the U.S., so there was no direct infringement by those products. The court upheld the constructions of the claim limitations “electronic surface mount package” and “contour element,” found the patents not invalid for obviousness, and affirmed the judgment of direct infringement with respect to products that Pulse delivered in the U.S. and the judgment of inducement with respect to products that Pulse delivered outside the U.S. but were ultimately imported by others. View "Halo Elec., Inc. v. Pulse Elec., Inc." on Justia Law

IRIS owns the 506 patent, titled “Method of Making an Improved Security Identification Document Including Contactless Communication Insert Unit.” The patent discloses methods for making a secure identification document containing an embedded computer chip that stores biographical or biometric data. Japan Airlines Corporation (JAL) examines passports according to the Enhanced Border Security Act, 8 U.S.C. 1221, the Visa Entry Reform Act of 2002, 19 C.F.R. 122.75a(d), and international treaties. According to IRIS, some of these passports are made using the methods claimed in the 506 patent. IRIS sued, alleging that JAL infringed the patent under 35 U.S.C. 271(g) by “using . . . electronic passports in the processing and/or boarding of passengers . . . at . . . JAL services passenger check-in facilities throughout the United States.” JAL argued that federal laws requiring the examination of passports conflict with the patent laws and therefore exempt JAL from infringement liability and that IRIS’s exclusive remedy was an action against the United States under 28 U.S.C. 1498(a). The district court agreed. The Federal Circuit affirmed, concluding that JAL’s allegedly infringing acts are carried out “for the United States” under 28 U.S.C. 1498(a). View "IRIS Corp. v. Japan Airlines Corp." on Justia Law

Ormco owns a patent, entitled “Self-Ligating Orthodontic Bracket,” that describes a bracket for orthodontic braces that avoids or reduces interference with the gums even when being mounted on a molar tooth. The bracket includes a slot to hold the archwire that connects (and exerts the desired corrective force on) the teeth, with a slide that moves across the slot opening to hold the wire in place. The specification notes that self-ligating brackets were already known in the art, but that the prior-art brackets did not work well for molars, explaining that when the slide opened to release the wire it would bump into the gums, causing discomfort. Ormco accused World Class Technology of infringing the patent. The district court construed two claim terms: “support surface” and “ledge.” In view of the court’s constructions, the parties stipulated to a judgment of non-infringement. The Federal Circuit affirmed, rejecting Ormco’s challenge to the district court’s construction of “support surface.” View "World Class Tech. Corp. v. Ormco Corp." on Justia Law