Justia Patents Opinion Summaries

AutoAlert sued Dominion, alleging infringement of five patents that claim systems and methods that involve alerting a car dealership when a new lease or sale opportunity seems a good fit for a past customer. After being served the complaint in that California action, Dominion timely petitioned the Director for inter partes reviews of the five patents under 35 U.S.C. 311-319. The district court stayed the case. The Patent Trial and Appeal Board denied the petition, deciding not to institute any of the requested inter partes reviews, for failure to show “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged.” Dominion filed in a Virginia district court, invoking jurisdiction under 28 U.S.C. 1331 & 1338 and seeking relief from the non-institution decision under the Administrative Procedure Act, 5 U.S.C. 701-706, the Declaratory Judgment Act, 28 U.S.C. 2201-2202, and a mandamus statute, 28 U.S.C. 1361. Dominion then sought a writ of mandamus in the Federal Circuit under 28 U.S.C. 1651, challenging the Director’s non-institution decision. The Federal Circuit denied relief, stating that the relevant statutory provisions make clear that it may not hear an appeal from the Director’s decision not to institute an inter partes review.View "In re: Dominion Dealer Solutions, LLC" on Justia Law

P&G owns patents that claim systems or methods for whitening teeth. P&G sued TT, alleging infringement of the three patents; in another district, Clio, which manufactured the accused products, sought a declaratory judgment action against P&G, alleging that the patents were invalid, unenforceable, or not infringed. In its declaratory-judgment action. P&G amended its complaint in the Ohio action to add Clio as a defendant. When TT and Clio then moved for a stay or a transfer to New Jersey, the Ohio district court denied both motions. The New Jersey district court dismissed Clio’s declaratory-judgment action there without prejudice. Clio then timely petitioned the PTO to institute inter partes reviews of the patents under 35 U.S.C. 311-319. P&G responded, arguing that Clio’s earlier declaratory judgment action involving the same three patents, though it had been voluntarily dismissed, barred the institution of inter partes reviews under section 315(a). The Patent Trial and Appeal Board disagreed and granted all three petitions, because 35 U.S.C. 315(a)(1) states: “An inter partes review may not be instituted if, before the date on which the petition for such a review is filed, the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent.” P&G sought a writ of mandamus under 28 U.S.C. 1651. The Federal Circuit denied the petition, stating that mandamus action is not available. View "In re: Procter & Gamble Co." on Justia Law

In 2010, St. Jude sued Volcano, alleging infringement of five patents. Volcano counterclaimed, asserting infringement of the 994 patent. More than two years later, the district court, based on the stipulations of the parties, dismissed all claims relating to the 994 patent. Six months after the dismissal, St. Jude sought inter partes review of the 994 patent. The Director of the U.S. Patent & Trademark Office, through the Board, denied the petition, stating that a counterclaim alleging infringement constitutes a “complaint alleging infringement of the patent” under 35 U.S.C. 315(b), which bars institution of an inter partes review of a patent if the petitioner was served with a complaint alleging infringement of the patent more than one year before filing the petition. Accordingly, the 2010 counterclaim against St. Jude barred the Director from instituting an inter partes review. The Federal Circuit dismissed, based on the structure of the inter partes review provisions, on the language of section 314(d) within that structure, and on its jurisdictional statute read in light of those provisions.View "St. Jude Medical, Cardiology Div., Inc. v. Volcano Corp." on Justia Law

Vaillancourt obtained ownership of the 221 patent from his mother through an assignment recorded with the PTO in 2011. Vaillancourt represents that the assignment took effect in 2005. In 2010, BD requested an inter partes reexamination of the 221 patent. During the reexamination proceedings, Vaillancourt added claims 21 through 37 to the original 20 claims. The patent examiner rejected all 37 claims. While an appeal was pending, Vaillancourt assigned to VLV “the entire right, title and interest in and to” the 221 patent, “including full and exclusive rights to sue upon and otherwise enforce” the patent. VLV sued BD for infringement in its own name and did not join Vaillancourt. The Board subsequently affirmed all of the examiner’s rejections. Despite no longer being the owner of the patent, Vaillancourt unsuccessfully requested rehearing in his own name. Vaillancourt appealed to the Federal Circuit, identifying himself in the notice of appeal as both the patent owner and appellant. BD moved to dismiss for lack of jurisdiction. The Federal Circuit ultimately dismissed for lack of standing.View "Vaillancourt v. Becton Dickinson & Co." on Justia Law

Braintree manufactures the SUPREP® Bowel Prep Kit, which helps to prepare patients for colonoscopies. In the late 1990s, two colon cleansing options existed; the safest required patients to drink large volumes of unappetizing isotonic prep formulas, resulting in low patient compliance, and a low-volume, hypertonic prep that could cause severe electrolyte shifts, leading to heart failure, kidney failure, neurological impairment, and even death. Braintree’s patent discloses a combination of magnesium sulfate, potassium sulfate, and sodium sulfate, which can be digested in small volumes to safely and effectively induce colonic purging without causing clinically significant electrolyte shifts. Novel filed an abbreviated new drug application (ANDA) and Braintree responded with a patent infringement case (Hatch- Waxman Act, 35 U.S.C. 271(e)(2)(A). The district court granted summary judgment of infringement based on its construction of four disputed claim terms. The Federal Circuit affirmed a finding Braintree’s patent not invalid, but reversed with respect to construction of the claim term “clinically significant electrolyte shifts” and vacated with respect to infringement.View "Braintree Labs, Inc. v. Novel Labs, Inc." on Justia Law

Gilead owns patents directed to antiviral compounds and methods for their use. The 375 and 483 patents list the same inventors and their written descriptions disclose similar content, but they do not claim priority to a common application and have different expiration dates. Gilead sued Natco for infringement of the 483 patent after Natco filed an FDA request for approval to market a generic version of one of Gilead’s drugs that is allegedly covered by the 483 patent. Natco asserted that the 483 patent was invalid for obviousness-type double patenting over the 375 patent. Gilead argued that the 375 patent cannot serve as a double patenting reference against the 483 patent because, even though the 483 patent’s expiration date is 22 months after the 375 patent’s expiration date, the 375 patent issued after the 483 patent. The district court, pursuant to a stipulation, granted Gilead final judgment on infringement. The Federal Circuit vacated and remanded. Because the obviousness-type double patenting doctrine prohibits an inventor from extending his right to exclude through claims in a later-expiring patent that are not patentably distinct from the claims of the inventor’s earlier-expiring patent, the 375 patent qualifies as an obviousness-type double patenting reference for the 483 patent. View "Gilead Sciences, Inc. v. Natco Pharma. Ltd." on Justia Law

Plaintiffs’ patent concerns the anti-hypertension drug with the brand name Tarka,® a combination of the angiotensin converting enzyme (ACE) inhibitor trandolapril, and the calcium channel blocker (also called “calcium antagonist”) verapamil hydrochloride. The FDA approved a New Drug Application (NDA) for a Tarka® product in 1996. In 2007 Glenmark filed an abbreviated new drug application (ANDA) for a generic counterpart Tarka. Since the patent had not expired, Glenmark filed a Hatch-Waxman “Paragraph IV Certification.” Plaintiffs filed an infringement suit. Launch of Glenmark’s generic product was stayed for 30 months under 21 U.S.C. 355(j)(5(B)(iii). After the stay expired in 2010, Plaintiffs sought a preliminary injunction, which the district court denied. In June 2010 Glenmark launched its generic product “at-risk,” while litigation proceeded. Glenmark admitted infringement and the jury held that the patent had not been proved invalid. The jury awarded $15,200,000 in lost profits and $803,514 in price erosion damages. The Federal Circuit affirmed, rejecting claims that the patent was invalid, that Glenmark was entitled to a new trial based on a prejudicial jury instruction on evidence spoliation, and that no damages should be awarded due to lack of standing of certain Plaintiffs.View "Sanofi-Aventis Deutschland GMBH v. Glenmark Pharm., Inc." on Justia Law

Rapid-prototyping “additive technology” creates parts by building layer upon layer of plastics, metals, or ceramics. Subtractive technology starts with a block and cuts away layers. Additive technology include SL, fused deposition modeling, laser sintering, 3D printing, direct metal laser sintering, and digital light processing. 3DS is the sole U.S. supplier of SL machines, which use an ultraviolet laser to trace a cross section of an object on a vat of liquid polymer resin. The laser solidifies the resin it touches, while untouched, areas remain liquid. After one cross-section has solidified, the newly formed layer is lowered below the surface of the resin. The process is repeated until the object is completed. Users of SL machines often own many machines with varying sizes, speeds, and accuracy levels. 3DS began equipping some of its SL machines with wireless technology that allows a receiver to communicate with a transmitter on the cap of a resin bottle. A software-based lockout feature shuts the machine off upon detection of a resin not approved by 3DD. 3DS has approved two of Desotech’s resins and entered into negotiations for approval of additional resins. After negotiations broke down, Desotech sued, alleging tying, unreasonable restraint of trade, and attempted monopolization under the Sherman Act; tying under the Clayton Act; patent infringement; and violations of the Illinois Antitrust and Uniform Deceptive Trade Practices Acts. The district court granted 3DS summary judgment on the antitrust claims and certain state-law claims. The parties stipulated to dismissal of the remaining claims. The Federal Circuit affirmed.View "DSM Desotech Inc. v. 3D Sys. Corp." on Justia Law

Generic drug manufacturers submitted Abbreviated New Drug Applications for FDA approval to manufacture and sell of generic versions of Boniva® before expiration of Roche’s patents, which are directed to methods of treating osteoporosis by monthly administration of ibandronate, one of a class of compounds known as bisphosphonates. Bisphosphonates generally have a low bioavailability when administered and oral administration of bisphosphonates can result in adverse esophageal and gastrointestinal side effects. Patients taking bisphosphonates previously had to take the bisphosphonate tablet in a fasting state at least 30 minutes before eating or drinking, which created compliance problems. Roche sued, alleging infringement under 35 U.S.C. 271(e)(2) based on the ANDA filings. The Federal Circuit affirmed the district court’s denial of the preliminary injunction. The district court entered summary judgment of invalidity of certain claims due to obviousness under 35 U.S.C. 103(a), finding that once monthly oral dosing of ibandronate was established in prior art and that the combination of prior art references suggested a dosage f about 150 mg per month, or at least indicated that a monthly dose of 150 mg was obvious to try. The Federal Circuit affirmed. View "Hoffmann-La Roche Inc. v. Apotex Inc." on Justia Law

Trebro’s patents involve sod harvesters: vehicles with knives that cut sod pieces from the ground, conveyor belts to transport the pieces, and mechanisms to stack them on a pallet. FireFly’s accused product is the ProSlab 150. Trebro also sells sod harvesters, including the SC2010 Slab. FireFly did not contest priority on the claims. While the preliminary injunction motion was pending, FireFly requested ex parte reexamination of thepatent, based primarily on two patents invented by the same individuals. After ordering reexamination, the U.S. Patent and Trademark Office terminated the proceeding because neither of the patents qualified as prior art because they were not considered invented] by “others’ under 35 U.S.C. 102(a) or (e) and because each was published within the one year grace period. The district court denied a preliminary injunction. The Federal Circuit vacated and remanded, noting a record that strongly suggests a likelihood of success on the merits and a likelihood of irreparable harm. The court reasoned that the nature of the market is such that money damages would likely be inadequate and that the fact that Trebro does not presently practice the patent does not detract from its likely irreparable harm.View "Trebro Mfg., Inc. v. Firefly Equip., LLC" on Justia Law