Justia Patents Opinion Summaries

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

ISE asserted infringement of its patent, “Automated Exchange for Trading Derivative Securities,” directed to an automated exchange for trading options contracts that allocates trades among market professionals and assures liquidity. It distinguishes an “automated” exchange from the traditional, floor-based “open outcry” system for trading options contracts. The Chicago Board Options Exchange’s accused product, the “Chicago Board Options Exchange,” uses the Hybrid Trading System, which includes a fully screen-based trading system called “CBOEdirect” integrated with traditional, open outcry trading. On appeal, the Federal Circuit construed the term “automated exchange” as “a system for executing trades of financial instruments that is fully computerized, such that it does not include matching or allocating through the use of open-outcry” and found that the patentee disavowed all manual or partially automated systems of trading. On remand, ISE stipulated to noninfringement because it concluded that the district court’s pretrial rulings, including a statement that “it will be a jury question whether CBOEdirect is a stand alone automated exchange alongside a floor-based system or whether it is a system that includes matching or allocating through open outcry,” prevented it from proving that the accused product met the “automated exchange” limitation. The Federal Circuit affirmed the judgment of noninfringement, but reversed a finding that one claim was indefinite.View "Chicago Bd. Options Exch., Inc. v. Int'l Secs., LLC" on Justia Law

Millipore owns the 543 patent, which discloses a device for introducing or withdrawing a sample from a container holding a fluid without contaminating the fluid. To avoid contamination, the patent uses individual transfer members to maintain a closed system. Each transfer member has a needle embedded in a plastic holder and a seal surrounding the needle that attaches to the holder. The district entered summary judgment that AllPure does not infringe the asserted claims of the patent, finding that AllPure’s TAKEONE device neither literally contains the claimed “removable, replaceable transfer member,” nor does it provide an infringing equivalent. The Federal Circuit affirmed, holding that the TAKEONE device does not literally infringe and held that prosecution history estoppel prevents Millipore from asserting the doctrine of equivalents as to the claim limitation.View "EMD Millipore Corp. v. AllPure Techs., Inc." on Justia Law

Teles owns the 453 patent, issued in 2005, which recites a “method for transmitting data in a telecommunications network and switch for implementing said method.” In 2007, a third party sought ex parte reexamination. The examiner rejected claims 34–36 and claim 38 under 35 U.S.C. 103 as obvious over the White patent combined with either the Jonas or the Farese patent. The Board of Patent Appeals affirmed. The district court dismissed an appeal for lack of subject matter jurisdiction, holding that, after 1999 amendments, Section 145 proceedings (35 U.S.C. 145) could not be maintained by patent owners. The Federal Circuit agreed that the district court lacked subject matter jurisdiction under the version of Section 145 in effect at the time, but held that the court erred in dismissing the case. The court treated the case as having been transferred to the Federal Circuit as an appeal from the Board’s decision and affirmed rejection of claim 35 as obvious.View "In re: Teles AG Informationstechnologien" on Justia Law

DataTern previously sued several Microsoft and SAP customers, alleging infringement of its 402 and 502 patents. DataTern sent the customers claim charts alleging infringement based on customers’ use of Microsoft’s ADO.NET and SAP’s BusinessObjects software. The claim charts refer to Microsoft and SAP functionality, but the 402 patent claim charts cite only to third-party-provided (not Microsoft-provided) ADO.NET documentation for several claim limitations. Some customers sought indemnification. Microsoft told DataTern that Microsoft had no obligation to defend or indemnify its customers. DataTern indicated that it was not interested in suing Microsoft. SAP and DataTern did not discuss the lawsuits or the patents before SAP and Microsoft sought declaratory judgments of noninfringement and invalidity. The district court denied DataTern’s motion to dismiss, finding that it has jurisdiction based on: the claim charts in the customer lawsuits; the indemnification demands; DataTern’s conditional counterclaims of infringement; DataTern’s reference to “infringement” in its proposed scheduling order; and DataTern’s refusal to grant a covenant not to sue. Following claim construction, DataTern conceded noninfringement and the court entered summary judgment. The Federal Circuit affirmed in part, holding that the district court had jurisdiction over some declaratory judgment challenges to the patents, but not over Microsoft’s challenge to 402 patent.View "Microsoft Corp. v. Datatern, Inc." on Justia Law

Calcar’s patents share a common specification, are derived from a priority application filed in 1997, and describe and claim a multimedia system to access vehicle information and control vehicle functions. Calcar accused Honda’s computerized navigation systems of infringement. Calcar claimed that the accused systems included additional infringing features beyond providing travel directions. Honda sought a finding of inequitable conduct, based on the actions of Calcar’s founder, Obradovich. Among coinventors, Obradovich was responsible for the patent application. Honda alleged that he deliberately withheld prior art that was material to patentability; Obradovich disclosed the existence of the 1996 Acura RL navigation system, but did not disclose additional information that would have led the PTO to deny the patent as anticipated or rendered obvious. When that system was introduced, Calcar Published “Quick Tips” booklets with condensed information from a car’s owner’s manual. In developing a guide for the 96RL, Obradovich drove the car and operated the navigation system. Calcar personnel took photographs of the system and owner’s manual. Obradovich acknowledged that the system was the basis of Calcar’s inventions. Honda argued that the operational details that he did not disclose were those that were the claimed in the patents at issue: the use of the system to display the status of vehicle functions and to search for information about the vehicle. The district court granted Honda’s inequitable conduct motion and found the patents unenforceable. The Federal Circuit affirmed. View "Am. Calcar, Inc. v. Am. Honda Motor Co." on Justia Law

AVS filed a patent infringement suit in the Eastern District of Texas, five months after AVS was incorporated in the Western District of Texas. AVS is a subsidiary of a patent-licensing company Acacia and shares an office in the Eastern District of Texas with other Acacia subsidiaries of Acacia. Some of the patents at issue are in the same family as patents that were the subject of cases previously litigated in the Eastern District of Michigan. A few months later, Toyota and Gulf States moved to sever claims against Gulf States; to transfer the claims against Toyota to the Eastern District of Michigan under 28 U.S.C. 1404(a); and to stay claims against Gulf States s pending resolution of the transferred case. Gulf States is located in Houston, Texas (the Southern District of Texas), and is an independent distributor of Toyota vehicles in five states. The district court denied the motions. The Federal Circuit vacated. Nothing favors the transferor forum, but several factors favor the transferee forum. Toyota has a clear right to transfer. View "In re: Toyota Motor Corp." on Justia Law

Benefit Funding sued Advance America, Regions Financial Corporation, CNU Online, and U.S. Bancorp, alleging infringement of the 582 patent, which covers a “system and method for enabling beneficiaries of retirement benefits to convert future benefits into current resources to meet current financial and other needs and objectives.” Several months into the litigation, U.S. Bancorp filed a petition with the Patent Trial and Appeal Board for post-grant review of the asserted claims under the Transitional Program for Covered Business Method Patents, America Invents Act, 125 Stat. 284, 329–31. The district court denied motions to stay. The Board instituted the requested covered business method review on the sole basis of subject matter eligibility under 35 U.S.C. 101, holding that “it is more likely than not that the challenged claims are unpatentable.” The district court then orally granted motions to stay. On interlocutory appeal, the Federal Circuit affirmed the stay. The only real argument against a stay concerned the authority of the Board to conduct the CBM review, those circumstances, so the district court did not abuse its discretion in granting the stay. View "Benefit Funding Sys., LLC v. Advance Am. Cash Advance Ctrs., Inc." on Justia Law

uPI and Richtek design and sell DC-DC controllers that convert direct current from one voltage to another, and are embodied in chips for downstream devices such as computer motherboards. uPI was founded by former Richtek employees; its chips are imported into the U.S. either directly or as incorporated in downstream devices. Richtek complained to the International Trade Commission that uPI misappropriated Richtek’s trade secrets and infringed Richtek’s U.S. patents, in violation of the Tariff Act, 19 U.S.C. 1337. uPI offered to enter into a consent order and to cease importation of products produced using or containing Richtek’s trade secrets or infringing Richtek’s patents. Over Richtek’s objection, the ALJ entered the consent order substantially as drafted by uPI. The Commission terminated the investigation. A year later Richtek filed an Enforcement Complaint. An ALJ distinguished between products that were accused in the prior investigation and products allegedly developed and produced after entry of the Consent Order, finding violations as to the formerly accused products and that the post- Consent Order products infringed two patents, but were independently developed and not produced using Richtek’s trade secrets. The Commission affirmed with respect to the formerly accused products and reversed in part with respect to the post-Order products. The Federal Circuit affirmed concerning the formerly accused products, but reversed the ruling of no violation as to the post-Consent Order products.View "UPI Semiconductor Corp. v. Int'l Trade Comm'n" on Justia Law