Justia Patents Opinion Summaries

MRC owns the 488 patent, claiming an ornamental design for a football jersey for a dog, and the 487 patent, which claims a similar baseball jersey. Cohen is the named inventor and principal shareholder of MRC and assigned his rights to that company. Hunter is a retailer of licensed sports consumer products, including pet jerseys and previously purchased pet jerseys for dogs from Cohen through companies with which he was affiliated. Cohen claims that in 2009 he designed another pet jersey, known as the “V3” jersey, which later became the subject of the 488 patent. Hunter began purchasing the V3 jersey in 2009. In 2010, Cohen filed a patent application for the V3 jersey and the baseball equivalent that became the subject of the 487 patent. Cohen informed Hunter that he no longer intended to do business with Hunter because Hunter was having difficulty making payments. Hunter sought proposals from other companies to manufacture and supply it with pet jerseys like the V3 and contracted with CDI. MRC sued Hunter and CDI for willful infringement. The district court granted summary judgment in favor of Hunter and CDI, finding both patents invalid as obvious under 35 U.S.C. 103(a). The Federal Circuit affirmed.View "MRC Innovations, Inc. v. Hunter Mfg., LLP" on Justia Law

Endo sells Opana® ER extended-release tablets containing a painkiller, oxymorphone. In earlier litigation, Endo sued Roxane and Actavis for patent infringement, 35 U.S.C. 271(e)(2)(A), based on their Abbreviated New Drug Applications to market generic versions of Opana® ER. The lawsuits settled; Endo granted defendants a license and a covenant not to sue. After making the agreements the 122 and 216 patents issued to Endo. They are continuations of the same parent application and directed to extended-release oxymorphone compositions and methods of treating pain using those compositions. Endo also acquired the unrelated 482 patent, concerning purified oxymorphone compositions and methods of making those compositions. The asserted patents are listed in the Approved Drug Products with Therapeutic Equivalence Evaluations (Orange Book) entry for Opana® ER. Endo again sued for infringement and sought a preliminary injunction to prevent marketing or sales of generic oxymorphone formulations. The district court held that Endo was estopped from claiming that the activity of defendants, “which has gone on for a substantial period of time, is now suddenly barred because of these new patents.” The Federal Circuit vacated, finding that the defendants did not have an express or implied license to practice the patents at issue.View "Endo Pharm. Inc. v. Actavis, Inc." on Justia Law

Senju’s patent covers an ophthalmic solution for eye drops containing Gatifloxacin, an antimicrobial agent, to kill bacteria. Tear dilution and the outer layer of the eye can prevent Gatifloxacin from passing into and treating the aqueous humor. The patent discloses a solution combining Gatifloxacin with disodium edetate, to expand the intercellular spaces of the cornea, accelerating passage of Gatifloxacin solution into the eye. In 2007, Apotex filed an Abbreviated New Drug Application with the FDA (Hatch-Waxman Act, 98 Stat. 1585), requesting approval to manufacture and sell a generic version of the solution. Senju filed an infringement action. The district court held that, though the ANDA product infringed claims 1–3, 6, 7, and 9, claim 7 was invalid as obvious. The Federal Circuit affirmed. In the gap between the court’s 2010 issuance of findings and its December 2011 entry of final judgment, Senju requested reexamination of claims 1–3, 6, 8, and 9; amended claim 6 to include additional limitations; and added new independent claim. In October 2011, the PTO issued a reexamination certificate cancelling claims 1–3 and 8–11, and certifying amended claim 6, new independent claim 12, and new dependent claims as patentable. Before entry of final judgment in the first action, Senju sought a declaratory judgment that Apotex’s manufacture, use, or sale of Gatifloxacin ophthalmic solution infringed claims set forth in the reexamination certificate. The district court dismissed. The Federal Circuit affirmed, finding the suit barred by claim preclusion.View "Senju Pharm. Co., Ltd. v. Apotex, Inc." on Justia Law

Shire markets oral pharmaceuticals under the brand name LIALDA®. Its patent, entitled “Mesalazine Controlled Release Oral Pharmaceutical Composition,” concerns controlled-release compositions for treating inflammatory bowel diseases, such as Crohn’s and ulcerative colitis. The active ingredient is 5-aminosalicylic acid, also called mesalazine or mesalamine, which treats inflamed areas in the bowel by direct contact with the intestinal mucosal tissue. It must pass through the stomach and small intestine without being absorbed into the bloodstream and must be administered throughout the entire length of the colon so that the mesalamine contacts all affected tissues. The oral composition must, therefore, contain a high percentage of mesalamine. The patent teaches an inner lipophilic matrix and an outer hydrophilic matrix to address the limitations of the prior art systems. According to the patent, the combination of a lipophilic and hydrophilic matrix in an inner-outer matrix system, respectively, is advantageous because the inner-outer matrix properties cause the mesalamine to be released in a sustained and uniform manner. Watson submitted an Abbreviated New Drug Application seeking approval to sell generic LIALDA®. Shire sued. After construing claim language, the district court found infringement. The Federal Circuit reversed. The district court’s constructions of “inner lipophilic matrix” and “outer hydrophilic matrix” impermissibly broadened the ordinary meaning of the terms.View "Shire Dev., LLC v. Watson Pharm., Inc." on Justia Law

In 2006, Allen and Gillman agreed to adapt Allen’s electronic payment system, then used in the automotive industry, to process health care claims. Their contracts provided that Allen’s company, StoneEagle, owned the new system technology. StoneEagle licensed the technology to Talon, which was responsible for marketing. Allen applied for a patent on the system, listing himself as the sole inventor. Gillman had some role in drafting the application and in the application process. Although not listed as an inventor, Gillman had an ownership interest in the patent application until at least July 2010, when he assigned his interest to StoneEagle. The patent issued in September 2010. By 2011, the relationship had soured. StoneEagle sought a declaratory judgment that Allen was the sole inventor and owner of the patent and asserted state law trade secret misappropriation claims. The court issued a preliminary injunction prohibiting use or disclosure of StoneEagle’s trade secrets and confidential information. StoneEagle terminated the license agreement, but Talon and Gillman allegedly started a competing venture. The district court denied a contempt order and clairifed the injunction. The Federal Circuit remanded with instructions to dismiss, finding that the court lacked jurisdiction over the case when StoneEagle initiated the lawsuit because it did not did not allege an actual controversy concerning inventorship.View "Stoneeagle Servs., Inc. v. Gillman" on Justia Law

SCA owns the 646 patent, which relates to certain adult incontinence products. In 2003 SCA sent a letter to a competitor, First Quality, stating that First’s products might infringe the patent. First Quality responded that the patent was invalidated by the earlier 649 patent. SCA then filed an ex parte reexamination request for the 646 patent. In 2007, the PTO confirmed the patentability of the original claims and issued new claims added during reexamination. SCA never notified First Quality about the reexamination, believing that it was under no obligation to do so because the PTO provides public notice of all reexaminations. First Quality, meanwhile, no longer considered the 646 patent “to be an issue” and, in 2006, began expanding its line of incontinence products at a cost of about $10 million. SCA did not contact First Quality until August 2010, when it filed an infringement suit. SCA claims it spent more than 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. The Federal Circuit affirmed with respect to laches, but found that there remain genuine issues of material fact pertaining to equitable estoppel and remanded that issue and unresolved questions relating to laches. View "SCA Hygiene Prods v. First Quality Baby Prods., LLC" on Justia Law

Jang assigned his patent rights to the companies in exchange for an upfront payment and a promise under defined circumstances to pay additional compensation if the companies sold stents covered by Jang’s patents. In 2005, Jang sued for breach of contract. In the first two appeals, the Federal Circuit addressed claim construction disputes relevant to whether the accused stents were covered by Jang’s patents. In the meantime, the companies sought ex parte reexamination with the U.S. Patent and Trademark Office, asserting invalidity. An examiner rejected the claims, which were canceled in issued reexamination certificates. In 2014, the district court denied the companies’ motion for summary judgment, finding that a patentee is not precluded from recovering royalties until the date the assignee first challenges the validity of the patent, so Jang could seek royalties prior to the challenge. The district court certified an interlocutory appeal. The Federal Circuit declined to transfer the petition to the Ninth Circuit despite the underlying contract claim and denied the petition for interlocutory review, stating that it is not clear that the identified legal issues will in fact be controlling, and each question depends on the resolution of factual issues not yet addressed by the district court. View "Jang v. Boston Scientific Corp." on Justia Law

The plaintiffs’ patents claim technology for providing security over networks and assert priority to applications filed in the 1990s. They share a specification disclosing a domain name service system that resolves domain names and facilitates establishing “secure communication links.” In one embodiment, an application on the client computer sends a query including the domain name to a “secure domain name service,” which contains a database of secure domain names and corresponding secure network addresses. This allows a user to establish a secure communication link between a client computer and a secure target network address. The accused product, Apple’s FaceTime feature, allows secure video calling between select Apple devices: a caller enters an intended recipient’s e-mail address or telephone number into a device (e.g., iPhone). An invitation is sent to Apple’s server, which forwards the invitation to a network address translator which, in turn, readdresses the invitation and sends it on to the receiving device. The recipient may accept or decline the call. If accepted, servers establish a secure FaceTime call. A jury found infringement and that none of the infringed claims were invalid and awarded damages of $368,160,000. The Federal Circuit affirmed that none of the asserted claims are invalid; that many are infringed by Apple’s product; and the exclusion of evidence relating to the reexamination of the patents-in-suit. The court reversed a finding that the product infringes one claim under the doctrine of equivalents and the court’s construction of the claim term “secure communication link.”View "VirnetX, Inc. v. Cisco Sys., Inc." on Justia Law

In 1997 MIDCO alleged that Elekta’s GammaKnife, GammaPlan, and SurgiPlan products infringed its patent, “Method and Apparatus For Video Presentation From Scanner Imaging Sources,” directed to both a method and apparatus for generating a video image from separate scanner imaging sources. Previously, images were not in a common format, and there was no method for comparing and using images from various scanners. In discovery, MIDCO focused on claim 1 and neglected the method claims. The court only construed terms from apparatus claims and dismissed the method claims without prejudice. Its construction included analog-to-digital and software based digital-to-digital conversion. A jury awarded $16 million. The Federal Circuit found that the disclosure did not encompass digital-to-digital conversion. On remand, MIDCO unsuccessfully attempted to revive the method claims. The court entered judgment for Elekta. The Federal Circuit affirmed. MIDCO licensed the patent; Brain Life sued defendants, including Elekta, claiming that Elekta’s GammaKnife, GammaPlan, SurgiPlan, and ERGO++ systems infringed the method claims. The court granted Elekta summary judgment, finding no material difference between current products and those previously adjudicated noninfringing. Brain Life argued that similarity did not bar allegations of infringement of method claims. The court found that, once judgment entered in its favor, Elekta developed and sold products with an understanding that they did not infringe; MIDCO chose not to pursue method claims in the first litigation. Concerning other defendants, the court concluded that the method claims were broader than the apparatus claims and included digital-to-digital conversion. With respect to Brain Life, the Federal Circuit held that its claims were not barred by claim or issue preclusion, but that the Kessler Doctrine bars most of them.View "Brain Life, LLC v. Elekta Inc." on Justia Law

Hauge and his former employer, ERI, disputed ownership of intellectual property rights related to “pressure exchangers,” a type of energy recovery device used in reverse osmosis. In 2001 they entered into an Agreement. The district court adopted the Agreement, holding that ERI was to be the sole owner of three U.S. patents and one pending patent application. After expiration of the Agreement’s non-compete clause, in 2004, Hauge filed a patent application, titled “Pressure Exchanger,” and a utility application. The patent issued in 2007, describing “[a] pressure exchanger for transferring pressure energy from a high-pressure fluid stream to low-pressure fluid stream.” In 2009, Hauge’s new company, Isobarix, unsuccessfully attempted to reach a new agreement with ERI. Isobarix began selling a pressure exchanger, called “XPR.” Hauge entered into a consulting agreement with two ERI employees. ERI sought an Order to Show Cause, in 2012, submitting an expert’s declaration that Isobarix was using pressure exchanger technology from pre-March 19, 2001 in design and manufacture of XPR, which is “virtually identical to the ERI pressure exchanger” in operation. The court entered a Contempt Order, finding that allowing Hauge to develop new products using technology he assigned to ERI solely because the new inventions post-date the Agreement would render the Agreement useless. The Federal Circuit vacated, finding that Hauge did not violate the “four corners” of the 2001 Order.View "Energy Recovery, Inc. v. Hauge" on Justia Law