Justia Patents Opinion SummariesArticles Posted in U.S. Court of Appeals for the Federal Circuit
In re: Affinity Labs of Texas, LLC
Pre-AIA section 317(b) precluded argument that Patent and Trademark Office (PTO) was prohibited from maintaining reexamination of multiple claims where court upheld only two claims in parallel litigation. King requested ex parte reexamination of all claims of Affinity’s patent. Volkswagen requested inter partes reexamination based on additional, different asserted grounds of unpatentability; Apple requested inter partes reexamination of based on still different grounds. The PTO granted and merged the requests. Volkswagen subsequently received an adverse final judgment in a parallel district court proceeding, upholding the validity of claims 28 and 35. Affinity petitioned the PTO to vacate the entire merged reexamination proceeding, arguing that the estoppel provision in pre-America Invents Act (AIA) 35 U.S.C. 317(b) extended to all parties and all claims, not just litigated claims 28 and 35. The PTO denied Affinity’s request, but severed the Volkswagen reexamination and held that no rejection could be maintained in that reexamination as to claims 28 and 35. The Examiner evaluated the Volkswagen reexamination separately and issued a Right of Appeal Notice in each proceeding, rejecting numerous claims as unpatentable. The Patent Trial and Appeal Board and Federal Circuit affirmed, rejecting Affinity’s arguments that the PTO erred in maintaining the reexaminations, given the final decision that Volkswagen failed to prove invalidity of two claims, and that, assuming the reexaminations were properly maintained, the decisions were based on misreadings of asserted prior art and misevaluation of Affinity’s objective indicia evidence of nonobviousness. View "In re: Affinity Labs of Texas, LLC" on Justia Law
In re: Affinity Labs of Texas, LLC
Estoppel provision of section 317(b) did not prohibit the Patent and Trademark Office (PTO) from maintaining a reexamination after court's dismissal, without prejudice, of invalidity claims..Apple requested reexamination after Affinity filed suit, alleging infringement of Affinity’s patent. While the reexamination was pending, the parties settled and filed a stipulation of dismissal with the district court. Affinity’s infringement action was dismissed with prejudice and Apple’s invalidity counterclaims were dismissed without prejudice. Apple filed notice of non-participation in the reexamination. Affinity petitioned the PTO to terminate the reexamination in view of the dismissal of Apple’s district court counterclaims pursuant to pre-America Invents Act (AIA) 35 U.S.C. 317(b), which prohibited the PTO from maintaining an inter partes reexamination after the party who requested the reexamination has received a final decision against it in a civil action concluding “that the party has not sustained its burden of proving the invalidity of any patent claim in suit.” The PTO dismissed Affinity’s request because it did not view the dismissal, without prejudice, as meeting section 317(b)’s required condition. The Examiner rejected all of the patent’s claims. The Patent Trial and Appeal Board and the Federal Circuit upheld the rejection, rejecting Affinity’s claims that the PTO improperly maintained the reexamination and that the Board’s finding that all claims are unpatentable was based on improper claim construction. View "In re: Affinity Labs of Texas, LLC" on Justia Law
Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc.
The Leahy-Smith America Invents Act did not change the statutory meaning of “on sale” under 35 U.S.C. 102, in a case involving patents that were ready for patenting and subject to an invalidating contract for sale prior to the critical date of January 30, 2002. Teva had invoked the provision as a defense in a suit charging infringement based on Teva’s filing of an Abbreviated New Drug Application (ANDA). The district court upheld, as valid, Helsinn’s patents, directed to intravenous formulations of palonosetron for reducing chemotherapy-induced nausea and vomiting, and rejected Teva’s “on sale” defense. In reversing, the Federal Circuit noted that the invention worked for its intended purpose, that the evidence that the formulation was ready for patenting was “overwhelming,” and that there was no tenable argument that, before the critical date, Helsinn was unable to file a patent application that met the requirements of 35 U.S.C. 112. The district court clearly erred by applying too demanding a standard. The completion of Phase III studies and final FDA approval are not pre-requisites for the invention here to be ready for patenting. View "Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc." on Justia Law
Nichia Corp. v. Everlight Americas, Inc.
The Federal Circuit affirmed the district court’s refusal to enter a permanent injunction against Everlight after finding that Everlight had infringed three of Nichia’s patents and that the patents were not invalid. The patents disclose package designs and methods of manufacturing LED devices. The court upheld the constructions of “lead” as “the portion of the device that conducts electricity,” and of “planar” as “in a substantially same plane,” and rejected claims of obviousness. Nichia failed to show that it had suffered irreparable harm to justify a permanent injunction. View "Nichia Corp. v. Everlight Americas, Inc." on Justia Law
RecogniCorp, LLC v. Nintendo Co., Ltd.
The Federal Circuit affirmed judgment on the pleadings, finding claims in RecogniCorp’s 303 Patent, entitled “Method and Apparatus for Encoding/Decoding Image Data,” patent-ineligible. The patent teaches a method and apparatus for building a composite facial image using constituent parts. Before the invention disclosed in the 303 patent, composite facial images typically were stored in file formats such as “bitmap,” “gif,” or “jpeg,” which required significant memory; compressing the images often resulted in decreased image quality. Digital transmission of these images could be difficult. The 303 patent sought to solve this problem by encoding the image at one end through a variety of image classes that required less memory and bandwidth and, at the other end, decoding the images. The courts concluded that the claims are directed to the abstract idea of encoding and decoding image data and do not contain an inventive concept sufficient to render the patent eligible under 36 U.S.C. 101. View "RecogniCorp, LLC v. Nintendo Co., Ltd." on Justia Law
Fairchild (Taiwan) Corp. v. Power Integrations, Inc.
In 2008, Fairchild charged Power Integrations with infringement of patents, including the 972 patent. The jury rejected an argument that the 972 patent claims were invalid under 35 U.S.C. 103 in view of prior art and found that the claims had been infringed. The Federal Circuit upheld the obviousness determination but reversed as to infringement, and remanded for proceedings unrelated to the 972 patent claims. In 2012, Power Integrations requested inter partes reexamination of the 972 patent. The examiner rejected all of the claims in the reexamination, including claims raised in the litigation, under section 103(a). The Federal Circuit remanded to the Patent Trial and Appeal Board with instructions to vacate portions of its final decision in the inter partes reexamination. Under 35 U.S.C. 317(b), no inter partes reexamination proceeding can be “maintained” on “issues” that a party “raised or could have raised” in a civil action arising under 28 U.S.C. 1338 once “a final decision has been entered” in the civil action that “the party has not sustained its burden of proving the invalidity” of the patent claim. There is a final judgment against Power Integrations, holding that it failed to prove four claims were obvious. View "Fairchild (Taiwan) Corp. v. Power Integrations, Inc." on Justia Law
Phil-Insul Corp. v. Airlite Plastics C0.
IntegraSpec’s 933 Patent originally issued in 1995 and underwent ex parte reexaminations before the Patent & Trademark Office in 2010 and 2014. The patent is directed to ICFs, which are expanded polystyrene foam blocks used as molds to cast concrete walls. The ICFs are stacked to form a hollow wall which is then filled with concrete. The ICFs remain in place after the concrete sets to serve as insulation for the building. The ICFs consist of two parallel foam panels that form sidewalls. The top and bottom edges of the sidewalls have interconnecting means used to connect one ICF to another when they are stacked. In an infringement action, the Federal Circuit affirmed summary judgment of noninfringement, based on a finding that IntegraSpec’s claims were precluded by a 2014 Federal Circuit decision based on the same claims. View "Phil-Insul Corp. v. Airlite Plastics C0." on Justia Law
Rembrandt Wireless Technologies, LP v. Samsung Electronics Co., Ltd.
Rembrandt sued for infringement of two patents that share a specification and claim priority to a provisional application filed in 1997, describing “a system and method of communication in which multiple modulation methods are used to facilitate communication among a plurality of modems in a network, which have heretofore been incompatible.” The patents explain that in the prior art “a transmitter and receiver modem pair can successfully communicate only when the modems are compatible at the physical layer,” so that “communication between modems is generally unsuccessful unless a common modulation method is used.” The patents propose using the first section of a transmitted message (header) to indicate the modulation method being used for the substance of the message (payload). A jury found that Samsung infringed the patents, which were not invalid over prior art, and awarded Rembrandt $15.7 million in damages. The Federal Circuit affirmed the district court’s claim construction of “modulation method of a different type” as “different families of modulation techniques, such as the FSK family of modulation methods and the QAM family of modulation methods.” The court vacated and remanded an order denying Samsung’s motion to limit Rembrandt’s damages for alleged failure to mark patented articles. View "Rembrandt Wireless Technologies, LP v. Samsung Electronics Co., Ltd." on Justia Law
Core Wireless Licensing S.A.R.L. v. Apple, Inc.
Core’s 143 patent recites a mobile station, such as a mobile telephone, that is connected to a cellular system or network. It is directed to means for sending packet data from the mobile station to the network using a selected channel. In prior art, the mobile station would send the network information about the data packet so that the network could make the channel selection decision. Selection by the network wastes system resources, because it requires the mobile station to send a message to the network regarding the data packet the mobile station wants to transmit, and then requires the network to make the channel selection decision. The 143 patent describes the mobile station, not the network, making the uplink channel selection decision; the network provides the mobile station with parameters that the mobile station applies in determining whether to use a dedicated channel or a common channel, which reduces “the signaling load associated with the allocation of packet data transfer” and “the delay associated with the starting of data transfer.” The Federal Circuit affirmed a verdict that Apple did not infringe, based on a holding that the claim requires that the mobile station “must have the capability to perform ‘channel selection,’ even if that capability was not used during the actual alleged performance of the claimed method.” View "Core Wireless Licensing S.A.R.L. v. Apple, Inc." on Justia Law
Novartis AG v. Torrent Pharmaceuticals, Limited
Navartis’s 283 patent relates to a solid pharmaceutical composition suitable for oral administration, comprising a sphingosine-1 phosphate (S1P) receptor agonist and a sugar alcohol, which the patent explains is useful for the treatment of certain autoimmune diseases such as multiple sclerosis. According to the specification, S1P receptor agonists generally exhibit properties that make formulations suitable for oral administration of a solid composition difficult to create. However, “solid compositions comprising a sugar alcohol provide formulations which are particularly well suited to the oral administration of S1P receptor agonists." They also “provide a convenient means of systemic administration of S1P receptor agonists, do not suffer from the disadvantages of liquid formulations for injection or oral use, and have good physiocochemical and storage properties.” On inter partes review, the Patent Trial and Appeal Board found all original claims of the 283 patent and proposed substitute claims unpatentable as obvious. The Federal Circuit affirmed. The Board discussed independent grounds supporting the motivation to combine prior art, fingolimod and mannitol, in a solid oral composition. View "Novartis AG v. Torrent Pharmaceuticals, Limited" on Justia Law