Justia Patents Opinion Summaries

In May 2003, Wyeth filed the 894 Patent Application, claiming a pharmacological method for cancer treatment. In July 2003, the PTO mailed a Notice to File Missing Parts. Wyeth filed the missing parts in December 2003. The statutory deadline for the PTO to issue its first office action was 14 months from the filing date. In August 2005, having received no office action, Wyeth sent a letter. In August 2005, 404 days after the deadline, the PTO mailed a restriction requirement, 35 U.S.C. 121, which generally constitutes an office action. The deadline for Wyeth to reply was extended to February 10, 2006. On that day, during a telephone interview, the Examiner acknowledged that the restriction requirement was not complete. The PTO issued a corrected requirement in February 2006. In May 2006, Wyeth filed its response. Later, the PTO delayed the mailing of a separate office action for 280 days. In October 2011, the PTO issued a Notice of Allowance. In April 2012, the application issued as the 768 patent, reflecting an award of 1291 days of patent term adjustment, 35 U.S.C. 154(a)(2). The Federal Circuit affirmed denial of an adjustment for 197 days from August 10, 2005-February 23, 2006. Discussions concerning the challenged restriction requirement, which satisfied the notice requirement, were part of the typical “back and forth” of prosecution, not the type of error intended to be compensated. View "Pfizer, Inc. v. Lee" on Justia Law

MG’s patents relate to “financial transactions including a method for a borrower to evaluate and/or obtain financing.” MG sued for infringement. Defendants claimed that the patents failed to claim patent-eligible subject matter. The judge’s Standing Patent Rules (SPRs), developed “based largely on information obtained from over 100 patent practitioners and professors, a review of all the other local patent rules, and a review of related literature,” required that a party opposing an infringement claim serve invalidity contentions after a scheduling conference. Defendants served invalidity contentions, including the statement: “Defendants do not present any grounds of invalidity based on 35 U.S.C. 101 . . . at this time. The final claim construction may require such an assertion of invalidity.” The SPRs required final infringement contentions and expert reports following the issuance of an order construing claim terms. After the claim construction order, final invalidity contentions were served, citing 35 U.S.C. 101. The court agreed that an intervening Supreme Court decision constituted good cause for reviving the invalidity claim and later concluded that all of the claims were directed to the abstract idea of “anonymous loan shopping” and included no “inventive concept.” The Federal Circuit affirmed, upholding denial of MG’s motion to strike the section 101 defense and the finding that the asserted claims are directed to patent-ineligible subject matter. View "Mortgage Grader, Inc. v. First Choice Loan Servs., Inc." on Justia Law

Ethicon’s patent is directed to a surgical device used to staple, secure, and seal tissue that has been incised. As is commonly done during endoscopic procedures, a surgeon will insert the device into the patient and will pull a trigger to latch onto a desired tissue. Once attached, the surgeon will then pull another trigger, which causes a blade to move, cutting the desired tissue. Simultaneously, rows of staples on either side of the cutting blade are actuated against a staple forming surface, both securing and sealing the newly-cut tissue. The Patent Trial and Appeals Board granted inter partes review found all challenged claims invalid as obvious over the prior art. The Federal Circuit rejected an argument that the Board’s final decision is invalid because the same Board panel made both the decision to institute and the final decision and upheld the determination that the claims would have been obvious over prior art. View "Ethicon Endo-Surgery, Inc. v. Covidien, LP" on Justia Law

Wi-LAN’s 802 patent concerns a wireless data communication technique called “MultiCode Direct-Sequence Spread Spectrum” (MC-DSSS). WiLAN asserts that the patented technique is embodied in several modern wireless communications standards. In 2011, Wi-LAN sued Apple and other technology companies for infringing two claims of the 802 patent by manufacturing and selling products complying with various wide-area communication standards. A jury found that Apple did not infringe and that the claims are invalid. The district court denied Wi-LAN’s motion for judgment as a matter of law and for a new trial with respect to infringement, but it granted Wi-LAN’s motion for JMOL of no invalidity. The Federal Circuit affirmed the jury’s verdict of non-infringement as supported by substantial evidence, but reversed the finding of no invalidity. The JMOL determination of no invalidity was based on a post-verdict reconstruction of the claims that went far beyond clarifying a meaning inherent in the construction or making plain what should have been obvious to the jury. The post-verdict reconstruction altered the scope of the original construction and undermined Apple’s invalidity case post-verdict. View "Wi-LAN, Inc. v. Apple Inc." on Justia Law

In 2005, Urbanski filed the 614 application, entitled “Protein and Fiber Hydrolysates” and is directed to a method of enzymatic hydrolysis of soy fiber, such that the product has a reduced water holding capacity suitable for use as food additives. The Patent Trial and Appeal Board affirmed the Examiner’s rejection of certain claims as unpatentable under 35 U.S.C. 103(a). The Federal Circuit affirmed, upholding the determination that the claims would have been obvious over cited references relating to enzymatic hydrolysis of dietary fibers, which are readily combinable. View "In re: Urbanski" on Justia Law

STAR owns a patent that describes methods for generating smoke that “enables the presence and location of leaks in a fluid system (e.g. the evaporative or brake system of a motor vehicle) to be accurately and visually detected depending upon rate of the air flow through the fluid system under test and whether smoke escapes from the system.” Redline sought inter partes review. The Patent Trial and Appeal Board denied Redline’s motion to submit supplemental information under 37 C.F.R. 42.123(a) and found Redline failed to show that claims of the patent would have been obvious. The Federal Circuit affirmed. The Board properly found that prior art, taken together, generate smoke via differing methods and thus, could not be combined to achieve the claimed invention recited in claims of STAR’s patent. View "Redline Detection, LLC v. STAR Envirotech, Inc." on Justia Law

In a wireless system, devices communicate with fixed “base stations” according to “protocols,” which are standardized procedures that govern how data exchanged between devices is formatted, ordered, maintained, and transmitted. Effective wireless communication requires that the transmitting device and the receiving device follow the same protocol. Commil’s patent covers a method of providing faster, more reliable handoffs of mobile devices from one base station to another as a mobile device moves throughout a network area. Cisco is a major supplier of WiFi access points and controllers. A jury found that Cisco infringed the patent and that the specified claims were not invalid as indefinite, for lack of enablement, or as lacking adequate written description. The Federal Circuit held that the district court gave the jury a legally erroneous instruction concerning indirect infringement and that Cisco’s evidence of a good-faith belief of invalidity could negate the requisite intent for induced infringement. The Supreme Court vacated. On remand, the Sixth Circuit reversed the district court, concluding that substantial evidence did not support the jury’s finding that Cisco’s devices, when used, perform the “running” step of the asserted claims, precluding liability under either of Commil’s direct or inducement theories, View "Commil USA, LLC v. Cisco Sys., Inc." on Justia Law

The Patent Trial and Appeal Board granted SAMSF’s motion to cancel certain claims prior to its review of SAMSF’s patents relating to administering the “natural” stereoisomer of 5-methyl-tetrahydrofolic acid (L-5-MTHF) and other vitamins to treat symptoms associated with folate deficiency, which causes health issues, including cardiovascular disease, neurological disorders, birth defects, and skeletal disorders. The Federal Circuit affirmed the Board’s conclusion of obviousness under 35 U.S.C. 103. The court prior rejected SAMSF’s arguments art taught away from its claimed use of a reduced folate to treat folate deficiency, and that objective indicia of non-obviousness further demonstrated the validity of its patents. Although the Board erred in its assessment of the evidence of licensing, its other factual findings were supported by substantial evidence. View "S. Ala. Med. Sci. Found. v. Gnosis, S.P.A." on Justia Law

At the request of Gnosis, the Patent Trial and Appeal Board instituted inter partes review of claims of Merck’s patent, which relates to methods of using folates to lower levels of homocysteine in the human body. Homocysteine is an amino acid that, when present in excessive quantities, can cause severe cardiovascular, ocular, neurological, and skeletal disorders. Merck filed a response and a motion to cancel claims 1–3, 5, 6, and 13, which the Board granted. The Board only reviewed the patentability of dependent claims 8, 9, 11, 12, 14, 15, and 19–22 and found them invalid for obviousness, 35 U.S.C. 103, in light of prior art. The Federal Circuit affirmed, finding that the Board’s factual findings to the contrary were supported by substantial evidence and rejecting Merck’s arguments that the prior art taught away from the claimed method and that objective indicia of non-obviousness further support the patentability of the claims. View "Merck & Cie v. Gnosis, S.P.A." on Justia Law

DiStefano’s patent application claims a method that enables an individual to design a web page without having to “learn HTML or to interact extensively with a web page designer.” Its primary embodiment includes a graphical user interface with a primary display screen and an overlaid design plate that has menu buttons to assist in editing and a design place to edit web assets, such as Java applets, scripts, stock art, background images, and textures. Web assets can come from a web asset database, be uploaded directly by users, or be obtained from independent websites. When the user finishes editing a web asset, it is dragged from the design plate onto the website. The Patent Trial and Appeal Board rejected claims under 35 U.S.C. 102, for anticipation. The Federal Circuit vacated, rejecting application of the printed matter analysis and a conclusion that “web assets’ origination from third party authors and the user cannot patentably distinguish (i.e., cannot breathe novelty into) the claimed method, particularly because the web assets’ origins have no functional relationship to the claimed method.” Although selected web assets likely communicate some information, the content of the information is not claimed; the information’s “origin,” is not part of informational content. Nothing in the claim calls for origin identification to be inserted into the content of the web asset. View "In re: DiStefano" on Justia Law