Justia Patents Opinion Summaries

On inter partes review, the Patent Trial and Appeal Board construed the term “perforated” and invalidated several claims of PST’s patent, finding that those claims were anticipated or would have been obvious over Japanese Application Publication No. H1033551 A (JP 551) and that JP 551 qualified as prior art under 35 U.S.C. 102(a). The Board rejected PST’s argument that the Board could not rely on JP 551 as filed because the petitioners (Olympus) failed to translate the bibliographic page containing the publication date. The Board also determined that PST failed to antedate JP 551 because it had not proven that the inventor of its patent was reasonably diligent in reducing his invention to practice. The Federal Circuit vacated and remanded. While the Board’s acceptance of Olympus’ submission of JP 551 was harmless, the Board erred in its claim construction. On remand, the Board must determine whether all of PST’s evidence, considered as a whole and under a rule of reason, collectively corroborates testimony that the inventor worked reasonably continuously within the confines of his occupation to diligently finalize the patent application during an 81-day critical period. View "Perfect Surgical Techniques, Inc. v. Olympus America, Inc." on Justia Law

NuVasive’s patent describes and claims implants for spinal fusion surgery. On inter partes review, the Patent Trial and Appeal Board cancelled all but one challenged claim under 35 U.S.C. 103, finding in one prior-art reference (Michelson), a spinal fusion implant that meets two of the claim requirements of the NuVasive patent—having a length both greater than 40 mm and at least 2.5 times its width. NuVasive argued that it did not receive adequate notice of or opportunity to address that reading of Michelson and its consequences for the overall obviousness analysis. The Federal Circuit vacated in part and remanded Medtronic’s petition put NuVasive on notice that Medtronic was relying on particular portions of Michelson to teach the NuVasive patent’s claimed long-and-narrow implants. Medtronic’s petition did not, however, notify NuVasive of the assertions about the pertinent portions of Michelson that later became critical; the Board’s ultimate reliance on that material, together with its refusal to allow NuVasive to respond fully once that material was called out, violated NuVasive’s rights under the Administrative Procedure Act. View "In re: NuVasive, Inc.." on Justia Law

REG’s patent is directed to paraffin compositions containing primarily even-carbon-number paraffins and methods of making them. Even-carbon-number paraffins are useful as phase change materials (PCMs), which can be used as insulation in a house; they can absorb heat during the warm portions of the day by undergoing a solid-liquid phase transition and return the heat during the cooler portions of the day by re-freezing. The thermal storage capacity of PCMs is determined by their latent heat of fusion, which is higher for even-carbon-number paraffins. The patent seeks to increase the production of compositions with higher percentages of even-carbon-number paraffins. One method disclosed in the patent is the hydrogenation and deoxygenation of naturally occurring fatty acids and esters, such as bio-oils, to produce primarily even-carbon-number paraffins. On inter partes review, the Patent Trial and Appeal Board excluded several REG exhibits based on hearsay and other grounds and found certain claims invalid as anticipated by other patents. The Federal Circuit affirmed that certain claims were anticipated, but reversed a finding that REG failed to establish conception of the invention prior to another patent’s filing date. The court remanded for further fact finding on diligence and reduction to practice and vacated the exclusion of certain exhibits. View "REG Synthetic Fuels, LLC v. Neste Oil Oyj" on Justia Law

Amdocs's patents concern parts of a system designed to solve an accounting and billing problem faced by network service providers. Each written description describes the same system, which allows providers to account for and bill for internet protocol network communications. The system's components are arrayed in a distributed architecture that minimizes the impact on network and system resources. Each patent explains that this is an advantage over prior art systems that stored information in one location, making it difficult to keep up with massive record flows from the network devices and which required huge databases. The court granted Openet summary judgment of non-infringement and no inequitable conduct and made claim constructions. The Federal Circuit affirmed two constructions, but vacated a third. On remand, following the Supreme Court decision in Alice Corp. v. CLS Bank International (2014), the district court invalidated all four patents as ineligible under 35 U.S.C. 101. The Federal Circuit reversed and remanded. While noting each abstract idea that the district court found to be disqualifying, the court reasoned that the claims at issue, understood in light of their written descriptions, could be eligible for patenting. The claims are not necessarily valid, having not yet been tested for novelty, non-obvious subject matter, and written description and enablement. View "Amdocs (Israel) Limited v. Openet Telecom, Inc." on Justia Law

Bosch sued Cardiocom, alleging infringement of two patents. Cardiocom petitioned for inter partes review of those patents. The petitions were denied because Cardiocom failed to show a reasonable likelihood that any of the challenged claims was unpatentable. Medtronic (Cardiocom’s parent company) then filed petitions seeking inter partes review of the same patents, listing Medtronic as the sole real party in interest. Bosch argued that Medtronic had failed to name Cardiocom as a real party in interest as required by 35 U.S.C. 312(a)(2). The Patent Board granted additional discovery regarding Cardiocom’s status, then dismissed, “persuaded … that Medtronic [was] acting as a proxy for Cardiocom.” The Board cited evidence that Cardiocom was the defendant in the infringement suits, that Cardiocom had filed its own petitions for inter partes review, that Cardiocom communicated with Medtronic while Medtronic’s petitions were being prepared, and that Cardiocom paid some of the fees for preparing Medtronic’s petitions. In November 2015, the Federal Circuit dismissed Medtronic’s appeals for lack of jurisdiction and denied mandamus relief, but later recalled the mandate, following the Supreme Court’s 2016 Cuozzo decision. The court subsequently reaffirmed. The Board’s vacatur of its institution decisions and termination of the proceedings constitute decisions whether to institute inter partes review and are “final and nonappealable” under section 314(d). Nothing in Cuozzo is to the contrary. View "Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc." on Justia Law

The 141 application relates to methods of treating or preventing influenza by administering the drug zanamivir by oral inhalation. The examiner rejected the pending claims as obvious over Australian Patent No. AU-A1-27242/92 (Von Itzstein I), in view of WIPO Publication WO 91/16320 (Von Itzstein II) and other references. The Patent Trial and Appeal Board agreed, finding that Von Itzstein II’s disclosure of “inhalation” for treating influenza with its compounds “is reasonably understood to disclose inhalation by either the nose alone, mouth alone, or both” and concluded that Von Itzstein II ,in view of Von Itzstein I’s disclosure of zanamivir, rendered the claims obvious. The Board also considered the applicant’s evidence of secondary considerations—namely of unexpected results—but found it to be unpersuasive. The Federal Circuit affirmed the rejection as supported by substantial evidence. View "In re: Efthymiopoulos" on Justia Law

Synopsys’s “Gregory Patents” relate to the logic circuit design process. In the early days, a designer was required to prepare a detailed schematic diagram that identified individual hardware components and the interconnections between them or a set of Boolean logic equations that specified the precise functionality of the design. A fabrication facility would then build the corresponding physical circuit. Over time, logic circuits became more complex; designers began to focus on the higher-level functionality of their designs and became less concerned with the detailed schematics or Boolean logic equations necessary to implement that functionality. The Gregory Patents describe “control flow graphs,” and “assignment conditions,” that provide a scheme to translate functional descriptions of logic circuits into hardware component descriptions of those circuits without requiring the designer to instantiate individual hardware components. In an infringement suit, the court invalidated certain claims under 35 U.S.C. 101, as directed to ineligible subject matter. The Federal Circuit affirmed. The claims are directed to the abstract idea of translating a functional description of a logic circuit into a hardware component description. This idea can be, and was, performed mentally or on paper by one of ordinary skill in the art. The claims do not require the involvement of a computer and cannot be characterized as an improvement in a computer as a tool. View "Synopsys, Inc. v. Mentor Graphics Corp." on Justia Law

The specification and prosecution history of Poly-America’s patent contain clear and unequivocal statements that the inventor intended to limit the claimed invention to a trash bag with “short seals” at its upper corners that extend inwardly to narrow the bag’s upper opening. Poly-America sued API for infringement. Poly-America proposed that “short seal” be construed as “a seal that inseparably welds or joins the first and second elastic drawstrings and the first and second panels of the bag.” The district court instead adopted API’s proposed construction: “A seal for securing the elastic drawstring, which seal is located adjacent to a side seal, and that is not substantially aligned with the side seal, but extends inwardly from the interior edge of the side seal,” as consistent with the specification and the prosecution history. Under that construction of short seal, the accused device would not infringe because API’s accused bags are conventional drawstring trash bags with short seals that are substantially aligned with the side seal—i.e., the short seals do not extend inwardly, so the width of the relaxed upper opening is equal to the bag proper width. The Federal Circuit affirmed. Given the inventor’s disavowal, the district court correctly construed the term “short seal” to require that such seals extend inwardly. View "Poly-America, L.P. v. API Indus., Inc." on Justia Law

Massachusetts Institute of Technology sued Shire Pharmaceuticals, for infringement of patents that are directed to three-dimensional scaffolding for growing cells in vitro to produce organ tissue in vivo. Following the district court’s construction of the terms “vascularized organ tissue” and “cells derived from a vascularized tissue” and its determination that the term “three-dimensional scaffold” was not indefinite, the parties stipulated to a final judgment of validity and infringement. The Federal Circuit affirmed, finding no error in the district court’s claim construction. View "Mass. Inst. of Tech. v. Shire Pharma., Inc." on Justia Law

FairWarning sued Iatric Systems for infringing claims of the 500 patent, which is titled “System and Method of Fraud and Misuse Detection” and discloses ways to detect fraud and misuse by identifying unusual patterns in users’ access of sensitive data. The specification describes systems and methods to detect fraud by an otherwise-authorized user of a patient’s protected health information (PHI). According to the specification, pre-existing systems were able to record audit log data concerning user access of digitally stored PHI. The claimed systems and methods record this data, analyze it against a rule, and provide a notification if the analysis detects misuse. The Federal Circuit affirmed dismissal of the suit. The patent claims patent-ineligible subject matter under 35 U.S.C. 101. The claims were directed to a “basic and well-established” abstract idea: analyzing records of human activity to detect suspicious behavior. They contained nothing to transform the abstract idea into a patentable concept, but only contain an instruction to apply the abstract idea “using some unspecified, generic computer.” View "Fairwarning IP, LLC v. Iatric Sys, Inc." on Justia Law