Justia Patents Opinion SummariesArticles Posted in U.S. Federal Circuit Court of Appeals
In re: Apple Inc.
Core Wireless sued Apple for patent infringement in the Eastern District of Texas. Core, a Luxembourg company with one employee, is a wholly-owned subsidiary of MOSAID, a Canadian corporation. Core Wireless shares office space with a division MOSAID in Plano, Texas. Apple is a California corporation with a principal place of business in Cupertino, California. The heart of the patent dispute involves baseband processing chips installed in the accused product, which are supplied by California companies, Qualcomm and Intel. Apple moved to transfer the case to the Northern District of California. The district court denied the motion, emphasizing the lack of specificity in Apple’s assertions as to why the transfer factors favored California. Apple then sought to supplement the record. The district court denied the motion, noting that “[t]here is no indication that all of this relevant information was not accessible at the time Apple had filed its transfer motion.” Apple sought a writ of mandamus instructing the district court to vacate its orders. The Federal Circuit denied the petition, finding no abuse of discretion. View "In re: Apple Inc." on Justia Law
Elcommerce.com, Inc. v. SAP AG & SAP Am., Inc.
Elcommerce.com owns a patent directed to a system and method of monitoring a supply chain of components to coordinate and stabilize the supply of components from various producers. Elcommerce charged SAP with patent infringement. SAP counterclaimed that the patent was invalid, unenforceable, and not infringed. The district court construed claims and entered summary judgment that certain asserted system claims were invalid for indefiniteness under 35 U.S.C. 112. The parties stipulated that the claim construction precluded finding that SAP infringes any of the asserted method claims. The Federal Circuit affirmed construction of the claim terms “independent supply chain sites,” “scanning for,” “detecting,” and “monitoring for changed supply-related data information,” and the resulting stipulation of non-infringement of the method claims. The court vacated the ruling of invalidity of the system claims as based on an incorrect evidentiary premise. SAP incorrectly informed the court that Federal Circuit precedent makes consideration of evidence of the knowledge and understanding of the relevant technology by persons of skill in the field of the invention unnecessary and declined to provide evidence of how such persons would view the description of “structure, materials, or acts” in the specification for performance of the several functions claimed. Invalidity must be proven by clear and convincing evidence . View "Elcommerce.com, Inc. v. SAP AG & SAP Am., Inc." on Justia Law
GlaxoSmithKline LLC v. Banner Pharmacaps, Inc.
Dutasteride is useful in the treatment of androgen responsive diseases. Androgens are a class of hormones; testosterone is the major circulating androgen. Androgens are implicated in diseases including benign prostatic hyperplasia, prostate cancer, acne, male pattern baldness and hirsutism. In some target tissues, including prostate and skin tissue, testosterone produces certain effects by first being converted to dihydrotestosterone. Dutasteride inhibits the enzymes that catalyze the conversion, mitigating some of testosterone’s physiological effects. GSK markets Avodart® and Jalyn™, which contain dutasteride and are FDA-approved to treat benign prostatic hyperplasia. GSK’s patent covers dutasteride and any “pharmaceutically acceptable solvate thereof.” Defendants filed Abbreviated New Drug Applications under 21 U.S.C. 355(j), seeking FDA approval to market generic versions of the drugs. As authorized by 35 U.S.C. 271(e)(2), GSK sued for infringement. Defendants stipulated to infringement, but alleged that the asserted claims were invalid for anticipation, lack of utility, lack of enablement, and inadequacy of the written description. The district court construed “solvate” (of dutasteride), acknowledging considerable extrinsic evidence that, in the pharmaceutical field, “solvate” is limited to crystalline complexes, no matter how created, but concluded that the specification of this particular patent directly contradicted any such narrow usage. The Federal Circuit affirmed without addressing claim construction because no matter which construction is adopted, the term “solvate” involves no performance property View "GlaxoSmithKline LLC v. Banner Pharmacaps, Inc." on Justia Law
Starhome GmbH v. AT&T Mobility, LLC
Starhome owns the 487 patent, titled “System and Methods for Global Access to Services for Mobile Telephone Subscribers,” aimed at solving a problem that arises when mobile phone users are in a network other than their home network (roaming). For example, in a home network, a mobile phone user might dial a short code, such as “121,” to access voice mail. While roaming, a network may not recognize the code, resulting in an error message. The 487 patent demonstrates a system providing roaming services and employing an “intelligent gateway” that contains information about multiple home networks, including short-code translation tables, subscriber profile data, and roaming patterns. Starhome sued AT&T. The court construed the term “intelligent gateway” to mean “a network element that transfers information to and from a mobile network and another network external to the mobile network” and the parties stipulated to a judgment of noninfringement. The Federal Circuit affirmed. View "Starhome GmbH v. AT&T Mobility, LLC" on Justia Law
Frans Nooren Afdichtingssystem v. Stopaq Amcorr Inc.
Nooren owns patent 044, entitled “Use of a Preparation for Insulation/Sealing and Coating Purposes and Method for Sealing Manhole Covers,” which discloses a composition for insulating and protecting substrates, such as manhole covers, underground tanks, pipes, and cable sleeves, from corrosion, water ingress, and mechanical stresses. The patent is licensed exclusively to Stopaq, a Dutch company that designs and manufactures coatings and sealants that exhibit both viscous and elastic properties (visco-elasticity) and are designed for corrosion protection and waterproofing. Kleiss, a Dutch company, manufactures similar products that prevent corrosion and protect against leaks, which are distributed in the U.S. by Amcorr. Kleiss and Amcorr sought a declaratory judgment in the Netherlands that their products did not infringe the 044 patent. Nooren filed suit in the U.S., alleging infringement. The parties agreed to focus on the phrase “a filler comprising a plurality of fractions each comprising different size particles, and wherein said different fractions have different particle size distributions” in the only independent claim in the patent. The court granted summary judgment of noninfringement in favor of Amcorr. The Federal Circuit vacated, holding that the district court erred in at least on claim construction. View "Frans Nooren Afdichtingssystem v. Stopaq Amcorr Inc." on Justia Law
Lighting Ballast Control, LLC v. Philips Elec. N. Am. Corp.
The Federal Circuit previously held that patent claim construction receives de novo determination on appeal. Such review is conducted on the administrative record and any additional information in the record of the district court, and is without deference to the ruling of the district court. The court had applied that standard to this case and, reversing the district court, held that the claim term “voltage source means” is a means-plus-function term requiring corresponding structure in the specification. The court held the claims invalid for indefiniteness. After granting rehearing, en banc, the Federal Circuit applied the principles of stare decisis, and confirmed the Cybor standard of de novo review. The court stated that after 15 years of experience with Cybor, it concluded that it should retain plenary review of claim construction, to provide national uniformity, consistency, and finality to the meaning and scope of patent claims. View "Lighting Ballast Control, LLC v. Philips Elec. N. Am. Corp." on Justia Law
Takeda Pharm. Co., Ltd. v. Zydus Pharm. USA, Inc.
Takeda owns patents that claim the formulation for the brand-name drug Prevacid® SoluTab,™ which contains the active ingredient lansoprazole, a proton pump inhibitor used to treat acid reflux. It is the only proton pump inhibitor available as an orally disintegrable tablet. A patient allows the tablet to disintegrate in his mouth, leaving behind thousands of granules which the patient swallows. The stated objective of the 994 patent is a formulation with granules small enough to avoid a feeling of roughness in the patient’s mouth upon disintegration. In 2010, Zydus filed an abbreviated new drug application (ANDA) with the FDA, seeking to manufacture a generic version of Prevacid® SoluTab.™ Takeda filed suit, alleging that the ANDA product infringed claims of several patents. Only claim 1 of the 994 patent remains at issue. Zydus counterclaimed, alleging that claim 1 was invalid for failure to comply with 35 U.S.C. 112. The district court construed the claim term “fine granules having an average particle diameter of 400 μm or less,” accepting Takeda’s argument that the term should be construed to include a deviation of ±10%, based on a “universally accepted” 10% standard of error for particle size measurements. The Federal Circuit reversed the finding of infringement and found no invalidity. View "Takeda Pharm. Co., Ltd. v. Zydus Pharm. USA, Inc." on Justia Law
Ring & Pinion Serv. Inc. v. ARB Corp. Ltd
The patent claims an improved automobile locking differential: the differential is a mechanism that allows wheels to rotate at different speeds relative to each other. When locked, a differential distributes torque so that wheels spin at the same rate. R&P sought declaratory judgment that its Ziplocker product did not infringe the patent. Following claim construction, the parties stipulated that the Ziplocker product literally met every limitation of claim 1 except the “cylinder means formed in” limitation, but that the Ziplocker included an “equivalent” cylinder and that the Ziplocker cylinder would have been foreseeable to a person of ordinary skill in the art when the application was filed. The parties agreed that “should the Court hold ... that foreseeability of an equivalent at the time of application prevents use of the doctrine of equivalents,... the accused differential would not infringe under the doctrine of equivalents” or that should the court hold that foreseeability does not prevent use of the doctrine of equivalents, the accused differential would infringe under that doctrine. The district court held that, while foreseeability did not preclude application of the doctrine of equivalents, a finding of infringement under the doctrine would vitiate the “cylinder means formed in” limitation and granted summary judgment of non-infringement. The Federal Circuit reversed, holding that the district court improperly applied the doctrine of claim vitiation View "Ring & Pinion Serv. Inc. v. ARB Corp. Ltd" on Justia Law
Butamax(TM) Advanced Biofuels v. Gevo, Inc.
Butamax owns the 188 patent, which covers a recombinant microbial host cell that uses a particular biosynthetic pathway to produce isobutanol, which is useful as a fuel or fuel additive, and the 889 patent, which issued from a divisional of the 188 patent’ application and focuses on a method of producing isobutanol from a recombinant yeast microorganism that expresses a five-step biosynthetic pathway. The patents’ specifications largely are identical. The district court rejected Butamax’s claim of literal infringement and granted Gevo summary judgment of noninfringement under the doctrine of equivalents of the asserted claims and of invalidity of claims 12 and 13 of the 889 patent for lack of written description, and invalidity of claims 12 and 13 of the 889 patent for lack of enablement. The Federal Circuit vacated. The district court erred in its claim construction and determination under the doctrine of equivalents and failed to recognize the existence of genuine issues of material fact. The court reversed summary judgment of invalidity for lack of enablement because that judgment appeared to have been a scrivener’s error. View "Butamax(TM) Advanced Biofuels v. Gevo, Inc." on Justia Law
Solvay, S.A. v. Honeywell Int’l, Inc.
Solvay’s 817 patent claims an improvement to a method of making a hydrofluorocarbon (HFC-245fa), which does not deplete the ozone layer as legislatively mandated to replace ozone-depleting alternatives. HFC-245fa is especially useful in preparing polymeric materials used for insulation in refrigeration and heat systems. The patent has a 1995 priority date. In 1994, Honeywell and RSCAC entered into a contract, under which RSCAC engineers, in Russia, studied commercial production of HFC-245fa. RSCAC sent Honeywell a report documenting a continuous process capable of producing high yields of HFC-245fa. Honeywell used the report to run the same process in the U.S., before the 817 patent’s priority date. Solvay sued Honeywell, alleging infringement. Honeywell argued that the Russian inventors made the invention in this country by sending instructions to Honeywell personnel who reduced the invention to practice in the U.S. The district court held that the RSCAC engineers should be treated as inventors who made the invention in the U.S. under 35 U.S.C. 102(g)(2), that RSCAC disclosed claim1 in a 1994 Russian patent application such that they did not abandon, suppress, or conceal it. The Federal Circuit affirmed judgment for Honeywell. It is not required that the inventor be the one to reduce the invention to practice if reduction to practice was done on his behalf in the U.S., so Honeywell’s invention qualified as prior art. View "Solvay, S.A. v. Honeywell Int'l, Inc." on Justia Law