Justia Patents Opinion Summaries

Institut Pasteur owns three U.S. patents, which claim methods and tools for the site-directed insertion of genes into eukaryotic chromosomes. Precision requested inter partes reexamination of each. A Patent and Trademark Office examiner rejected a number of Pasteur’s claims for obviousness, under 35 U.S.C. 103.The Patent Trial and Appeal Board affirmed the rejections, concluding that the claimed inventions were obvious extensions of two prior-art references disclosing similar methods of targeting non-chromosomal DNA in prokaryotic cells. With respect to one patent, the Federal Circuit dismissed Pasteur’s appeal as moot, because Pasteur presented only substantively amended claims and amended claims cannot be entered after the patent has expired. With respect to another patent, the court reversed the Board’s conclusion as unsupported by substantial evidence and containing an erroneous obviousness analysis, including improper discounting of Pasteur’s objective indicia of non-obviousness. The court vacated the Board’s decision on the third patent and remanded for consideration of what motivation, if any, a skilled artisan at the relevant time would have had to pursue the claimed invention. View "Institut Pasteur & Universite v. Focarino" on Justia Law

Plaintiff and Defendant were competitors in the embedded non-volatile memory market. Plaintiff filed suit against Defendant alleging both literal infringement and infringement under the doctrine of equivalents. After striking evidence regarding Plaintiff’s theory of equivalence and ruling that Plaintiff had disavowed claim scope, the district court granted summary judgment in favor of Defendant. The United States Court of Appeals for the Federal Circuit summarily affirmed. While that appeal was pending, Defendant filed a motion for an award of attorneys’ fees. The district court denied the motion, concluding that although Defendant was the prevailing party in this case, Defendant failed to meet its burden of establishing that Plaintiff brought or maintained the prosecution of its patent infringement in bad faith. The Federal Circuit vacated the denial of Defendant’s motion for attorneys’ fees, holding that the district court’s decision was premised on an incorrect legal standard. Remanded. View "Kilopass Tech., Inc. v. Sidense Corp." on Justia Law

In 2010, Microsoft filed a complaint in the International Trade Commission against Motorola, alleging that that the importation and sale of certain Motorola mobile devices infringed nine Microsoft patents, including the 566 patent, which claims a mobile device containing a personal information manager (PIM). PIMs are applications that manage scheduling, communications and similar tasks. Microsoft Outlook is an example of a PIM. The Commission determined that Motorola violated the Tariff Act of 1930, as amended, 19 U.S.C. 1337, by importing and selling mobile devices that infringe the 566 patent. The Federal Circuit affirmed, finding that substantial evidence supported determinations that Motorola did not show that the asserted claims are invalid and that Microsoft showed that it satisfied the domestic industry requirement.View "Motorola Mobility, LLC v. Int'l Trade Comm'n" on Justia Law

CBT sued Return Path and Cisco IronPort for infringement. The district court construed the claims at issue; CBT stipulated to noninfringement of the 114 patent and the district court granted summary judgment of indefiniteness of the one asserted claim of the 550 patent. After a remand, the district court held that CBT should pay the defendants their “costs,” which the clerk taxed at $49,824.60 for Return Path and $268,311.12 for Cisco. The same bills for electronic discovery had been submitted and had been the basis of an award prior to the remand. The Federal Circuit reversed part, finding that the district court erred in its interpretation of 28 U.S.C. 1920(4) governing the taxation of costs for “making copies” as applied to electronic document production. View "CBT Flint Partners, LLC v. Return Path, Inc." on Justia Law

Cross Match claimed that Suprema and Mentalix violated 19 U.S.C. 1337(a)(1)(B)(i) by importing articles that infringe or are used to infringe its patents. The International Trade Commission entered a limited exclusion order barring importation of certain optical scanning devices, finding that Mentalix directly infringed a method claim by using its own software with imported Suprema scanners and found that Suprema induced that infringement and that certain of Suprema’s imported optical scanners directly infringe other claims of the 993 patent. The Commission found no infringement of the 562 patent. The Commission held that Suprema and Mentalix failed to prove that the 993 patent was invalid as obvious over two prior art patents. The Federal Circuit vacated and remanded for revision of the order to bar only a subset of the scanners. An exclusion order based on a section 1337(a)(1)(B)(i) violation may not be predicated on a theory of induced infringement under 35 U.S.C. 271(b) where direct infringement does not occur until after importation of the articles the exclusion order would bar. View "Suprema, inc. v. Int'l Trade Comm'n" on Justia Law

Tolmar’s filed an Abbreviated New Drug Application (ANDA) seeking approval to market a generic version of Differin® Gel, 0.3%, a topical medication containing 0.3% by weight adapalene approved for the treatment of acne. Galderma sued Tolmar, alleging that Tolmar’s ANDA product infringed its patents. The district court ruled against Tolmar, finding the Galderma patents not invalidity for obviousness under 35 U.S.C.103. The Federal Circuit reversed, after examining prior art. While the comparable tolerability of 0.1% and 0.3% adapalene was unexpected in view of the prior art, a skilled artisan would have expected that tripling the concentration of adapalene would have resulted in a clinically significant increase in side effects, so the result does not constitute an unexpected result that is probative of nonobviousness. The commercial success of Differin® is of “minimal probative value.” View "Galderma Labs, L.P. v. Tolmar, Inc." on Justia Law

Access sells software for mobile communication, owns the patents at issue, and entered into an exclusive license agreement with APAC, a subsidiary of Acacia. The agreement gave APAC the exclusive right to grant sublicenses, to sue for damages and to seek relief for infringement of the patents. The agreement disclaims third-party-beneficiary rights, states that APAC may not enforce the patents against, or seek licenses to practice the patents from, Access’s customers and end-users in connection with Access’s products and services, and states that APAC and Access consent to the exclusive jurisdiction of any California state or federal court. APAC assigned all of its rights and liabilities in the patents to a wholly owned subsidiary, SmartPhone. SmartPhone sued Huawei, which makes mobile handsets and tablets, in Texas, alleging that Huawei products infringe the patents. Huawei then sued SmartPhone, Acacia Research, and Access in California, alleging that Huawei has been an Access customer for more than 10 years and seeking declaratory judgments of noninfringement. Based on the Texas filing, the district court dismissed the noninfringement and invalidity counts under the first-to-file rule. Dismissing remaining counts, the court stated that.an allegation that the parties intended Huawei to benefit from the license agreement conflicted with its terms. The Federal Circuit affirmed. View "Futurewei Tech., Inc. v. Acacia Research Corp." on Justia Law

Apple sued Samsung, alleging infringement of Apple patents and dilution of Apple’s trade dress. Samsung counterclaimed, alleging infringement of its own patents. A jury returned a verdict substantially in Apple’s favor, finding that 26 Samsung smartphones and tablets infringed Apple patents and that six Samsung smartphones diluted Apple’s registered iPhone trade dress and unregistered iPhone 3G trade dress. The jury rejected Samsung’s infringement counterclaims and awarded Apple more than $1 billion. The district court set aside a portion of the damages award for certain products and scheduled a partial new trial on damages, but affirmed the jury’s liability findings. The court denied Apple’s request for a permanent injunction. The Federal Circuit affirmed the denial of injunctive relief with respect to design patents and trade dress, but vacated the denial with respect to Apple’s utility patents. The court noted that Samsung has stopped selling the products found to dilute trade dress, but that, with respect to the utility patents, the court must assess whether Apple’s evidence suffices to establish irreparable injury. View "Apple, Inv. v. Samsung Elecs. Co." on Justia Law

OWW owns related patents directed to cushioning devices that fit over the residual stumps of amputated limbs to make the use of prosthetics more comfortable. Some of the patents have been asserted in patent infringement suits and many have been involved in reexamination proceedings before the Patent and Trademark Office. OWW sued Alps for infringement of the 237 patent, entitled “Gel and Cushioning Devices,” lists Kania as the sole inventor and has an application date of 1996. The district court issued its claim construction order. Alps subsequently initiated the first of two consecutive ex parte reexaminations of the 237 patent. After a stay was lifted, the district court granted summary judgment to Alps, finding certain claims invalid due to the collateral estoppel effect of parallel litigation and other claims invalid for obviousness. The district court also granted OWW summary judgment of no inequitable conduct. The Federal Circuit affirmed on the issues of collateral estoppel and obviousness, but reversed and remanded on the issue of inequitable conduct. Issues of material fact regarding whether OWW committed inequitable conduct during the reexamination proceedings by withholding information preclude summary judgment.View "Ohio Willow Wood Co. v. ALPS South, LLC" on Justia Law

IL-13 is a regulatory molecule called a cytokine. Cytokines interact with cytokine receptors located on target cells. Sanofi and Pfizer were conducting research, for therapeutic and diagnostic purposes, and each discovered and filed patent applications directed to the polynucleotide encoding the IL-13 protein binding chain. The patent is awarded to the first applicant to conceive and reduce to practice the invention represented by an interference count, in accordance with Patent and Trademark Office (PTO) rules. Sanofi had a December 6, 1995 priority date. Pfizer’s filing date was March 1, 1996; Pfizer bore the burden of proving a date of conception earlier than Sanofi’s date. Pfizer presented evidence that it had isolated and identified the desired cDNA before that date, but, due to sequencing errors, did not then have a completely accurate analysis of the entire nucleotide sequence. The PTO Board found that Pfizer had “the claimed polynucleotide in hand with some additional identifying information including at least a partial sequence,” and ruled that Pfizer “established conception and actual reduction to practice of a polynucleotide within the scope of count 3” before the Sanofi date. The Federal Circuit affirmed; possession and appreciation of the actual isolated DNA is dispositive for priority of conception for an interference count directed to isolated DNA.View "Sanofi-Aventis v. Pfizer, Inc." on Justia Law