Articles Posted in US Court of Appeals for the Federal Circuit

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University of Minnesota (UMN), an arm of the state of Minnesota, pursues patent protection for inventions resulting from its research and is the owner of the patents at issue. LSI designs and supplies semiconductors; it allegedly infringed UMN’s 601 patent, which claims particular types of “read channel” chips. Ericsson, a telecommunications company. Its customers’ use of Ericsson’s products was alleged to infringe four UMN patents that claim technology used for 4G LTE networks. UMN sued LSI and separately sued Ericsson’s customers. Ericsson intervened in the customer suits. After the commencement of the infringement suits, LSI and Ericsson separately petitioned the Patent Trial and Appeal Board for inter partes review, seeking a determination of unpatentability of the challenged claims on grounds of anticipation and obviousness. The Board declined to dismiss the petitions, rejecting an argument that states enjoy sovereign immunity in IPR proceedings. The Federal Circuit affirmed. IPR represents the sovereign’s reconsideration of the initial patent grant, and the differences between state and tribal sovereign immunity do not warrant a different result than in circuit precedent concerning tribal sovereign immunity: State sovereign immunity does not apply to IPR proceedings. View "Regents of the University of Minnesota. v. LSI Corp." on Justia Law

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ON Semiconductor sought inter partes review (IPR) of several claims of Power’s 079 patent. The Patent Trial and Appeal Board determined that the IPR was not time-barred by 35 U.S.C. 315(b) and that the challenged claims were invalid. The Federal Circuit vacated. Power raised the same section 315(b) argument that it raised and litigated in a non-appealed IPR on a different patent, so ON established the basic requirements for issue preclusion. However, the lack-of-incentive-to-litigate exception applies and justifies rejecting ON’s issue preclusion argument. On the merits, the court concluded that section 315(b) requires consideration of privity and real-party-in-interest (RPI) relationships arising after filing but before institution. The court declined to construe section 315(b) in a way that would have the Board, when deciding whether to institute, ignore the existence of RPIs or privies who would benefit from having an IPR instituted simply because they were not RPIs or privies when the petition was filed. IPR was time-barred by because Fairchild, which challenged the patent in 2009 and merged with ON several years later, was an RPI at the time the IPR was instituted, even though it was not an RPI at the time the petition was filed. View "Power Integrations, Inc. v. Semiconductor Components Industries, LLC" on Justia Law

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Elm owns the Challenged Patents, which share a specification and all relate to “stacked integrated circuit memory.” The Challenged Patents are the subject of co-pending litigation between Elm and Petitioners. The Patent Trial and Appeal Board instituted inter partes review and held that Petitioners did not establish the unpatentability of 105 claims across 11 patents. The Federal Circuit affirmed. Each challenged claim requires a low-tensile-stress dielectric, and substantial evidence supports the Board’s finding that a person of ordinary skill in the art would not have reasonably expected success in combining the prior art to meet this limitation. The court construed the term “substantially flexible” as largely able to bend without breaking and contains a circuit layer that is substantially flexible semiconductor substrate and a sufficiently low tensile stress dielectric material. View "Samsung Electronics Co., Ltd. v. Elm 3DS Innovations, LLC" on Justia Law

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The asserted patents were originally assigned to AMD, which later purported to transfer “all right, title and interest” in the patents to Lone Star, with several limitations. For example, Lone Star agreed to only assert the covered patents against “Unlicensed Third Party Entit[ies]” specifically listed in the agreement. New entities can only be added if both parties agree to add them. If Lone Star sues an unlisted entity, AMD has the right, without Lone Star’s approval, to sublicense the covered patents to the unlisted target. AMD can prevent Lone Star from assigning the patents or allowing them to enter the public domain. AMD and its customers can continue to practice the patents; AMD shares in any revenue Lone Star generates from the patents through “monetization efforts." Lone Star sued parties listed as Unlicensed Third Party Entities in the agreement, asserting infringement and alleging that AMD transferred “all right, title, and interest” in the asserted patents to Lone Star. The district court concluded that Lone Star does not own the patents and could not assert them. The Federal Circuit vacated the dismissal, while agreeing that Lone Star cannot assert the patents on its own. The court should not have dismissed the case without considering whether AMD should have been joined (Federal Rule of Civil Procedure 19. View "Lone Star Silicon Innovations, LLC v. Nanya Technology Corp." on Justia Law

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Pabst’s patent, entitled “Analog Data Generating and Processing Device Having a Multi-Use Automatic Processor,” issued in 2015 and claims priority to a 1999 application through continuations of applications that issued as Pabst’s 399 and 449 patents. That same specification also gave rise to Papst’s 144 and 746 patents. The specification describes an interface device for communication between a data device (on one side of the interface) and a host computer (on the other). The interface device achieves high data transfer rates, without the need for a user-installed driver specific to the interface device, by using fast drivers that are already standard on the host computer for data transfer, such as a hard-drive driver. The interface device signals to the host device that the interface device is an input/output device for which the host already has such a driver. On inter partes review, Patent Trial and Appeal Board determined that claims 1– 38 and 43–45 are unpatentable for obviousness based on a combination of the Aytac patent, a publication setting forth standards for the Small Computer System Interface-2, and “admitted prior art.” The Federal Circuit affirmed, finding that Pabst’s arguments are barred by issue preclusion and fail on the merits. View "Pabst Licensing GMBH & Co. KG v. Samsung Electronics America, Inc." on Justia Law

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Sony’s patent is directed to “an information recording medium” (e.g., a compact disk, video disk, or magneto-optical disk) that can store audio data having multiple channels and “a reproducing device” that can select which channel to play based on a default code or value stored in nonvolatile memory. The specification states that the reproducing device is provided with “storing means” for storing the audio information (e.g., audio data recorded in different languages), “reading means” for reading codes associated with the audio information (e.g., 0, 1, 2, and 3 for English, French, German, and Japanese, respectively), and “reproducing means” for reproducing the audio information based on the default code or value. The specification gives the example of a device manufactured to record and store audio data (e.g., of a movie) in multiple different languages for various countries. On inter partes review, the Patent Trial and Appeal Board found two claims unpatentable as obvious. The Federal Circuit vacated. The Board erred in construing the “reproducing means” limitation, which is more appropriately construed as computer-implemented, and that the corresponding structure is a synthesizer and controller that performs the algorithm disclosed in the specification. View "Sony Corp. v. Iancu" on Justia Law

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Quest’s patent relates to a system for displaying inspection data collected from certain commercial furnaces (e.g., a furnace used in a refinery). The patent attempts to improve upon how prior art systems displayed collected inspection data, but does not purport to improve upon how inspection data is collected or the type of data collected; the system comprises “a storage device for storing the inspection data collected by an inspection tool flushed through the furnace” and a computer programmed to generate a plurality of data markers in relation to that data, partition the data at the data markers, and generate a display of the partitioned inspection data, “wherein the display is a two-dimensional or three-dimensional representation of one or more of the tube segments of the furnace.” On summary judgment, the district court held that five claims of the patent were invalid under 35 U.S.C. 102(b) because the claimed invention was offered for sale more than one year before the filing of the patent application. The Federal Circuit held that the district court properly construed the claims and that three claims are invalid based on that construction but that the court erred in disregarding declarations of the inventors under the sham affidavit doctrine, and that Quest raised a genuine issue of material fact as to the validity of two claims. View "Quest Integrity USA, LLC v. Cokebusters USA Inc." on Justia Law

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Non-steroidal anti-inflammatory drugs (NSAIDs), such as aspirin and naproxen, control pain but have undesirable side effects, including gastrointestinal problem. Some practitioners began prescribing acid inhibitors, including PPIs, to reduce the acidity in the gastrointestinal tract. The combination therapy had complications. Stomach acid degraded the PPI before it could reach the small intestine. To address those complications, Dr. Plachetka invented a drug (Vimovo®.) that coordinated the release of an acid inhibitor and an NSAID in a single tablet with a core of an NSAID, an enteric coating around the NSAID that prevents its release before the pH increases to a certain desired level, and an acid inhibitor like PPI around the outside of the enteric coating that actively works to increase the pH to the desired level. Plachetka’s invention contemplates using some uncoated PPI for immediate release. Manufacturers, wanting to market a generic version of Vimovo®, submitted Abbreviated New Drug Applications to the FDA. They stipulated to infringement, except with respect to one ANDA product and alleged that the Vimovo® patents were invalid as obvious over prior art, 35 U.S.C. 103 and for lack of enablement and adequate written description, 35 U.S.C. 112. The Federal Circuit reversed a holding that the Vimovo® patents were valid. The specification provides nothing more than a claim that uncoated PPI might work, even though persons of ordinary skill in the art would not have thought so, and does not satisfy the written description requirement. View "Nuvo Pharmaceuticals, Inc. v. Dr. Reddy's Laboratories Inc." on Justia Law

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BTG’s 438 Patent, entitled “Methods and Compositions for Treating Cancer,” discloses the administration of a therapeutically effective amount of a CYP17 inhibitor, such as abiraterone acetate, in combination with at least one additional therapeutic agent such as an anti-cancer agent or a steroid. The patent defines an “anti-cancer agent” as “any therapeutic agent that directly or indirectly kills cancer cells or directly or indirectly prohibits[,] stops[,] or reduces the proliferation of cancer cells.” BTG sued Amneal, asserting that its Abbreviated New Drug Applications (ANDA) for the generic version of BTG’s abiraterone product ZYTIGA® infringed the patent. On inter partes review, the Patent Trial and Appeal Board found that the patent’s claims would have been obvious under 35 U.S.C. 103. The district court affirmed, accepting the Board’s claim construction and the same combination of prior art. The Federal Circuit affirmed. The Board correctly concluded that the claims cover a therapy in which abiraterone has an anticancer effect, while prednisone either has its own anti-cancer effect or has a palliative/side-effect reduction effect, and that the “prior art provides a reasonable expectation that prednisone could be used as a therapeutic agent in the treatment of prostate cancer.” View "BTG International Ltd. v. Amneal Pharmaceuticals LLC" on Justia Law

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Bradium’s patents, entitled “Optimized Image Delivery over Limited Bandwidth Communication Channels,” are broadly directed to retrieving large-scale images over network communication channels in low bandwidth conditions and to displaying such images on client devices with limited processing power. The preferred embodiment of the invention includes an image server and a client device connected to each other over a network. In two inter partes review proceedings, Patent Trial and Appeal Board found the claims of both patents unpatentable as obvious in light of prior references, 35 U.S.C. 103. The Federal Circuit affirmed, upholding the Board’s construction of “limited bandwidth communications channel” in both proceedings to mean “a communications channel whose bandwidth is limited.” Substantial evidence supports the Board’s obviousness determinations. View "Bradium Technologies LLC v. Iancu" on Justia Law