Justia Patents Opinion SummariesArticles Posted in US Court of Appeals for the Federal Circuit
Hologic, Inc. v. Minerva Surgical, Inc.
Truckai and his NovaCept team developed NovaSure, which was FDA-approved to detect perforations in the uterus. NovaCept incorporates the 183 and 348 patents, which list Truckai as an inventor. Truckai assigned to NovaCept his interests in the applications from which those patents claim priority and all continuation applications. Hologic is the current assignee of the patents and markets NovaSure. Truckai left NovaCept and founded Minerva, which developed EAS; EAS received FDA approval for the same indication as NovaSure. Hologic sued Minerva for infringement. In addition to asserting defenses of lack of enablement and failure to provide an adequate written description, Minerva sought inter partes review (IPR). The Patent Board instituted IPR of the 183 patent but denied IPR of the 348 patent and found the 183 claims unpatentable as obvious. Hologic appealed to the Federal Circuit. The district court declined to dismiss the infringement claim as moot and granted Hologic summary judgment that the doctrine of assignor estoppel bars Minerva from challenging the patents' validity, of no invalidity, and of infringement. A jury awarded damages. The Federal Circuit affirmed the Board’s decision that the 183 patent claims are invalid. The district court determined that the decision did not affect the verdict. The Federal Circuit affirmed that assignor estoppel bars the assignor from asserting the invalidity of the 348 patent in district court. Assignor estoppel does not preclude Minerva from relying on the Board's decision to argue that the 183 patent claims are void ab initio, justifying the denial of a permanent injunction, enhanced damages, and ongoing royalties. View "Hologic, Inc. v. Minerva Surgical, Inc." on Justia Law
Dragon Intellectual Property LLC v. DISH Network LLC
Dragon sued 10 defendants, alleging patent infringement. Based on petitions by DISH and SXM (collectively, “DISH”), the Board instituted inter partes review (IPR) of the patent. The district court stayed proceedings as to DISH but proceeded as to the other defendants. After the court issued a claim construction order, Dragon, DISH, and the other defendants stipulated to noninfringement as to the accused products. The court entered judgment in favor of all defendants. In the parallel IPR, the Board issued a final decision holding unpatentable all asserted claims. DISH sought attorneys’ fees under 35 U.S.C. 285 and 28 U.S.C. 1927. Before the motions were resolved, Dragon appealed both the judgment of noninfringement and the Board’s decision. The Federal Circuit affirmed the Board’s decision and dismissed the district court appeal as moot. On remand, the district court vacated the judgment of noninfringement as moot but denied DISH’s motions for attorneys’ fees, holding that “success in a different forum is not a basis for attorneys’ fees” in the district court. The Federal Circuit vacated. The judgment of noninfringement was vacated only because DISH successfully invalidated the claims in parallel IPR proceedings, rendering moot Dragon’s infringement action. DISH’s success in obtaining a judgment of noninfringement, although later vacated because of its success in IPR, supports holding that they are prevailing parties. View "Dragon Intellectual Property LLC v. DISH Network LLC" on Justia Law
Biogen International GmbH v. Banner Life Sciences, LLC
Biogen holds the New Drug Application for the active ingredient dimethyl fumarate (DMF), which was FDA-approved in 2013 as Tecfidera®, a twice-daily pill for the treatment of relapsing forms of multiple sclerosis at a daily dose of 480 mg. The 001 patent, “Utilization of Dialkylfumarates,” discloses that dialkyl fumarates may have therapeutic uses “in transplantation medicine and for the therapy of autoimmune diseases,” including multiple sclerosis. After the five-year data exclusivity for Tecfidera® expired, Banner submitted an application under 21 U.S.C. 355(b)(2) to market a twice-daily monomethyl fumarate (MMF) pill at a daily dose of 380 mg. Biogen alleged infringement of the 001 patent. Banner argued that section 156(b)(2) limits the scope of the patent’s extension to methods of using the approved product as defined in 156(f)—DMF, its salts, or its esters—and that MMF is none of those things. Biogen responded that section 156(b)(2) limits extension only to uses of any product within the original scope of the claims. The patent will expire in June 2020. The Federal Circuit affirmed the district court’s finding of non-infringement. The monomethyl ester, covered by claim 1, is not covered by the extension. The scope of a patent term extension under 35 U.S.C. 156 only includes the active ingredient of an approved product, or an ester or salt of that active ingredient; the product at issue does not fall within those categories. View "Biogen International GmbH v. Banner Life Sciences, LLC" on Justia Law
CardioNet, LLC v. InfoBionic, Inc.
CardioNet’s 207 patent, titled “Cardiac Monitoring,” claims priority to an application filed in 2004 and describes cardiac monitoring systems and techniques for detecting and distinguishing atrial fibrillation and atrial flutter from other various forms of cardiac arrythmia. The district court dismissed CardioNet’s patent infringement complaint against InfoBionic, finding that the asserted claims of the patent are ineligible under 35 U.S.C. 101. The Federal Circuit reversed, applying the Supreme Court’s two-step “Alice” framework and finding that the asserted claims of the 207 patent are directed to a patent-eligible improvement to cardiac monitoring technology and are not directed to an abstract idea. Nothing in the record suggests that the claims merely computerize pre-existing techniques for diagnosing atrial fibrillation and atrial flutter. View "CardioNet, LLC v. InfoBionic, Inc." on Justia Law
Spigen Korea Co., Ltd. v. Ultraproof, Inc.
The Spigen Design Patents each claim a case for a cellular phone. In an infringement case, the district court held as a matter of law that the Spigen Design Patents were obvious over the 218 and 209 patents and granted summary judgment of invalidity in favor of Ultraproof. Subsequently, Ultraproof moved for attorneys’ fees under 35 U.S.C. 285. The district court denied the motion. The Federal Circuit reversed with respect to invalidity; the district court improperly resolved a genuine dispute of material fact. The district court found that despite “slight differences,” the 218 patent undisputedly was “basically the same” as the Spigen Design Patents, and, thus, a proper primary reference. That determination was error because, based on the competing evidence before the district court, a reasonable fact-finder could find otherwise. View "Spigen Korea Co., Ltd. v. Ultraproof, Inc." on Justia Law
Ericsson Inc. v. TCL Communication Technology Holdings, Ltd.
Ericsson sued TCL for infringement of its patent, titled “Security Access Manager in Middleware,” describing “a system and method for controlling access to a platform for a mobile terminal for a wireless telecommunications system.” Ericsson argued that TCL infringed claims 1 and 5 by making and selling smartphones that include the Android operating system, including “a security system that can grant apps access to a subset of services on the phone, with the end-user controlling the permissions granted to each app.” The jury found those claims infringed, awarded damages and found that TCL’s infringement was willful. The Federal Circuit reversed, finding that the patent claims ineligible subject matter under 35 U.S.C. 101. Claims 1 and 5 are directed to the abstract idea of controlling access to or limiting permission to, resources. Although written in technical jargon, a close analysis of the claims reveals that they require nothing more than this abstract idea. The claims are silent as to how access is controlled. They merely make generic functional recitations that requests are made and then granted. Neither claim recites any particular architecture; there is nothing sufficient to turn the claim into anything more than a generic computer for performing the abstract idea of controlling access to resources. View "Ericsson Inc. v. TCL Communication Technology Holdings, Ltd." on Justia Law
O.F. Mossberg & Sons, Inc. v. Timney Triggers, LLC
After licensing negotiations with Timney failed, Mossberg sued Timney for patent infringement. Instead of answering the complaint, Timney filed for inter partes reexamination. The district court granted a stay. The Patent Office rejected certain claims. Mossberg canceled the rejected claims and added new claims. Before the inter partes reexamination proceeded further, the Patent Office vacated its institution decision because Timney had not identified the real party in interest in its petition. In 2014-2015, Timney filed three ex parte reexamination requests. The examiner ultimately rejected all pending claims over prior art. The Patent Trial and Appeal Board affirmed. Throughout these reexaminations, the district court maintained the stay despite several motions by Mossberg to lift it. Mossberg filed a notice of voluntary dismissal under Rule 41(a)(1)(A)(i). The district court entered a docket text order stating that the case was dismissed without prejudice under Rule 41(a)(1)(A)(i). Timney moved to declare the case exceptional so that it could pursue attorney’s fees, 35 U.S.C. 285. The Federal Circuit affirmed the denial of the motion. Timney was not a “prevailing party” because a Rule 41 dismissal without prejudice is not a decision on the merits and thus cannot be a judicial declaration altering the legal relationship between the parties. View "O.F. Mossberg & Sons, Inc. v. Timney Triggers, LLC" on Justia Law
Bozeman Financial LLC v. Federal Reserve Bank
The Patent Trial and Appeal Board conducted covered business method (CBM) review and found all of the claims of Bozeman’s patents, directed to methods for authorizing and clearing financial transactions to detect and prevent fraud, ineligible under 35 U.S.C. 101.1. Bozeman challenged the Board’s authority to decide the petitions, arguing that the Federal Reserve Banks are not “persons” under the America Invents Act (AIA). The Federal Circuit affirmed, holding that the Banks are “persons” who may petition for post-issuance review under the AIA. While the Supreme Court has held that federal agencies are not “persons” able to seek post-issuance review of a patent under the AIA, the Banks are distinct from the government for purposes of the AIA. They are operating members of the nation’s Federal Reserve System, which is a federal agency, but they are not government-owned and are operationally distinct from the federal government. The claims at issue are directed to the abstract idea of “collecting and analyzing information for financial transaction fraud or error detection” and do not contain an inventive concept sufficient to “transform the nature of the claims into patent-eligible applications of an abstract idea.” View "Bozeman Financial LLC v. Federal Reserve Bank" on Justia Law
Golden v. United States
Golden, pro se, filed this suit in 2019, under the Tucker Act, 28 U.S.C. 1491(a), seeking “reasonable and entire compensation for the unlicensed use and manufacture” of his “inventions described in and covered by” various patents. He had filed an unsuccessful patent infringement suit against the government in 2013; a fifth amended complaint had alleged “Fifth Amendment Takings.” In 2014, the government sought inter partes review (IPR) of the patents; Golden is challenging an unfavorable decision as “ultra vires.” The Claims Court dismissed Golden’s 2019 complaint as largely duplicative of the 2013 suit. The Federal Circuit affirmed. The Claims Court did not have jurisdiction over these section 1491 claims because patent infringement claims against the government are to be pursued exclusively under 28 U.S.C. 1498. A patent owner may not pursue an infringement action as a taking under the Fifth Amendment. With respect to claims arising from the IPR proceedings, the court noted that Golden voluntarily filed a non-contingent motion to amend the claims on which the IPR was instituted. His substitute claims were found unpatentable. The claims at issue were canceled as result of Golden’s own voluntary actions; cancellation of the claims in the government-initiated IPR cannot, therefore, be chargeable to the government under any legal theory. View "Golden v. United States" on Justia Law
Nevro Corp. v. Boston Scientific Corp.
Nevro sued, alleging infringement of 18 claims across seven patents that are directed to high-frequency spinal cord stimulation therapy for inhibiting pain. Conventional spinal cord stimulation systems deliver electrical pulses to the spinal cord to generate sensations, such as tingling or paresthesia, that mask or otherwise alter the patient’s pain. The claimed invention purportedly improves conventional spinal cord stimulation therapy by using waveforms with high-frequency elements or components, which are intended to reduce or eliminate side effects. The district court issued a joint claim construction and summary judgment order, holding certain claims invalid as indefinite. As to the remaining six claims, found not indefinite, the court granted summary judgment of noninfringement. The Federal Circuit vacated and remanded. The district court erred in holding invalid as indefinite the “paresthesia-free” system and device terms and in holding indefinite the claims reciting the term “configured to.” The Federal Circuit construed “configured to” to mean “programmed to” and construed “means for generating” as a means-plus-function term, having a function of “generating” and a structure of “a signal/pulse generator configured to generate” the claimed signals. The district court erred in its claim construction but correctly determined that the term “therapy signal” does not render the claims indefinite; a “therapy signal” is “a spinal cord stimulation or modulation signal to treat pain.” View "Nevro Corp. v. Boston Scientific Corp." on Justia Law