Justia Patents Opinion SummariesArticles Posted in US Court of Appeals for the Federal Circuit
OSI Pharmaceuticals, LLC v. Apotex Inc
Non-small cell lung cancer (NSCLC) was the leading cause of cancer deaths in 2000. The standard for treating NSCLC was chemotherapy, which ameliorated some lung cancer-related symptoms, but was limited in use due to toxicity. In response to a need for a therapy that would effective and well-tolerated, investigators pursued targeted therapies as alternatives to chemotherapy. A great majority of alternative therapies for NSCLC failed in clinical trials. One compound that ultimately gained FDA approval was erlotinib. OSI markets erlotinib under the name Tarceva®, which is covered by the 221 patent, which issued in 2005. On inter partes review, the Patent Board found certain claims unpatentable under 35 U.S.C. 103, in light of prior art and the 10-K disclosure filed by OSI with the Securities and Exchange Commission. The Federal Circuit reversed. Substantial evidence did not support the Board’s finding that the asserted combinations of prior art or prior art and the 10-K disclosures each would have provided a person of ordinary skill with a reasonable expectation of success in using erlotinib to treat NSCLC in a mammal. View "OSI Pharmaceuticals, LLC v. Apotex Inc" on Justia Law
Posted in: Drugs & Biotech, Intellectual Property, Patents, US Court of Appeals for the Federal Circuit
American Axle & Manufacturing, Inc. v. Neapco Holdings LLC
AAM’s 911 patent generally relates to a method for manufacturing driveline propeller shafts with liners that are designed to attenuate vibrations transmitted through a shaft assembly. Propshafts are employed in automotive vehicles to transmit rotary power in a driveline. The patent identified a need for an improved method for damping various types of vibrations in a hollow shaft; AAM argued that the inventive concept to which the claims are directed is the tuning of a liner in order to produce frequencies that dampen the shell mode and bending mode vibrations simultaneously. In AAM’s infringement action against Neapco, the district court granted Neapco summary judgment, holding that the asserted claims are patent-ineligible under 35 U.S.C. 101. The Federal Circuit affirmed. The claims’ direction to tune a liner to attenuate to different vibration modes amounted to merely instructing one to apply Hooke’s law to achieve the desired result of attenuating certain vibration modes and frequencies without providing a particular means of how to craft the liner and propeller shaft in order to do so. Hooke’s law is a natural law, an equation that describes the relationship between an object’s mass, its stiffness, and the frequency at which the object vibrates. View "American Axle & Manufacturing, Inc. v. Neapco Holdings LLC" on Justia Law
Honeywell International Inc. v. Arkema Inc.
Honeywell’s patent, directed to fluoroalkene compounds used in refrigeration systems and other applications, issued in October 2015 and recites a chain of priority applications dating back to 2002, all of which were incorporated by reference. During prosecution of the patent, Honeywell filed a preliminary amendment that canceled all 20 claims recited in the original application and added 20 new claims directed to different subject matter: automobile air conditioning systems. The Patent Trial and Appeal Board initiated post-grant review proceedings, finding that the claims of the patent were only entitled to a priority date of March 2014—the filing date of the application that led to the patent—rather than the 2002 priority date that would result if the priority chain adequately supported the claims. PGR proceedings are available only for patents having at least one claim with an effective filing date on or after March 16, 2013. There were several prior art references dated from the period between 2002 and 2014. The Federal Circuit vacated the Board’s refusal to grant Honeywell leave to seek a Certificate of Correction to correct the challenged patent. The Board abused its discretion by assuming the authority that 35 U.S.C. 255 expressly delegates to the Director: to determine when a Certificate of Correction is appropriate. View "Honeywell International Inc. v. Arkema Inc." on Justia Law
Campbell Soup Co. v. Gamon Plus, Inc.
Gamon owns the 646 and 645 patents, which each claim the ornamental design for a gravity feed dispenser display (a can dispenser). On inter partes review, the Patent Trial and Appeal Board held that Campbell did not demonstrate that the claimed designs of the patents would have been obvious over the Linz and Samways patents. The Federal Circuit vacated in part. Substantial evidence does not support the Board’s finding that Linz is not a proper primary reference. Linz’s design is made to hold a cylindrical object in its display area. Affirming in part, the court noted that Samways has a dual dispensing area, compared to the single dispensing area of the claimed designs, and has a front label area with different dimensions that extends across both dispensing areas. Given these differences, substantial evidence supports the Board’s finding that Samways does not create basically the same visual impression as the claimed designs. View "Campbell Soup Co. v. Gamon Plus, Inc." on Justia Law
Sipco, LLC v. Emerson Electric Co.
Sipco’s patent explains communicating information from a previously unconnected, remote device to a central location. Rather than set up a direct communication link, the invention sets up a two-step communication path through intermediate nodes to use the nodes’ already-provided link (e.g., a public-switched telephone network (PSTN)) to the central location. The remote device communicates wirelessly to an intermediate node. For example, a user may wish to replace his bank and credit cards with a remote transmitting unit, having buttons each associated with a bank or credit card. When the user depresses a button, the remote unit transmits the user’s account and PIN information to, for example, the ATM, which then transmits the information over, for example, a PSTN to the central location. The Patent Board found that the patent was not exempt from covered business method (CBM) review under the “technological invention” exception and found five claims patent-ineligible under 35 U.S.C. 101 and unpatentable for obviousness under 35 U.S.C. 103. The Federal Circuit vacated. The Board must consider “whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art; and solves a technical problem using a technical solution.” The court reversed the Board’s claim construction of “low power transceiver” and its finding that the patent does not satisfy the second part of the regulation defining “technological invention.” The court remanded for the Board to address section 42.301(b)’s first part. View "Sipco, LLC v. Emerson Electric Co." on Justia Law
Intra-Cellular Therapies, Inc. v. Iancu
In September 2010, IntraCellular filed the application leading to the 077 patent. In October 2012, the Patent Office issued a non-final office action including rejections under 35 U.S.C. 103 and 112. Intra-Cellular argued against section 103 rejections without amendment. In April 2013, the Patent Office mailed a final Office action, allowing no claims. In July 2013, on the last day for filing a “reply” to the final Office action without accruing applicant delay, 36 U.S.C. 154(b)(2)(C)(ii), Intra-Cellular responded with “Amendments and Response,” repeating the same arguments and adding a new claim. Nine days later, the Patent Office mailed an Advisory Action: Intra-Cellular’s after-final submission overcame some of the previous rejections but failed to overcome the section 103 rejection for the prior reasons of record. The examiner suggested amending or cancelling certain claims. Ten days later, Intra-Cellular filed its second after-final submission adopting all of those suggestions. A Notice of Allowance was mailed on August 20, 2013. In January 2017, the Patent Office issued a determination that the patent was entitled to 264 days of patent term adjustment ( for agency delays, after subtracting 21 days for applicant delay based on the time it took Intra-Cellular to file its second after-final submission after the response deadline, reasoning that Intra-Cellular’s first after-final submission did not constitute a proper “reply” under 37 CFR 1.704(b). The clock stopped with the second after-final submission, 21 days later. The Federal Circuit affirmed that determination. While timely, Intra-Cellular’ initial response continued to argue the merits of the final rejections, failing to comply with regulatory requirements for what constitutes a proper “reply” to a final Office action. View "Intra-Cellular Therapies, Inc. v. Iancu" on Justia Law
Inspired Development Group v. Inspired Products Group, LLC
Inspired Development sued KidsEmbrace for breach of contract and other related state law claims in federal district court on the basis of diversity jurisdiction under 28 U.S.C. 1332(a). The dispute involved the purported breach of a patent-licensing agreement by failure to pay outstanding royalties. The district court granted summary judgment in KidsEmbrace’s favor on certain claims. On appeal, the Eleventh Circuit discovered that diversity jurisdiction did not exist. The district court concluded on remand that it retained jurisdiction over the suit based on federal question jurisdiction. The Eleventh Circuit transferred the case to the Federal Circuit, which vacated and remanded for dismissal. The parties’ claims did not arise under the patent laws pursuant to 28 U.S.C. 1338(a). No claims allege a cause of action created by federal patent law. This is a state law contract case for past due royalties. Inspired Development need not demonstrate that KidsEmbrace actually practiced the licensed patents, and the question of infringement is not a “necessary element” of the claim. Finding a federal question here merely because this contract implicates a run-of-the-mill question of infringement or validity would undoubtedly impact the wider balance between state and federal courts. View "Inspired Development Group v. Inspired Products Group, LLC" on Justia Law
Posted in: Civil Procedure, Intellectual Property, Patents, US Court of Appeals for the Federal Circuit
Mayo Foundation for Medical Education and Research v. Iancu
The patent term length is 20 years from the effective filing date of the application, 35 U.S.C. 154. Applicants are compensated for three classes of prosecution delay: a “B Delay” generally entitles the applicant to patent term adjustment (PTA) for each day the application is pending beyond three years. Limitations reduce PTA for "time during which the applicant failed to engage in reasonable efforts to conclude prosecution.” Mayo’s 310 application had a November 1999, effective filing date. The PTO issued a final rejection for anticipation (757 patent) in October 2010. In September 2011, Mayo requested continued examination (RCE) arguing that Mayo had priority of invention over the 757 patent. Mayo cancelled certain claims and pursued them in a separate continuation application, which later issued as the 927 patent. In February 2012, an interference was declared. In February 2014, the Board awarded priority to Mayo’s 310 application and canceled the 757 patent. In June 2014, an examiner rejected the 310 application, citing double patenting in view of the 927 patent. Mayo argued that the claims were patentably distinct. The examiner mailed a Notice of Allowance in November 2014. The 310 application issued as the 063 patent in March 2015. The PTO calculated 621 days of PTA, with no B Delay. Mayo claimed 685 days, arguing the examiner’s reopening of prosecution after termination of the interference was not RCE under 35 U.S.C. 154(b)(1)(B)(i). The PTO concluded that RCE time (which is deducted from B Delay) did not end when the interference was declared, but instead when the Notice of Allowance was mailed. The Federal Circuit affirmed, upholding the PTO’s interpretation of “any time consumed by continued examination of the application requested by the applicant under section 132(b),” 35 U.S.C. 154(b)(1)(B)(i). View "Mayo Foundation for Medical Education and Research v. Iancu" on Justia Law
Henny Penny Corp. v. Frymaster LLC
During frying, cooking oil gradually degrades and loses its cooking capacity, generating impurities called total polar materials (TPMs). Frymaster’s patent describes a system for measuring the state of cooking oil degradation with a TPM sensor. When the sensor detects that TPM levels are too high, the system instructs the fryer operator to change the oil. On inter partes review, the Patent and Trademark Office Patent Trial and Appeal Board found multiple claims not unpatentable as obvious under 35 U.S.C. 103. The Federal Circuit affirmed, agreeing that industry praise is probative of nonobviousness even if it was not precisely limited to the point of novelty of the claimed combination. Substantial evidence supports the Board’s finding of no motivation to combine prior references and Frymaster’s evidence of secondary considerations supports nonobviousness. View "Henny Penny Corp. v. Frymaster LLC" on Justia Law
Curver Luxembourg, SARL v. Home Expressions Inc.
Curver’s 946 patent, filed in 2011, entitled “Pattern for a Chair” claims an “ornamental design for a pattern for a chair” with an overlapping “Y” design. The design patent’s figures, however, merely illustrate the design pattern disembodied from any article of manufacture. Curver sued Home Expressions, alleging that Home Expressions made and sold baskets that incorporated Curver’s claimed design pattern and infringed the 946 patent. The Federal Circuit affirmed the dismissal of the suit. The accused baskets could not infringe because the asserted design patent was limited to chairs only. The scope of the design patent was limited to the illustrated pattern applied to a chair. View "Curver Luxembourg, SARL v. Home Expressions Inc." on Justia Law