Justia Patents Opinion SummariesArticles Posted in US Court of Appeals for the Federal Circuit
Grit Energy Solutions, LLC v. Oren Technologies, LLC
Oren’s patent covers a system for storing and discharging proppant—a material, such as sand or other particulates, that prevents ground fractures from closing during hydraulic fracturing. Oren sued Grit for infringement, Grit transferred ownership of all the products accused of infringement. Oren and Grit jointly stipulated to dismissal without prejudice of all claims and counterclaims related to the patent. Grit sought inter partes review of claims 1–7. The Board ultimately determined that Grit had not established that any of the challenged claims were unpatentable as obvious over prior art or that the challenged claims were unpatentable, reasoning that neither of the prior references disclosed the patent's configuration. The Federal Circuit vacated, first holding that Grit had standing because Oren previously sued for infringement and is free to reassert those infringement claims. The Board’s determination that prior art does not disclose the patent’s configuration is unsupported by substantial evidence. The Board failed to adequately explain its reasoning. View "Grit Energy Solutions, LLC v. Oren Technologies, LLC" on Justia Law
Uniloc USA, INC. v. LG Electronics USA, INC.
Uniloc’s patent is directed to a communication system comprising a primary station (base station) and at least one secondary station (computer mouse or keyboard). In conventional systems, such as Bluetooth networks, two devices that share a common communication channel form ad hoc networks called “piconets.” Joining a piconet requires the completion of “inquiry” procedure and “page” procedures, which can take tens of seconds to complete. The invention improves conventional communication systems by including a data field for polling as part of the inquiry message, thereby allowing primary stations to send inquiry messages and conduct polling simultaneously, enabling “a rapid response time without the need for a permanently active communication link” between a parked secondary station and the primary station. In an infringement action, the district court held that the patent’s claims were ineligible under 35 U.S.C. 101. The Federal Circuit reversed, applying the “Alice” test. The claims are directed to a patent-eligible improvement to computer functionality--the reduction of latency experienced by parked secondary stations in communication systems. The claims do not merely recite generalized steps to be performed on a computer using conventional computer activity but are directed to “adding to each inquiry message prior to transmission an additional data field for polling at least one secondary station.” View "Uniloc USA, INC. v. LG Electronics USA, INC." on Justia Law
In Re Rudy
In 1989, Rudy originally filed the 360 application, entitled “Eyeless, Knotless, Colorable and/or Translucent/Transparent Fishing Hooks with Associatable Apparatus and Methods.” Its lengthy prosecution included numerous amendments and petitions, and four Board appeals. In 2014, the Sixth Circuit affirmed the obviousness of all claims then on appeal. Several claims were the subject of a 2015 office action in which the Examiner rejected them as ineligible for patenting under 35 U.S.C. 101. The Board upheld the determination. The Federal Circuit affirmed, stating that it was applying its own law and the relevant Supreme Court precedent, not the Office Guidance, in analyzing subject matter eligibility. Claim 34 is directed to the abstract idea of selecting a fishing hook based on observed water conditions; its three elements (observing water clarity, measuring light transmittance, and selecting the color of the hook) are each abstract, being mental processes akin to data collection or analysis. Claim 34 fails to recite an inventive concept at step two of the “Alice/Mayo test,” and.nothing in the remaining claims meaningfully distinguishes them from claim 34 in a patent eligibility analysis. View "In Re Rudy" on Justia Law
Argentum Pharmaceuticals LLC v. Novartis Pharmaceuticals Corp.
Apotex filed a petition for inter partes review of Novartis’s patent. The Board instituted proceedings and granted Sun, Teva, Actavis, and Argentum (with Apotex, the petitioners) joinder. The Board concluded that the petitioners had not demonstrated unpatentability of the claims. During the appeal process, all petitioners other than Argentum settled with Novartis. Before opening briefs were filed, Novartis moved to dismiss Argentum’s appeal for lack of standing. Argentum argued that its standing need not be addressed because only one party must have standing for an action to proceed in an Article III Court; the other petitioners undisputedly had standing. Following the settlement of all the other parties, Apotex argued that “now that Argentum is the only appellant, Article III standing has become a threshold issue.” The Federal Circuit dismissed for lack of Article III standing. Argentum argued that it demonstrated concrete injuries in fact: a real and imminent threat of litigation as it jointly pursues, with its partner KVK-Tech, a generic version of Novartis’ Gilenya® product for which they are in the process of filing an ANDA. Argentum failed to provide sufficient evidence that it invested in KVK’s generic Gilenya® product or ANDA. View "Argentum Pharmaceuticals LLC v. Novartis Pharmaceuticals Corp." on Justia Law
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