Justia Patents Opinion Summaries

Danisco and Novozymes compete as suppliers of Rapid Starch Liquefaction products, genetically modified industrial enzymes that convert plant-based material into ethanol. They have patents that claim α-amylase enzymes, genetically engineered through substitution of amino acids in the peptide sequence to improve liquefaction performance. Novozymes has sued Danisco several times. Once Novozymes amended a pending patent application to claim one of Danisco’s new products, and sued Danisco the same day that the patent issued. Danisco owns the 240 patent, issued 2011 and claiming priority from a 2008 provisional application, claiming a variation for increased viscosity reduction in a starch liquefaction assay; it is the active ingredient in Danisco’s RSL products. After the PTO issued a Notice of Allowance, Novozymes amended a pending application to claim the enzyme, and contested entitlement to priority, arguing that its amended claim covered the same invention as the 240 patent. After Danisco’s 240 patent issued, Novozymes requested continued examination and made comments about its refusal to “acquiesce.” Upon issuance of Novozymes’s 573 patent, Danisco sought declaratory judgments that its products did not infringe and that the 573 patent was invalid, or that its 240 patent had priority under 35 U.S.C. 291. The district dismissed, acknowledging that Novozymes’s 573 patent presented a substantial risk to Danisco, but that Danisco’s action was filed before Novozymes could take action to enforce its rights. The Federal Circuit reversed, holding that the totality of the circumstances established a justiciable controversy. View "Danisco U.S. Inc. v. Novozymes A/S, Inc." on Justia Law

Ancora’s patent, entitled “Method of Restricting Software Operation within a License Limitation,” describes a method of preventing unauthorized software use by checking whether a program is operating within its license and taking remedial action if it is not. Methods for checking license coverage of software were known at the time of application, but some were vulnerable to hacking, while others were expensive and inconvenient to distribute. The specification claims to overcome those problems by using memory space associated with the computer’s basic input/output system (BIOS), rather than other space, to store encrypted license information for the verification process. While the contents of BIOS space may be modified, the level of expertise needed to do so is unusually high, and the risk of accidentally rendering the computer inoperable is too high for the ordinary hacker. The method eliminates the expense and inconvenience of using additional hardware. Ancora sued, alleging that products running Apple’s iOS operating system infringed the patent. Ancora stipulated to non-infringement under the district court’s construction of the claim term “program” and appealed that construction. Apple cross-appealed. The Federal Circuit reverses the construction of “program” as limited to application programs, affirmed a conclusion that the terms “volatile memory” and “non-volatile memory” are not indefinite, and remanded.View "Ancora Tech., Inc. v. Apple, Inc." on Justia Law

Tranexamic acid, the active ingredient in Ferring’s patented product, is used to treat heavy menstrual bleeding (menorrhagia) in women. Tranexamic acid has been widely used in an immediate release formulation for more than 30 years to treat menorrhagia in other countries. Ferring developed a tranexamic acid formulation with fewer gastrointestinal side effects than the immediate release version used abroad, but with the same benefits, by creating a formulation with a tranexamic acid release rate that matched the rate of absorption in the gastrointestinal tract. Ferring’s commercial product is known as Lysteda. In 2004, the FDA approved a fast-track designation for approval of Lysteda, and the Lysteda New Drug Application was approved in 2009 as the first tranexamic acid drug approved for use in the U.S. Apotex sought to market a generic version of Lysted that would avoid infringement of Ferring’s patent applications, but that would be bioequivalent to Lysteda, by altering the rate of absorption. Ferring then sued Apotex for infringement. The district court dismissed after Apotex amended its Abbreviated new Drug ApplicationView "Ferring B.V. v. Watson Labs, Inc., FL" on Justia Law

MST owns the rights to the 917 patent, which discloses the wireless activation and management of an electronic device without the need to have physical access to the device. The feature is useful because many businesses request that their employees use smartphones to store and transmit sensitive information. Should an employee lose a smartphone, the patent discloses a way to remotely delete sensitive data and methods to remotely deploy software updates and troubleshoot without the need for a constant connection or an initial activation. BlackBerry makes and sells handheld wireless devices and its BES software, which allows its corporate customers to deliver e-mail and other data to their employees’ BlackBerry devices. The BES software allows companies to remotely manage their employees’ devices. It is installed on a company server and communicates with a BlackBerry device by sending data in packets over the cheapest available network. After construing the “establishing a connection between the wireless device and the server” sub-step to mean “initiating wireless communication between a wireless device and the server” the district court held that Blackberry did not infringe the patent. The Federal Circuit affirmed; there was no legally sufficient evidentiary basis on which a reasonable jury could have found that BlackBerry infringes the asserted claims. View "Mformation Techs., Inc. v. Research in Motion Ltd." on Justia Law

The Kennedy patents cover a popular treatment for rheumatoid arthritis: a combination therapy of a disease-modifying antirheumatic drug and an antibody. The 766 patent expired in October 2012; the 422 patent will expire in August 2018. In 2002, AbbVie1 obtained a license to the 766 patent. Thereafter, AbbVie obtained FDA approval to sell Humira, an anti-TNFα antibody, for use either alone or in combination with methotrexate to treat rheumatoid arthritis. AbbVie paid Kennedy more than $100 million in royalties for AbbVie’s U.S. sales of Humira. When the 442 patent issued in 2010, Kennedy demanded that AbbVie secure an additional license for that patent in order to continue sales of Humira. Kennedy conceded that the 766 patent encompasses the same inventive subject matter as the 442 patent, but contended that the 442 patent was nonetheless patentable because the 766 patent claims a “broad genus” of methods for treating rheumatoid arthritis, whereas the 442 patent claims a “narrower species” of those treatment methods with unexpected results. AbbVie obtained a declaratory judgment that claims of the 442 patent were invalid over the 766 patent for obviousness-type double patenting. The Federal Circuit affirmed.View "AbbVie Inc. v. Kennedy Inst. of Rheumatology Trust" on Justia Law

B.E. sued Barnes & Noble in the Western District of Tennessee, alleging that Barnes & Noble’s Nook® devices infringed a B.E. patent. B.E.’s CEO, Hoyle, the named inventor on that patent, has lived in the Western District of Tennessee since 2006 and run the company from there since 2008. Barnes & Noble is incorporated in Delaware and headquartered in New York, but has an office in California, where most of its activities related to Nook® take place. Barnes & Noble moved to transfer the case pursuant to 28 U.S.C. 1404(a) “for the convenience of parties and witnesses, in the interest of justice.” The district court denied the motion, agreeing that the case should remain in Tennessee. The court found that party and non-party witnesses reside in California, but that transfer would impose the burden of travel and time away for any witness in Tennessee. The court faulted Barnes & Noble for not addressing how many employees would be unavailable to testify in Tennessee or why deposition testimony would not suffice. Barnes & Noble sought a writ of mandamus. The Federal Circuit denied its petition, stating that it saw no clear abuse of discretion in the district court’s decision to deny transfer. View "In re: Barnes & Noble, Inc." on Justia Law

Apotex’s 556 patent, titled “Pharmaceutical Compositions Comprising Moexipril Magnesium,” issued in 2004, from an application that claims priority to a Canadian application filed in 2000. The patent is directed to manufacture of moexipril tablets, an angiotensin-converting enzyme (ACE) inhibitor used to treat hypertension. Like other ACE inhibitors, Moexipril and its acid addition salts are susceptible to degradation and instability. To improve stability, the 556 patent discloses tablets consisting mostly of moexipril magnesium obtained by reacting moexipril or its acid addition salts with an alkaline magnesium compound. Several methods for stabilizing ACE inhibitors were known in the prior art. UCB’s accused products, Univasc and Uniretic, moexipril tablets, sold in the U.S. since 1995 and 1997, respectively, are prior art. In allowing the claims of the 556 patent over findings of obviousness, the examiner stated: prior art teaches that only a portion of drug (if any) may be converted to the alkaline salt and that the stable product results entirely or primarily not from conversion to alkaline salts, but from stabilization of the moexipril hydrochloride by the presence of the alkaline stabilizing compound in the final product. In 2012 Apotex accused UCB of infringement. The district court ruled that the 556 patent was unenforceable due to the inventor’s inequitable conduct before the PTO in concealing his knowledge and misrepresenting the nature of Univasc and the prior art and submitting results of experiments that he never conducted. The Federal Circuit affirmed, upholding the finding of inequitable conduct.View "Apotex Inc. v. UCB, Inc." on Justia Law

Tyco owns patents directed to temazepam, a drug used to treat insomnia and marketed under the brand name Restoril. The patents claim 7.5 mg formulations of temazepam having a specific surface area between 0.65 and 1.1 square meters per gram (m2/g). Specific surface area is a measure of the surface area of a drug per unit of weight. Generally, as chunks of drug material are ground down into smaller particles, the specific surface area increases because more of the drug is exposed to the surrounding environment. Mutual filed an Abbreviated New Drug Application (ANDA) with the FDA, seeking approval to manufacture and sell a generic 7.5 mg version of temazepam. The ANDA represented that its product would have a specific surface area of not less than 2.2 m2/g and included a certification representing that the generic drug was not protected by a U.S. patent (21 U.S.C. 355(j)(2)(A)(vii)). Mutual sent Tyco a “paragraph IV certification letter” claiming that the product would not infringe because its specific surface area would not fall within the 0.65-1.1 m2/g range claimed by the temazepam patents. Tyco filed an infringement action, 35 U.S.C. 271(e)(2)(A). Mutual raised antitrust counterclaims. The district court granted summary judgment of noninfringement. Tyco filed a citizen petition, urging the FDA to change the criteria for evaluating the bioequivalence of proposed generic temazepam products in order to “help ensure therapeutic equivalence.” The FDA approved Mutual’s ANDA; months later it denied the petition. The court granted summary judgment to Tyco on the antitrust counterclaims. The Federal Circuit court vacated the summary judgment that Tyco’s infringement claims were not a sham and the summary judgment that Tyco’s citizen petition was not a sham. View "Tyco Healthcare Grp. v. Mut. Pharm. Co" on Justia Law

Scriptpro’s patent describes as the invention a “collating unit,” which works with an “automatic dispensing system” that automatically fills and labels pill bottles or other prescription containers. The collating unit has several storage positions (slots) into which containers are placed as they emerge from the dispensing system. “The unit stores prescription containers according to a storage algorithm that is dependent on a patient name for whom a container is intended and an availability of an open storage position in the collating unit.” The patent describes this as an improvement over the prior art, which stored only one prescription container in each holding area and stored the prescription containers using a container-specific, not patient-specific, identifier. In an infringement action, the district court granted summary judgment for the defendant, holding that the asserted claims were invalid under 35 U.S.C. 112, which requires that the patent’s specification describe the subject matter defined by the claim. The court reasoned that the specification describes a machine containing “sensors,” whereas the claims at issue claim a machine that need not have “sensors.” The Federal Circuit reversed, stating that summary judgment of invalidity on that ground is not appropriate here.View "ScriptPro, LLC v. Innovation Assocs." on Justia Law

In October 2004, Cellport Systems, Inc. and Peiker Acustic GMBH & Co. KG entered into an agreement concerning Cellport’s technology for the hands-free use of cellphones in cars. In 2009, Cellport filed suit against Peiker, alleging breach of that agreement and sought royalties for seven Peiker products. The district court awarded Cellport royalties on only two of the products, interpreting an acknowledgment in the license agreement as "a rebuttable presumption." Cellport appealed, and Peiker filed a conditional cross-appeal. Upon review, the Tenth Circuit affirmed in part, reversed in part, and remanded. The Court found that section 1.17(i) of the License Agreement created a category of products on which royalties are due regardless of whether any of Cellport’s patents were infringed; Peiker owed Cellport royalties on those products. On remand, the district court was directed to calculate the damages due Cellport for those two products. Because the district court only briefly addressed the relationship between the "BTPSC" and the "'456 Patent" the Tenth Circuit remanded to allow the district court to determine whether additional royalties were owed to Cellport. With respect to Peiker's cross-appeal, the Tenth Circuit agreed with Cellport that the issue was not ready for appellate review and further held that it was not ripe for review by the district court. View "Cellport Systems v. Peiker Acustic" on Justia Law