Justia Patents Opinion Summaries

The Federal Circuit previously held that patent claim construction receives de novo determination on appeal. Such review is conducted on the administrative record and any additional information in the record of the district court, and is without deference to the ruling of the district court. The court had applied that standard to this case and, reversing the district court, held that the claim term “voltage source means” is a means-plus-function term requiring corresponding structure in the specification. The court held the claims invalid for indefiniteness. After granting rehearing, en banc, the Federal Circuit applied the principles of stare decisis, and confirmed the Cybor standard of de novo review. The court stated that after 15 years of experience with Cybor, it concluded that it should retain plenary review of claim construction, to provide national uniformity, consistency, and finality to the meaning and scope of patent claims. View "Lighting Ballast Control, LLC v. Philips Elec. N. Am. Corp." on Justia Law

Takeda owns patents that claim the formulation for the brand-name drug Prevacid® SoluTab,™ which contains the active ingredient lansoprazole, a proton pump inhibitor used to treat acid reflux. It is the only proton pump inhibitor available as an orally disintegrable tablet. A patient allows the tablet to disintegrate in his mouth, leaving behind thousands of granules which the patient swallows. The stated objective of the 994 patent is a formulation with granules small enough to avoid a feeling of roughness in the patient’s mouth upon disintegration. In 2010, Zydus filed an abbreviated new drug application (ANDA) with the FDA, seeking to manufacture a generic version of Prevacid® SoluTab.™ Takeda filed suit, alleging that the ANDA product infringed claims of several patents. Only claim 1 of the 994 patent remains at issue. Zydus counterclaimed, alleging that claim 1 was invalid for failure to comply with 35 U.S.C. 112. The district court construed the claim term “fine granules having an average particle diameter of 400 μm or less,” accepting Takeda’s argument that the term should be construed to include a deviation of ±10%, based on a “universally accepted” 10% standard of error for particle size measurements. The Federal Circuit reversed the finding of infringement and found no invalidity. View "Takeda Pharm. Co., Ltd. v. Zydus Pharm. USA, Inc." on Justia Law

The patent claims an improved automobile locking differential: the differential is a mechanism that allows wheels to rotate at different speeds relative to each other. When locked, a differential distributes torque so that wheels spin at the same rate. R&P sought declaratory judgment that its Ziplocker product did not infringe the patent. Following claim construction, the parties stipulated that the Ziplocker product literally met every limitation of claim 1 except the “cylinder means formed in” limitation, but that the Ziplocker included an “equivalent” cylinder and that the Ziplocker cylinder would have been foreseeable to a person of ordinary skill in the art when the application was filed. The parties agreed that “should the Court hold ... that foreseeability of an equivalent at the time of application prevents use of the doctrine of equivalents,... the accused differential would not infringe under the doctrine of equivalents” or that should the court hold that foreseeability does not prevent use of the doctrine of equivalents, the accused differential would infringe under that doctrine. The district court held that, while foreseeability did not preclude application of the doctrine of equivalents, a finding of infringement under the doctrine would vitiate the “cylinder means formed in” limitation and granted summary judgment of non-infringement. The Federal Circuit reversed, holding that the district court improperly applied the doctrine of claim vitiationView "Ring & Pinion Serv. Inc. v. ARB Corp. Ltd" on Justia Law

Butamax owns the 188 patent, which covers a recombinant microbial host cell that uses a particular biosynthetic pathway to produce isobutanol, which is useful as a fuel or fuel additive, and the 889 patent, which issued from a divisional of the 188 patent’ application and focuses on a method of producing isobutanol from a recombinant yeast microorganism that expresses a five-step biosynthetic pathway. The patents’ specifications largely are identical. The district court rejected Butamax’s claim of literal infringement and granted Gevo summary judgment of noninfringement under the doctrine of equivalents of the asserted claims and of invalidity of claims 12 and 13 of the 889 patent for lack of written description, and invalidity of claims 12 and 13 of the 889 patent for lack of enablement. The Federal Circuit vacated. The district court erred in its claim construction and determination under the doctrine of equivalents and failed to recognize the existence of genuine issues of material fact. The court reversed summary judgment of invalidity for lack of enablement because that judgment appeared to have been a scrivener’s error. View "Butamax(TM) Advanced Biofuels v. Gevo, Inc." on Justia Law

Solvay’s 817 patent claims an improvement to a method of making a hydrofluorocarbon (HFC-245fa), which does not deplete the ozone layer as legislatively mandated to replace ozone-depleting alternatives. HFC-245fa is especially useful in preparing polymeric materials used for insulation in refrigeration and heat systems. The patent has a 1995 priority date. In 1994, Honeywell and RSCAC entered into a contract, under which RSCAC engineers, in Russia, studied commercial production of HFC-245fa. RSCAC sent Honeywell a report documenting a continuous process capable of producing high yields of HFC-245fa. Honeywell used the report to run the same process in the U.S., before the 817 patent’s priority date. Solvay sued Honeywell, alleging infringement. Honeywell argued that the Russian inventors made the invention in this country by sending instructions to Honeywell personnel who reduced the invention to practice in the U.S. The district court held that the RSCAC engineers should be treated as inventors who made the invention in the U.S. under 35 U.S.C. 102(g)(2), that RSCAC disclosed claim1 in a 1994 Russian patent application such that they did not abandon, suppress, or conceal it. The Federal Circuit affirmed judgment for Honeywell. It is not required that the inventor be the one to reduce the invention to practice if reduction to practice was done on his behalf in the U.S., so Honeywell’s invention qualified as prior art.View "Solvay, S.A. v. Honeywell Int'l, Inc." on Justia Law

Tivoli owns the 446 patent, which relates to a stair-step lighting apparatus that uses a reflective strip of material to alert users to the edge of a step in darkened or low-light environments. Tivoli sued Tempo for patent infringement in 2004. Tempo later requested inter partes reexamination by the Patent and Trademark Office, which granted the request and issued the first Office Action in 2005, rejecting all the claims. The district court stayed the litigation pending the outcome of the reexamination, which progressed slowly. The examiner closed prosecution in 2009, maintaining the rejections and the construction of “inert to light.” The appeals board reversed the rejection of certain claims. The Federal Circuit vacated, holding that the decision lacked the support of substantial evidence and that the board erred in concluding that Tempo waived certain View "Tempo Lighting, Inc. v. Tivoli, LLC" on Justia Law

EnOcean owns a patent application that claims a self-powered switch, which can be used to turn on and off lights, appliances, and other devices without a battery or connection to an electrical outlet. The named inventors originally filed a patent application disclosing the switch in Germany in 2000; in 2001 they filed a Patent Cooperation Treaty (PCT) international application with a similar disclosure. The Board of Patent Appeals and Interferences declared an interference in 2010 between EnOcean and Face, the real party of interest in a U.S. Patent that also claims a self-powered switch. The Board found the Face claims were unpatentable under 35 U.S.C. 103 based on prior art. Face did not appeal. The Board then applied a presumption that EnOcean’s claims were unpatentable for the same reasons. EnOcean’s argument for rebutting the presumption required determination that EnOcean’s claims could benefit from the filing dates of its German and PCT applications, eliminating a reference from prior art. The Board accorded no benefit of priority to the claims and found all of EnOcean’s claims unpatentable under section 103. The Federal Circuit vacated in part, finding that the Board erred in treating certain EnOcean claims as means-plus-function claims and in finding that certain EnOcean claim limitations lack support in its priority German and PCT applications.View "EnOcean GmbH v. Face Int'l Corp." on Justia Law

Medtronic sued Edwards for infringement of six claims of it 281 patent, entitled “Prosthetic Valve for Transluminal Delivery,” issued in 2011. Filed on January 5, 2009, the 281 patent descends from U.S., international, and French patent applications. On its face, it claims priority to French Application No. 99/14462 filed on November 17, 1999. That application is not relevant to the claims asserted against Edwards, so the pertinent priority chain has its genesis in a French application filed on October 31, 2000. During litigation, Edwards became aware that the 281 patent’s priority chain suffered from several defects for failure to comply with 35 U.S.C. 119 and 120. Edwards moved for partial summary judgment that these defects limited the priority date of the asserted claims to no earlier than April 10, 2003, the date on which U.S. Patent Application Serial 4 was filed. The district court granted the motion. The Federal Circuit affirmed. Because Medtronic failed to specifically reference each earlier-filed application in intervening applications in the chain of priority for the patent, the district court was correct to limit the priority date of the patent to no earlier than April 10, 2003 and find the asserted claims invalid as anticipated. View "Medtronic Corevalve, LLC v. Edwards Lifesciences Corp." on Justia Law

Medtronic designs, makes, and sells medical devices. Mirowski owns patents relating to implantable heart stimulators. Under a licensing agreement, Medtronic practices certain Mirowski patents in exchange for royalty payments. Mirowski notified Medtronic of its belief that several Medtronic products infringed the licensed patents. Medtronic challenged that assertion in a declaratory judgment action, while accumulating disputed royalties in escrow for distribution to the prevailing party. The district court concluded that Mirowski had not met its burden of proving infringement. The Federal Circuit reversed, reasoning that where the patentee is a declaratory judgment defendant and, like Mirowski, is foreclosed from asserting an infringement counterclaim by the continued existence of a licensing agreement, the party seeking the declaratory judgment (Medtronic) bears the burden of persuasion. The Supreme Court reversed, first holding that the Federal Circuit did not lack subject-matter jurisdiction. Citing 28 U. S. C. 1338(a) and 1295(a)(1), the Court stated that if Medtronic had acted consistent with the understanding of its rights that it sought to establish in the declaratory judgment suit (by ceasing to pay royalties), Mirowski could have terminated the license and sued for infringement. The declaratory judgment action, which avoided that hypothetical threatened action, also “arises under” federal patent law. Operation of the Declaratory Judgment Act is only procedural, leaving substantive rights unchanged, and the burden of proof is a substantive aspect of a claim. When a licensee seeks a declaratory judgment against a patentee that its products do not infringe the licensed patent, the patentee bears the burden of persuasion. Mirowski set this dispute in motion by accusing Medtronic of infringement. There is no convincing reason why burden of proof law should favor the patentee. View "Medtronic, Inc. v. Mirowski Family Ventures, LLC" on Justia Law

In 1999, Congress provided for extensions of patent terms to compensate for certain application-processing delays caused by the Patent and Trademark Office; 35 U.S.C. 154(b)(1) makes a “Guarantee of no more than 3-year application pendency,” The statute provides that “the term of the patent shall be extended 1 day for each day” that the PTO does not meet certain response deadlines, for each day after the PTO fails to issue the patent within three years, subject to exclusions, and for each day of delay due to an interference, secrecy order, or successful applicant appeal. Novartis challenged PTO determinations of how much time to add to the otherwise-applicable term 18 of its patents. The district court dismissed claims regarding 15 patents as untimely. For the other three, the court rejected the PTO’s construction of the statutory provision. The Federal Circuit affirmed with respect to timeliness, but held the PTO was partly correct and partly incorrect in its interpretation of section 154(b)(1)(B). Novartis was entitled to most, but not all, of three patent term adjustment. View "Novartis AG v. Lee" on Justia Law