Justia Patents Opinion Summaries

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Anjinomoto’s 655 patent claims E. coli bacteria that have been genetically engineered to increase their production of aromatic L-amino acids, such as L-tryptophan, during fermentation, as well as methods of producing aromatic L-amino acids using such bacteria. Ajinomoto filed a complaint against CJ with the International Trade Commission, alleging that CJ was importing certain products that infringed the patent. CJ used several strains of E. coli to produce L-tryptophan products, which it then imported into the United States. The Commission determined that CJ’s earlier strains did not infringe but that CJ’s two later strains did, and that the relevant claim of the 655 patent is not invalid for lack of an adequate written description. The Federal Circuit affirmed, upholding the Commission’s construction of “replacing the native promoter . . . with a more potent promoter.” The court rejected CJ’s claim of prosecution history estoppel and held that the 655 patent expressly provides four examples of “more potent promoters,” so that the Commission supportably found that a skilled artisan could make relatively predictable changes to the native promoter to arrive at a more potent promoter. View "Ajinomoto Co., Inc. v. International Trade Commission" on Justia Law

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VirnetX appealed the Patent Trial and Appeal Board's decision related to three inter partes reexaminations maintained by Apple and Cisco. In this case, the PTO concluded that Apple was not barred from maintaining its reexams by the estoppel provision of the pre-America Invents Act (AIA) version of 35 U.S.C. 317(b), and the Board affirmed the examiner's determination that the claims of U.S. Patent Nos. 7,418,504 and 7,921,211 are unpatentable as anticipated or obvious over the prior art of record. The '504 and '211 patents describe systems and methods for establishing a secure communication link between a first computer and a second computer over a computer network, such as the Internet. The Federal Circuit held that there has been a final decision entered against Apple that it has not sustained its burden of proving invalidity, and thus section 317(b) estoppel applied to the Apple reexams. Therefore, the court vacated the Board's decisions in the Apple reexams with respect to claims 1–35 of the '504 patent and claims 36–59 of the '211 patent and remanded with instructions to terminate. The court affirmed the Board's decision on all remaining claims of both patents in the Apple reexam not subject to section 317(b) estoppel and fully affirmed the Board's decision regarding the claims of the '211 patent in the Cisco reexam. View "VirnetX Inc. v. Apple Inc." on Justia Law

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A teratogen is an agent known to disturb the development of an embryo or fetus. Teratogenic drugs, such as thalidomide, can cause birth defects or other abnormalities following fetal exposure during pregnancy. Celgene’s 501 and 720 patents are generally directed to methods for safely distributing teratogenic or other potentially hazardous drugs while avoiding exposure to a fetus to avoid adverse side effects of the drug. The patents describe the System for Thalidomide Education and Prescription Safety that compiles information about patients and prescribers to prevent the prescription from being filled before appropriate counseling. The Coalition for Affordable Drugs (CFAD) sought inter partes review. The Patent Trial and Appeal Board determined that all of the claims of the 501 patent and multiple claims of the 720 patent were obvious. The Federal Circuit affirmed and held that the retroactive application of IPR proceedings to pre-Leahy-Smith America Invents Act, 125 Stat. 284-341, patents is not an unconstitutional taking under the Fifth Amendment. IPRs do not differ sufficiently from the PTO reconsideration avenues available when the patents here were issued to constitute a taking. View "Celgene Corp. v. Peter" on Justia Law

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Solutran’s patent, issued in 2012, describes a system for processing paper checks. It explains that the digital age ushered in a faster approach to processing checks, where the transaction information on the check is turned into a digital file at the merchant’s point of sale terminal and is sent electronically; the funds are then transferred electronically from one account to another, so that it is not always necessary to physically move the paper check from one entity to another to debit or credit the accounts.. The patent discloses a method proposed by the National Automated Clearing House Association for “back office conversion” where merchants scan their checks in a back office, typically at the end of the day, “instead of at the purchase terminal.” The district court held that the patent was not invalid under 35 U.S.C. 101 for failing to recite patent-eligible subject matter and was infringed. The Federal Circuit reversed, applying the “Alice” test. The claims are directed to the abstract idea of crediting a merchant’s account as early as possible while electronically processing a check and do not “contain a sufficiently transformative inventive concept so as to be patent-eligible. The patent's claims simply instruct the practitioner to implement the abstract idea with routine, conventional activity. View "Solutran, Inc. v. Elavon, Inc." on Justia Law

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Recombinant therapeutic proteins are a class of biologic medicines that are manufactured inside living cells. Before a protein can be therapeutically useful, it must first be purified from contaminants. Amgen’s patent claims methods of purifying proteins using hydrophobic interaction chromatography. Amgen sued Coherus for infringing the patent under the doctrine of equivalents because the salt combination used in Coherus’s process did not match any of the three expressly claimed salt combinations in the Amgen patent. The Federal Circuit affirmed the dismissal of the suit, reasoning that prosecution history estoppel bars Amgen from succeeding on its infringement claim under the doctrine of equivalents. During prosecution of the patent, Amgen clearly and unmistakably surrendered salt combinations other than the particular combinations recited in the claims. View "Amgen Inc. v. Coherus Biosciences Inc." on Justia Law

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Ford’s design patents relating to F-150 trucks are titled “Exterior of Vehicle Hood” and “Vehicle Head Lamp.” Before the International Trade Commission, Ford accused members of an association of companies that distribute automotive body parts (ABPA) of infringing the patents. The ITC actions settled; the ALJ rejected an argument that the asserted patents do not comply with the ornamentality requirement of 35 U.S.C. 171, and stated that there was no legal basis for a claim of unenforceability based on either the patent exhaustion or permissible repair doctrines. ABPA sought a declaratory judgment of invalidity or unenforceability. The Federal Circuit affirmed summary judgment in favor of Ford, first noting that a design patent protects a “new, original and ornamental design for an article of manufacture” while utility patents must be functional to be patentable. The court rejected ABPA’s argument that consumers seeking replacement parts prefer hoods and headlamps that restore the original appearance of their vehicles so that there is a functional benefit to designs that are aesthetically compatible with those vehicles. If customers prefer the “peculiar or distinctive appearance” of Ford’s designs over that of other designs that perform the same mechanical or utilitarian functions, that is the market advantage “manifestly contemplate[d]” by the design patent laws. The court also rejected ABPA’s contention that Ford’s patents are unenforceable against its members under the related doctrines of exhaustion and repair. View "Automotive Body Parts Association v. Ford Global Technologies, LLC" on Justia Law

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Infobridge’s 772 Patent, titled “Method of Constructing Merge List,” generally relates to encoding and decoding video data; the patented methods are essential to the High-Efficiency Video Coding standard (H.265 standard). In two inter partes review proceedings requested by Samsung, the Patent Trial and Appeal Board upheld all challenged claims of the 772 patent, finding that Samsung failed to show that a certain prior art reference was publicly accessible before the 772 patent’s critical date and thus could not be considered prior art. The Federal Circuit vacated, first holding that has standing to appeal. the 772 patent is licensed as part of a “pool” of patents, including some owned by Samsung, that have been declared essential to the H.265 standard. Under this arrangement, Samsung is being deprived of royalty payments, which constitutes the kind of concrete and particularized economic injury that satisfies the Article III requirement. The Board applied the wrong legal standard in assessing public accessibility. A petitioner need not establish that specific persons actually accessed or received a work to show that the work was publicly accessible. The information may have been publicly accessible when it was emailed on a listserv to interested individuals. View "Samsung Electronics Co., Ltd. v. Infobridge PTE. Ltd." on Justia Law

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Indivior markets and holds the New Drug Application (NDA) for Suboxone® sublingual film, an opioid addiction treatment that combines two active ingredients: the opioid buprenorphine and the opioid antagonist naloxone. Suboxone Film is applied below a patient’s tongue, where it then rapidly dissolves to release the active ingredients. In 2010, the FDA approved Indivior’s film product, the first such product to gain FDA approval. Previously, Indivior sold buprenorphine/naloxone only in a tablet form. These appeals involve issues of infringement and invalidity of four patents covering pharmaceutical films and methods of making them, particularly two patents that claim pharmaceutical films and are listed in the Orange Book2 as covering Suboxone Film. The district court concluded that the asserted claims of three patents are not invalid as obvious; that one patent is not invalid as indefinite and that Watson infringes that patent; and that DRL and Alvogen do not infringe either of two patents. The court found certain claims in a fourth patent invalid. The Federal Circuit vacated, as moot, the holding that those claims were invalid as obvious but otherwise affirmed. In a parallel inter partes review proceeding, the Patent Trial and Appeal Board had held the claims unpatentable as anticipated and obvious, and the Federal Circuit affirmed. View "Indivior Inc. v. Dr. Reddy's Laboratories, S.A." on Justia Law

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TQ’s patent, entitled “Multicarrier Transmission System with Low Power Sleep Mode and Rapid-On Capability,” relates to the field of “multicarrier transmission systems” that provide high speed data links between communication points [and have recently been used] . . . for communications over the local subscriber loop that connects a telephone service subscriber to a central telephone office.” The patent generally describes a method for “establishing a power management sleep state in a multicarrier system” and efficiently waking up a transmission system utilized on hardware, such as a computer, from sleep mode. Cisco and Arris sought inter partes review (IPR). The Patent Trial and Appeal Board found that the claims were not unpatentable over a combination of the prior art. In the meantime, in a companion case, the Federal Circuit held that claims 6, 11, 16, and 20 would have been obvious. The Federal Circuit held that an appeal with respect to those claims is moot. The court vacated with respect to the remaining claims being challenged. The Board incorrectly construed illustrative claim 6’s term “synchronization signal” to mean “a signal allowing synchronization between the clock of the transmitter of the signal and the clock of the receiver of the signal.” View "Cisco Systems, Inc. v. TQ Delta, LLC" on Justia Law

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The Patent Trial and Appeal Board found four claims of Quake’s patent and Claim 25 of its Patent Application unpatentable for lack of written description, 35 U.S.C. 112. The claims cover a method of determining the presence of a chromosomal abnormality in fetuses by using massively parallel sequencing (MPS) technology to sequence DNA fragments from a sample of the mother’s blood that contains both maternal and fetal DNA, identifying what chromosomes those DNA fragments come from based on their sequences, and determining if the test chromosome is over- or under-represented in the sample as compared to a reference chromosome. The claims recite a random MPS method for the detection step--all of the DNA in the sample is sequenced, as opposed to sequencing specific, targeted sequences. The Federal Circuit affirmed. The written description requirement prevents an applicant from later asserting that he invented that which he did not; it is particularly important when, as here, claims are added later during prosecution in response to developments by others. The first time Quake tried to cover random MPS with this specification was after the publication of another patent application directed to random MPS: Quake then canceled all his pending claims and replaced them with claims covering random MPS, creating a mismatch between the claims and the originally filed specification. The Board did not abuse its discretion in declining to reopen the record to admit expert testimony from another proceeding. View "Quake v. Lo" on Justia Law