Justia Patents Opinion Summaries

The Valeant plaintiffs reside in Japan, Ireland, and Delaware. The defendants are incorporated and have principal places of business in West Virginia, Pennsylvania, and India. The brand-name FDA-approved drug Jublia® has nine patents listed in the Orange Book. Defendant, a generic drug company, executed an Abbreviated New Drug Application (ANDA) seeking approval to market a generic version of Jublia®, sending the ANDA from its West Virginia office to the FDA in Maryland. Valeant sued for infringement in the District of New Jersey, alleging that the district is a likely destination for the generic solution; each defendant does business in New Jersey and is registered to do so; each defendant has previously submitted to the court's jurisdiction and has a place of business in New Jersey; the generic drug will be “purposefully directed at … New Jersey. The district court dismissed for improper venue, finding that the ANDA was submitted from West Virginia, rendering venue proper there, while acknowledging that MLL, a foreign entity, was subject to venue in every judicial district.The Federal Circuit affirmed in part, citing the 2017 Supreme Court “TC Heartland” holding: the general venue provision in 28 U.S.C. 1391, which provides that a corporation is deemed to “reside” in any judicial district in which it is subject to personal jurisdiction, does not modify the term “resides” in 28 U.S.C. 1400, the specific patent venue statute; “resides” refers only to a corporation’s state of incorporation. A corporation may be sued for patent infringement in districts in the state of its incorporation and those in which it has a regular and established place of business and an act of infringement has occurred. In Hatch-Waxman Act, 35 U.S.C. 271(e)(2)(A) infringement cases, section 1400 “acts of infringement” occur only in districts where actions related to the ANDA submission occur, not in all locations where future distributions of the products specified in the ANDA is contemplated. The court remanded the dismissal of the foreign defendant. View "Valeant Pharmaceuticals North America LLC v. Mylan Pharmaceuticals Inc." on Justia Law

The University of Wyoming’s 425 patent is directed to a procedure whereby solvents of increasing strength are successively passed over asphaltenes that have been segregated in a packed column from a hydrocarbon such as oil and amounts of asphaltenes dissolved and eluted from the column by the various solvents yield information about the oil. Chevron was also studying the analysis of asphaltene impurities in crude oil. Wyoming initiated an interference by copying into its pending application claims from a pending Chevron application.The Patent Trial and Appeal Board held that Wyoming’s 425 patent had an adequate written description for the count limitation and held that Wyoming was entitled to the benefit of the earlier filing dates of two patent applications, Because Chevron had filed a Priority Statement that indicated its earliest corroborated conception coupled with diligence date was March 1, 2009, the Board determined that Chevron was unable to prevail on priority and assigned Wyoming status as the senior party and entered judgment in its favor in the interference. The Federal Circuit affirmed, upholding the Board’s constructions of the limitation “gradually and continuously changing the alkane mobile phase solvent to a final mobile phase solvent.” View "Chevron U.S.A. Inc. v. University of Wyoming Research Corp." on Justia Law

In 2018, Cameron sued Nitro in the Southern District of Texas, where both parties are headquartered, alleging infringement of three of Cameron’s patents. That court has not issued a claim construction ruling and a trial date has not been set. In 2020, Cameron filed this suit against Nitro in the Western District of Texas, alleging that the same accused products infringe two other Cameron patents. The Western District denied a motion to decline jurisdiction or transfer the action, reasoning that when a balance of the 28 U.S.C. 1404(a) transfer factors “does not weigh in favor of transfer" compelling circumstances exist to avoid application of the first-to-file rule. The court concluded that two factors—access to sources of proof and the local interest— favored transfer while the administrative difficulties flowing from court congestion and the practical problems factor weighed against transfer.The Federal Circuit vacated. The district court erred in concluding that the first-to-file rule only applies when the balance of factors favors the first-filed court. Unlike in an ordinary transfer analysis, the focus of the first-to-file rule is to avoid potential interference in the affairs of another court. Requiring that the balance of the transfer factors favor the second-filed court helps to ensure that more compelling concerns exist. The district court erred in not making that adjustment and did not expressly resolve whether balancing the factors favors the second-filed court. View "In Re Nitro Fluids, L.L.C." on Justia Law

TecSec’s patents, entitled “Distributed Cryptographic Object Method,” claim particular systems and methods for multi-level security of various kinds of files being transmitted in a data network. The patents describe a method in which a digital object—e.g., a document, video, or spreadsheet—is assigned a level of security that corresponds to a certain combination of access controls and encryption. . The encrypted object can then be embedded or “nested” within a “container object,” which, if itself encrypted and access-controlled, provides a second layer of security.In 2010, TecSec sued several companies, including Adobe, alleging direct and indirect infringement. Before trial, in response to Adobe’s motion in limine, the court excluded all evidence of induced infringement from March 2011, through the October 2013 expiration of the patents. Earlier, the court had rejected Adobe’s challenge to the asserted claims as ineligible under 35 U.S.C. 101. A jury found for TecSec on direct infringement, but not induced infringement; rejected Adobe’s prior-art validity challenges; and awarded damages. The court reduced the damages award to zero on the ground that there was no proof of any damages from direct infringement and the jury had rejected induced infringement.The Federal Circuit remanded, reversing the evidentiary ruling that eliminated TecSec’s inducement case for a substantial period and rejecting Adobe’s challenge to the district court’s eligibility ruling. View "TecSec, Inc. v. Adobe Inc." on Justia Law

The Snyders patent describes and claims an artificial heart valve and a system for inserting the valve. In 2017, St. Jude filed two petitions under 35 U.S.C. 311–19, seeking inter partes reviews (IPR) of claims 1, 2, 4–8, 10–13, 17–19, 21, 22, and 25–30. The Patent Trial and Appeal Board instituted two reviews, each addressing all the challenged claims. In IPR-105, the Board ruled that St. Jude failed to establish unpatentability of any of the challenged claims, rejecting the contention that all the challenged claims were anticipated by the Leonhardt patent and would have been obvious over Leonhardt plus either the Anderson patent or the Johnson and Imachi patents. In IPR-106, the Board found claims 1, 2, 6, and 8 anticipated by the Bessler patent, but it rejected St. Jude’s contentions as to all other claims, finding that St. Jude had not proved, as to all but claims 1, 2, 6, and 8, anticipation by Bessler or obviousness over Bessler combined with either Anderson or Johnson and Imachi. The Federal Circuit affirmed the decision in IPR-105; reversed the finding in IPR-106 that Bessler anticipated claims 1, 2, 6, and 8; did not reach the anticipation argument as to claim 28; and affirmed the obviousness rejection in IPR-106. View "St. Jude Medical, LLC v. Snyders Heart Valve LLC" on Justia Law

Under the 1999 Agreement, Medtronic purchased Dr. Sasso's inventions, agreeing to royalty payments based on Medtronic’s sales of the defined Medical Device until “the last to expire of the patents included in Intellectual Property Rights, or if no patent application(s) issue into a patent having valid claim coverage of the Medical Device, then seven (7) years from the Date of First Sale of the Medical Device.” The initial patent application was filed in November 1999; two patents issued, both entitled “Screw Delivery System and Method.” Medtronic made royalty payments in 2002-2018. Sasso claimed that Medtronic was not paying royalties on sales of all relevant devices, and filed suit in Indiana state court. A judgment in Sasso's favor is on appeal.Medtronic sought a federal declaratory judgment. While Sasso describes the state court action as a contract case for payment for patent rights, Medtronic describes the federal action as a patent case in which payment requires valid patents. The Federal Circuit affirmed the dismissal of the suit without prejudice, based on abstention in view of the concurrent action in Indiana state court between the same parties concerning the same dispute. District courts possess significant discretion to dismiss or stay claims seeking declaratory relief, even when they have subject matter jurisdiction. View "Warsaw Orthopedic, Inc. v. Sasso" on Justia Law

Immunex’s 487 patent is directed to antibodies that bind to the human interleukin-4 receptor, the resulting inhibition of which is significant for treating various inflammatory disorders, such as arthritis, dermatitis, and asthma. Amid infringement litigation, Sanofi filed three inter partes review (IPR) petitions challenging claims 1–17 of the patent. Two were instituted. In one final written decision, the Board concluded that claims 1–17 were unpatentable as obvious over two prior references. Immunex appealed, contesting the construction of the claim term “human antibodies.” In the other IPR, involving a subset of the same claims, the Board did not invalidate the patents for reasons of inventorship. Sanofi contested the Board’s inventorship determination. In consolidated appeals, the Federal Circuit upheld the Board’s claim construction, affirming the invalidity decision, leaving valid no claims at issue in the inventorship appeal. View "Immunex Corp v. Sanofi-Aventis U.S. LLC" on Justia Law

Ezaki, a Japanese confectionery company, makes and sells “Pocky,” thin, stick-shaped cookies that are partly coated with chocolate or flavored cream. The end of each is left partly uncoated to serve as a handle. In 1978, Ezaki started selling Pocky in the U.S. and began registering U.S. trademarks and patents. It has two Pocky product configurations registered as trade dresses and has a patent for a “Stick Shaped Snack and Method for Producing the Same.” In 1983, the Lotte confectionery company started making Pepero stick-shaped cookies partly coated in chocolate or flavored cream. Pepero “looks remarkably like Pocky.”In 1993-1995, Ezaki sent letters, notifying Lotte of its registered trade dress and asking it to cease and desist. Ezaki took no further action until 2015, when it sued, alleging trademark infringement and unfair competition, under the Lanham Act, 15 U.S.C. 1114, 1125(a)(1)(A). Under New Jersey law, it alleged trademark infringement and unfair competition. The Third Circuit affirmed summary judgment in favor of Lotte, holding that because Pocky’s product configuration is functional, it is not protected as trade dress. Trade dress is limited to features that identify a product’s source. Patent law protects useful inventions, but trademark law does not. View "Ezaki Gliko Kabushiki Kaisha v. Lotte International America Corp." on Justia Law

Two named inventors of a patent, directed to portable antenna positioners, assigned their interests to their respective employers, AntennaSys and Windmill. Windmill acquired an exclusive license to AntennaSys’s one-half interest in the patent. Windmill formed GBS to hold its interests in the patent and agreed to pay AntennaSys a royalty; if Windmill fails to meet certain minimum sales requirements, its exclusive license to AntennaSys’s interest becomes non-exclusive. The agreement provides that, if Windmill loses its exclusivity, either party may commence a lawsuit against “third-party” infringers. Windmill failed to meet those requirements; its license to AntennaSys’s one-half interest is now non-exclusive. AntennaSys sued AQYR, Windmill’s wholly-owned subsidiary, for infringement. Following claim construction, AntennaSys conceded that it could not prevail. The court entered judgment for the defendants.The Federal Circuit vacated. On remand, the district court should resolve factual issues pertaining to AntennaSys’s ability to bring its infringement claim against AQYR: whether Windmill waived the right to object to AntennaSys’s failure to meet 35 U.S.C 262's prerequisite that each joint owner of a patent may make, use, offer to sell, sell, or import the patented invention, without the consent of or accounting to other owners; whether GBS or Windmill holds or retains an ownership interest in the patent; and whether AntennaSys’s infringement suit is barred because of an express or implied license from the real patent owner to AQYR. View "AntennaSys, Inc. v. AQYR Technologies, Inc." on Justia Law

GSK’s 067 patent for “carvedilol” issued in 1985. The FDA initially approved carvedilol for treating hypertension; the product was marketed with the brand name Coreg®. Scientists continued to study carvedilol. In 1997, the FDA approved carvedilol for the additional treatment of congestive heart failure. GSK’s 069 patent issued in 1998, describing and claiming treatment with a combination of carvedilol and an angiotensin-converting enzyme (ACE) inhibitor, a diuretic, and digoxin. The patent was listed in the FDA’s Orange Book. In 2003, the FDA approved this Coreg® combination for use by patients suffering from left ventricular dysfunction following myocardial infarction. In 2002, Teva applied for FDA approval of generic carvedilol, certifying in the ANDA that its product would not be launched until the 067 patent expired and that the 069 patent was “invalid, unenforceable, or not infringed.” Teva received FDA tentative approval “for treatment of heart failure and hypertension,” to become effective in 2007. GSK, in 2003, sought reissue of the 069 patent, 35 U.S.C. 251. The 000 patent issued in 2008. In 2011 the FDA required Teva to amend its carvedilol label to be “identical in content to the approved [GSK Coreg®] labeling.GSK sued for infringement.A jury found the 000 patent valid and infringed, assessed damages, and found the infringement willful. The district court granted Teva judgment of non-infringement as a matter of law. The Federal Circuit reinstated the jury verdicts as supported by substantial evidence. View "GlaxoSmithKline LLC v. Teva Pharmaceuticals USA, Inc." on Justia Law