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  • New Jersey District Court Orders Delisting Of Teva Inhaler Patents From The Orange Book
    06/18/2024

    On June 10, 2024, Judge Stanley R. Chesler of the United States District Court for the District of New Jersey granted the Amneal defendants’ motion for partial judgment on their counterclaims in a Hatch-Waxman dispute, and ordered the Teva plaintiffs to delist certain inhaler patents from the Orange Book. Teva Branded Pharmaceutical Products R&D, Inc. v. Amneal Pharmaceuticals of New York, LLC, No. 23-cv-20964 (SRC) __ F. Supp. 3d __ (D.N.J. June 10, 2024).

    Categories : Hatch-WaxmanOrange Book
  • The Federal Circuit Creates A New Standard For Assessing The Nonobviousness Of Design Patents
    06/04/2024

    On May 21, 2024, the United States Court of Appeals for the Federal Circuit (the “Federal Circuit” or “court”) issued an en banc opinion, affirming-in-part, vacating-in-part, and remanding a United States Patent and Trademark Office, Patent Trial, and Appeal Board (“Board”) decision that the prior art, including U.S. Design Patent No. D773,340 (“Lian”) did not render unpatentable Appellee GM Global Technology Operations LLC’s (“GM”) U.S. Design Patent No. D797,625 (the “D’625 patent”), pursuant to 35 U.S.C. §§ 102 and 103. LKQ Corp. v. GM Glob. Tech. Operations LLC, No. 2021-2348, __F.4th__, 2024 WL 2280728 (Fed. Cir. May 21, 2024). The en banc court affirmed the Board’s § 102 decision of no anticipation but vacated and remanded its § 103 decision of nonobviousness because the court overruled the long-standing Rosen-Durling test. Id. 

  • Federal Circuit Holds Attorneys’ Fees Under 35 U.S.C. § 285 Do Not Include Parallel IPR Fees And Denies Recovery From Plaintiff’s Counsel
    05/29/2024

    On May 20, 2024, the United States Court of Appeals for the Federal Circuit (“CAFC”) affirmed the United States District Court for the District of Delaware’s decision to deny recovery of attorneys’ fees incurred in inter partes review proceedings (“IPRs”), as well as recovery from plaintiff’s counsel. Dragon Intellectual Property, LLC (“Dragon”) separately sued DISH Network L.L.C. (“DISH”) and Sirius XM Radio Inc. (“SXM”), as well as eight other defendants, for patent infringement in December 2013. DISH and SXM (collectively, “Appellants”) sent letters to Dragon’s counsel explaining that their products do not practice the asserted claims and that a reasonable pre-suit investigation would have shown that. Ignoring the letters, Dragon continued to pursue its lawsuits.

    Categories : Attorney's FeesSection 285
  • PTAB Denies Institution Of Supplier’s IPR Petition Under 35 U.S.C. § 315(b)
    05/23/2024

    On May 9, 2024, the USPTO’s Patent Trial and Appeal Board (“PTAB”) denied the Petition for inter partes review of Luminex International Co., Ltd (“Luminex”), under 35 U.S.C. § 315(b), finding that Luminex filed the Petition more than one year after the date on which a real party in interest was served with a complaint alleging infringement of the challenged patent. Luminex Int’l Co., Ltd. v. Signify Holdings B.V., IPR2024-00101, Paper 10 (PTAB May 9, 2024).

    Categories : IPRsReal Party In Interest
  • Federal Circuit Vacates District Court’s Judgment Of Patent Infringement Following Affirmance Of Invalidity At The PTAB
    05/14/2024

    On May 2, 2024, the United States Court of Appeals for the Federal Circuit (“CAFC”) vacated an amended final judgment of patent infringement entered by the U.S. District Court for the Eastern District of Texas against NetScout Systems, Inc. Packet Intelligence LLC v. NetScout Systems, Inc., No. 2022-2064. The CAFC’s decision was based on its affirmance of parallel Patent Trial and Appeal Board (“PTAB”) decisions finding the asserted patent claims unpatentable as obvious.

  • Federal Circuit Clarifies Standard For The Injury In Fact Requirement For Standing
    05/07/2024

    On May 1, 2024, the Court of Appeals for the Federal Circuit (“CAFC”) issued a precedential opinion reversing a decision from the United States District Court for the Western District of Texas in Case No. 2 6:19-cv-00628-ADA, Judge Alan D. Albright, granting dismissal for lack of constitutional standing. Intellectual Tech LLC v. Zebra Technologies Corp., __ F.3d __ (Fed. Cir. May 1, 2024). In its decision, the CAFC found that plaintiff patentee retained an exclusionary right under the asserted patent and that this was sufficient to establish standing.

  • Fourth Circuit Affirms Decision Denying Timberland Trade Dress Registration For Its Signature Boot
    05/07/2024

    On April 15, 2024, the United States Court of Appeals for the Fourth Circuit affirmed a decision by the Eastern District of Virginia finding that (i) a trademark applicant’s applied-for design was functional and therefore unregistrable and (ii) applicant failed to establish the acquired distinctiveness required for trade dress registrability. TBL Licensing, LLC v. Vidal, No. 23-1150, 2024 WL 1609096 (4th Cir. Apr. 15, 2024).

    Category : Trademark
  • The Federal Circuit Is Amenable, Under Certain Circumstances, To Allowing A Patent Owner To Seek Foreign Damages For Domestic Infringement
    04/23/2024

    On March 27, 2024, the United States Court of Appeals for the Federal Circuit (the “Federal Circuit”) issued an opinion, affirming a United States District Court for the Northern District of Illinois (the “district court”) decision relating to U.S. Patent Nos. 7,676,411 (the “’411 patent”); 7,813,996 (the “’996 patent”); 6,766,304 (the “’304 patent”); and 6,772,132 (the “’132 patent”), (collectively, the “patents-in-suit”). The district court held the asserted claims of the ’411 and ’996 patents invalid, and a jury found the asserted claims of the ’304 and ’132 patents valid and infringed and awarded $6,610,985 in damages. The Federal Circuit affirmed. Brumfield, Tr. for Ascent Tr. v. IBG LLC, No. 2022-1630, __F.4th__, 2024 WL 1292151 (Fed. Cir. Mar. 27, 2024). 

  • Federal Circuit Affirms District Court Of Delaware’s Rule 12(b)(6) Dismissal Holding Asserted Claims Unpatentable Under 35 U.S.C. § 101.
    04/09/2024

    On April 4, 2024, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) affirmed the U.S. District Court for the District of Delaware’s decision finding asserted claims invalid under 35 U.S.C. § 101. In October 2021, AI Visualize, Inc. accused Nuance Communications, Inc. and Mach7 Technologies, Inc. of infringing certain claims of U.S. Patent Nos. 8,701,167; 9,106,609; 9,438,667; and 10,930,397. The asserted patents share substantially the same specification and are directed to the visualization of medical scans.

  • Federal Circuit Finds Challenged Claims of Laser Projector Alignment Patent Not Unpatentable
    03/27/2024
    On March 27, 2024, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) issued a precedential opinion (i) reversing the Patent Trial and Appeal Board’s (“Board”) finding that certain challenged claims of a patent directed to a method for aligning a laser projector with respect to a work surface are unpatentable and (ii) affirming the Board’s finding that certain other challenged claims of the patent are not unpatentable. Virtek Vision Int’l ULC v. Assembly Guidance Sys., Inc., __ F.4th __ (Fed. Cir. Mar. 27, 2024).
    Categories : IPRsObviousness
  • Federal Circuit Affirms PTAB Decision Finding Unpatentable Challenged Claims Of Medical-Imaging Patent
    03/26/2024

    On February 20, 2024, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming the decision of the Patent Trial and Appeal Board (“Board”) finding unpatentable the challenged claims of a medical-imaging patent directed to using a headset to view three-dimensional images of a patient. D3D Technologies, Inc. v. Microsoft Corp., __ F.4th __ (Fed. Cir. Feb. 20, 2024).

  • Federal Circuit Underscores Importance Of Carefully Reviewing The Language In A Covenant Not To Sue When Entering A License Agreement
    03/26/2024

    On February 28, 2024, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) reversed the U.S. District Court for the Eastern District of New York’s summary judgment decision to dismiss AlexSam, Inc.’s (“AlexSam’s”) lawsuit for breach of contract against MasterCard International Inc. (“MasterCard”). AlexSam owns two U.S. patents directed to prepaid cards that can be used with point-of-sale devices. In 2005, AlexSam granted MasterCard a license to the two patents. In exchange, MasterCard agreed to pay ongoing royalties in the amount of a fee per licensed transaction. The two patents expired on July 10, 2017.

    Categories : LicensingSummary Judgment
  • Federal Circuit Finds District Court Erred in Concluding Claim Limitations Contradictory
    03/26/2024

    On March 6, 2024, the Court of Appeals for the Federal Circuit (“CAFC”) reversed decisions from the United States District Court for the Western District of Texas in consolidated Case Nos. 6:21-cv-00347 and 6:21-cv-01007, Judge Alan D. Albright, finding the claims of the ’035 patent indefinite. Maxell, Ltd. v. Amperex Technology Ltd., __ F.3d __ (Fed. Cir. March 6, 2024). In its precedential decision reversing and remanding, the CAFC found that the district court erred in finding claim language contradictory and therefore indefinite.

    Categories : IndefinitenessSection 112
  • Federal Circuit Vacates And Remands PTAB Decision Regarding Patents For Adult Incontinence Diapers
    03/26/2024

    On March 4, 2024, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion vacating and remanding four final written decisions of the Patent Trial and Appeal Board (“PTAB”), which found all claims of U.S. Patent Nos. 8,152,788; 8,784,398; 8,771,249; and 8,708,990 to be unpatentable as obvious.

  • Federal Circuit Affirms District Court On Correction Of Inventorship
    03/26/2024

    On March 15, 2024, the United States Court of Appeals for the Federal Circuit (“CAFC”) affirmed a decision by the United States District Court for the Eastern District of Virginia, ordering the correction of inventorship of U.S. Patent No. 9,376,049 (the “’049 patent”) to add Gary Mackay and Dan Hewson as named inventors. Tube-Mac Indus., Inc. v. Campbell, No. 2022-2170 (Fed. Cir. Mar. 15, 2024). The CAFC reviewed the inventorship disputes de novo and the district court’s underlying factual findings for clear error.

    Category : Inventorship
  • Product Operating Manuals Distributed To Customers Are “Printed Publications,” Notwithstanding Confidentiality Provisions And Limited Dissemination
     
    02/21/2024


    On February 8, 2024, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) reversed and vacated several Patent Trial and Appeal Board decisions related to the patentability of U.S. Patent Nos. 10,639,812 and 10,625,436. The patents relate to high-speed slicers used to slice and package food products.

    Categories : Prior ArtPTAB
  • Federal Circuit Affirms Findings Of The International Trade Commission With Respect To Media Device Patent
     
    02/13/2024


    On January 19, 2024, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming the final determination of the International Trade Commission (“ITC”), which found that: (i) intervenor Universal Electronics, Inc. (“Universal”) had ownership rights to assert the ’196 patent in the investigation, (ii) Universal satisfied the domestic industry requirement of 19 U.S.C. § 1337 (Section 337) and (iii) appellant Roku failed to establish the ’196 patent was obvious over prior art.

  • Federal Circuit Finds PTAB Implicitly And Incorrectly Construed Claim In Final Decision
     
    02/13/2024


    On February 7, 2024, the Court of Appeals for the Federal Circuit (“CAFC”) reversed a final written decision from the U.S. Patent Trial and Appeal Board (“PTAB”) finding the challenged claims of the ’753 patent not unpatentable. Google LLC v. EcoFactor, Inc., __ F.3d __ (Fed. Cir. Feb. 7, 2024). In its precedential decision reversing and remanding, the CAFC found that the PTAB relied on an implicit construction of a claim limitation and that this construction was wrong.

    Categories : IPRsPTAB
  • Federal Circuit Affirms PTAB’s Final Written Decision, Holding That Obviousness Does Not Require An Actual, Physical Substitution Of Elements
    01/31/2024

    On January 22, 2024, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming the decision of the Patent Trial and Appeal Board (“Board”) invalidating the claims of U.S. Patent No. 9,458,814 (“’814 patent”) on obviousness grounds. The ’814 patent is directed to a remote start system for a vehicle. The system includes a remote start transmitter physically separate from the vehicle. The transmitter is configured to receive a signal from a user and transmit the signal to the vehicle. The vehicle, upon receiving the transmitted signal, automatically performs multiple functions: a vehicle brake is operated, a climate control system is activated, and the engine is started.

    Categories : IPRsObviousnessPTAB
  • Patent Claims That “Do Nothing More Than Improve A User’s Experience” Are Abstract
     
    01/23/2024

    On January 9, 2024, the United States Court of Appeals for the Federal Circuit affirmed a decision by the Western District of Washington, determining that claims in two of plaintiff’s patents were directed to ineligible subject matter under 35 U.S.C. § 101.  IBM Corp. v. Zillow Group, Inc., No. 2022-1861 (Fed. Cir. Jan. 9, 2024).  Plaintiff had asserted the patents, which claim methods and systems for improving how search results are displayed to users.  Defendant moved to dismiss under Rule 12(b)(6).  The district court found the claims constituted ineligible subject matter as they are directed to abstract ideas and lack an inventive concept.  The Federal Circuit panel (Judges Prost, Hughes, and Stoll) agreed, stating that the claims “do not disclose any technical improvement to how computer applications are used.”  Judge Stoll dissented in part, on the basis that plaintiff’s proposed construction of “user context vector” in the ’676 patent should have been addressed.
  • Federal Circuit Affirms PTAB Decision Finding Challenged Claims Unpatentable and Denying Motion to Amend the Claims
     
    01/23/2024
    On January 18, 2024, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming the decision of the Patent Trial and Appeal Board (“Board”) finding unpatentable the challenged claims of a patent directed to a 3D pointing device for outputting yaw, pitch, and roll angles in a 3D reference frame and denying the patent owner’s motion to amend its claims.  CyWee Group Ltd. v. ZTE (USA), Inc., __ F.4th __ (Fed. Cir. Jan. 18, 2024).
    Categories : ObviousnessMotion to Amend
  • Federal Circuit Finds District Court’s Construction Of “Barcode” Too Narrow
     
    01/09/2024


    On December 26, 2023, the United States Court of Appeals for the Federal Circuit (“CAFC”) reversed a decision from the United States District Court for the Central District of California in Case No. 2:21-cv-03402-GW-AGR, Judge George H. Wu, granting appellee motion for summary judgment of non-infringement. K-Fee System Gmbh v. Nespresso USA, Inc., __ F.3d __ (Fed. Cir. December 26, 2023). In its precedential decision, the CAFC found that the district court’s non-infringement finding was based on an erroneous construction of the claim term “barcode.”

  • The Federal Circuit Nullifies $2.2 Billion Judgment
     
    01/09/2024


    On December 4, 2023, the United States Court of Appeals for the Federal Circuit (the “Federal Circuit”) issued an opinion, affirming in part, reversing in part, vacating in part, and remanding the decision of the United States District Court for the Western District of Texas (the “district court” or “Western District”) that U.S. Patent Nos. 7,523,353 (the “’353 patent”) and 7,725,759 (the “’759 patent”), (collectively, the “asserted patents”) were infringed and damages should be awarded. VLSI Tech. LLC v. Intel Corp., No. 2022-1906, 2023 WL 8360083 (Fed. Cir. Dec. 4, 2023). More specifically, the Federal Circuit affirmed the infringement of the ’373 patent but reversed the infringement of the ’759 patent; vacated the damages award for the ’373 patent; reversed the denial of Appellant’s, Intel Corporation (“Intel”), motion for leave to amend; and remanded the matter.

    Categories : DamagesLicensing
  • Federal Circuit Rules That Defendants’ Abbreviated New Drug Applications Did Not Infringe Plaintiffs’ Drug Patents
    12/19/2023


    On December 7, 2023, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming the decision of the District Court of Delaware, which found non-infringement by Lupin Ltd., Lupin Pharmaceuticals, Inc. (“Lupin”) and other defendants of U.S. Patent Nos. 9,278,096 and 9,125,910 (’096 and ’910 patents, respectively), and infringement by Lupin of claim 12 of U.S. Patent No. 9,101,626 (’626 patent). All three patents are owned by H Lundbeck A/S (“Lundbeck”).

    Category : Patent Infringement
  • Federal Circuit Affirms PTAB’s Final Written Decision, Holding That The Passing Of The Statutory Deadline Did Not Deprive The Board Of Authority To Issue Its Decision
     
    12/13/2023

    On November 21, 2023, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming the decision of the Patent Trial and Appeal Board (“Board”) finding claims 1–17 of U.S. Patent No. 9,693,961 (“’961 patent”) unpatentable for lack of written description and anticipation.
    Categories : Post-Grant ReviewPTAB
  • Federal Circuit Affirms PTAB’s Decision Finding Semiconductor Patent Unpatentable After Addressing Threshold Question Relating To Original Assignee’s Interest In Patent
     
    11/21/2023

    On November 17, 2023, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming the decision of the Patent Trial and Appeal Board (“Board”) finding unpatentable the challenged claims of a patent directed to methods for making semiconductor devices. Bell Semiconductor LLC v. Advanced Semiconductor Eng’g, Inc., __ F.4th __ (Fed. Cir. Nov. 17, 2023).
  • Federal Circuit Affirms Attorneys’ Fees Award Against Patentee PersonalWeb
     
    11/14/2023

    On November 3, 2023, the U.S. Court of Appeals for the Federal Circuit affirmed an award of $5.2 million in attorneys’ fees entered against PersonalWeb Technologies LLC under 35 U.S.C. § 285.  In re PersonalWeb Techs. LLC, Nos. 2021-1858, 2021-1859, 2021-1860 (Fed. Cir. Nov. 3, 2023).  The court (Reyna, Dyk, and Lourie) reviewed the district court’s exceptional case determination and fee calculation for abuse of discretion.
  • Federal Circuit Finds PTAB Sufficiently Addressed Arguments Actually Raised In IPR Petitions
     
    11/07/2023

    On October 25, 2023, the Court of Appeals for the Federal Circuit (“CAFC”) affirmed two final written decisions from the U.S. Patent Trial and Appeal Board (“PTAB”), determining that appellant IPR petitioner did not meet its burden of proving unpatentability.  Netflix Inc. v. DivX LLC, __ F.3d __ (Fed. Cir. October 25, 2023).  In its precedential decision, the CAFC found no error in how the PTAB understood appellant’s petition arguments and further found that certain other arguments newly raised by appellant on appeal had been forfeited.
    Categories : IP Litigation ProcedureIPRsPTAB
  • Federal Circuit Affirms Western District Of Texas’s Final Judgment Of Invalidity
     
    11/01/2023

    On October 6, 2023, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming the Western District of Texas’s holding of indefiniteness as to certain claims of U.S. Patent No. 8,751,585 (the “’585 Patent”).  WSOU Investments LLC (“WSOU”) accused Google LLC (“Google”) of infringing independent claim 9, and claims 10-16 dependent therefrom, of the ’585 Patent.  The ’585 Patent is directed to a management method for electronic messages in a user’s inbox in a communication system.  The district court construed the limitation, “a collaborative application management processor configured to manage collaborative application,” to be indefinite as a means-plus-function limitation without sufficient corresponding structure.
  • Federal Circuit Reverses District Court Ruling As To Nonobviousness And Damages
     
    11/01/2023

    On October 16, 2023, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion that (i) reversed the District Court for the Northern District of California’s pre-verdict judgment as a matter of law (JMOL) of nonobviousness, (ii) affirmed the district court’s decision to deny defendant’s pre-verdict and post-trial motions for JMOL regarding noninfringement, (iii) reversed the district court’s denial of defendant’s pre and post-trial motions to exclude the testimony of patent owner’s damages expert, (iv) vacated the lost profits award, and (v) remanded the case for further consistent proceedings.  Cyntec Co. v. Chilisin Electronics Corp., No. 2022-1873, --F.4th.--, 2023 WL 6798376 (Fed. Cir. Oct. 16, 2023).
  • The Federal Circuit Reminds The PTAB Of The Meaning Of “A”
     
    11/01/2023

    On October 19, 2023, the United States Court of Appeals for the Federal Circuit issued an opinion that reversed-in-part, vacated, and remanded the United States Patent and Trademark Office’s Patent Trial and Appeal Board (the “Board”) decision that the prior art, including Claire Simonnet & Alex Groisman, High-Throughput and High-Resolution Flow Cytometry in Molded Microfluidic Devices, 78 Analytical Chemistry 5653 (2006) (“Simonnet”), did not render unpatentable Appellee Cytonome/ST, LLC’s (“Cytonome”) U.S. Patent No. 10,583,439 (the “’439 patent”), pursuant to 35 U.S.C. §§ 102 and 103.  ABS Glob., Inc. v. Cytonome/St, LLC, No. 2022-1761, 2023 WL 6885009 (Fed. Cir. Oct. 19, 2023).
    Categories : IPRsObviousnessPrior ArtPTAB
  • Federal Circuit Affirms PTAB Claim Construction Interpretation And Upholds Refusal To Allow Impermissibly Broad Substitute Claims
     
    10/11/2023

    On September 1, 2023, the United States Court of Appeals for the Federal Circuit issued an opinion upholding the Patent Trial and Appeal Board’s (“PTAB”) (i) construction of the claim term “connection rejection message” as having its plain and ordinary meaning; (ii) finding that the proposed substitute independent claim was impermissibly broader than the original claim; and (iii) finding that the proposed substitute claims that were dependent on the impermissible independent claim were also impermissibly broadened.  Sisvel International S.A. v. Sierra Wireless, Inc., No. 2022-1387, -- F.4th --, 2023 WL 5659063 (Fed. Cir. Sept. 1, 2023).
    Categories : IP Litigation ProcedureIPRsPTAB
  • Federal Circuit Tells PTAB To Base Its Decision On Grounds The Parties Raise
     
    10/11/2023

    On September 11, 2023, the United States Court of Appeals for the Federal Circuit issued an opinion, vacating the United States Patent and Trademark Office’s Patent Trial and Appeal Board (the “Board”) decision that the prior art, including U.S. Patent No. 7,859,588 (“Parulski”), did not render unpatentable Appellee Corephotonics, Ltd.’s (“Corephotonics”) U.S. Patent No. 10,225,479 (the “’479 patent”) pursuant to 35 U.S.C. § 103.  Apple Inc. v. Corephotonics, Ltd., No. 2022-1350, 2023 WL 5838695 (Fed. Cir. Sept. 11, 2023).
    Categories : IPRsObviousnessPrior ArtPTAB
  • Federal Circuit Finds Antibody Claims Invalid For Lack Of Enablement In View Of Amgen
     
    10/11/2023

    On September 20, 2023, the Court of Appeals for the Federal Circuit affirmed a decision of the United States District Court for the District of Delaware in Case No. 1:17-cv-00509-TBD, Judge Timothy B. Dyk, finding claims of asserted U.S. Patent No. 7,033,590 (“the ’590 patent”) invalid for lack of enablement.  Baxalta Inc. et al. v. Genentech Inc., __ F.3d __ (Fed. Cir. September 20, 2023).  In its precedential decision, the CAFC held that the asserted claims are indistinguishable from those recently found invalid by the Supreme Court in Amgen Inc. v. Sanofi, 598 U.S. 594, 610–12 (2023).
    Category : Section 112
  • Federal Circuit Affirms PTAB On Motivation To Combine And Reasonable Expectation Of Success
     
    10/11/2023

    On September 21, 2023, the United States Court of Appeals for the Federal Circuit affirmed a decision by the United States Patent and Trademark Office, Patent Trial and Appeal Board (“PTAB”), holding that claims of U.S. Patent No. 7,295,648 (the “’648 patent”) owned by Elekta Limited (“Elekta”) were unpatentable as obvious.  Elekta Ltd. v. ZAP Surgical Sys., Inc., No. 2021-1985 (Fed. Cir. Sept. 21, 2023).  The CAFC panel (Reyna, Stoll and Stark) reviewed the PTAB’s legal conclusions de novo and its factual findings for substantial evidence.  In affirming the PTAB, the CAFC concluded that the PTAB’s factual findings as to both the motivation to combine prior art references and the reasonable expectation of success in making the combination were supported by substantial evidence.
    Categories : IPRsObviousnessPTAB
  • Federal Circuit Affirms PTAB’s Unpatentability Finding Of Medical Alarm Patent
     
    10/10/2023

    On September 28, 2023, the U.S. Court of Appeals for the Federal Circuit issued an opinion affirming the decision of the Patent Trial and Appeal Board finding unpatentable the challenged claims of a patent directed to an adaptive alarm system, used in combination with pulse oximetry sensors, for medical applications. Masimo Corp. v. Sotera Wireless, Inc., F.4th (Fed. Cir. Sept. 28, 2023).
    Category : Obviousness
  • Federal Circuit Affirms Western District Of Texas’s Order Granting Summary Judgment To Defendant Under § 101
     
    09/06/2023

    USC IP Partnership, L.P. (“USC”) filed a patent infringement lawsuit against Facebook, Inc., succeeded by Meta Platforms, Inc. (collectively, “Meta”), in the United States District Court for the Western District of Texas.  USC accused Meta’s “News Feed” feature of infringing U.S. Patent No. 8,645,300 (“the ’300 Patent”).  The ’300 Patent claims a method for predicting which webpages to recommend to a web visitor based on inferences of the visitor’s intent by using an “intent engine.”  Meta moved for summary judgment of invalidity of all claims of the ’300 Patent on the ground that they are ineligible for patenting, under 35 U.S.C. § 101.  A week before trial was scheduled, Judge Alan Albright granted summary judgment.  USC IP P’ship, L.P. v. Facebook, Inc., 576 F. Supp. 3d 446 (W.D. Tex. 2021) (“Dist. Ct. Order”).
  • Seventh Circuit Clarifies Forum Selection Clause Applies Only To Contracting Parties
     
    08/16/2023

    On August 7, 2023, the United States Court of Appeals for the Seventh Circuit reversed in part a decision by the Northern District of Illinois, holding that an agreed forum selection clause applies only to the parties to the agreement and cannot be invoked by a co-defendant that did not have a similar agreement.  Nulogy Corp. v. Menasha Packaging Co., LLC, No. 22-1583, 2023 WL 5010784, at *1 (7th Cir. Aug. 7, 2023).  The Court reviewed the district court’s threshold determinations regarding the forum selection clause de novo.
    Categories : Civil LitigationContracting
  • Federal Circuit Refuses To Import Safety And Efficacy Limitations Into Method Of Treatment Claims And Affirms Induced Infringement Finding
     
    08/08/2023

    On July 24, 2023, the Court of Appeals for the Federal Circuit (CAFC) affirmed a decision of the United States District Court for the District of Delaware in Case No. 1:20-cv-00755-RGA-JLH, Judge Richard G. Andrews, finding claims of one asserted patent valid and infringed and claims of another asserted patent anticipated but otherwise infringed.  United Therapeutics Corp. v. Liquidia Techs., Inc., __ F.3d __ (Fed. Cir. July 24, 2023).  In its precedential decision, the CAFC held, inter alia, that the district court did not err in declining to import safety and efficacy limitations into method of treatment claims in the first patent, and also did not err in finding that a decision of unpatentability by the U.S. Patent Trial and Appeal Board (“PTAB”) of the U.S. Patent and Trademark Office, currently on appeal, did not bar liability for induced infringement.
    Categories : Prior ArtSection 112
  • The Federal Circuit Tells Trinity That Its Poll-Based Network Patents Are Invalid
     
    08/08/2023

    On July 14, 2023, the United States Court of Appeals for the Federal Circuit (the “Federal Circuit”) issued an opinion, affirming the decision of the United States District Court for the Central District of California (the “district court” or “Central District of California”) that U.S. Patent Nos. 9,087,321 (the “’321 patent”) and 10,936,685 (the “’685 patent”), (collectively, the “asserted patents”) are invalid under 35 U.S.C. § 101.  Trinity Info Media, LLC v. Covalent, Inc., No. 2022-1308, 2023 WL 4536366 (Fed. Cir. July 14, 2023).
  • Federal Circuit Vacates PTAB’s Final Written Decisions Because The Board Erred In Its Obviousness Analysis
     
    08/01/2023

    Medtronic, Inc., asserted U.S. Patent Nos. 8,626,314 and 8,036,756 against Axonics, Inc., in a patent infringement lawsuit.  In response, Axonics challenged various claims of the Medtronic patents for obviousness in inter partes reviews (IPRs).  In both IPRs, the Patent Trial and Appeal Board concluded that Axonics had failed to prove any of the challenged claims unpatentable.  Axonics appealed.  On July 10, 2023, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion vacating the Board’s final written decisions in both IPRs.
    Categories : IPRsObviousnessPTAB
  • Federal Circuit Holds That Pure AIA Patents Are Not Subject To Interferences
     
    08/01/2023

    On July 14, 2023, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion reversing the decision of the Patent Trial and Appeal Board (“PTAB”), holding that a patent that has only ever contained claims with an effective filing date that postdates the effective date of the America Invents Act (“AIA”) may not be subject to an interference—even if the allegedly interfering patent has a priority date prior to the AIA.  SNIPR Technologies Limited v. Rockefeller University, No. 2022-1260, -- F.4th --, 2023 WL 4536369 (Fed. Cir. July 14, 2023).
    Categories : IP Litigation ProcedurePTAB
  • Federal Circuit Reverses District Court’s Preclusion-Based Dismissal Of Induced Infringement Suit
     
    07/11/2023

    On July 5, 2023, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion reversing the U.S. District Court for the Western District of Wisconsin’s decision dismissing—on the basis of res judicata—the induced infringement suit of Appellant, Inguran, LLC (“Inguran”). Inguran, LLC v. ABS Global, Inc., __ F.4th __ (Fed. Cir. July 5, 2023).
    Category : Claim Preclusion
  • Federal Circuit Affirms Dismissal For Failure To Comply With Discovery Order And Under Kessler Doctrine
     
    07/06/2023

    On June 21, 2023, the Court of Appeals for the Federal Circuit (CAFC) affirmed a decision of the United States District Court for the Middle District of Florida in Case No. 6:21-cv-01366-PGB-DCI, Judge Paul G. Byron, dismissing plaintiff’s patent infringement suit.  Yoldas Askan v. Faro Techs., Inc.,__F.3d__(Fed. Cir. June 21, 2023).  In its order, the CAFC held that the district court did not abuse its discretion in dismissing the case as a sanction for plaintiff’s failure to comply with a discovery order and as precluded under the Kessler doctrine, under which “an adjudged non-infringer” can “avoid repeated harassment for continuing its business as usual post-final judgment in a patent action where circumstances justify that result.”
  • Federal Circuit Affirms PTAB, Citing Recent SCOTUS Opinion On Enablement
     
    07/06/2023

    On June 27, 2023, the United States Court of Appeals for the Federal Circuit (“CAFC”) affirmed a decision by the United States Patent and Trademark Office, Patent Trial and Appeal Board (“PTAB”), holding that proposed substitute claims were not patentable for lack of written description and lack of enablement under 35 U.S.C. § 112.  Medytox, Inc., v. Galderma S.A., No. 2022-1165 (Fed. Cir. June 27, 2023).  The CAFC panel (Dyk, Reyna, and Stark) reviewed the PTAB’s legal conclusions de novo and its factual findings for substantial evidence.  In affirming the PTAB, the CAFC concluded that the substitute claims were not enabled because a skilled artisan would not have been able “to make and use all of what is claimed.”
  • PTAB Finds Unified Patents’ Members Are Real Parties In Interest, But USPTO Director Says Determination Was Unnecessary And Vacates
     
    06/21/2023

    The PTAB recently released public versions of earlier decisions about the implications of Unified Patents’ business model and when the PTAB should decide disputes about identification of real parties in interest (“RPIs”).  On March 8, 2023, the PTAB issued a determination that Unified Patents should have identified its members Apple and Samsung as RPIs in its IPR challenge of MemoryWeb’s patent, which had been asserted against those members.  Unified Patents, LLC v. MemoryWeb, LLC, IPR2021-01413, Paper 56 (P.T.A.B. Mar. 8 2023).  On May 16, 2023, USPTO Director Vidal granted director review of the decision and vacated the RPI determination, finding it had been unnecessary to resolve the proceeding.  Unified Patents, LLC v. MemoryWeb, LLC, IPR2021-01413, Paper 76 (P.T.A.B. May 22, 2023).
    Categories : IPRsPTABReal Party In Interest
  • The Federal Circuit Affirms Patentability Of Teleflex Patents And Confirms Low Bar For Corroboration Of Prior Inventorship
     
    06/13/2023

    On May 24, 2023, the United States Court of Appeals for the Federal Circuit (the “Federal Circuit”) issued an opinion affirming the United States Patent and Trademark Office’s Patent Trial and Appeal Board (the “Board”) decision that U.S. Patent 7,736,355 to Itou, et al. (“Itou”) could not be used as prior art to invalidate five Teleflex Innovations S.à.R.L. (“Teleflex”) patents, which were on appeal.  Medtronic, Inc. v. Teleflex Innovations S.à.R.L., No. 2021-2356, 2023 WL 3606143 (Fed. Cir. May 24, 2023).
    Categories : IPRsObviousnessPrior ArtPTAB
  • Federal Circuit Affirms Unpatentability Of Gaming Machine Patent
     
    06/01/2023

    On May 9, 2023, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming the unpatentability decision of the Patent Trial and Appeal Board (“Board”), finding, with respect to the independent claims, that the Board either did not misconstrue the claims or that any error with respect to the Board’s claim construction was harmless.  With respect to the dependent claims, the CAFC found that there was a sufficient motivation to combine the asserted prior art references.  Bot M8 LLC v. Sony Interactive Entertainment LLC, No. 2022-1291, -- F.4th --, 2023 WL 3311550 (Fed. Cir. May 9, 2023).
    Categories : IPRsObviousnessPTAB
  • Federal Circuit Rejects Anticipation Based On Misapplication Of “At Once Envisage” Framework
     
    05/09/2023

    On April 12, 2023, the Court of Appeals for the Federal Circuit (“CAFC”) affirmed a decision of the United States District Court for the District of Delaware in Case No. 1:19-cv-00474-KAJ, Judge Kent A. Jordan, invalidating asserted claims of plaintiff’s ’589 patent as obvious. UCB Inc. v. Actavis Laboratories UT Inc., __ F.3d __ (Fed. Cir. Apr. 12, 2023). In its order affirming invalidity, the CAFC affirmed the district court’s holding of invalidity for obviousness but found legal error in the district court’s anticipation holding because it misapplied the CAFC’s decision in Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015).
    Categories : ObviousnessPrior Art
  • Federal Circuit Reverses $20M Patent Infringement Award
     
    05/09/2023

    On April 18, 2023, the United States Court of Appeals for the Federal Circuit (“CAFC”) reversed a decision by the United States District Court for the Eastern District of Texas holding that certain claims of three reissued U.S. patents were not invalid under 35 U.S.C. § 251. Cioffi v. Google LLC, No. 2018-1049 (Fed. Cir. Apr. 18, 2023). The CAFC panel (Reyna, Bryson, and Taranto) reviewed the district court’s decision de novo and reversed the district court, concluding that the asserted claims failed to satisfy the “original patent” requirement.
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