Justia Intellectual Property Opinion Summaries

Novartis markets a 0.5 mg daily dose of fingolimod hydrochloride under the brand name Gilenya, for treating relapsing-remitting multiple sclerosis, a debilitating immune-mediated demyelinating disease. There is currently no cure for MS. The disease is managed by reducing or preventing relapses and thereby slowing disability. HEC filed an Abbreviated New Drug Application (ANDA) seeking approval to market a generic version of Gilenya. Novartis sued, alleging that HEC’s ANDA infringes all claims of its patent. The Federal Circuit initially affirmed a holding that the patent is not invalid and that HEC’s ANDA infringes that patent.On rehearing, the Federal Circuit reversed. Because the Novartis patent fails to disclose the absence of a loading dose, the district court clearly erred in finding that the negative claim limitation “absent an immediately preceding loading dose” added during prosecution to overcome prior art satisfied the written description requirement of 35 U.S.C. 112(a). The specification nowhere describes “initially” administering a daily dosage. View "Novartis Pharmaceuticals Corp. v. Accord Healthcare, Inc." on Justia Law

Cardiovascular Systems, Inc. (“CSI”) brought this action against Cardio Flow, Inc. (“Cardio Flow”), alleging the breach of a settlement agreement that resolved ownership of intellectual property rights related to atherectomy devices. Cardio Flow was not a named party to the settlement, however, and moved for summary judgment on that basis. In response, CSI asserted that principles of equitable estoppel and agency bound Cardio Flow to abide by the agreement.   The district court rejected CSI’s arguments and dismissed its claims and the Eighth Circuit affirmed. The court held that equitable estoppel provides no basis to enforce the settlement agreement against Cardio Flow. The court reasoned that the doctrine of equitable estoppel generally involves some type of misrepresentation. Given the Minnesota Supreme Court’s unequivocal holdings elsewhere that a representation or concealment is essential, the court declined to supplant the usual equitable estoppel elements.   Further, the party who signed the agreement with Plaintiff was not acting as Defendant's agent when she signed the settlement; there was no joint venture between the signer and Defendant, and Defendant did not control the signer's lawsuit against Plaintiff which led to the settlement agreement. View "Cardiovascular Systems, Inc. v. Cardio Flow, Inc." on Justia Law

The patents, which cover skin care products and are related as parent and child, are owned by the University of Massachusetts, which sued L’Oréal (S.A. and USA) for infringement. L’Oréal S.A., which is based in France, moved to dismiss the action on the ground that the Delaware forum lacked personal jurisdiction over it. The district court granted the motion without permitting UMass to conduct jurisdictional discovery, then ruled on a dispute about the proper construction of one limitation of a claim, and relying on that construction, held another limitation of the claim indefinite and entered a final judgment of invalidity.Finding that UMass was entitled to jurisdictional discovery, the Federal Circuit vacated the dismissal of L’Oréal S.A. The court then rejected the district court’s construction of the “wherein” clause in a claim: A method for enhancing the condition of unbroken skin of a mammal by reducing one or more of wrinkling, roughness, dryness, or laxity of the skin, without increasing dermal cell proliferation, the method comprising topically applying to the skin a composition comprising a concentration of adenosine in an amount effective to enhance the condition of the skin without increasing dermal cell proliferation, wherein the adenosine concentration applied to the dermal cells is 10-4 M to 10-7 M. View "University of Massachusetts v. L’Oréal S.A." on Justia Law

Defendants, VSL Pharmaceuticals, Inc. and Alfasigma USA, Inc., appealed the district court’s order finding them in contempt of the court’s permanent injunction. The injunction prohibited Defendants from suggesting in promotional materials that their probiotic contained the same formulation as one marketed by Claudio De Simone and ExeGi Pharma, LLC.   On appeal, Defendants (1) their statements weren’t contemptuous, (2) their statements didn’t harm Plaintiffs (3) the district court improperly awarded attorneys’ fees, and (4) VSL and Alfasigma shouldn’t be jointly liable for the fee award. The Fourth Circuit affirmed the district court’s order.   The court explained a party moving for civil contempt must establish four elements by clear and convincing evidence, relevant here are the last two: that the alleged contemnor by its conduct violated the terms of the decree, and had knowledge (at least constructive knowledge) of such violations; and that the movant suffered harm as a result.   Defendants emphasized that consumers couldn’t access the Letter from Alfasigma’s home page. That’s true, as De Simone and ExeGi showed only that consumers could access the Letter by searching “vsl3 litigation” on Google. But the way in which consumers could access the Letter is irrelevant to Alfasigma’s constructive knowledge that it remained on the website.   Further, under the Lanham Act, “commercial advertising or promotion” is “commercial speech . . . for the purpose of influencing consumers to buy goods or services.” Here, Defendants’ press release’s final sentence emphasizes VSL#3’s commercial availability, so the district court reasonably viewed the message as an attempt to realize economic gain. View "Claudio De Simone v. VSL Pharmaceuticals, Inc." on Justia Law

Pavo's patent is generally directed to “[a] flash memory apparatus having a single body type rotary cover” to protect USB ports from damage and foreign substances. Pavo’s predecessor sued Kingston, alleging infringement. Kingston sought inter partes review (IPR). Certain claims survived IPR. The district court lifted the previously-imposed stay, and, in claim construction, found that the phrase “pivoting the case with respect to the flash memory main body” included a clerical error. It corrected the language, replacing the word “case” with the word “cover” so that the claim read “pivoting the cover with respect to the flash memory main body.” The court determined that the error was “evident from the face of the patent” because “[t]he case is described as a part of the main body, so it is not possible for it to rotate with respect to the body,” noting that the prosecution history was consistent with the correction.A jury returned a verdict that Kingston had willfully infringed three claims and awarded Pavo a 20-cent reasonable royalty. The court awarded $7,515,327.40 in compensatory damages, enhanced by 50 percent. The Federal Circuit affirmed. The district court appropriately corrected an obvious minor clerical error in the claims; the correction is not subject to reasonable debate. Reliance on an obvious minor clerical error in the claim language is not a defense to willful infringement. The court rejected Kingston’s challenges to an expert’s damages testimony and affirmed the damages award. View "Pavo Solutions,. LLC v. Kingston Technology Co., Inc." on Justia Law

Shure’s 493 patent relates to arrays of microphones and housings for the arrays so that the arrays and housings may be fitted into a drop ceiling grid. The array is configured, in one embodiment, to “include[] a plurality of microphone transducers selectively positioned in a self-similar or fractal-like configuration, or constellation.” During inter partes review (IPR), Shure added independent claim 57, which recites: A microphone assembly comprising: an array microphone comprising a plurality of microphones arranged in a self-similar configuration. The Patent Board concluded that a skilled artisan would understand “self-similar” to have had a well-known meaning and include the specification’s disclosure of “fractal-like[] configurations or constellations,” which does not create an ambiguity. ClearOne requested rehearing and to file a sanctions motion, arguing Shure violated its duty to disclose material prior art; weeks before the Board's decision, Shure petitioned for post-grant review of the 653 patent, which also relates to drop ceiling microphone arrays, asserting that all claims of the 653 patent would have been obvious over, inter alia, patent publications Levit and Gulbrandsen, which Shure did not disclose in the 493 patent IPR.The Board denied rehearing and did not authorize a sanctions motion, reasoning that Levit and Gulbrandsen were cumulative of references asserted by ClearOne in its IPR petition. The Federal Circuit affirmed, further concluding that the self-similar term is not indefinite, and substantial evidence supports the Board’s subsidiary fact findings based on extrinsic evidence. View "ClearOne, Inc. v. Shure Acquisition Holdings, Inc." on Justia Law

. Until 2008, Lehman Brothers, a large investment bank, owned federal trademark registrations for the standard character mark LEHMAN BROTHERS. Lehman Brothers filed for bankruptcy in 2008 and sold several of its businesses and other assets to Barclays for $1.5 billion, assigning all of its LEHMAN BROTHERS trademarks and accompanying goodwill. Barclays granted Lehman Brothers a worldwide, non-exclusive license to use the LEHMAN BROTHERS trademarks in connection with continuing businesses and operations. The term of the license was two years for use in connection with investment banking and capital markets businesses and perpetual for use in connection with other operations. Barclays allowed its LEHMAN BROTHERS trademark registrations to expire. In 2013, Tiger Lily, which has no affiliation to Lehman Brothers or Barclays, sought registration of the mark LEHMAN BROTHERS for beer and spirits. A few months later, Barclays applied to register LEHMAN BROTHERS for use in connection with financial services. In 2014, Tiger Lily applied for registration of the LEHMAN BROTHERS mark for bar services and restaurant services. Barclays and Tiger Lily filed Notices of Opposition.The Federal Circuit affirmed the Trademark Trial and Appeal Board in sustaining Barclay’s oppositions against Tiger Lily’s applications and in dismissing Tiger Lily’s opposition to Barclays’ application, noting that Lehman Brothers and Barclays have continued to use the LEHMAN BROTHERS mark since 2008. View "Tiger Lily Ventures Ltd. v. Barclays Capital Inc." on Justia Law

Arthrex sued S&N, alleging infringement. S&N sought inter partes review (IPR). The Patent Trial and Appeal Board found that prior art anticipated several claims. Arthrex challenged the decision on the merits and argued that the Board lacked constitutional authority to issue the final decision because its Administrative Patent Judges (APJs) were not nominated by the President and confirmed by the Senate, as the Appointments Clause requires for principal officers.The Federal Circuit severed the statutory limitations on the removal of APJs and remanded for rehearing by a new panel. The Supreme Court vacated and remanded, finding that the appropriate remedy was to exempt the Director from 35 U.S.C. 6(c), which precludes anyone but the Board from granting rehearing of a Board decision, and remand to the Acting Director for a decision on whether to rehear the case. The offices of the Director and Deputy Director were vacant. Agency Organization Order 45-1 states, “If both the [Director] and the Deputy [Director] positions are vacant, the Commissioner for Patents . . . will perform the non-exclusive functions and duties of the [Director].” The Commissioner denied rehearing and ordered that the Board’s decision “is the final decision of the agency.”The Federal Circuit affirmed, rejecting arguments that the Commissioner violated the Appointments Clause, the Federal Vacancies Reform Act, 5 U.S.C. 3345, or the Constitution’s separation of powers in denying Arthrex’s rehearing request. The court agreed that prior art anticipated the challenged claims. View "Smith & Nephew, Inc. v. Arthrex, Inc." on Justia Law

NOCO manufactures and sells battery chargers and related products. Although it sells these products itself, NOCO also authorizes resellers if they sign an agreement. NOCO discovered that OJC was selling NOCO’s products on Amazon without authorization. NOCO complained to Amazon that OJC was selling NOCO’s products in violation of Amazon’s policy. Around the same time, another company (Emson) also complained to Amazon about OJC. Amazon asked OJC for proof that it was complying with its policy concerning intellectual property rights. OJC did not provide adequate documents. Amazon temporarily deactivated OJC’s account.OJC claimed that NOCO submitted false complaints, and sued for defamation, tortious interference with a business relationship, and violation of the Ohio Deceptive Trade Practices Act. The Sixth Circuit affirmed the summary judgment rejection of OJC’s claims. To succeed on those claims, OJC must establish that NOCO was the proximate cause of its injury. It cannot do this because three intervening causes broke the causal chain, relieving NOCO of any liability: Emson’s complaint, Amazon’s independent investigation and decision, and OJC’s opportunity to prevent the harm to itself. View "NOCO Co. v. OJ Commerce, LLC" on Justia Law

Kaufman’s now-expired patent describes and claims methods for using a computer to automatically generate an end-user interface for working with the data in a relational database. Kaufman sued Microsoft, asserting infringement by Microsoft’s making and selling of its Dynamic Data product. A jury found Microsoft liable and awarded damages of $7 million. The district court upheld the verdict and denied Kaufman’s motion to amend the judgment to include prejudgment interest. The Federal Circuit affirmed the denial of Microsoft’s post-judgment motions but reversed the denial of prejudgment interest. Microsoft failed to preserve its challenge to claim construction with respect to the phrase “automatically generating,” and failed to establish that the district court erred in its claim construction or that the jury’s verdict was not supported by substantial evidence. View "Kaufman v. Microsoft Corp.," on Justia Law