Justia Intellectual Property Opinion Summaries

by
Takeda sued Mylan for patent infringement based on Mylan’s Abbreviated New Drug Application (ANDA) for a generic version of Takeda’s Colcrys® version of the drug colchicine. The parties settled, entering into a License Agreement that allows Mylan to sell a generic colchicine product on a specified date or under circumstances defined in Section 1.2, which refers the date of a final court decision holding that all unexpired claims of the licensed patents that were asserted and adjudicated against a third party are not infringed, invalid, or unenforceable. The parties stipulated that Mylar's breach of Section 1.2 “would cause Takeda irreparable harm.” Takeda also sued Hikma based on Hikma’s FDA-approved colchicine product Mitigare®. The district court granted summary judgment of non-infringement. After Mylan launched its product, Takeda sued, alleging breach of contract and patent infringement. The Federal Circuit affirmed the denial of a preliminary injunction. Takeda failed to show it is likely to succeed on the merits or that it will suffer irreparable harm. Section 1.2(d) was triggered by the third-party litigation; all unexpired claims of the three patents that were “asserted and adjudicated” were held to be not infringed. An objective, reasonable third party would not read Section 1.2(d) to be limited to generic equivalents of Colcrys® excluding section 505(b)(2) products like Mitigare®. Because Takeda had not established that Mylan breached the Agreement, the irreparable harm stipulation did not apply. Money damages would remedy any harm Takeda would suffer as a result of Mylan launching its generic product. View "Takeda Pharmaceuticals U.S.A. v. Mylan Pharmaceuticals, Inc." on Justia Law

by
The patent relates to computer networking and is specifically directed to offloading certain network-related processing tasks from a host computer’s central processing unit (CPU) to an “intelligent network interface card” (INIC) to improve performance by accelerating network communications while freeing the CPU to focus on other tasks. According to the patent, one of the tasks that can be offloaded from the CPU to the INIC is the reassembly of data from packets received by the host computer from the network. The Patent Trial and Appeal Board found certain claims unpatentable as obvious. The Federal Circuit vacated in part. The Board did not adequately support its finding that the asserted prior art combination teaches or suggests a limitation recited in claims 41–43. The court remanded for the Board to reconsider whether the asserted prior art teaches or suggests the entirety of the reassembly limitations, including the requirement that reassembly takes place in the network interface. The court otherwise affirmed. View "Alarcritech, Inc. v. Intel Corp." on Justia Law

by
XY sued Trans Ova for infringement of seven patents relating to technology for sex selection of non-human mammals. Its 559 patent is titled “Enhancing Flow Cytometry Discrimination with Geometric Transformation.” Flow cytometers can be used as “high-speed jet-in-air sorters to discriminate particles and cells that are only subtly different.” The patent relates to “apparatus and methods for real-time discrimination of particles while being sorted by flow cytometry . . . resulting in enhanced discrimination between populations of particles” and “can be used to separate X from Y bearing sperm,” an application useful in animal husbandry to “guarantee[] the sex of offspring.” The district court found asserted claims 1–23 of the 559 patent-ineligible under 35 U.S.C. 101 and that XY’s patent-infringement allegations with respect to certain claims of other patents were claim-precluded based on a prior lawsuit filed by XY against Trans Ova. The Federal Circuit reversed. The asserted claims of the patent are directed to a patent-eligible improvement to a method of sorting particles using flow cytometry technology, not to an abstract idea. The district court did not apply the proper legal standard to its claim-preclusion analysis. The court vacated the claim-preclusion judgment. View "XY, LLC v. Trans Ova Genetics, LC" on Justia Law

by
IBSA's patent, entitled “Pharmaceutical Formulations for Thyroid Hormones,” provides “pharmaceutical formulations based on thyroid hormones enabling a safe and stable oral administration in the framework of the strict therapeutic index prescribed in case of thyroid disorders.” It is listed in the FDA’s “Orange Book” for IBSA’s Tirosint® product, a soft gel capsule formulation containing the active ingredient levothyroxine sodium. Teva sought to market a generic version of Tirosint® and filed an Abbreviated New Drug Application (ANDA) that included a “Paragraph IV certification” that the 390 patent is invalid, unenforceable, or will not be infringed by Teva’s generic product. IBSA filed suit, alleging infringement. The Federal Circuit affirmed a holding that certain claims are invalid as indefinite under 35 U.S.C. 112. The intrinsic evidence fails to establish the boundaries of the claim term “half-liquid” and there was no clear error in the court’s determination that the extrinsic evidence does not supply “half-liquid” with a definite meaning under section 112. View "IBSA Institut Biochimique v. Teva Pharmaceuticals USA" on Justia Law

by
Interactive’s patent describes a gaming system wherein a gaming service provider—such as a casino—wirelessly communicates with users’ mobile devices, allowing them to gamble remotely. The system stores rules to determine the “game configuration” based on the location of a user’s “mobile gaming device” and associates different gaming configurations with different locations, using a “lookup table.”. FanDuel petitioned for inter partes review (IPR) of the patent on several grounds of obviousness. The Patent Trial and Appeal Board found unpatentable all challenged claims except claim 6, finding that FanDuel failed to prove that claim 6 was obvious in view of asserted prior art. The Federal Circuit affirmed, rejecting a claim that the Board violated the Administrative Procedure Act by basing its finding on obviousness issues that Interactive did not raise in its responses. The Board’s purported new theory was merely an assessment of the arguments and evidence FanDuel put forth in its petition. The APA does not require the Board to alert a petitioner that it may find the asserted theory of obviousness lacking in evidence before it actually does so, nor is a petitioner entitled to a pre-decision opportunity to disagree with the Board’s assessment. The obviousness findings are supported by substantial evidence. View "FanDuel, Inc. v. Interactive Games, LLC" on Justia Law

by
In 2000, Australian started advertising and selling condoms with the marks NAKED and NAKED CONDOM in Australia. In 2003, Australian, through its website, began advertising, selling, and shipping condoms featuring its unregistered mark to customers in the U.S. Naked owns Registration No. 3,325,577 for the mark NAKED for condoms. The companies engaged in settlement negotiations. Naked asserts that email communications demonstrate that the parties reached an agreement whereby Australian would discontinue its use of its unregistered mark in the U.S. and consent to Naked’s use and registration of its NAKED mark. Australian filed a petition to cancel the registration of the NAKED. The Trademark Trial and Appeal Board determined that Australian lacked standing and could not show an interest in the cancellation proceeding or a reasonable belief of damage because it had contracted away its proprietary rights in its unregistered marks. The Federal Circuit reversed. An absence of proprietary rights does not in itself negate an interest in the proceeding or a reasonable belief of damage. A petitioner seeking to cancel a trademark registration establishes an entitlement to bring a cancellation proceeding under 15 U.S.C. 1064 by demonstrating a real interest in the cancellation proceeding and a reasonable belief of damage regardless of whether the petitioner lacks a proprietary interest in an asserted unregistered mark. View "Australian Therapeutic Supplies Pty., Ltd. v. Naked TM, LLC" on Justia Law

by
Decker developed the patented inventions while employed at the University of Texas and assigned the patents to UT. Gensetix obtained an exclusive license in the patents. The license agreement provides that, Gensetix must enforce the patents. The parties agreed to cooperate in any infringement suit and that nothing in the agreement would waive UT's sovereign immunity. Gensetix sued Baylor, alleging infringement and requested that UT join as a co-plaintiff. UT declined. Gensetix named UT as an involuntary plaintiff under FRCP 19(a). The district court dismissed, finding that UT is a sovereign state entity, so that the Eleventh Amendment barred joinder of UT, and that the suit could not proceed without UT. The Federal Circuit affirmed in part. UT did not voluntarily invoke federal jurisdiction; the Eleventh Amendment prevents “the indignity of subjecting a State to the coercive process of judicial tribunals” against its will. It is irrelevant that the license agreement requires the initiation of an infringement suit by Gensetix or cooperation by UT. The court erred in dismissing the suit without adequate analysis of Rule 19(b)'s factors: the extent to which a judgment might prejudice the missing required party or the existing parties; the extent to which any prejudice could be lessened; whether a judgment rendered in the required party’s absence would be adequate; and whether the plaintiff would have an adequate remedy if the action were dismissed. View "Gensetix, Inc. v. Baylor College of Medicine" on Justia Law

by
Quincy’s Prevagen® dietary supplement is sold through brick‐and‐mortar stores and online. Ellishbooks, which was not authorized to sell Prevagen® products, sold dietary supplements identified as Prevagen® on Amazon.com, including items that were in altered or damaged packaging; lacked the appropriate markings that identify the authorized retail seller; and contained Identification and security tags from retail stores. Quincy sued under the Lanham Act, 15 U.S.C. 1114. The court entered a $480,968.13 judgment in favor of Quincy, plus costs, and permanently enjoined Ellishbooks from infringing upon the PREVAGEN® trademark and selling stolen products bearing the PREVAGEN® trademark. The Seventh Circuit affirmed and subsequently awarded $44,329.50 in sanctions under Federal Rule of Appellate Procedure 38. Ellishbooks’s arguments “had virtually no likelihood of success” on appeal and it appeared that Ellishbooks attempted to draw out the proceedings for as long as possible. View "Quincy Bioscience, LLC v. Ellishbooks" on Justia Law

by
Entitled “System and Method for Adjustable Licensing of Digital Products,” Uniloc’s 960 patent is directed to the problem that consumers of software use digital products on multiple devices, where consumers have “a legitimate need to install and use the software on every computer.” On Hulu’s petition, the Patent Trial and Appeal Board instituted Inter Partes Review (IPR) and found multiple claims unpatentable over the prior art. During the IPR, Uniloc had filed a Motion to Amend, asking the Board to enter Substitute Claims for specific independent claims if the latter were found unpatentable. Hulu opposed the Motion, arguing that the Substitute Claims are directed to patent-ineligible subject matter. Uniloc replied that Hulu was not permitted to raise an argument under 35 U.S.C. 101 in opposition to the Substitute Claims but did not raise substantive arguments that its Substitute Claims meet the section 101 standards for eligibility. The Board denied Uniloc’s Motion, based solely on ineligibility. The Federal Circuit affirmed the judgment of invalidity of all original claims and subsequently affirmed the denial of Uniloc’s motion for rehearing. The Board correctly concluded that it is not limited by section 311(b) in its review of proposed substitute claims in an IPR and that it may consider section 101 eligibility. View "Uniloc 2017 LLC v. Hulu, LLC" on Justia Law

by
IPG, an agent for royalty claimants in these proceedings, filed suit challenging Copyright Royalty Judges' denial of most of its clients' royalty fee claims for programming in the devotional and program suppliers' categories that was retransmitted by cable during specific years. IPG lost the right to pursue many of its clients' claims as a result of a discovery sanction and ultimately failed to establish for certain claims that it was a duly appointed agent pressing valid claims. The DC Circuit affirmed the Judges' decisions as to IPG's challenge to the revocation of the presumption of validity where the Judges did not abuse their discretion in withholding the presumption based on false testimony and where IPG received constitutionally adequate due process; affirmed as to IPG's challenge to the imposition of discovery sanctions where the sanction, while harsh, was not arbitrary and capricious and did not violate due process; and affirmed as to IPG's challenge to the final distribution of royalties where the Judges' distribution methodology decisions were well within a zone of reasonableness. View "Independent Producers Group v. Copyright Royalty Board" on Justia Law