Justia Intellectual Property Opinion Summaries

Galderma Laboratories, L.P. and TCD Royalty Sub LP (collectively, Galderma) own and market Oracea®, a doxycycline-based treatment for rosacea. They hold U.S. Patent Nos. 7,749,532 and 8,206,740 (the Asserted Patents), which cover a specific formulation of doxycycline. Lupin Inc. and Lupin Ltd. (collectively, Lupin) filed an abbreviated new drug application (ANDA) to market a generic version of Oracea®, claiming bioequivalence. Galderma sued Lupin for patent infringement under the Hatch-Waxman Act, asserting that Lupin’s product infringed the Asserted Patents.The United States District Court for the District of Delaware held a three-day bench trial and found that Lupin’s ANDA product did not infringe the Asserted Patents. The court concluded that Galderma failed to prove that Lupin’s product met the specific formulation requirements of the Asserted Patents, particularly the immediate release (IR) and delayed release (DR) portions of doxycycline. The court also found that Galderma did not demonstrate infringement under the doctrine of equivalents.The United States Court of Appeals for the Federal Circuit reviewed the case. Galderma argued that the district court erred in disregarding dissolution test data from Lupin’s ANDA, admitting evidence from a rebuttal batch, imposing additional claim limitations, and not finding infringement under the doctrine of equivalents. The Federal Circuit found no clear error in the district court’s findings. It held that the district court correctly determined that the two-stage dissolution test did not represent in vivo behavior and that Galderma did not prove its theory of infringement. The court also found no abuse of discretion in admitting the rebuttal batch evidence and no imposition of additional claim limitations. Finally, the court upheld the district court’s finding that Galderma did not prove infringement under the doctrine of equivalents.The Federal Circuit affirmed the district court’s decision, concluding that Lupin’s ANDA product did not infringe the Asserted Patents. View "Galderma Laboratories, L.P. v. Lupin, Inc." on Justia Law

PS Products, Inc. and Billy Pennington (collectively, PSP) own a U.S. Design Patent for a long-spiked electrode for a stun device. They filed a lawsuit in the Eastern District of Arkansas against Panther Trading Company, Inc. (Panther) for patent infringement. Panther responded with a Rule 11 letter and a motion to dismiss, arguing the infringement claims were frivolous and the venue was improper. PSP did not respond to these communications and later moved to voluntarily dismiss the case with prejudice. Panther then sought attorney fees and sanctions, claiming the lawsuit was frivolous.The United States District Court for the Eastern District of Arkansas dismissed the case with prejudice and awarded Panther attorney fees and costs under 35 U.S.C. § 285, deeming the case exceptional. The court also imposed $25,000 in deterrence sanctions on PSP under its inherent power, citing PSP's history of filing meritless lawsuits. PSP filed a motion for reconsideration of the sanctions, which the district court denied.The United States Court of Appeals for the Federal Circuit reviewed the case. PSP appealed the $25,000 sanctions, arguing the district court lacked authority to impose them in addition to attorney fees and that the court applied the wrong legal standard. The Federal Circuit held that the district court did not err in imposing sanctions under its inherent power, even after awarding attorney fees under § 285. The court found that PSP's conduct, including filing a meritless lawsuit and citing the wrong venue statute, justified the sanctions. The Federal Circuit affirmed the district court's decision and declined Panther's request for attorney fees for the appeal, determining the appeal was not frivolous as argued. View "PS Products, Inc. v. Panther Trading Co., Inc." on Justia Law

Cytiva BioProcess R&D AB ("Cytiva") appealed the final written decisions from six inter partes reviews (IPRs) that determined 79 claims of three challenged patents were unpatentable. JSR Corp. and JSR Life Sciences, LLC (collectively, "JSR") cross-appealed the decisions in four of these IPRs, which held the remaining four challenged claims not unpatentable. The patents in question relate to chromatography matrices and processes for isolating target compounds using those matrices, specifically involving a ligand made from Protein A (SPA) found in staphylococcus aureus.The Patent Trial and Appeal Board (Board) found that it would have been obvious to make the G29A mutation to Domain C of SPA based on prior art, which suggested this modification for any of the SPA domains. The Board held that claims 1–7, 10–20, 23–26 of the '765 patent, claims 1–3, 5–7, 10–16, 18–20, 23–30 of the '142 patent, and claims 1–10, 12–14, 16–28, 30–32, and 34–37 of the '007 patent were unpatentable. However, the Board found that claims 4 and 17 of the '142 patent and claims 11 and 29 of the '007 patent were not unpatentable, as JSR had not shown a reasonable expectation of success for these claims.The United States Court of Appeals for the Federal Circuit affirmed the Board's determination that the majority of the claims were unpatentable, agreeing that the prior art expressly suggested the G29A modification to Domain C. The court also concluded that the Board erred in limiting the construction of "Fab part of an antibody" to Fab fragments and reversed the Board's determination that claims 4 and 17 of the '142 patent and claims 11 and 29 of the '007 patent were not unpatentable. The court held that if a property of a composition is inherent, there is no question of a reasonable expectation of success in achieving it, and thus, both the composition and process claims were unpatentable. View "CYTIVA BIOPROCESS R&D AB v. JSR CORP." on Justia Law

Mirror Worlds Technologies, LLC owns three patents related to methods for storing, organizing, and presenting data in time-ordered streams on a computer system. In 2017, Mirror Worlds sued Meta Platforms, Inc. (formerly Facebook, Inc.) for patent infringement, alleging that Facebook's features, such as News Feed, Timeline, and Activity Log, infringed on these patents. Facebook moved for summary judgment of non-infringement, which the district court granted, concluding that Facebook did not infringe the patents as a matter of law.The United States District Court for the Southern District of New York found that Facebook's systems did not meet the "main stream" or "main collection" limitations of the patents, as the evidence showed that not all data units received or generated by Facebook's systems were stored in the accused main streams. The court also rejected Facebook's defense of invalidity under 35 U.S.C. § 101 but granted summary judgment of non-infringement on several grounds, including that the accused systems did not display a "glance view" as required by the '538 and '439 patents.The United States Court of Appeals for the Federal Circuit reviewed the case and affirmed the district court's summary judgment of non-infringement. The Federal Circuit agreed with the district court's construction of "data unit" and found that the evidence supported the conclusion that Facebook's systems received data units not stored in the accused main streams. The court also upheld the exclusion of certain evidence presented by Mirror Worlds and found no genuine dispute of material fact regarding the "glance view" limitation. Consequently, the Federal Circuit affirmed the judgment of non-infringement and dismissed Facebook's cross-appeal regarding the invalidity defense. View "MIRROR WORLDS TECHNOLOGIES, LLC v. META PLATFORMS, INC. " on Justia Law

NexStep, Inc. filed a lawsuit against Comcast Cable Communications, LLC, alleging infringement of nine patents, including U.S. Patent Nos. 8,885,802 and 8,280,009. The District Court for the District of Delaware granted summary judgment of non-infringement for the '802 patent after construing the term "VoIP" to require two-way voice communication, which NexStep's infringement theory did not meet. The '009 patent proceeded to a jury trial, where the jury found no literal infringement but did find infringement under the doctrine of equivalents. However, the district court granted Comcast's post-trial motion for judgment as a matter of law, finding NexStep's proof inadequate.The district court's summary judgment for the '802 patent was based on the construction of "VoIP" as requiring two-way voice communication, supported by technical dictionaries and the agreed industry standard meaning. NexStep's argument that VoIP should include one-way audio transmission was rejected. The court found no genuine dispute of material fact and granted summary judgment of non-infringement.For the '009 patent, the jury found no literal infringement but did find infringement under the doctrine of equivalents. However, the district court set aside this verdict, ruling that NexStep failed to provide the required particularized testimony and linking argument to support the doctrine of equivalents. The court found that NexStep's expert testimony was too conclusory and lacked specificity.The United States Court of Appeals for the Federal Circuit affirmed the district court's rulings. The appellate court agreed with the district court's construction of "VoIP" and its grant of summary judgment for the '802 patent. For the '009 patent, the appellate court found that NexStep's expert testimony did not meet the evidentiary requirements for the doctrine of equivalents, as it lacked particularized testimony and linking argument. The court dismissed Comcast's conditional cross-appeal related to the validity of the '009 patent. View "NEXSTEP, INC. v. COMCAST CABLE COMMUNICATIONS, LLC " on Justia Law

The case involves a dispute between two companies over the enforcement of standard-essential patents (SEPs) related to the 5G wireless-communication standard. The plaintiff, a telecommunications company, had made a commitment to license its SEPs on fair, reasonable, and non-discriminatory (FRAND) terms. The defendant, another technology company, sought an antisuit injunction to prevent the plaintiff from enforcing injunctions it had obtained in Colombia and Brazil based on these SEPs.The United States District Court for the Eastern District of North Carolina denied the defendant's request for an antisuit injunction. The district court applied a three-part framework to analyze the request, focusing on whether the domestic suit would be dispositive of the foreign actions. The court concluded that the domestic suit would not necessarily result in a global cross-license between the parties and therefore did not meet the threshold requirement for issuing an antisuit injunction.The United States Court of Appeals for the Federal Circuit reviewed the district court's decision. The appellate court vacated the district court's denial and remanded the case for further proceedings. The appellate court concluded that the district court had erred in its interpretation of the "dispositive" requirement. Specifically, the appellate court held that the FRAND commitment precludes the plaintiff from pursuing SEP-based injunctive relief unless it has first complied with its obligation to negotiate in good faith over a license to those SEPs. Since whether the plaintiff had complied with this obligation was an issue before the district court, the appellate court determined that the "dispositive" requirement was met.The appellate court did not decide whether the defendant was ultimately entitled to the antisuit injunction, leaving that determination to the district court's discretion upon further analysis. The case was remanded for the district court to consider the remaining parts of the foreign-antisuit-injunction framework. View "TELEFONAKTIEBOLAGET LM ERICSSON v. LENOVO (UNITED STATES), INC. " on Justia Law

UTTO Inc. owns a patent for methods to detect and identify underground utility lines. UTTO sued Metrotech Corp. for patent infringement and tortious interference with prospective economic advantage. The district court dismissed both claims, stating that UTTO failed to state a claim for which relief could be granted. The court found that the patent infringement claim required a fuller claim-construction analysis and that the state-law tort claim was correctly dismissed.The United States District Court for the Northern District of California initially denied UTTO's motion for a preliminary injunction, concluding that UTTO had not shown a likelihood of success on the merits of its infringement claim. The court construed the claim language to require "two or more" buried asset data points for each buried asset. Subsequently, the district court dismissed UTTO's First, Second, and Third Amended Complaints, each time granting leave to amend until the final dismissal with prejudice. The court consistently held that UTTO had not sufficiently pleaded facts to meet the "receiving" or "generating" limitations of the patent claim and failed to allege the required elements for the tortious interference claim.The United States Court of Appeals for the Federal Circuit reviewed the case. The court vacated the district court's dismissal of the patent infringement claim, stating that additional claim-construction proceedings were needed to determine the proper scope of the disputed claim language. The court noted that the specification of the patent and potential extrinsic evidence required further examination. However, the court affirmed the dismissal of the state-law tort claim, agreeing with the district court that UTTO had not plausibly alleged that Metrotech's conduct was independently wrongful. The case was remanded for further proceedings consistent with the appellate court's opinion. View "UTTO INC. v. METROTECH CORP. " on Justia Law

AlexSam, Inc. filed a complaint against Aetna, Inc. alleging that Aetna marketed Mastercard-branded and VISA-branded products that infringed two claims of AlexSam’s U.S. Patent No. 6,000,608. The patent, which expired in 2017, covers a multifunction card system using a central processing hub to perform specialized card functions through an existing banking network. AlexSam claimed that Aetna’s products infringed the patent by using this system.The U.S. District Court for the District of Connecticut dismissed AlexSam’s complaint, finding that Aetna’s Mastercard products were licensed under a 2005 agreement between AlexSam and Mastercard, and that AlexSam failed to state a plausible claim of direct infringement for the VISA products. The court concluded that the license covered all transactions involving Mastercard products and that AlexSam’s allegations against Aetna’s VISA products were implausible because they did not show that Aetna itself performed the infringing acts.The United States Court of Appeals for the Federal Circuit reviewed the case and found that the district court erred in its interpretation of the license agreement and in dismissing the claims against the VISA products. The appellate court held that the license agreement only covered transactions involving activation or adding value to an account, not all transactions involving Mastercard products. Therefore, some of the alleged infringing activities could fall outside the scope of the license. The court also found that AlexSam’s complaint sufficiently alleged that Aetna directly and indirectly infringed the patent with its VISA products, providing enough detail to make the claims plausible.The Federal Circuit vacated the district court’s dismissal of the claims related to both the Mastercard and VISA products and remanded the case for further proceedings. The appellate court emphasized that the district court must take all well-pled factual allegations as true when evaluating a motion to dismiss. View "ALEXSAM, INC. v. AETNA, INC. " on Justia Law

In 2006, a footwear company sued several competitors for patent infringement. One of the competitors, Dawgs, counterclaimed in 2016, alleging that the plaintiff falsely advertised its product material, Croslite, as "patented," "proprietary," and "exclusive," misleading consumers about the nature and quality of its products. Dawgs argued that these false claims caused consumers to believe that Croslite was superior to other materials used in competitors' products.The United States District Court for the District of Colorado granted summary judgment in favor of the plaintiff, Crocs, concluding that Dawgs' counterclaim failed as a matter of law. The district court determined that the false advertising claims were akin to claims of inventorship, which are not actionable under Section 43(a) of the Lanham Act, based on precedents set by the Supreme Court in Dastar Corp. v. Twentieth Century Fox Film Corp. and the Federal Circuit in Baden Sports, Inc. v. Molten USA, Inc.The United States Court of Appeals for the Federal Circuit reviewed the case and reversed the district court's decision. The appellate court held that a cause of action under Section 43(a)(1)(B) of the Lanham Act arises when a party falsely claims that it possesses a patent on a product feature and advertises that feature in a way that misleads consumers about the nature, characteristics, or qualities of the product. The court found that Dawgs had sufficiently alleged that Crocs' false claims about Croslite being patented misled consumers about the material's qualities, thus stating a valid cause of action under the Lanham Act. The case was remanded for further proceedings. View "CROCS, INC. v. EFFERVESCENT, INC. " on Justia Law

Provisur Technologies, Inc. owns patents related to food-processing machinery, specifically high-speed mechanical slicers and a fill and packaging apparatus. Provisur sued Weber, Inc. and its affiliates, alleging that Weber's food slicers and SmartLoader products infringed on these patents. The case was tried before a jury, which found that Weber willfully infringed several claims of Provisur's patents and awarded Provisur approximately $10.5 million in damages.The United States District Court for the Western District of Missouri denied Weber's motions for judgment as a matter of law (JMOL) on noninfringement and willfulness, as well as a motion for a new trial on infringement, willfulness, and damages. Weber appealed these decisions.The United States Court of Appeals for the Federal Circuit reviewed the case. The court affirmed the district court's denial of JMOL for noninfringement regarding the '812 and '436 patents, as Weber conceded its noninfringement arguments were no longer available due to an intervening decision. However, the court reversed the district court's denial of JMOL for noninfringement of the '936 patent, finding that Provisur failed to provide sufficient evidence that Weber's SmartLoader could be readily configured to infringe the patent.The court also reversed the district court's denial of JMOL on willfulness, ruling that the evidence presented, including testimony about Weber's failure to consult a third party, was insufficient to establish willful infringement. Additionally, the court found that the district court abused its discretion in allowing Provisur to use the entire market value rule for calculating damages without sufficient evidence that the patented features drove customer demand for the entire slicing line. Consequently, the court reversed the denial of a new trial on damages.The case was remanded for further proceedings consistent with the Federal Circuit's decision. View "PROVISUR TECHNOLOGIES, INC. v. WEBER, INC. " on Justia Law