Justia Intellectual Property Opinion Summaries

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Persion’s 760 and 499 patents, both entitled “Treating Pain in Patients with Hepatic Impairment” share a common written description and priority date and are directed to methods of treating pain in patients with mild or moderate compromised liver functionality, using extended-release hydrocodone-only formulations. Hydrocodone is an opioid, widely used to treat pain, and has been FDA-approved since 1943. The patents cover the formulation for Zohydro ER.4. Persion sued, alleging that Alvogen infringed the patents by filing an Abbreviated New Drug Application seeking to market a generic version of Zohydro ER.4. The Federal Circuit affirmed a finding that the patents are invalid as obvious. The district court did not err by finding that the pharmacokinetic limitations of the asserted claims were inherent and added no patentable weight to the pharmacokinetic claims. Regardless of whether the court’s consideration of the FDA’s statement was proper, there was no clear error in the court’s finding that there was a motivation to combine prior art in light of the evidence as a whole. The district court considered Persion’s evidence of objective indicia together with the other evidence on the issue of obviousness and there is no inconsistency between the district court’s findings underlying its obviousness and lack of written description determinations. View "Persion Pharmaceuticals LLC v. Alvogen Malta Operations Ltd." on Justia Law

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IV alleged infringement of patents directed to filtering data files (such as email messages) based on content. The court severed the defendants. During claim construction in the Symantec action, IV’s expert consistently opined that a “characteristic” as used in asserted claims is “an attribute of the document such as whether it contains a virus or is SPAM or bulk email or includes copyrighted content.” The court adopted that construction. At the Symantec trial, IV’s expert changed his opinion, testifying that bulk email was not a characteristic. During a clarification hearing, IV’s counsel maintained that the expert had not changed his opinion and that bulk email “never was” within the scope of claim 9. The court clarified its claim constructions, stating that it “learn[ed] only at the last minute” that IV understood the construction to mean “that bulk email was excluded from claim 9 when it was clearly in the other claims ... a surprise inconsistent with the representations from” IV, and not what was intended. The court granted Micro judgment in part, holding the asserted claims invalid, canceled the Micro trial, and concluded that IV’s conduct was exceptional “solely with respect to” the changed testimony but that the case overall was not exceptional under 35 U.S.C. 285 and awarded Micro $444,051.14 in attorney fees. The Federal Circuit vacated. The district court should have determined whether the circumstances surrounding the expert’s changed opinion were such that, when considered as part of the totality of circumstances, the case stands out as exceptional, i.e., the case stands out among others with respect to the substantive strength of a party’s litigating position or the unreasonable manner in which the case was litigated. View "Intellectual Ventures I LLC v. Trend Micro Inc." on Justia Law

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SRAM’s patent generally covers an improved bicycle chainring structure that better maintains the chain, obviating the need for extraneous structures. On inter partes review, the Patent Trial and Appeal Board found that the prior art references disclose all the limitations of the SRAM patent’s independent claims and that a skilled artisan would have been motivated to combine the asserted prior art. The Board nevertheless concluded, based on its analysis of secondary considerations, that the challenged claims would not have been obvious. The Federal Circuit vacated. In order to accord substantial weight to secondary considerations in an obviousness analysis, the evidence of secondary considerations must have a nexus to the claims; there must be a legally and factually sufficient connection between the evidence and the patented invention. The Board erred in presuming nexus between the independent claims and secondary considerations evidence pertaining to SRAM’s chainrings. On remand, SRAM will have the opportunity to prove a nexus between the challenged independent claims and the evidence of secondary considerations--that the evidence of secondary considerations is attributable to the claimed combination of wide and narrow teeth with inboard or outboard offset teeth, as opposed to, for example, prior art features in isolation or unclaimed features. View "FOX Factory, Inc. v. SRAM, LLC" on Justia Law

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Syngenta sued Willowood, a Hong Kong company that sells fungicide to its Oregon-based affiliate, for infringement of patents directed to a fungicide compound and its manufacturing processes and infringement of copyrights for detailed product labels that provide directions for use, storage, and disposal, plus first-aid instructions and environmental, physical, and chemical hazard warnings. The district court dismissed the copyright claims as precluded by the Federal Insecticide Fungicide and Rodenticide Act (FIFRA), 7 U.S.C. 135 and granted-in-part Syngenta’s summary judgment motion with respect to patent infringement. After a jury trial, the court entered a defense judgment on the patent claims. The Federal Circuit affirmed-in-part, reversed-in-part, and vacated in part. The district court did not provide an adequate analysis of the potential conflict between FIFRA and the Copyright Act. Because FIFRA does not, on its face, require a “me-too” registrant to copy the label of a registered product, FIFRA only conflicts with the Copyright Act to the extent that some particular element of Syngenta’s label is both protected under copyright doctrines and necessary for the expedited approval of Willowood’s generic pesticide. The court erred by imposing a single-entity requirement on the performance of a patented process under 35 U.S.C. 271(g); practicing a patented process abroad does not trigger liability under section 271(g) in the same manner that practicing a patented process domestically does under section 271(a). View "Syngenta Crop Protection, LLC v. Willowood, LLC" on Justia Law

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Chamberlain’s 611 patent, entitled “Barrier Movement Operator Human Interface Method and Apparatus,” is directed to improved methods of human interaction with “barrier movement operators,” such as garage door operator systems. Claims 18–25 of the patent are directed to an “interactive learn mode” that “guide[s] a user through installation and learn mode actions.” On inter partes review, the Patent Trial and Appeal Board found those claims anticipated, 35 U.S.C. 102(b) and 103(a). The Federal Circuit affirmed the findings as supported by substantial evidence. The disclosure, in prior art, of transmitting the signals in sequence, one after the other in response to the previously-completed steps of identifying the garage door operator’s present status and activities to be completed teaches the “responsive to” step in the challenged claim. View "Chamberlain Group, Inc. v. One World Technologies, Inc." on Justia Law

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Amgen’s patents relate to erythropoietin (EPO) isoforms and aspects of their production. EPO is a glycoprotein hormone that regulates red blood cell maturation and production. Recombinant human EPO is an important therapeutic protein for the treatment of anemia. Amgen manufactures and markets recombinant human EPO as Epogen. Hospira submitted its Biologics License Application (BLA) to the FDA, seeking approval for a biosimilar to Amgen’s Epogen product. Amgen sued Hospira for infringement under 35 U.S.C. 271(a) and 271(e)(2)(C). A jury found the asserted claims not invalid and infringed. Of the 21 accused drug substance batches, the jury found seven batches entitled to the Safe Harbor defense. The jury awarded Amgen $70 million in damages. The Federal Circuit affirmed, upholding the district court’s claim construction and finding substantial evidence of infringement. Section 271(e)(1) carves out a "Safe Harbor” exception to patent infringement liability when otherwise-infringing activities are solely for uses reasonably related to obtaining FDA approval. Substantial evidence supports the jury’s finding that the 14 batches at issue were not manufactured “solely for uses reasonably related to the development and submission of information” to the FDA. View "Amgen Inc. v. Hospira, Inc." on Justia Law

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Blackbird sued HIM for infringement of a patent relating to exercise equipment. Blackbird is owned and controlled entirely by attorneys, whose business model consists of purchasing patents and monetizing them “through litigation.” Nineteen months later, after a transfer of venue, Blackbird offered to settle for $80,000. HIM declined, asserting that the infringement allegations lacked merit and that HIM believed there was a strong likelihood that Blackbird would be ordered to pay attorney fees. Blackbird made another t offer, for $50,000. Again, HIM declined. Months later, Blackbird offered to settle for $15,000. HIM declined, again requesting that Blackbird pay some of its expenses. Blackbird then offered a “walk-away” settlement whereby HIM would receive a license to Blackbird’s patent for zero dollars, and the case would be dismissed. HIM declined. During discovery, HIM moved for summary judgment. After the motion was briefed and without notifying HIM in advance, Blackbird filed a notice of voluntary dismissal with prejudice, executed a covenant not to sue, and moved to dismiss for lack of subject matter jurisdiction. The district court dismissed Blackbird’s claims with prejudice, denied Blackbird’s motion to dismiss, and authorized HIM to seek costs, expenses, and attorney fees. The Federal Circuit affirmed an award to HIM of fees and expenses in the requested amount ($363,243.80), upholding findings that Blackbird’s litigation position was “meritless” and “frivolous.” Blackbird litigated in an unreasonable manner and the court properly considered the need to deter future abusive litigation. View "Blackbird Tech LLC v. Health in Motion, LLC" on Justia Law

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Chamberlain's patent discloses improved “movable barrier operators,” such as garage door openers. The patent describes a need for “a passive infrared detector for controlling illumination from a garage door operator which could be quickly and easily retrofitted to existing garage door operators” and discloses as its invention “a passive infrared detector for a garage door operator,” contained in a wall control unit, along with an ambient light comparator and a microcontroller. The International Trade Commission determined, 19 U.S.C. 1337, that the Appellants’ importation of garage door opener products infringed the patent and entered limited exclusion orders and cease and desist orders. The Federal Circuit vacated the orders, concluding that the Commission erred in its construction of “wall console,” a term in each of the patent claims. Although claim terms are normally given their ordinary and customary meaning, as understood by persons of ordinary skill in the art in view of the specification and prosecution history, Chamberlain disavowed coverage of wall consoles without a passive infrared detector. The term is properly construed as a “wall-mounted control unit including a passive infrared detector.” The parties agree that the Appellants do not infringe the patent under that construction. View "Techtronic Industries Co. Ltd. v. International Trade Commission" on Justia Law

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The Patent Act provides two methods for challenging an adverse decision by the Patent and Trademark Office (PTO): direct appeal to the Federal Circuit, 35 U.S.C. 141, or a new civil action against the PTO Director in the Eastern District of Virginia, section 145. Under section 145, the applicant must pay “[a]ll the expenses of the proceedings.” NantKwest filed a section 145 civil action after its patent application was denied. The Federal Circuit affirmed summary judgment in favor of the PTO, which moved for reimbursement of expenses, including the pro-rata salaries of PTO attorneys and a paralegal who worked on the case. The Federal Circuit and the Supreme Court affirmed the denial of the motion, concluding that the statutory language referencing expenses was not sufficient to rebut the “American Rule” presumption that parties are responsible for their own attorney’s fees. Reading section 145 to permit an unsuccessful government agency to recover attorney’s fees from a prevailing party “would be a radical departure from longstanding fee-shifting principles adhered to in a wide range of contexts.” The phrase “expenses of the proceeding” would not have been commonly understood to include attorney’s fees at the time section 145 was enacted. The appearance of “expenses” and “attorney’s fees” together across various statutes indicates that Congress understands the terms as distinct and not inclusive of each other. View "Peter v. NantKwest, Inc." on Justia Law

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Two non-competing Midwestern companies operated by brothers used marks containing the family name, Fabick. The owner of the registered mark (FI), a small manufacturer of sealants, sued JFTCO, a larger distributor of Caterpillar equipment, for trademark infringement. A jury found that JFTCO had violated the Lanham Act but had not committed common law infringement. The district court entered limited injunctive relief requiring that JFTCO issue, for five years, disclaimers clarifying that it is not associated with FI. The Seventh Circuit affirmed, rejecting FI’s claim that it was entitled to a broad permanent injunction and should have been allowed to recover JFTCO’s profits, lacking evidence that the defendants were unjustly enriched by consumers assuming that Fabick’s sealants and coatings business is the same or related to JFTCO’s business. The court also rejected JFTCO’s challenged to a jury instruction: “[D]efendant JFTCO used the FABICK mark in a manner that is likely to cause confusion as to the source or origin of plaintiff’s product or that plaintiff has somehow become connected to JFTCO.” When read in context, the language regarding whether “plaintiff has somehow become connected to JFTCO” clearly refers to the parties’ products and/or services, and is not impermissibly vague. View "Fabick, Inc. v. JFTCO, Inc." on Justia Law