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Helsinn makes a treatment for chemotherapy-induced nausea using the chemical palonosetron. While developing that product, Helsinn granted another company the right to market a 0.25 mg dose of palonosetron in the United States; that company was required to keep proprietary information confidential. Nearly two years later, in 2003, Helsinn filed a provisional patent application covering a 0.25 mg dose of palonosetron. Helsinn filed four patent applications that claimed priority to the 2003 date. Helsinn’s fourth application, filed in 2013 (the 219 patent), is covered by the Leahy-Smith America Invents Act (AIA). In 2011, Teva sought approval to market a generic 0.25 mg palonosetron product. Helsinn sued for infringement. Teva countered that the 219 patent was invalid under the “on sale” provision of the AIA, which precludes a person from obtaining a patent on an invention that was “in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention,” 35 U.S.C. 102(a)(1), arguing the 0.25 mg dose was “on sale” more than one year before Helsinn filed the 2003 application. The Federal Circuit held, and the Supreme Court unanimously agreed, that the sale was publicly disclosed, regardless of whether the details of the invention were publicly disclosed in the agreements. A commercial sale to a third party who is required to keep the invention confidential may place the invention “on sale” under section 102(a). The patent statute in force immediately before the AIA included an on-sale bar. Supreme Court and Federal Circuit precedent interpreting that provision indicated that a sale or offer of sale need not make an invention available to the public to constitute invalidating prior art. The Court applied the presumption that when Congress reenacted the “on sale” language in the AIA, it adopted earlier judicial constructions. View "Helsinn Healthcare S. A. v. Teva Pharmaceuticals USA, Inc." on Justia Law

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The Ninth Circuit affirmed the district court's dismissal of a Lanham Act action brought by Applied Underwriters, alleging claims for trademark infringement and unfair competition. Although the district court abused its discretion when it sanctioned Applied Underwriters and dismissed the case pursuant to Federal Rule of Civil Procedure 41(b) absent an order requiring Applied Underwriters to file an amended complaint, the panel nevertheless affirmed the district court's earlier Rule 12(b)(6) dismissal because the use of Applied Underwriters' trademarks by defendants constituted nominative fair use. In this case, Applied Underwriters' service was not readily identifiable without use of the trademarks; defendants used only so much of the marks as was reasonably necessary; and use of the marks did not suggest sponsorship or endorsement. View "Applied Underwriters, Inc. v. Lichtenegger" on Justia Law

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Guild makes mortgage loans and has used the mark “GUILD MORTGAGE COMPANY” since 1960. Guild was founded in California and has expanded to over 40 other states. It applied to register the mark “GUILD MORTGAGE COMPANY,” and design, in International Class 36 for “mortgage banking services, namely, origination, acquisition, servicing, securitization and brokerage of mortgage loans.” The application states that color is not claimed as a feature of the mark and that the “mark consists of the name Guild Mortgage Company with three lines shooting out above the letters I and L.” Registration was refused (15 U.S.C. 1052(d)) due to a likelihood of confusion between Guild’s mark and the mark “GUILD INVESTMENT MANAGEMENT” registered in International Class 36 for “investment advisory services,” which is owned by Guild Investment Management, Inc. a Los Angeles investment company. The Board affirmed. The Federal Circuit vacated. The Board erred by failing to address Guild’s argument and evidence related to “DuPont factor 8,” which examines the “length of time during and conditions under which there has been concurrent use without evidence of actual confusion.” Guild argued that it and Guild Investment have coexisted in business for over 40 years without any evidence of actual confusion. View "In re: Guild Mortgage Co." on Justia Law

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UCB’s 650 patent, which covers certain chemical derivatives of 3,3- diphenylpropylamines, including a compound called fesoterodine. Fesoterodine is an antimuscarinic drug marketed as Toviaz® to treat urinary incontinence. In inter partes review, the Patent and Trademark Office Patent Trial and Appeal Board held that certain claims were not unpatentable as obvious, 35 U.S.C. 103. The Federal Circuit affirmed, first rejecting UCB’s argument that Amerigen lacked standing because the FDA will not approve Amerigen’s abbreviated new drug application until the expiration of the 650 patent in 2022, so that there was no possibility of infringement. The evidence supported the Board’s finding that the Amergen neither established a general motivation to make a 5-HMT prodrug nor proved that the specific claimed modifications would have been obvious. View "Amerigen Pharmaceuticals, Ltc. v. UCB Pharma GMBH" on Justia Law

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WesternGeco’s patents relate to technologies used to search for oil and gas beneath the ocean floor. The patents relate to controlling streamers and sensors in relation to each other by using winged positioning devices and generating four-dimensional maps with which it is possible to see changes in the seabed over time. WesternGeco manufactures the Q-Marine, and performs surveys for oil companies. ION manufactures the DigiFIN, and sells to its customers, who perform surveys for oil companies. A jury found infringement and no invalidity and awarded WesternGeco $93,400,000 in lost profits and $12,500,000 in reasonable royalties. The Federal Circuit affirmed, rejecting arguments that WesternGeco was not the patents' owner and lacked standing and that the court applied an incorrect standard under 35 U.S.C. 271(f)(1). The court upheld denial of enhanced damages for willful infringement and reversed the award of lost profits resulting from conduct occurring abroad. The Supreme Court subsequently held “that WesternGeco’s damages award for lost profits was a permissible domestic application of [35 U.S.C.] 284,” but did not decide other challenges to the lost profits award. In light of the Supreme Court’s decision and the intervening invalidation of four asserted patent claims that could support the lost profits award, the Federal Circuit remanded to the district court. View "WesternGeco L.L.C. v. Ion Geophysical Corp." on Justia Law

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Realtime’s 812 patent discloses “[s]ystems and methods for providing lossless data compression and decompression . . . [that] exploit various characteristics of run-length encoding, parametric dictionary encoding, and bit packing.” ’ Run-length encoding is a form of lossless data compression where a “run” of characters is replaced with an identifier for each individual character and the number of times it is repeated. In inter partes review, the Patent and Trademark Office’s Patent Trial and Appeal Board found that all of the challenged claims would have been obvious over the prior art, 35 U.S.C. 103(a). The Federal Circuit affirmed. The Board was not required to make any finding regarding a motivation to combine given its reliance on the prior art alone, which disclosed every element of claims 1–4, 8, and 28. In relying on the prior art alone, the Board did not violate section 312(a)(3) or other notice requirements. The Board did not expressly construe the phrase “maintaining a dictionary,” but found that the prior art satisfied this limitation because it disclosed all of the steps in dependent claim 4. View "Realtime Data, LLC v. Iancu" on Justia Law

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Springboards filed suit against the school district under the Lanham Act, alleging that the school district used the company's marks in the course of operating a summer reading program. At issue was the school district's use of "Houston ISD Millionaire Club" on its incentive items and informational material. The Fifth Circuit affirmed the district court's grant of summary judgment for the school district, holding that a reasonable jury could not find that the allegedly infringing use of the marks created a likelihood of confusion. The court held that no reasonably jury could conclude that it was likely potential purchasers of Springboards' products would have believed that Springboards was affiliated with HISD's summer reading program. View "Springboards to Education, Inc. v. Houston Independent School District" on Justia Law

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AC’s 680 patent relates generally to data access and management. The Patent Trial and Appeal Board held that certain claims were unpatentable. On reconsideration, it invalidated the remaining claims based on a ground of unpatentability raised by Amazon’s petition but not addressed in the final written decision. AC argued that the Board exceeded its authority and deprived it of fair process by belatedly considering this ground. The Federal Circuit upheld the Board’s decision. Precedent mandates that the Board consider all grounds of unpatentability raised in an instituted petition. The Board complied with due process and did not err in either its claim construction or its ultimate conclusions of unpatentability. As AC admits, after the Board decided to accept Amazon’s rehearing request and consider Ground 3, it permitted AC to take discovery and submit additional briefing and evidence on that ground. View "AC Technologies S.A. v. Amazon.com, Inc." on Justia Law

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Marco Guldenaar filed the provisional application from which the 196 patent application claims priority in 2010. The 196 patent application, entitled “Casino Game and a Set of Six-Face Cubic Colored Dice,” relates to “dice games intended to be played in gambling casinos, in which a participant attempts to achieve a particular winning combination of subsets of the dice.” The Patent Trial and Appeal Board affirmed the rejection of claims 1–3, 5, 7–14, 16– 18, and 23–30 the application under 35 U.S.C. 101 for claiming patent-ineligible subject matter. The Federal Circuit affirmed, holding that the claims are directed to the abstract idea of rules for playing a dice game and the only arguably inventive concept relates to the dice markings, which constitute printed matter. View "In re: Marco Guldenaar Holding B.V." on Justia Law

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The Eighth Circuit affirmed the district court's judgment in favor of Hargis in an action brought by B&B, alleging a trademark infringement claim involving B&B's SEALTIGHT mark and Hargis' SEALTITE mark. The court found no plain error in the district court's determination that B&B willfully failed to disclose a prior adverse decision and thus the district court did not err in its determination that B&B committed fraud on the PTO and that Hargis was therefore entitled to the affirmative defense of fraud under 15 U.S.C. 1115(b)(1). The court also held that B&B's claims were barred by collateral estoppel because B&B failed to present evidence of any significant intervening factual change from the date of the 2000 jury verdict. In regard to Hargis' cross-appeal, the court affirmed the district court's denial of Hargis' motion for attorney fees and nontaxable litigation costs. The court held that the district court did not abuse its discretion in finding this an unexceptional case. View "B&B Hardware, Inc. v. Hargis Industries, Inc." on Justia Law