Posts Tagged: "CAFC"

On August 31, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision in INVT SPE LLC v. International Trade Commission (ITC) affirming the ITC’s ruling that Apple and other respondents in a Section 337 investigation did not infringe upon INVT’s patent claims covering wireless communications systems and that there was no Section 337 violation. While the Federal Circuit did side with INVT’s arguments that its patent claims were drawn to device capability and not actual operation, the CAFC opinion, authored by Circuit Judge Raymond Chen, found that INVT did not produce evidence that the accused devices possessed the capability covered by the patent claims.

On August 26, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision in Best Medical International, Inc. v. Elekta Inc. affirming rulings by the Patent Trial and Appeal Board (PTAB) that invalidated patent claims covering a method and apparatus for radiation therapy of tumors. The appellate court, which issued a modified version of the opinion today to correct some minor formatting problems, also determined that Best Medical International (BMI) lacked standing to appeal the PTAB’s invalidation of claim 1 of BMI’s patent.

On August 19, British brand name pharmaceutical firm GlaxoSmithKline (GSK) filed a brief with the U.S. Supreme Court opposing a petition for writ of certiorari filed by generic drugmaker Teva Pharmaceuticals. Teva’s petition appeals a decision by the U.S. Court of Appeals for the Federal Circuit (CAFC) reinstating a jury verdict that found Teva liable for inducing infringement of GSK’s patents covering the heart failure treatment, Coreg. GSK’s brief argues that the Federal Circuit properly applied the law on induced infringement and that the “skinny label” arguments raised by Teva’s petition only affect 30% of the damages awarded by the jury in the case.

The U.S. Court of Appeals for the Federal Circuit (CAFC), in a precedential decision issued today, affirmed a Patent Trial and Appeal Board (PTAB) finding that claims to a computer system for identifying eligibility for Social Security Disability Insurance (SSDI) benefits are invalid as patent ineligible. The opinion was authored by Judge Chen. The case originates from an examiner’s rejection of Jeffrey Killian’s claims of U.S. Patent Application No. 14/450,042 under Section 101 as being directed to “the abstract idea of ‘determining eligibility for social security disability insurance . . . benefits’” and lacking anything “significantly more” to satisfy Step 2 of the Alice-Mayo two-part test.

In a precedential decision issued earlier this month, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed a decision of the Patent Trial and Appeal Board (PTAB) in an appeal by LSI Corporation and Avago Technologies U.S. Inc. (LSI) regarding the PTAB’s finding that LSI’s cited reference in an inter partes review (IPR) did not qualify as prior art. The CAFC said in part that U.S. Patent No. 5,731,768 (“Tsang”) was not “by another” under 35 U.S.C. 102(e) for U.S. Patent No. 5,859,601 (‘601 patent).

In its third precedential patent decision this week, the U.S. Court of Appeals for the Federal Circuit (CAFC) today affirmed a district court’s finding that Eagle Pharmaceuticals, Inc.’s abbreviated new drug application (ANDA) does not infringe two patents owned by Par Pharmaceutical, Inc., Par Sterile Products, LLC, and Endo Par Innovation Company, LLC (collectively, Par). The CAFC also affirmed the district court’s denial of declaratory judgment that the sale of the proposed generic product would infringe.

On August 17, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Click-to-Call Technologies LP v. Ingenio, Inc. finding in part that, as a matter of law, Ingenio was estopped from challenging the validity of a patent claim on grounds it could have reasonably challenged during inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB). Although the impact of this precedential holding will likely be limited due to the “unusual procedural posture” of this case, which involves a partial IPR institution prior to the U.S. Supreme Court’s 2018 ruling in SAS Institute, the Federal Circuit’s decision does underscore the circuitous nature of PTAB proceedings that often add many years to patent lawsuits filed in U.S. district court.

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential order denying a petition for writ of mandamus filed by Palo Alto Networks (PAN) that asked the court to compel the U.S. Patent and Trademark Office (USPTO) to grant Director Review of the Patent Trial and Appeal Board’s (PTAB’s) decisions not to institute inter partes review (IPR) and post grant review (PGR) of Centripetal Networks’ patents. PAN argued that the USPTO’s policy of refusing to accept requests for Director Review of institution decisions violates the Appointments Clause as set out in United States v. Arthrex, Inc.

On August 12, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision in Kamstrup A/S v. Axioma Metering UAB affirming a final written decision by the Patent Trial and Appeal Board (PTAB) that invalidated all challenged claims as obvious or anticipated. In so holding, the Federal Circuit found that the PTAB properly construed a product-by-process claim element as not entitled to patentable weight and dismissed Kamstrup’s arguments that the asserted prior art was not analogous to the patented invention.

The U.S. Court of Appeals for the Federal Circuit (CAFC) today, in a precedential decision, revisited its 2020 holding that the doctrine of assignor estoppel bars Minerva Surgical, Inc. from challenging the validity of Hologic Inc.’s patent directed to a device for treating a uterus. The decision comes on remand from the U.S. Supreme Court, which vacated the 2020 ruling and returned it to the CAFC for further consideration of the Justices’ determination that the doctrine of assignor estoppel comes with certain limits. The Supreme Court ruled in June 2021 that assignor estoppel—which bars the assignor of a patent from later attacking the patent’s validity—“is well grounded in centuries-old fairness principles…[but] applies only when the assignor’s claim of invalidity contradicts explicit or implicit representations he made in assigning the patent.” Thus, while the Court rejected Minerva’s request that the doctrine be abandoned, it vacated the CAFC’s 2020 judgment and remanded the case to address “whether Hologic’s new claim is materially broader” than the ones that were assigned.

The U.S. Court of Appeals for the Federal Circuit (CAFC) today ruled in a precedential decision that the Patent Trial and Appeal Board (PTAB) correctly rejected a patent applicant’s reissue claims as “impermissibly attempting to recapture subject matter that the patentee intentionally surrendered during prosecution.” The opinion, authored by Judge Cunningham, explained that John Bradley McDonald, who is named as the inventor on U.S. Patent No. 8,572,111, amended claims 1-9 and 19-21 following an examiner’s rejection of them as patent ineligible, since they were not tied to a processor for conducting the claimed searches. McDonald added “a processor” to certain claim limitations in order to meet the requirement for tying the methods described by the patent to a particular machine and the examiner ultimately withdrew the Section 101 rejection.

June Cohan, Senior Legal Advisor in the Office of Patent Legal Administration at the U.S. Patent and Trademark Office (USPTO) today explained to attendees of an event about the Office’s patent eligibility guidance that there are no plans to revise the guidance in light of the denial of certiorari in American Axle. She also acknowledged several areas of “divergence,” or “outlier cases,” between the USPTO and the U.S. Court of Appeals for Federal Circuit (CAFC) approaches to determining patent eligibility which the Office has no plans for revising, despite the fact that the CAFC is the reviewing court for the USPTO.

The U.S. Court of Appeals for the Federal Circuit (CAFC) today denied Hewlett Packard’s petition for a writ of mandamus ordering the U.S. District Court for the Western District of Texas to transfer its case to Massachusetts. Intellectual Ventures (IV) sued Hewlett Packard Enterprises (HPE) in the Western District of Texas, alleging infringement of a patent directed to data storage solutions assigned to IV. HPE moved for transfer, arguing that the development of the accused products occurred mostly in Massachusetts, but the district court denied the motion.

The August 2019 announcement that two patent applications had been filed naming an artificial intelligence (AI) algorithm as an inventor in the United States and a dozen other countries was regarded as disruptive and profound at the time. It was one of the hot topics in patent law during those last few months before the pandemic. But since then, given all the other crazy and disorienting stuff that has happened in the world, we have become desensitized to the question, even if it is just as radical and important today. To be sure, the U.S. Court of Appeals for the Federal Circuit’s August 5 ruling that an “inventor” must, under the Patent Act, always be a human being, would seem to definitively resolve the question. As a matter of existing and clearly settled law, Stephen Thaler’s AI machine, DABUS, cannot be a named inventor on his applications for a fractal-shaped beverage container and a neural flame, like we always thought in the Before Times. It’s time to relegate this parlor-game discussion to the same recycle bin as Beeple’s non-fungible token (NFT), The Tiger King, and so many other viral distractions. Or, perhaps, not so fast.

Talk about snatching victory from the jaws of defeat! That is precisely what the Federal Circuit did for HEC Pharm Co. recently in Novartis Pharmaceuticals Corp. v. Accord Healthcare Inc. et al (No. 2021-1070). In what can only be characterized as an astonishingly unprecedented procedural betrayal of justice, Novartis recently found itself on the losing side of a request for panel rehearing. Save for a moment just how extraordinarily uncommon it is for the Federal Circuit to grant panel rehearing, and likewise save for a moment how extremely uncommon it is for the Federal Circuit to overrule a prior panel decision even when a panel rehearing is granted. But in Novartis Pharmaceuticals v. Accord Healthcare, neither of the panel members in the majority of the original opinion even agreed to rehear the case, let alone agreed to reverse their prior ruling.