Intellectual Property

St. Jude Medical, LLC v. Snyders Heart Valve LLC (USPTO as Intervenor) Docket No. 2019-2108-9, -2140 (IPR2018-00105-00106) PROST, REYNA, TARANTO October 15, 2020 Brief Summary:  Board anticipation finding of certain claims reversed based on FC panel’s revised claim construction (claims “interpreted with an eye toward giving effect to all terms in the claim”). Summary:  St. Jude appealed Board IPR-105 and IPR-106 final written decisions (FWDs) finding St. Jude had not established unpatentability (anticipation) of some of the challenged claims of SHV’s US 6,540,782 directed to an artificial hear valve and system for inserting the valve.  In IPR-105, “the Board essentially…
Immunex Corp. v. Sanofi-Aventis U.S. LLC et al. (USPTO as Intervenor) Docket No. 2019-1749, -1777 (IPR2017-01879, -01884) PROST, REYNA, TARANTO October 13, 2020 Brief Summary:  Immunex appealed two IPR final written decisions (FWDs) invalidating the challenged claims of US 8,679,487 directed to human anti-IL4R antibodies (“”[a]n isolated human antibody…wherein the light chain…comprises the amino acid sequence of SEQ ID NO:10 and the heavy chain…comprises the amino acid sequence of SEQ ID NO:12”).  The FC panel opinion explains that “[t]his appeal concerns what ‘human antibody’ means in this patent…must a ‘human antibody’ be entirely human?  Or may it also be ‘partially…
GlaxoSmithKline LLC, et al. v. Teva Pharmaceuticals USA, Inc. Docket No. 2018-1976, -2023 PROST, NEWMAN, MOORE October 2, 2020 Brief Summary:  GSK appealed DC judgment of a matter of law (JMOL) finding no induced infringement of RE40,000 by Teva’s Coreg® (carvedilol) ANDA.  GSK’s RE40,000 issued on Jan. 8, 2008 following reexamination of US 5,760,069 (issued in 1998) directed to “[a] method of decreasing mortality caused by congestive heart failure”, RE’000 adding the limitation “wherein the administering comprises administering to said patient daily maintenance dosages for a maintenance period to decrease a risk of mortality caused by congestive heart failure, and…
Network-1 Techs., Inc. v. Hewlett-Packard Co. et al. Docket No. 2018-2338-39, -2395-96 PROST, NEWMAN, BRYSON September 24, 2020 Brief Summary:  DC claim construction affirmed and reversed (“ordinary meaning”); joinder rule did not prevent HP from raising new obviousness arguments that could have been raised during IPR; no improper broadening during reissue. Summary:   Network-1 appealed DC finding that HP does not infringe US 6,218,030 relating to methods for “remotely powering access equipment in a data network” and the DC’s construction of the claim terms “low level current” and “main power source”.  HP cross-appealed the DC’s finding that Network-1 did not improperly…
Biogen MA Inc. v. EMD Serono, Inc. et al. (Pfizer Inc., Bayer, Novartis) Docket No. 2019-1133 NEWMAN, LINN, HUGHES September 28, 2020 Brief Summary:  DC instructed to reinstate jury verdict of invalidity for anticipation of Biogen’s IFN-b method of treatment claims that include product-by-process limitations (e.g., “an old method of administration of an old product made by a new process is not novel and cannot be patented”). Summary:   Serono appealed DC judgment as a matter of law (“JMOL”) ruling Biogen’s claims (US 7,588,755) directed to methods of treatment using recombinant interferon b (“IFN- b”, sold as Rebif for multiple sclerosis…
Siemens Mobility, Inc. v. USPTO Docket No. 2019-1732, -1752 (IPR2017-01669, -02044 LOURIE, MOORE, O’MALLEY September 8, 2020 Non-precedential Brief Summary: Board IPR claim construction and obviousness conclusions affirmed (e.g., insufficient evidence nexus between claims and secondary considerations (license agreements)). Summary: Siemens appealed two IPR final written decisions (FWDs) holding certain claims of US 6,609,049 and US 6,824,110 directed to methods and systems for automatically activating a train warning device unpatentable for obviousness. The method claims included “maintaining a database of locations…and corresponding regulations”, “obtaining a position of the train” (and speed in ‘049 claims), “select[ing] a next upcoming location”, “determining…
ABC Corp. I v. Partnership & Unincorporated Assocs. Identified on Sched. A, No. 1:20 cv 4806, Slip Op. (N.D. Ill. Sept. 4, 2020) (Seeger, J.). Having previously issued a show cause order, Judge Seeger granted plaintiff leave to file an amended complaint in this patent dispute naming the plaintiff, or the case would be dismissed for improperly filing as an anonymous plaintiff. While Fed. R. Civ. Pro. 10(a) allows a plaintiff to file anonymously in exceptional circumstances and with leave of court, those circumstances include protecting state secrets, trade secrets or victims of abuse, not patent infringement. Plaintiff’s theory “seemed…
Egenera, Inc. v. Cisco Systems, Inc. Docket No. 2019-2015, -2387 PROST, REYNA, STOLL August 28, 2020 Brief Summary: DC claim construction affirmed; refusal to allow Egenera to correct inventorship vacated/remanded (“AIA did not narrow the meaning of ‘error’”). Summary: Egenera appealed DC claim construction of the claims of US 7,231,430 relating to enterprise server systems and application of judicial estoppel to prevent Egenera from relisting an inventor delisted during a copending IPR proceeding, leading to its holding of invalidity for failing to name all inventors. Egenera argued the DC misconstrued the “logic to modify” limitation (“at least one control node…
Baxalta, Inc. et al. v. Genentech, Inc. et al. Docket No. 2019-1527MOORE, PLAGER, WALLACH August 27, 2020 Brief Summary:  DC non-infringement finding vacated and remanded due to erroneous construction of “antibody” and “antibody fragment”. Summary:    Baxalta appealed DC judgment based on its construction of “antibody” and “antibody fragment” for US 7,033,590.  Baxalta alleged Genetech’s Helibra (emicizub-kxwh) bispecific antibody for treating hemolphilia infringed the ‘590 claims.  Claim 1 of the ‘590 patent is directed to “[a]n isolated antibody or antibody fragment thereof that binds Factor IX or Factor IXa and increased the procoagulant activity of Factor IXa” while dependent claims 4…
Chief Judge Pallmeyer opted for an abbreviated format for her sixth amended COVID General Order issued, Friday, September 4. That is presumably because the order is simpler than it was at the outset of the pandemic. There are no blanket case extension. The General Order basically extends provisions limiting courthouse access to wha tis necessary. Specifically, the General Order requires: No Local Rule 5.2(f) Courtesy Copies — Absent case-specific requests, Local Rule 5.2(f) requiring paper courtesy copies of many filings is suspended. In fact, “[n]o courtesy copies may be submitted . . . unless the parties receive case-specific requests for…
Phytelligence, Inc. v. Washington State University Docket No. 2019-2216 PROST, REYNA, STOLL August 27, 2020 Brief Summary: DC grant of SJ to WSU affirmed since option agreement was “an unenforceable agreement to agree”, not an “agreement with open terms” that could be deciphered by the court. Summary: Phytelligence (“PT”; in receivership) appealed DC grant of summary judgment (SJ) in favor of WSU regarding sale and delivery of a specific type of apple tree (WA 38) and infringement of its COSMIC CRISP trademark. In 2012, PT and WSU entered into a Propagation Agreement that “forbid [PT] from selling WA 38 trees…
A client was asking “is it necessary to fill out all the paperwork to register a design even though the law says you already own it?” It’s a good question. Technically, under the Copyright Act as amended in 1976, the author (creator) of a work owns the copyright. The 1976 Act states that copyright protection extends to original works that are fixed in a tangible medium of expression. This wording broadens the scope of federal statutory copyright protection from the previous “publication” standard to a “fixation” standard. No further action is necessary. Under previous versions of the law, there were…
Anacor Pharmaceuticals, Inc. v. Flatwing Pharmaceuticals, LLC Docket No. 2019-2264-2267 (IPR2018-00168-00171, -01358-01361) PROST, NEWMAN (D), HUGHES August 27, 2020 (Non-precedential) Brief Summary: IPR decisions finding Anacor’s tavaborole (5%) (KERYDIN®) patents invalid for obviousness affirmed (e.g., “concentration is a result-effective variable”). Summary: Anacor appealed four IPR final written decisions (FWDs) holding all the claims of Orang Book patents US 9,549,938; 9,566,289; 9,566,290; and 9,572,823 (shared specifications; previously invalidated US 7,582,621 also listed on OB (FC 2018)) relating to the treatment of fungal infections using the boron-containing compound tavaborole (5%) (KERYDIN®) invalid for obviousness in view of Austin (WO publication), Brehove (US…
Takeda Pharm. U.S.A., Inc. v. Mylan Pharm. Inc. Docket No. 2020-1407, -1417 PROST, NEWMAN (D), HUGHES July 31, 2020 Brief Summary: DC decisions denying Takeda a permanent injunction affirmed due to Final Court Decision regarding Licensed Patents as defined in License Agreement. Summary: Takeda appealed DC denial of its request for a preliminary injunction (PI) in an ANDA suit regarding Takeda’s Colcrys® product (colchicine), an oral formulation used to treat gout. In the suit, Tekada alleged infringement of 17 Orange Book (OB) patents. Takeda and Mylan settled the litigation through a 2017 Settlement Agreement that allowed Mylan to sell generic…
Alacritech, Inc. v. Intel Corp., et al. Docket No. 2019-1467, -1468 (IPR2017-01409-10, -01736-7, IPR2018-00338-9) MOORE, CHEN, STOLL July 31, 2020 Brief Summary: IPR obviousness decision vacated and remanded as Board’s explanation was not “articulate a satisfactory explanation for its action”. Summary: Alacritech (AT) appealed USPTO (“Board”) decision holding the claims of US 8,131,880 directed to “[a]n apparatus for transferring a packet to a host computer system” (“from a host computer’s central processing unit (CPU) to an ‘intelligent network interface card’ (INIC)” including a “flow re-assembler” that “re-assemble[s] a data portion of said first packet with a data portion of a…
Bio-Rad Labs., Inc., The Univ. of Chicago v. 10X Genomics Inc. Docket No. 2019-2255, -2285 NEWMAN, O’MALLEY, TARANTO August 3, 2020 Brief Summary: DC decision of infringement of ‘083 patent under DOE affirmed; preamble found to limit ‘407 and ‘193 patent claims, infringement therefore vacated; money damages affirmed but injunction reversed as to two of the four accused product lines. Summary: 10X appealed DC finding three Bio-Rad (licensee) patents directed to microfluidic systems (‘083 patent and ‘407 and ‘193 continuations) valid and willfully infringed, its denial of 10X’s request for JMOL, and grant of a permanent injunction against 10X. 10X’s…