Intellectual Property

Illumina, Inc., Sequenom, Inc. v. Ariosa Diagnostics, Inc. et al. Docket No. 2019-1419 LOURIE, MOORE, REYNA March 17, 2020 Update (August 3, 2020): In a revision of its March 17, 2020 opinion reversing the DC’s 101 ineligibility decision, the FC panel reversed the DC’s decision on remand finding the claims invalid under 101 for being “directed to an ineligible natural phenomenon”. The FC panel maintained its prior statements that: “This is not a diagnostic case. And it is not a method of treatment case. It is a method of preparation case.” The FC panel also maintained its position that “CellzDirect…is…
Gensetix, Inc. / Univ. Texas v. Baylor College of Medicine Docket No. 2019-1424 NEWMAN (D/C), O’MALLEY, TARANTO (C) July 24, 2020 Brief Summary: DC correctly found UT could not be involuntarily joined under Eleventh Amendment but abused its discretion in finding suit could not proceed without UT. Summary: Gensetix is the University of Texas’s (UT) exclusive licensee of US 8,728,806 and 9,333,248 directed to methods for modifying a patient’s immune system to fight cancer. Gensetix sued Baylor for infringement and named UT as an involuntary plaintiff pursuant to Rule 19(a). The DC determined that UT could not be added as…
Immunex Corporation, Amgen Manuf., Ltd., Hoffman La-Roche Inc. v. Sandoz Inc., et al. Docket No. 2020-1037 O’MALLEY, REYNA (D), CHEN July 1, 2020 Brief Summary: DC finding of no invalidity for obviousness-type double-patenting (no common ownership), written description or obviousness affirmed. Summary: Sandoz appealed abbreviated Biological License Application (“eBLA”)-related DC judgment that Sandoz has failed to prove the Enbrel® (an anti-TNF antibody) patents-in-suit (US 8,063,182 and 8,163,522) were invalid for obviousness-type double patenting, lack of written description, or obviousness. Immunex (which was acquired by non-party Amgen and was the original licensee) is Roche’s exclusive licensee of the patents-in-suit. Sandoz argued…
Dana-Farber Cancer Institute, Inc. v. Ono Pharm. Co., et al. (Bristol-Myers Squibb) Docket No. 2019-2050 NEWMAN, LOURIE, STOLL July 14, 2020 Brief Summary: DC order to add Dana Farber and GI/Pfizer inventors to the Ono/BMS relating to the use of anti-PD1 antibodies affirmed. Summary: Ono/BMS appealed DC order requiring Dr. Gordon Freeman and Dr. Clive Wood to be added as co-inventors to U.S. Pat. Nos. 7,595,048; 8,168,179; 8,728,474; 9,067,999; 9,073,994; and 9,402,899, each relating to methods for treating cancer using anti-PD1 antibodies. Dana Farber successfully alleged to the DC that its employee Dr. Freeman and Genetics Institute/Pfizer employee Dr. Wood…
March patent filings were relatively low. The NPEs also had to shelter in place for a bit before starting the typical recessionary increase in patent filings. Frequent filers included Cedar Lane, Coding Technologies, Internet Media Interactive, Landmark Technology, Rothschild, and Symbology. As usual, I prepared the report in partnership with and using Docket Navigator and its powerful database.  Docket Navigator is a valuable resource, and the place to go if you want to keep track of new patent litigation filings or want to know what is happening in particular cases, how your judge has historically handled a particular type of…
B/E Aerospace, Inc. v. C&D Zodiac, Inc. Docket No. 2019-1935, -1936 (IPR2017-01275, -01276) LOURIE, REYNA, HUGHES June 26, 2020 Brief Summary: Board IPR obviousness decision based in part on common sense affirmed. Summary: B/E appealed Board final written decision (FWD) finding certain claims of US 9,073,641 and 9,440,742 related “to space-saving technologies for aircraft enclosures such as lavatory enclosures, closets, and galleys” invalid for obviousness. Representative claim 1 of the ‘641 patent recites “a lavatory unit including a forward wall portion” including “a first recess” and a “second recess”. The Board concluded obviousness because the prior art shows a “contoured…
NPEs slowed down in early February, but picked back up later in the month ahead of the pandemic. Frequent filers included Aeritas, Browse3D, Cedar Lane, Coding Technologies, Encoditech, Internet Media Interactive, Landmark Technology, Reflection Code, and Rothschild. As usual, I prepared the report in partnership with and using Docket Navigator and its powerful database.  Docket Navigator is a valuable resource, and the place to go if you want to keep track of new patent litigation filings or want to know what is happening in particular cases, how your judge has historically handled a particular type of motion, or a particular…
Shoes By Firebug LLC v. Stride Rite Children’s Group, LLC Docket No. 2019-1622, -1623 (IPR2017-01809, -01810) LOURIE, MOORE, O’MALLEY June 25, 2020 Brief Summary: Board finding that preamble do not limit the claims affirmed for one patent but not the other; obviousness conclusions affirmed. Summary: Firebug appealed Board IPR decisions finding the claims of US 8,992,038 and 9,301,574 directed to illumination systems for shoes unpatentable as obvious. The Board concluded that the preamble term “textile footware” was not limiting to the claim body describing the components and function of the illumination system. The Board also found “the disclosure of the…
Dropbox, Inc. et al. v. Synchronoss Technologies, Inc. Docket No. 2019-1765, -1767, -1823 PROST, WALLACH, HUGHES June 19, 2020 Non-precedential Brief Summary: DC holdings of patent ineligibility affirmed as claims did not, e.g., “describe how to solve the problem in a manner that encompasses something more than the ‘principle in the abstract’”. Summary: Dropbox appealed DC decision holding US 6,178,505, 6,058,399 and 7,567,541 relating to delivery, upload and backup of computer data ineligible under § 101. The DC found “that the patents claim abstract ideas, and…provide no inventive concept transforming the abstract idea into patentable subject matter.” The FC panel…
January 2020 was a typical start to a new year. NPEs started out slow and built up filings in the back half of the month. Frequent filers included Coding Technologies, Encoditech, Internet Media Interactive, Reflection Code, S3G and Symbology Innovations. As usual, I prepared the report in partnership with and using Docket Navigator and its powerful database.  Docket Navigator is a valuable resource, and the place to go if you want to keep track of new patent litigation filings or want to know what is happening in particular cases, how your judge has historically handled a particular type of motion,…
NPEs were surprisingly active to end the fourth quarter. Frequent filers included Blackbird Technologies, Blueprint IP Solutions, Cedar Lane Technologies, Coding Technologies, Electronic Receipts Delivery Systems, Internet Media Interactive, Landmark Technology, Pebble Tide, Scanning Technologies Innovations, and Universal Ciphers. As usual, I prepared the report in partnership with and using Docket Navigator and its powerful database.  Docket Navigator is a valuable resource, and the place to go if you want to keep track of new patent litigation filings or want to know what is happening in particular cases, how your judge has historically handled a particular type of motion, or…
Boston Scientific Neuromodulation Corp. v. Nevro Corp., Andrei Iancu (USPTO, intervenor) Docket No. 2019-1582, -1635 (IPR2017-01812, -01920) LOURIE, MOORE, O’MALLEY May 29, 2020 Non-precedential Brief Summary: Board IPR final written decisions finding certain of Boston’s claim unpatentable for obviousness and others patentable affirmed. Summary: Boston appealed Board IPR decision finding certain claims of US 6,895,280 relating to “[a] spinal cord stimulation system”, methods for using, and recharging a battery used in the same unpatentable as obvious. Nevro cross-appealed Board IPR decision that certain ‘280 method claims are not unpatentable as obvious. The FC panel first concluded that the Board’s findings…
ESIP Series 2, LLC v. Puzhen Life USA, LLC Docket No. 2019-1659 (IPR2019-02197) LOURIE, REYNA, HUGHES May 19, 2020 Brief Summary: Board IPR obviousness decision affirmed. Board’s real-party-in-interest determination not appealable under § 314(d). Summary: ESIP appealed Board IPR decision finding the claims of US 9,415,130 relating to systems and methods for “germicidal protection and aromatic diffusion in enclosed habitable spaces” (“[a] method for introducing a scent into breathable air”) invalid for obviousness in view of two different combinations of prior art (Sevy and Cronenberg, Sevy and Giroux). The Board determined that “Sevy discloses every element of the challenged claims…
Judges Wood & Pallmeyer issued a joint order requiring that everyone in public spaces of the Northern District and Seventh Circuit wear face masks or coverings. The order includes all public spaces including the lobby, elevators, restrooms, public corridors and also courtrooms, absent direction otherwise from the presiding judge. The mask must cover both the nose and the mouth. The only exception to this order is for people with documentation stating that they are unable to wear a mask or face covering for medical reasons.…
Cochlear Bone Anchored Solutions AB v. Oticon Medical AB, et al. Docket No. 2019-1105, -1106 (IPR2017-01018, -01019) NEWMAN, O’MALLEY, TARANTO May 15, 2020 Brief Summary: Board IPR obviousness findings affirmed, while its analysis of one means-plus-function claim vacated and remanded. The FC panel also emphasized that indefiniteness is not at issue in an IPR. Summary: Cochlear appealed Board IPR finding that Oticon proved claims 4-6 and 11-12 of US 7,043,040 directed to “bone-conducting bone-anchored hearing” aids unpatentable for obviousness. Oticon appealed the Board’s decision that claims 7-10 were not shown to be unpatentable. Cochlear disclaimed claims 1-3 and 13 during…
Yesterday, Tuesday, May 26, Chief Judge Pallmeyer entered a Fourth Amended General Order updating the first three (which extended all civil deadlines 28 days, an additional 21 days and 28 more days, for 77 total days) and further addressing the “Coronavirus COVID-19 public Emergency.” The fourth amended order did not grant any additional blanket extensions. The Court did suspend jury trials until after August 3, 2020. And, absent contrary directions from a specific judge, suspended courtesy copy requirements through July 15, 2020. Judges are free to hold hearings, bench trials and settlement conferences, although they should only be in-person…