Patrick J. Halloran, Ph.D., J.D.

Pat is a member of the American Bar Association, the American Intellectual Property Law Association, the American Chemical Society, the Federal Circuit Bar Association, the Illinois State Bar Association, and the Licensing Executives Society.

Patrick J. Halloran, Ph.D., J.D. Blogs

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Latest from Patrick J. Halloran, Ph.D., J.D.

Sunoco Partners Marketing & Terminals, L.P. v. U.S. Venture, Inc. et al. (“Venture”)

Docket No. 2020-1640, -1641 (https://cafc.uscourts.gov/opinions-orders/20-1640.OPINION.4-29-2022_1943607.pdf)

PROST, REYNA, STOLL

April 29, 2022

Brief Summary:  DC denial of on-sale bar defense reversed; claim construction affirmed; grant of enhanced damages reversed based on attorney opinion; reasonably royalty affirmed.

Summary: Venture appealed DC’s “(I) rejection of its on-sale-bar defense, (II) determination that it infringed two patents…since held invalid, (III) construction of two claim terms, and (IV) decision to enhance damages” relating to butane-blending systems for production of gasoline    Sunoco cross-appealed regarding the denial of lost-profit damages and the award of
Continue Reading DC denial of on-sale bar defense reversed; claim construction affirmed; grant of enhanced damages reversed based on attorney opinion; reasonably royalty affirmed

Auris Health, Inc. v. Intuitive Surgical Operations, Inc.

Docket No. 2021-1732 (IPR2019-1533) (https://cafc.uscourts.gov/opinions-orders/21-1732.OPINION.4-29-2022_1943629.pdf)

DYK, PROST, REYNA (D)

April 29, 2022

Brief Summary:   IPR finding of no obviousness reversed and remanded as industry skepticism was too general and not specific to the actual combination.

Summary:  Auris appealed PTAB (“Board”) IPR final written decision (FWD) that it did not show the claims of Intuitive’s US 8,142,447 relating to robotic surgery systems unpatentable as obvious.  The Board determined that the asserted prior art (Smith and Faraz) disclose each limitation of the challenged claims, with the only remaining issue was whether
Continue Reading IPR finding of no obviousness reversed as “generic industry skepticism cannot, standing alone, preclude a finding of motivation to combine”

Apple, Inc. v. Zipit Wireless, Inc.

Docket No. 2021-1760 (https://cafc.uscourts.gov/opinions-orders/21-1760.OPINION.4-18-2022_1937645.pdf)

HUGHES, MAYER, STOLL

April 18, 2022

Brief Summary:   DC dismissal of Apple’s DJ action based on a lack of personal jurisdiction reversed and remanded.

Summary:  Apple appealed Northern District (ND) of CA DC dismissal of its request for a declaratory judgment (DJ) of noninfringement against Zipit wireless (a DE corporation with a principal place of business in Greenville, SC) for lack of personal jurisdiction (PJ) (unreasonable based on the nature of Zipit’s communications with Apple in the ND).  The FC panel found the DC erroneously “read our
Continue Reading DC dismissal of Apple’s complaint for lack of personal jurisdiction over Zipit reversed and remanded

Amgen Inc. et al. v. USPTO (Intervenor)

Docket No. 2019-2171 (IPR2016-01542) (https://cafc.uscourts.gov/opinions-orders/19-2171.OPINION.4-14-2022_1936036.pdf) (Non-Precedential)

CHEN, SCHALL, STOLL

April 14, 2022

Brief Summary:   Board IPR obviousness decision reversed due to erroneous claim construction (“[a] straightforward reading of the claim language”, “the only conclusion supported by substantial evidence”).

Summary:  Amgen appealed USPTO Board Final Written Decision (FWD) finding claims 1-124 of US 8,952,138 relating to methods for producing recombinant proteins unpatentable for obviousness that turned on the Board’s claim construction of the term “final thiol-pair ratio”.  The FC panel opinion explains that the ‘138 patent provides methods for avoiding recombinant protein
Continue Reading Board IPR obviousness decision reversed due to erroneous claim construction

Niazi Licensing Corporation v. St. Jude Medical S.C., Inc.

Docket No. 2021-1864 (https://cafc.uscourts.gov/opinions-orders/21-1864.OPINION.4-11-2022_1934126.pdf)

TARANTO, BRYSON, STOLL

April 11, 2022

Brief Summary:   DC findings of indefiniteness reversed, but induced infringement, exclusion of expert witness report and damages findings affirmed.

Summary:  Niazi appealed DC indefiniteness finding of all but one claim of US 6,638,268 relating to cardiac cathers and no induced infringement of that one claim, the DC’s sanction excluding portions of Niazi’s technical and damages expert reports in part for being unreliable.  The DC found the claim terms “resilient” and “pliable” in all of the claims except method
Continue Reading DC grant of SJ reversed and remanded due to improper finding of indefiniteness

Genuine Enabling Technology LLC v. Nintendo Co. et al.

Docket No. 2021-2167 (https://cafc.uscourts.gov/opinions-orders/20-2167.OPINION.4-1-2022_1930021.pdf)

NEWMAN, REYNA, STOLL

April 1, 2022

Brief Summary:   DC grant of summary judgment reversed as FC panel found claim construction errors. Summary:  Genuine sued Nintendo for infringement US 6,219,730 directed to combining computer data streams (e.g., a “voice mouse” as a new kind of “user input device” (“UID”)).  The apparatus of representative claim 1 includes an “input means for producing the at least one input signal” which the DC construed to mean “a signal having an audio or higher frequency”.  During prosecution, the inventor argued
Continue Reading DC grant of SJ reversed as based on improper claim construction (no clear PHE)

Surgalign Spine Technologies, Inc. et al. v. LifeNet Health

Docket No. 2021-1117-18, -1236 (IPR2019-00569, -00570) (https://cafc.uscourts.gov/opinions-orders/21-1117.OPINION.4-11-2022_1934157.pdf) (Non-Precedential)

NEWMAN (D), SCHALL, PROST

April 11, 2022

Brief Summary:   IPR obviousness decision reversed, claim construction affirmed, other no obviousness decision affirmed.

Summary:  Surgalign appealed USPTO (“Board”) IPR decision finding it failed to prove the invalidity of certain of LifeNet’s claims, and LifeNet cross-appealed the determination that others were proven unpatentable.  The patents at issue are US 8,182,532 and US 6,458,158 have “substantially identical specifications” and relating to composite bone grafts for use in spinal fusion.  “Pertinent to Surgalign’s appeal, independent claim
Continue Reading IPR obviousness decision reversed, another affirmed along with claim construction decisions

Roche Diagnostics Corp., Bioveris Corp. v. Meso Scale Diagnostics, LLC

Docket No. 2021-1609, -1633 (https://cafc.uscourts.gov/opinions-orders/21-1609.OPINION.4-8-2022_1933410.pdf)

NEWMAN (D), PROST, TARANTO

April 8, 2022

Brief Summary:   DC findings of induced infringement of patents asserted by Meso and non-infringement of non-asserted patents as requested by Roche vacated and remanded.  Judge Newman’s dissent argued, e.g., “Roche cannot infringe patents it owns”.

Summary:  Roche and Bioveris (Roche) appealed final DC decision that Roche infringed Meso’s exclusive license rights and award of damages.  Meso cross-appealed the DC’s non-infringement decision regarding three other patents that were not asserted against Roche. The patents relate to
Continue Reading DC decisions of induced infringement of patent asserted by Meso and non-infringement of non-asserted patents as requested by Roche vacated and remanded

Dyfan, LLC v. Target Corporation

Docket No. 2021-1725 (https://cafc.uscourts.gov/opinions-orders/21-1725.OPINION.3-24-2022_1926111.pdf)

LOURIE, DYK, STOLL

March 24, 2022

Brief Summary:   DC finding of invalid means-plus-function claims reversed and remanded as meaning of “code” and “application” would be understood by skilled artisans and claim included sufficient structure for “system”. Summary:  Dyfan appealed DC final judgment of invalidity of US 9,973,899 and 10,194,292 related to systems for communications systems “that provides users with information tailored to their particular interests or needs based on their presence within a specified location” (e.g., a shopping mall).  Target successfully argued to the DC that, although the
Continue Reading DC finding of means-plus-function invalidity of computer-related claims reversed

Immunogen, Inc. v. USPTO

Docket No. 2021-1939 (https://cafc.uscourts.gov/opinions-orders/21-1939.OPINION.3-25-2022_1926731.pdf) (Non-precedential)

NEWMAN, CLEVENGER, STOLL

March 25, 2022

Brief Summary:   DC grant of SJ that Immunogen’s pending claims are indefinite and obvious vacated and remanded as factual findings not undisputed.

Summary:  Immunogen appealed DC finding on summary judgment that the claims of its ‘809 patent application (‘809 Application) to methods of administering the anti-folate receptor immunoconjugate mirvetuximab for cancer are “fatally indefinite and fatally obvious”.  The DC’s determination followed the USPTO Board affirmance of the examiner’s rejection of the pending claims for obviousness and obviousness-type double patenting.  The claims require administration
Continue Reading DC grant of SJ for indefiniteness and obviousness of Immunogen’s claims vacated and remanded

BASF Plant Science, L.P., Cargill, Inc. v. Commonwealth Scientific, et al. (“CSIRO”)

Docket No. 2020-1415-16, 2020-1919-20 (https://cafc.uscourts.gov/opinions-orders/20-1415.OPINION.3-15-2022_1921729.pdf)

NEWMNA (D), TARANTO, CHEN

March 15, 2022

Brief Summary:   Following a dispute regarding a collaboration agreement, FC panel affirmed DC fining on venue and WD of species but not genus claims, affirmed no co-ownership of certain patents but reversed as to co-ownership of one patent, and affirmed as to no willfulness but remanded for damages calculation.

Summary:  BASF and Cargill appealed the jury verdict that certain of CSIRO’s patents include an adequate written description (WD) and no co-ownership by BASF
Continue Reading DC reversed on WD of genus claims and patent co-ownership, affirmed on no willfulness and remanded for damages calculation

Almirall, LLC v. Amneal Pharmaceuticals LLC et al. (USPTO as Intervenor)

Docket No. 2020-2331 (IPR2019-00207, -01095 (https://cafc.uscourts.gov/opinions-orders/20-2331.OPINION.3-14-2022_1920940.pdf)

LOURIE, CHEN, CUNNINGHAM

March 14, 2022

Brief Summary:  Board IPR FWD finding Almirall’s method of treatment claims obvious affirmed (e.g., “overlapping ranges”, negative limitation need not be disclosed by prior art).

Summary:  Almirall appealed PTAB (“Board”) final written decision (FWD) holding claims 1-8 of US 9,517,219 directed to methods for using daposone formulations to treat dermatological conditions (e.g., acne, rosacea using 2-6% “of a polymeric viscosity builder” and not comprising adapalene”) would have been obvious over the combination of two PCT
Continue Reading Board IPR obviousness finding affirmed (e.g., “overlapping ranges”, negative limitation need not be disclosed by prior art)

Hoyt Augustus Fleming v. Cirrus Design Corporation

Docket No. 2021-1561 (IPR2019-01566) (https://cafc.uscourts.gov/opinions-orders/21-1561.OPINION.3-10-2022_1919730.pdf)

LOURIE, HUGHES, STOLL

March 10, 2022

Brief Summary:  PTAB IPR FWD finding parachute systems claims obvious and denial of entry of amended claims for lacking written description affirmed.

Summary:  Mr. Fleming appeal PTAB IPR final written decision (FWD) that the challenged claims of US RE47,474 relating to ballistic parachute systems on aircraft.  The PTAB’s denial of his motion to amend the claims for lack of written description (WD) support and indefiniteness was also appealed.  The FC panel opinion explains that the ‘474 patent is directed to
Continue Reading IPR decision finding obviousness and denying entry of amended claims for lack of written description affirmed

Biogen International GmbH et al. v. Mylan Pharmaceuticals Inc.

Docket No. 2020-1933 (https://cafc.uscourts.gov/opinions-orders/20-1933.OPINION.11-30-2021_1871902.pdf)

O’MALLEY (dissent), REYNA, HUGHES

November 30, 2021 (update March 16, 2022)

Update (March 16, 2022):  Biogen’s petition for rehearing en banc was denied.  Judges Lourie, Moore and Newman (who previously dissented) dissented.  The dissent reviewed cases in which has found a lack of written description including, e.g., Regents of Univ. Cal. (FC 1997; “described only rat insulin-encoding cDNA but the claimed microorganism encompassed human insulin-encoding CDNA”), Gentry Gallery (FC 1998; “specification identified only one possible location for controls on a reclining sofa but the claim
Continue Reading Biogen’s petition for rehearing en banc denied, panel decision affirmed DC decision that single mention of dose at lower end of range is insufficient written description

Alarm.com Incorporated v. USPTO

Docket No. 2021-2102 (https://cafc.uscourts.gov/opinions-orders/21-2102.OPINION.2-24-2022_1913344.pdf)

TARANTO, CHEN, CUNNINGHAM

February 24, 2021

Brief Summary:  DC decision dismissing Alarm.com’s ex parte reexamination requests following IPR FWDs of the same claims reversed and remanded as PTO did not decide “whether the requests presented a ‘substantial new question of patentability’”. Summary:  In 2015, Alarm.com filed IPRs against three Vivint patents (6,147,601; 6,462,654; and 6,535,123) that each resulted in final written decisions (FWDs) in 2017 rejecting the challenges to some claims that were each affirmed by the FC in 2018.  In mid-2020, Alarm.com filed three requests for ex parte reexamination
Continue Reading DC dismissal of Alarm.com’s reexamination requests following IPR FWDs reversed as PTO did not decide “whether the requests presented a ‘substantial new question of patentability’”

Nippon Sinyaku Co., Ltd. v. Sarepta Therapeutics, Inc.

Docket No. 2021-2369 (https://cafc.uscourts.gov/opinions-orders/21-2369.OPINION.2-8-2022_1904898.pdf)

NEWMAN, LOURIE, STOLL

February 8, 2021

Brief Summary:  DC denial of preliminary injunction against Sarepta’s IPR filings reversed.

Summary:  Nippon appealed from DC DE decision denying its motion for a preliminary injunction regarding a Mutual Confidentiality Agreement (MCA).   The purpose of the MCA “was for the parties ‘to enter into discussions concerning the Proposed Transaction,’ which the MCA defined as ‘a potential business relationship relating to therapies for the treatment of Duchenne Muscular Dystrophy.’”  The parties agreed “that during the Covenant Term [“twenty (20) days after
Continue Reading DC denial of preliminary injunction reversed as Sarepta’s IPR filings violated forum selection clause