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.

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

Polaris Innovations Limited v. USPTO

Docket No. 2019-1483 (IPR2017-01500), 2019-1484 (IPR2017-00901) (https://cafc.uscourts.gov/opinions-orders/19-1483.OPINION.9-15-2022_2004261.pdf)

PROST, CHEN, STOLL

September 15, 2022

Brief Summary:   Board denial of join request to dismiss IPRs following Arthrex II, claim construction (BRC as pre-Nov. 23, 2018), and invalidity decisions affirmed. Summary:  This decision relates to appeals of two PTAB (“Board”) IPR findings that NVIDIA shows Polaris’ US 6,532,505 and 7,405,993 relating to computer memory unpatentable.  The FC remanded the original decisions based on the Appointments Clause and its Anthrex (FC 2019, “Anthrex I”) decision that was subsequently vacated by SCOTUS (US 2021, “Anthrex II”). Between
Continue Reading Board denial of IPR dismissal after Arthrex II, claim construction, and invalidity decisions affirmed

SawStop Holding, LLC vs. USPTO

Docket No. 2021-1537, -2105 (https://cafc.uscourts.gov/opinions-orders/21-1537.OPINION.9-14-2022_2003622.pdf)

NEWMAN, LINN, CHEN

September 14, 2022

Brief Summary:   DC and USPTO decision not to grant patent term adjustments to SawStop’s patents affirmed (type C delay extensions).

Summary:  SawStop appealed DC grant of summary judgment (SJ) to the USPTO for denying SawStop any prosecution-related patent term adjustment (PTA) under the American Inventors Protection Act of 1999 to the term of US 9.552,476 and 9,927,796.  There PTA is based on three categories of prosecution delays:  (A) when the PTO fails in certain specified ways to timely respond to the applicant;
Continue Reading DC and USPTO decisions not to grant patent term adjustments to SawStop’s patents affirmed (type C delay extensions)

INVT SPE LLC v. Int. Trade Commission (ITC), HTC America, Inc. et al. (Intervenor)

Docket No. 2020-1903 (https://cafc.uscourts.gov/opinions-orders/20-1903.OPINION.8-31-2022_1997811.pdf)

NEWMAN, TARANTO, CHEN

August 31, 2022

Brief Summary:   ITC decision finding no infringement of functional computer claims affirmed; decision regarding expired patent dismissed. Summary:  INVT appealed ITC decision finding that HTC et al. did not violate 19 USC section 1337 (section 337) by importation and sale of smartphones, smart watches, and tablets due to failure “to meet the technical prong of the domestic industry requirement of” (ALJ decision not reviewed by the ITC) and non-infringement of five INVT patents, two
Continue Reading ITC decision of non-infringement of functional/capability-type computer claims affirmed; decision as to expired patent found moot

Best Medical Int., Inc. v. Elekta Inc.

Docket No. 2021-2099, -2100 (IPR2020-0070-72) (https://cafc.uscourts.gov/opinions-orders/21-2099.OPINION.8-26-2022_1996028.pdf)

HUGHES, LINN, STOLL

August 26, 2022

Brief Summary:   Board IPR obviousness decisions affirmed, appeal regarding canceled claim dismissed. Summary:  BMI appealed two IPR Board decisions finding the challenged claims of US 6,393,096 directed to methods and apparatus for radiation therapy of tumors based on the Board’s conclusion “that a person having ordinary skill in the art would have had formal computer programming experience” and discounting BMI’s expert testimony.  Two IPR petitions were filed by Varian Medical Systems and two “copycat petitions” were filed by
Continue Reading Board IPR obviousness decisions affirmed, appeal regarding canceled claim dismissed

In Re:  Jeffrey A. Killian

Docket No. 2021-2113 (https://cafc.uscourts.gov/opinions-orders/21-2113.OPINION.8-23-2022_1994643.pdf)

TARANTO, CLEVENGER, CHEN

August 23, 2022

Brief Summary:   Board decision finding claims ineligible under section 101 affirmed. Summary:  Mr. Killian appealed USPTO Board decision affirming the examiner’s rejection of certain claims of US Ser. No. 14/450,042 under 35 USC section 101 (Appeal No. 2020-003680, Feb. 1, 2021).  “The ‘042 application relates to a system and method “for determining eligibility for Social Security Disability Insurance [SSDI] benefits through a computer network” which includes obtaining information “from two sources: (1) a Federal Social Security database; and (2) a State database
Continue Reading Board decision finding ineligibility under section 101 affirmed (abstract idea, generic computer)

Par Pharmaceutical, Inc. et al. v. Eagle Pharmceuticals, Inc.

Docket No. 2021-2342 (https://cafc.uscourts.gov/opinions-orders/21-2342.OPINION.8-18-2022_1993064.pdf)

MOORE, PROST, HUGHES

August 18, 2022

Brief Summary:   DC finding of no infringement under 271(e)(2) affirmed based on Eagle’s ANDA specification to which Eagle is bound, and its denial of DJ affirmed. Summary:  Par appealed DC finding that Eagle’s ANDA regarding Par’s Vasostrict® product (a vasopressin injection product used to treat patients with critically low blood pressure) does not infringe the claims of US 9,744,209 or 9,750,785 under 35 USC section 271(e)(2).  Eagle’s ANDA was filed before the ‘209 and ‘785 patents expired, and
Continue Reading DC decision of no infringement by Eagle’s ANDA specification and denial of DJ affirmed

LSI Corporation and Avago Techs. U.S. Inc. v. Regents of the University of Minnesota

Docket No. 2021-2057 (IPR2017-01068) (https://cafc.uscourts.gov/opinions-orders/21-2057.OPINION.8-11-2022_1990664.pdf)

DYK, REYNA, HUGHES

August 11, 2022

Brief Summary:   Board decision that LSI did not timely raise arguments or show portions of prior art patent relied upon was “by another” affirmed.

Summary:  UMN sued LSI and Avago (“LSI”) for infringement of US 5,859,601 and LSI petitioned the USPTO (“Board”) for IPR of the ‘601 patent naming inventors J. Moon and B. Brickner relating to computer storage devices using maximum transition run (“MTR”) coding.  The Board instituted IPR of claims
Continue Reading Board IPR decision of no anticipation affirmed (untimely arguments, portions of prior art relied upon not “by another”)

Hologic, Inc., et al. v. Minerva Surgical, Inc.

Docket No. 2019-2054, -2081 (https://cafc.uscourts.gov/opinions-orders/19-2054.OPINION.8-11-2022_1990706.pdf)

STOLL, CLEVENGER, WALLACH

August 11, 2022

Brief Summary:   On remand from SCOTUS, assignor estoppel decision affirmed as asserted claim not broader than assigned claim. Summary:  This case is on remand from SCOTUS which vacated the FC’s prior judgment affirming the DC’s grant of summary judgment (SJ) of no invalidity of claim 1 of US 9,095,348 to Hologic based on the doctrine of assignor estoppel, which precludes an assignor from challenging the validity of an assigned patent.  Here, the FC was required to “determine whether claim
Continue Reading Assigned claim not broader than asserted claim, DC assignor estoppel decision affirmed

Stephen Thaler v. Vidal/USPTO

Docket No. 2021-2347 (https://cafc.uscourts.gov/opinions-orders/21-2347.OPINION.8-5-2022_1988142.pdf)

MOORE, TARANTO, STARK

August 5, 2022

Brief Summary:   FC panel affirms ED VA and USPTO findings that only human beings and not computers (i.e., artificial intelligence) can be inventors under the Patent Act.

Summary:  Stephen Thaler appealed USPTO and DC denials of his patent applications “which failed to list any human as an inventor” because “the Patent Act defines ‘inventor’ as limited to natural persons; that is, human beings.”  The ED VA agreed with the USPTO, and Mr. Thaler appealed to the FC.  In the patent applications to a
Continue Reading Artificial intelligence cannot be an inventor under the Patent Act, Fed. Cir. holds

TalexMedical, LLC v. Becon Medical Limited, et al.

Docket No. 2021-2069-70, 2021-2109-10 (IPR2020-0028, -00030) (https://cafc.uscourts.gov/opinions-orders/21-2069.OPINION.7-22-2022_1981627.pdf) (Non-Precedential)

LOURIE, SCHALL, REYNA

July 22, 2022

Brief Summary:   Board IPR obviousness decision vacated-in-part and remanded due to incorrect claim construction. Summary:  TalexMedical appealed two USPTO (“Board”) IPR decisions holding claims 4-7 of US 8,167,942 and claim 16 of US 8,853,277 (both Becon patents) relating to “correcting misshaped ears using a molding device” not unpatentable for obviousness.  Becon cross-appealed decisions of holding claims 1-3 and 9 of the ‘942 patent and claims 1-2 and 9-10 of the ‘277 patent invalid for obviousness. 
Continue Reading Board IPR obviousness decision vacated-in-part and remanded due to incorrect claim construction

Koninklijke Philips N.V. et al. v. Thales DIS AIS USA LLC, et al.

Docket No. 2021-2106 (https://cafc.uscourts.gov/opinions-orders/21-2106.OPINION.7-13-2022_1977322.pdf)

MOORE, DYK, CHEN

July 13, 2022

Brief Summary:   DC denial of Thales motion to enjoin Philips from seeking ITC exclusion order affirmed as Thales “failed to show it is likely to suffer irreparable harm”. Summary:  Thales appealed DC denial of Koninklijke Philips’ (Philips’) motion for a preliminary injunction enjoining Philips from seeking an exclusion order from the ITC.  The parties design and manufacture wireless communications equipment and had “been engaged in negotiations over what Philips asserts are standard essential patents (SEPs)
Continue Reading DC denial of Thales’ motion to enjoin Philips’ ITC exclusion order as Thales did not show it was likely to suffer irreparable harm affirmed

Ethanol Boosting System, LLC (MIT) v. Ford Motor Company

Docket No. 2021-1949 (https://cafc.uscourts.gov/opinions-orders/21-1949.OPINION.7-18-2022_1979137.pdf) (Non-precedential)

MOORE, NEWMAN (D), HUGHES

July 18, 2022

Brief Summary:   DC grant of SJ vacated and remanded due faulty claim construction. Summary: EBS appealed DC order granting summary judgment (SJ) of non-infringement of the asserted patents (US 9,708,965; 10,619,580; and 10,781,760) related to fuel management systems to Ford.  That patents related to controlling engine knock by injecting an anti-knock agent (a fuel) directly into a combustion chamber.  Representative claim 1 recites a “fuel management system…comprising:  a first fueling system that uses direct injection; [and] a
Continue Reading DC grant of SJ to Ford vacated and remanded for erroneous claim construction

CareDx, Inc. (Stanford Univ.) v. Natera, Inc. and Eurofins Viracor, Inc.

Docket Nos. 2022-1027-8 (https://cafc.uscourts.gov/opinions-orders/22-1027.OPINION.7-18-2022_1979207.pdf)

LOURIE, BRYSON, HUGHES

July 18, 2022

Brief Summary:   Stanford’s claims to detecting organ rejection found ineligible under section 101 (e.g., “applying standard techniques in a standard way to observe natural phenomena does not provide an inventive concept”).

Summary:  Stanford (with CareDx as exclusive licensee) appealed DC summary judgment (SJ) decision finding its US 8,703,652; 9,845,497; and 10,329,607 directed to method for detecting transplant rejection or organ failure by measuring an increase in donor DNA (“cfDNA”) in a patient’s biological sample using high
Continue Reading DC finding of Stanford’s organ rejection detection claims ineligible under section 101 affirmed

Tris Pharma, Inc. v. Actavis Laboratories FL, Inc.

Docket No. 2021-1495 (https://cafc.uscourts.gov/opinions-orders/21-1495.OPINION.7-7-2022_1974736.pdf) (Non-precedential)

MOORE, CHEN, HUGHES

July 7, 2022

Brief Summary:   DC decision following remand finding Actavis did not show Tris’ claims obvious affirmed (e.g., “unexpected result”, long-felt unmet need). Summary:  Actavis appealed new DC decision (Remand Decision) following remand from a FC 2018 decision (Tris I) vacating a 2017 DC decision for failing “to make the necessary factual findings and provide sufficient analysis of the parties’ arguments to permit effective appellate review” and inviting it “to reconsider all the evidence of objective indicia in its overall
Continue Reading DC finding Actavis did not show Tris’ liquid formulation/blood concentration claims obvious affirmed

Meenaxi Enterprise, Inc. v. Coca-Cola Company

Docket No. 2021-2209 (https://cafc.uscourts.gov/opinions-orders/21-2209.OPINION.6-29-2022_1971328.pdf)

DYK, REYNA (C), STOLL

June 29, 2022

Brief Summary:   TTAB cancellation Meenaxi’s soda-related marks reversed.

Summary:  Meenaxi appealed TTAB (“Board”) decision in Coca-Cola’s favor regarding Meenaxi’s Thums Up cola and Limca lemon-lime soda that it has sold in the US since 2008 and registered as trademarks in the US in 2012 (cancelled with the Board’s decision).  Coca-Cola brought cancellation proceedings against Meenaxi under section 14(3) of the Lanham Act, arguing that “Meenaxi was using the marks to misrepresent the source of its goods.”   This opinion explains that Coca-Cola
Continue Reading TTAB decision to cancel soda-related marks as requested by Coca-Cola reversed

Univ. of Massachusetts, Carmel Labs., LLC v. L’Oreal S.A. and L’Oreal USA, Inc.

Docket No. 2020-1969 (https://cafc.uscourts.gov/opinions-orders/21-1969.OPINION.6-13-2022_1964183.pdf)

PROST, MAYER, TARANTO

June 13, 2022

Brief Summary:   DC indefiniteness finding vacated due to improper claim construction and grant of SJ for lack of jurisdiction over Loreal S.A. reversed.

Summary:  UMass appealed DC finding of invalidity for indefiniteness of US 6,423,327 and US 6,645,513 (parent and child) directed to methods for “topically applying to the skin a composition comprising a composition of adenosine in an amount effective to enhance the condition of the skin without increasing dermal cell proliferation, wherein
Continue Reading DC indefiniteness conclusion vacated for incorrect claim construction, grant of SJ regarding jurisdiction vacated