Grace Instrument Industries, LLC v. Chandler Instruments Co., LLC and Ametek, Inc.

Docket No. 2021-2370 (https://cafc.uscourts.gov/opinions-orders/21-2370.OPINION.1-12-2023_2062188.pdf)

CHEN, CUNNINGHAM, STARK

January 12, 2023

Brief Summary:   DC indefiniteness determination of “enlarged chamber” vacated and remanded while construction of “means for driving” a rotor limitation affirmed.

Summary:  Grace appealed a DC claim construction order the found the term “enlarged chamber” indefinite and its construction of “means for driving said rotor to rotate located in at least one bottom section” of US 7,412,877 relating to pressurized devices and viscometers for oil well drilling rigs.  As a result of the DC findings,…
Continue Reading DC indefiniteness finding vacated and remanded, while “means”-related claim construction finding affirmed, each based on the intrinsic evidence

Personalized Media Communications, LLC v. Apple Inc.

Docket No. 2021-2275 (https://cafc.uscourts.gov/opinions-orders/21-2275.OPINION.1-20-2023_2066571.pdf)

REYNA, CHEN, STARK

January 20, 2023

Brief Summary:   DC decision of prosecution laches (unreasonable and inexcusable delay by PMC and prejudice to Apple) affirmed.

Summary:  Personalized Media Communications (“PMC”) appealed DC finding that US 8,191,091 is unenforceable based on prosecution laches (“an equitable affirmative defense dating back to the early 1900s”), finding PMC “successfully employed an inequitable scheme to extend its patent rights.”  PMC alleged that Apple’s FairPlay digital rights management software that uses decryption keys to prevent copying songs from iTunes.  The DC jury initially…
Continue Reading DC prosecution laches finding affirmed (unreasonable and inexcusable delay by PMC and prejudice to Apple)

Novartis Pharm. Corp. v. Accord Healthcare, et al. and HEC
Pharm Co., Ltd. et al.
Docket No. 2021-1070 (https://cafc.uscourts.gov/opinions-orders/21-1070.OPINION.1-3-2022_1887614.pdf)
MOORE (D), LINN, O’MALLEY
January 24, 2022
Second Update (January 24, 2023): Novartis petitioned SCOTUS with two questions presented:  1) Whether 28 U.S.C. § 46 and principles of sound judicial administration preclude a court of appeals from adding a new judge to form a new panel and redecide a case after an original three-judge panel has already decided the case and entered its judgment; and, 2)  Whether 35 U.S.C. § 112 should be interpreted consistent with its plain text…
Continue Reading Novartis appeals to SCOTUS rehearing of FC panel decision reversing negative limitation written description finding of prior FC panel

Genentech, Inc., Intermune, Inc. v. Sandoz Inc., LEK Pharmaceuticals, D.D.

Docket No. 2022-1595 (https://cafc.uscourts.gov/opinions-orders/22-1595.OPINION.12-22-2022_2052253.pdf)

NEWMAN, LOURIE, PROST

December 22, 2022

Brief Summary:   DC findings that Genetech’s disputed Esbriet® patents are invalid for obviousness and not infringed by Sandoz’s ANDA affirmed.

Summary:  Genentech (“GT”) appealed DC decision holding that: (1) GT’s Liver Function Test (“LFT”) claims are invalid for obviousness (US 7,566,729; 7,635,707; 8,592,462; and 8,609,701) (2) “Sandoz’s” generic product sales would not induce infringement of the LFT patents, and (3) Sandoz’s generic product sales would not directly infringe GT’s Drug-Drug Interaction (“DDI”) patents (US 7,816,383 and 8,013,002…
Continue Reading FC panel affirms DC obviousness and non-infringement findings regarding Genentech’s Esbriet® patents

P Tech, LLC v. Intuitive Surgical, Inc.

Docket No. 2022-1102, -1115 (IPR-2020-00649-50) (https://cafc.uscourts.gov/opinions-orders/22-1102.OPINION.12-15-2022_2048477.pdf) (Non-Precedential)

LOURIE, DYK, CUNNINGHAM

December 15, 2022

Brief Summary:   Board IPR decisions of obviousness of P Tech’s robotic surgical instrument claims affirmed. Summary:  P Tech appealed two IPR final written decisions (FWDs) finding claims 1 and 4 of US 9,192,395 and claims 1-20 of US 9,149,281 directed to robotic tissue fastening systems unpatentable for obviousness.  This opinion explained that “[t]he differences between these claims have not been argued as significant to this appeal” and “[t]herefore, they all stand or fall together.”  The ‘281 patent…
Continue Reading FC panel affirms Board IPR decisions finding P Tech’s robotic surgical instrument claims obvious

Arius Two, Inc., Biodelivery Sci. Int., Inc. v. Alvogen PB Res. & Develop. LLC, et al.

Docket No. 2022-1394, -1449 (https://cafc.uscourts.gov/opinions-orders/22-1394.OPINION.12-21-2022_2051391.pdf) (Non-Precedential)

CHEN, CLEVENGER, CUNNINGHAM

December 21, 2022

Brief Summary:   DC obviousness findings for two patents affirmed; obviousness of certain claims vacated as DC applied “clear and convincing” to secondary considerations while only “preponderance of the evidence” standard required.

Summary:  This Hatch-Waxman case involves US 8,147,866; 9,655,843; and 9,901,539 regarding a bi-layer film containing a bioerodable mucoadhesive (BEMA) layer comprising  buprenorphine and a backing layer between the BEMA layer and the oral cavity.  BDSI sued Alvogen with…
Continue Reading DC findings of obviousness of certain claims affirmed and others vacated based on secondary considerations

SoClean, Inc. v. Sunset Healthcare Solutions, Inc.

Docket No. 2021-2311 (https://cafc.uscourts.gov/opinions-orders/21-2311.OPINION.11-9-2022_2031039.pdf)

NEWMAN, LOURIE, PROST

November 9, 2022

Brief Summary:   DC grant of injunctive relief to SoClean regarding its trade dress registration affirmed. Summary:  Sunset appealed DC order granting a “narrow” preliminary injunctive (PI) relief to SoClean relating to its trade dress registration (the ‘195 registration).  The DC concluded that “that SoClean’s request to enjoin all sales of Sunset’s filters would “go[] much further than necessary” to ‘end any possible statutory violation’” and required “Sunset to clearly associate its online marketing and sales . . . with the…
Continue Reading DC preliminary injunction regarding trademark / trade dress registration affirmed

Pharmacyclics LLC, Jannsen Biotech, Inc. v. Alvogen, Inc., Natco Pharma Limited

Docket No. 2021-2270 (https://cafc.uscourts.gov/opinions-orders/21-2270.OPINION.11-15-2022_2033497.pdf) (Non-Precedential)

CHEN, BRYSON, HUGHES

November 15, 2022

Brief Summary:   DC decisions that Pharmacyclic’s patents were infringed and not invalid for lack of written description, enablement, obviousness, or obviousness-type double patenting affirmed.

Summary:  Pharmacyclics and Jannsen (“Pharmacyclics”) appealed DC finding that Alvogen and Natco’s (“Alvogen’s”) ANDA to market a generic version of Pharmacyclic’s Bruton’s tyrosine kinase (BTK) inhibitor Imbruvica (ibrutinib) for cancer treatment infringed several Pharmacyclic patents.  Pharmacyclic originally asserted many claims of 17 of its patents, but during the DC trial reduced…
Continue Reading DC decision of infringement and no invalidity of Pharmacyclic’s BTK inhibitor-related patents affirmed

CUPP Computer AS v. Trend Micro Inc. (USPTO as Intervenor)

Docket No. 2020-2262-4 (IPR2-19-00764, -00765, -00767 (https://cafc.uscourts.gov/opinions-orders/20-2262.OPINION.11-16-2022_2034079.pdf)

DYK, TARANTO, STARK

November 16, 2022

Brief Summary:   Board claim construction and obviousness findings affirmed.  FC panel explains that “a disclaimer in an IPR proceeding is binding in later proceedings, whether before the PTO or in court” but not “in the very IPR proceeding in which it is made”.

Summary:  CUPP appealed three IPR decision finding Trend Micro (TM) had shown the challenged claims of CUPP’s US 8,631,488; 9,106,683; and 9,843,595 (all pre-AIA) relating to methods for waking a mobile…
Continue Reading Board IPR claim construction and obviousness conclusions affirmed, disclaimer made during IPR not binding “in the very IPR proceeding in which it is made”

Juno Therapeutics, Inc., Sloan Kettering v. Kite Pharma, Inc.

Docket No. 2020-1758 (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1758.OPINION.8-26-2021_1825257.pdf)

MOORE, PROST, O’MALLEY

August 26, 2021 (updated November 9, 2022)

Update (Nov. 9, 2022):  SCOTUS denied Juno’s petition for certiorari (21-1566).  As summarized below, the FC reversed the DC’s original finding that Juno’s ‘190 patent provided sufficient written description (WD), the FC panel concluding “[t]he target” of the scFV “can be any target of clinical interest to which it would be desirable to induce a T cell response” (in the FC panel’s words “any scFv for binding any target”) and that the ‘190 WD “fails…
Continue Reading SCOTUS denies Juno’s petition for certiorari regarding written description

Finjan LLC v. ESET, LLC, ESET SPOL. S.R.O.

Docket No. 2021-2093 (https://cafc.uscourts.gov/opinions-orders/21-2093.OPINION.11-1-2022_2027205.pdf)

PROST, REYNA, TARANTO

November 1, 2022

Brief Summary:   DC grant of SJ of invalidity for indefiniteness based on claim construction relating to incorporation-by-reference reversed. Summary:  Finjan appealed DC grant of summary judgment (SJ) of invalidity for indefiniteness based on its construction of the claim term “Downloadable’…to be restricted to ‘small’ executable or interpretable application programs based on the definition of ‘Downloadable’ provided by a patent in the same family that was incorporated by reference into the asserted patents” (US 6,154,844; 6,804,780; 8,079,086; and 9,186,621 (all…
Continue Reading DC claim construction based on definition incorporated-by-reference reversed