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.

Luv N’ Care, Ltd., Nouri E. Hakim v. Lindsey Laurain, Eazy-PZ, LLC

Docket No. 2022-1905, -1970 (https://cafc.uscourts.gov/opinions-orders/22-1905.OPINION.4-12-2024_2300689.pdf)

REYNA, HUGHES, STARK

April 12, 2024

Brief Summary:  DC grant of LNC’s unclean hands defense affirmed; DC findings of no obviousness or inequitable conduct vacated and remanded.

Summary:   EZPZ appealed DC judgment against it for “unclean hands”, which the FC panel affirmed here.  LNC appealed DC judgment for EZPZ of no inequitable conduct (IE), which the FC panel vacated and remanded here.  The FC panel also vacated the DC’s grant of partial summary judgment (SJ) of invalidity for obviousness and order
Continue Reading LNC’s unclean hands defense affirmed; no obviousness or inequitable conduct findings vacated and remanded

Edwards Life Sciences Corp. et al. v. Meril Life Sciences PVT. LTD. et al.

Docket No. 2022-1877 (https://cafc.uscourts.gov/opinions-orders/22-1877.OPINION.3-25-2024_2290338.pdf)

LOURIE, STOLL, CUNNINGHAM

March 25, 2024

Brief Summary:  DC grant of SJ to Meril based on determination of 271(e)(1) safe harbor affirmed. Summary:   Edwards appealed DC grant of summary judgment (SJ) finding “Meril’s act of importation of the two transcatheter heart valve systems fell within the safe harbor provision of 35 U.S.C. § 271(e)(1).” Meril is an India-based company that started clinical trials for its system (“Myval”) in India in October 2018 and was approved for sale in the European
Continue Reading DC grant of SJ based on determination of 271(e)(1) safe harbor affirmed

Virtek International ULC v. Assembly Guidance Systems, Inc., DBA Aligned Vision

Docket No. 2022-1998, -2022 (IPR2021-00062) (https://cafc.uscourts.gov/opinions-orders/22-1998.OPINION.3-27-2024_2292085.pdf)

MOORE, HUGHES, STARK

March 27, 2024

Brief Summary:  IPR obviousness finding reversed due to no motivation to combine; IPR non-obviousness finding affirmed as substantial evidence supported conclusion of no motivation to combine.

Summary:   Virtek appealed USPTO Board IPR holding that certain claims of Virtek’s US 10,052,734 directed to a “method for aligning a laser projector with respect to a work surface” to be invalid for obviousness.  ­­­Aligned Vision (AV) appealed the finding it did not show certain claims to be invalid
Continue Reading IPR obviousness finding reversed for no motivation to combine affirmed

Janssen Pharmaceuticals, Inc. et al. v. Teva Pharmaceuticals USA, Inc., Mylan Labs. Ltd.

Docket No. 2022-1258, -1307 (https://cafc.uscourts.gov/opinions-orders/22-1258.OPINION.4-1-2024_2293991.pdf)

DYK, PROST, HUGHES

April 1, 2024

Brief Summary:  DC obviousness decision vacated and remanded; no indefiniteness finding affirmed. Summary:   Teva appealed DC bench trial decision that it had not proved the obviousness of the asserted claims of Janssens’ Orange Book (OB) US 9,439,906 relating to an extended-release intramuscular injectable paliperidone palmitate (PP) for treating schizophrenia (sold as Invega Sustenna).  The ‘906 patent claims “[a] dosing regimen…comprising” intramuscular (im) administration of “about 150 mg-eq sustained release PP “in the deltoid” on
Continue Reading DC analysis improper to support finding Teva did not show obviousness of Janssen’s schizophrenia drug OB claims

Chewy, Inc. v. International Business Machines Corp.(IBM)

Docket No. 2022-1756 (https://cafc.uscourts.gov/opinions-orders/22-1756.OPINION.3-5-2024_2280474.pdf)

MOORE, STOLL, CUNNINGHAM

March 5, 2024

Brief Summary:  DC finding of noninfringment partially affirmed; ineligibility under 101 affirmed.

Summary:   IBM appealed DC grant of summary judgment (SJ) of noninfringement of certain claims of US 7,072,849 and its 35 USC 101 ineligibility determination regarding the claims of US 7,076,443, both patents being related to improvements in web-based advertising.  The FC panel opinion explains that “[i]n the prior art, advertisements would be downloaded at the same time as applications” resulting in a “diminished service response” while the claimed methods
Continue Reading Patents NPE Filing Receipt DC finding of noninfringment partially affirmed; ineligibility under 101 affirmed

Pfizer Inc. v. Sanofi Pasteur Inc. et al. (Merck)

Docket No. 2019-1871, -1873, -1875-76, -2224 (IPR2017-02131-32, -02136, -02138, IPR2018-00187) (https://cafc.uscourts.gov/opinions-orders/19-1871.OPINION.3-5-2024_2280462.pdf)

LOURIE, BRYSON, STARK

March 5, 2024

Brief Summary:  Five IPR FWDs finding Pfizer’s S. pneumoniae vaccine claims unpatentable for obviousness affirmed.

Summary:   Pfizer appealed five IPR final written decisions (FWDs) concluding claims 1-45 of its US 9,492,559 directed to S. pneumoniae glyconjugates (pneumonia, febrile bacteremia, and meningitis vaccines) are unpatentable for obviousness.  Independent claim 1 relates to a composition comprising the S. pneumoniae serotype 22F glyoconjugate having “a molecular weight [MW] of between 1000 kDa and 12,500 kDa”
Continue Reading Board IPR FWDs finding Pfizer’s S. pneumoniae vaccine claims unpatentable for obviousness affirmed

Weber, Inc. v. Provisur Technologis, Inc.

Docket No. 2022-1751, -1813 (IPR2020-01556, -01557 (https://cafc.uscourts.gov/opinions-orders/22-1751.OPINION.2-8-2024_2267070.pdf)

REYNA, HUGHES, STARK

February 8, 2024

Brief Summary:  Board IPR decisions reversed and vacated for improper determination of public availability of instruction manuals and claim construction determinations.

Summary:   Weber appealed two IPR final written decisions (FWDs) finding that Provisur’s US 10,639,812 and 10,625,436 relating to “high-speed mechanical slicers used in food-processing plants to slice and package food articles, such as meats and cheeses” were shown to be unpatentable for obviousness.  The Board first concluded that “Weber’s operating manuals were not prior art printed publications” because
Continue Reading IPR decisions of no obviousness vacated and remanded for improper public accessibility and claim construction determinations

Google LLC, et al. v. EcoFactor, Inc.

Docket No. 2022-1750, -1767 (IPR2020-01504, -00792 (https://cafc.uscourts.gov/opinions-orders/22-1750.OPINION.2-7-2024_2266326.pdf))

REYNA, TARANTO, STARK

February 7, 2024

Brief Summary:  Board implicitly construed claims; that construction was improper and led to a finding Google had not shown obviousness; decision vacated and remanded. Summary:   Google appealed from Board IPR final written decision (FWD) finding EcoFactor’s US 8,498,753 relating to thermostat-related systems and methods are not unpatentable.   Google’s IPR alleged obviousness in view of two US patents (Wedekind and Ehlers).  Representative claim 1 includes method steps 1a-1m, including 1m inputs [i]-[v] that are most relevant to this appeal. 
Continue Reading Board’s incorrect implicit claim construction, and finding of no obviousness, vacated and remanded

In Re:  GO & Associates, LLC

Docket No. 2022-1961 (IPR2020-01524  (https://cafc.uscourts.gov/opinions-orders/22-1961.OPINION.1-22-2024_2256749.pdf)

LOURIE, PROST, REYNA

January 22, 2024

Brief Summary:  Board decision GO’s “EVERYBODY VS RACISM” proposed mark “fails to function as a source identifier” (“not solely because it contains informational matter”) affirmed.

Summary:   GO & Associates, LLC (GO) appealed against the United States Trademark Trial and Appeal Board’s decision, which supported the examining attorney’s refusal to register the mark “EVERYBODY VS RACISM.” This refusal was rooted in the assessment that the mark did not function as a source identifier for GO’s goods and services, such as clothing and
Continue Reading Board decision not to register “EVERYBODY VS RACISM” proposed mark affirmed

Apple, Inc. v. Masimo Corporation

Docket No. 2022-1891 (IPR2020-01524  (https://cafc.uscourts.gov/opinions-orders/22-1891.OPINION.1-12-2024_2252724.pdf) (Non-Precedential)

LOURIE, PROST, REYNA

January 12, 2024

Brief Summary:  Board IPR findings that Apple did not show Masimo’s pulse oximeter claims obvious affirmed. Summary:  Apple appealed USPTO Board holding that it did not show the challenged claims of Masimo’s US 8,457,703 obvious.  The ‘703 claims are directed to a method of managing the power consumption of a pulse oximeter by intermittently changing the duty cycle of the current supplied to the LEDs that light the patient’s tissues.  A prior art patent discloses a pulse oximeter including a “motion
Continue Reading Board IPR findings that Apple did not show Masimo’s pulse oximeter claims obvious affirmed

Pacific Biosciences of California, Inc. v. Personal Genomics Taiwan, Inc.

Docket No. 2022-1410, -1554 (IPR2020-01163, -01200  (https://cafc.uscourts.gov/opinions-orders/22-1410.OPINION.1-9-2024_2250463.pdf)

PROST, TARANTO, HUGHES

January 9, 2024

Brief Summary:  Board IPR claim construction of “single biomolecule” as one in the context of the disputed patent and prior art determinations affirmed.

Summary:  PacBio filed two IPR petitions regarding PGI’s US 7,767,441 directed to “an ‘apparatus for identifying a single biomolecule’ as well as methods of using or making that apparatus”.  In one IPR, the USPTO rejected PacBio’s challenge but agreed with PacBio in the other.  Both parties appealed, focused on “the Board’s construction
Continue Reading Board IPR construction of “single biomolecule” as one and prior art determinations affirmed

PureCircle USA Inc. et al. v. Sweegen, Inc. et al.

Docket No. 2022-1946 (https://cafc.uscourts.gov/opinions-orders/22-1946.OPINION.1-2-2024_2246968.pdf) (Non-precedential)

DYK, SCHALL, STARK

January 2, 2024

Brief Summary:  DC finding of no WD of genus of enzymes used in method and claim to specific enzyme unpatentable under 101 as it is naturally occurring and specificity limitation is an abstract idea (e.g., “simply states a result”). Summary:  PureCircle appealed DC grant of summary judgment (SJ) to Sweegen, concluding the asserted claims of US 9,243,273 and 10,485,257 are invalid for lack of written description and/or unpatentable under 35 U.S.C. § 101.  The ‘273 and ‘257
Continue Reading DC finding of no WD of enzyme genus and unpatentability under 101 affirmed (naturally occurring, “50% complete” an abstract idea)

K-Fee System GmbH v. Nespresso USA, Inc.

Docket No. 2022-2042 (https://cafc.uscourts.gov/opinions-orders/22-2042.OPINION.12-26-2023_2244064.pdf)

TARANTO, CLEVENGER, STOLL

December 26, 2023

Brief Summary:  DC claim construction and prosecution history estoppel based on European opposition proceeding reversed and remanded (e.g., “too confining”).

Summary:  K-fee appealed DC grant of summary judgment (SJ) that Nespresso’s coffee machine “products did not meet the ‘barcode’ claim limitations” of three patents “under the court’s construction and thus it did not infringe any asserted claims.”  Representative claim 1 of K-fee’s US 10,858,176 includes providing a method of making a coffee beverage using capsule including two barcodes.  The DC “noted
Continue Reading DC claim construction based on European prosecution history reversed and remanded as “too confining”

In Re:  Institut Pasteur

Docket No. 2022-1896 (https://cafc.uscourts.gov/opinions-orders/22-1896.OPINION.12-13-2023_2237277.pdf) (Non-Precedential)

LOURIE, DYK, TARANTO

December 13, 2023

Brief Summary:  USPTO PTAB decision supporting examiner’s obviousness-type double patenting rejection affirmed.

Summary:  Pasteur appealed PTAB decision examiner’s obviousness-type double patenting rejection of its claims to a method for treating pain using peptides derived from Basic Proline-rich Lacrimal Protein having particular amino acid sequences (Gln-Arg-Phe-Ser-Arg (SEQ ID NO: 2) and Glp-Arg-Phe-Ser-Arg (SEQ ID NO: 55)) at a specified dose (“10-300 mg/day”).  The claims were rejected “on the ground of obviousness-type double patenting over “claims 1, 3, 5, 6, 8, 10, 11 and 14
Continue Reading PTAB/examiner obviousness-type double patenting decision of Pasteur’s peptide dosing claims affirmed

VLSI Technology LLC v. Intel Corporation

Docket No. 2022-1906 (https://cafc.uscourts.gov/opinions-orders/22-1906.OPINION.12-4-2023_2231550.pdf)

LOURIE, DYK, TARANTO

December 4, 2023

Brief Summary:  Literal infringement finding affirmed for one of VLSI’s patent, infringement under DOE reversed for the other, with its damages award; DC denial of Intel’s pre-trial motion to add a license defense reversed. Summary:  Intel appealed DC judgments of infringement of VLSI’s US 7,523,373 (literally) and 7,725,759 (under the doctrine of equivalents), and denial of its “pre-trial motion seeking to add a license defense to the case and to sever that defense from the rest of the case and stay its
Continue Reading Intel’s literal infringement affirmed; DOE infringement and damages reversed; denial of license defense reversed

Medtronic, Inc. et al. v. Teleflex Life Sciences Limited

Docket No. 2022-1721, -1722 (IPR2020-01343, -01344 (https://cafc.uscourts.gov/opinions-orders/22-1721.OPINION.11-16-2023_2223230.pdf)

LOURIE, PROST, CHEN

November 16, 2023

Brief Summary:   Board finding of no obviousness affirmed based on pre-AIA constructive reduction to practice. Summary:  Medtronic appealed two final written decisions (FWDs) holding it had not shown Teleflex’s RE46,116 claiming a method “comprising: advancing a distal end of a guide catheter having a lumen through a main blood vessel to an ostium of a coronary artery” to be unpatentable.  The application leading to the ‘116 patent was filed on May 3, 2006 and Teleflex argued
Continue Reading Pre-AIA constructive reduction to practice rendered alleged prior art ineffective, Board IPR decision of no obviousness affirmed