GS Cleantech, Cantor Colburn LLP v. Adkins Energy LLC, Big River Resources et al.
Docket No. 2016-2231, -1838, 2017-1832
REYNA, WALLACH, HUGHES
March 2, 2020
Brief Summary: DC finding of inequitable conduct for failure to disclose pre-critical date offer for sale affirmed.
Summary: GS Cleantech (“Cleantech”) appealed DC finding the Patents-in-Suit (US 7,601,858; 8,008,516; 8,008,517; and 8,283,484 (shared specification)) directed to methods for recovering oil from a dry mill ethanol plant’s byproduct (“thin sillage”) unenforceable due to inequitable conduct. The inequitable conduct (IC) issue related “to whether the patentee failed to disclose information regarding the on-sale bar under 35 U.S.C.
Continue Reading Failure to disclose pre-critical date offer for sale was inequitable conduct, DC decision affirmed

Acoustic Technology, Inc. v. Itron Networked Solutions, Inc.
Docket No. 2019-1061 (IPR2017-1061) (see also FC Docket Nos. 2019-1059, -1060)
MOORE, REYNA, TARANTO
February 13, 2020
Brief Summary: Appeal based on time-bar arguments not presented to the Board were waived; anticipation and obviousness conclusions affirmed.
Summary: Acoustic appealed PTAB finding the challenged claim of US 6,509,841 relating to remote monitoring of utility meters unpatentable. Acoustic argued that that merger of Petitioner Silver Spring Networks, Inc. (SSN) with “undisputably time-barred” Itron, Inc. during the IPR proceeding created a time-bar against SSN. The FC panel opinion explains that Acoustic sued Itron in March…
Continue Reading Acoustic’s IPR time-bar arguments waived; anticipation and obviousness findings affirmed

HZNP Medicines LLC et al. v. Actavis Laboratories UT, Inc.
Docket No. 2017-2149, -2152-53, -2202-3, -2206
PROST, NEWMAN, REYNA
October 10, 2019 (update Feb. 25, 2020)
Update (2/25/20): Petition for en banc hearing denied. Judges Lourie, Newman, O’Malley and Stoll dissented, arguing that the majority “erroneously construed the ‘consisting essentially of’ language” of claim 49 “in evaluating the definiteness requirement of 35 U.S.C. § 112” because “better drying time is not in the claim, and it is the claims that the stature requires be definite” and “[t]he possibility of inclusion of other[]” ingredients “implied by the language at issue here,…
Continue Reading Horizon’s petition for en banc rehearing regarding indefiniteness denied (four judges dissented regarding “consisting essentially of”))

In Re: Google LLC
Docket No. 2019-126
DYK, WALLACH, TARANTO
February 13, 2020
Brief Summary: ED TX not the proper venue since Google “had no employee or agent regularly conducting its business” in that district (ISPs handling servers are not Google’s agents).
Summary: Google petitioned for a writ of mandamus regarding the Eastern District of TX DC’s finding it is the proper venue since Google has “a regular and established place of business” there “based on the presence of several Google Cache (‘GCG’) servers, which function as local caches for Google data” (TC Heartland, US 2017; In re Cray, FC…
Continue Reading ISPs handling servers are not Google’s agents, venue therefore improper

Serta Simmons Bedding, LLC et al. v. Casper Sleep Inc.
Docket No. 2019-1098, -1159
DYK, PLAGER, STOLL
February 13, 2020
Brief Summary: DC grant of SJ vacated and remanded due to pre-existing settlement agreement.
Summary: Serta appealed DC grant of Casper’s summary judgment (SJ) motions of non-infringement and denial of Serta’s motions to vacate the SJ and to enforce a settlement agreement (SA). The disputed patents are US 7,036,137; 7,424,763; and 8,918,935 relating to mattresses including a channel and methods for forming it. The SA was entered into on June 18, 2018 while Casper’s SJ motions were pending, and the…
Continue Reading DJ grant of SJ of non-infringement vacated due to pre-existing settlement agreement

Apple Inc. v. Andrea Electronics Corporation
Docket No. 2018-2382, -2383 (IPR2017-00626, -00627)
DYK, PLAGER, STOLL
February 7, 2020
Brief Summary: Board erroneously excluded Apple’s IPR reply arguments as new as compared to IPR petition (‘626 remanded), and no anticipation or obviousness finding affirmed (‘627).
Summary: Apple appealed two IPR final written decisions (‘626 FWD and ‘627 FWD) regarding Andrea’s US 6,363,345 relating to digital audio processing (“[a]n apparatus for cancelling noise” using a “threshold detector”). Apple challenged ‘345 patent claims 1-25 and 38-47 but this appeal relates to claims 6-9.
Regarding the ‘626 FWD, Apple challenged claims 6-9 as obvious…
Continue Reading Board erroneously excluded Apple’s reply arguments as new, not presented in IPR petition

Cheetah Omni LLC v. AT&T Services, Inc. et al.
Docket No. 2019-1264
LOURIE, BRYSON, CHEN
February 6, 2020
Brief Summary: DC dismissal of Cheetah’s claims against AT&T affirmed since grandchild patent was impliedly included in prior license to grandparent parent.
Summary: Cheetah appealed DC dismissal of its claims of infringement of US 7,522,836 relating to optical communication networks with prejudice due to a prior agreement to settle litigation (the ROADM litigation). The prior agreement was made with Fujitsu and Ciena. After Cheetah asserted the ‘836 patent against AT&T, Ciena successfully intervened as it manufacture and supplies components to AT&T that…
Continue Reading DC dismissal affirmed as grandchild patent impliedly licensed in settlement agreement

Mylan Pharmaceuticals Inc. v. Biogen MA Inc.
IPR2018-01403 (PTAB Final Written Decision)
February 5, 2020
Brief Summary: Biogen’s Tecfidera-related US 8,399,514 B2 (“method of treating…multiple sclerosis” not obvious due in part to unexpected results (IPR final written decision).
Summary: Mylan challenged Biogen’s Tecfidera-related US 8,399,514 B2 (“method of treating…multiple sclerosis” with “dimethyl fumarate, monomethyl fumarate, or a combination thereof”) as obvious (§ 103) in view of four combinations of references (four grounds). The final written decision (FWD) indicates that the ‘514 patent has been involved in two other IPRs (IPR2015-01993, IPR2015–01136, Coalition for Affordable Drugs v LLC) and one interference…
Continue Reading Biogen’s Tecfidera-related ‘514 patent not obvious in IPR final written decision due to unexpected results of claimed dosage amount

HVLPO2, LLC v. Oxygen Frog, LLC, Scott D. Fleischman
Docket No. 2019-1649
NEWMAN, MOORE, CHEN
February 5, 2020
Brief Summary: DC’s limiting jury instructions regarding obviousness because “lay witness” was not qualified as an expert.
Summary: HVO appealed DC denial of its motion for judgment as a matter of law (JMOL) that US 8,876,941 and 9,372,488 relating to managing an oxygen generating system (e.g., “for torch glass artists”) should have been found obvious by the jury or, alternatively, “for a new trial based on the admission of lay opinion testimony on the issue of obviousness.” The DC granted partial summary…
Continue Reading “Lay witness” not qualified as an expert cannot testify as to conclusion of obviousness

Intelligent Automation Design, LLC v. Zimmer Biomet CMF et al.
Docket No. 2019-1100
PROST, WALLACH, HUGHES
January 30, 2020
Non-precedential
Brief Summary: DC determination of means-plus-function construction affirmed but reversed as to whether sufficient structure was disclosed.
Summary: IAD appealed DC finding that claims 1 and 6 of US 7,091,683 relating to methods for using a motor to drive a screwdriver bit invalid for indefiniteness under 112, § 6 (means-plus-function). Under 112, § 6, “‘[a]n element in a claim for a combination…expressed as a means…for performing a specified function…shall be construed to cover the corresponding structure’ described in the specification.”…
Continue Reading Disclosed algorithm found to provide sufficient support for mean-plus-function claim term

Koninklijke Philips N.V. v. Google, LLC, Microsoft Corp. et al.
Docket No. 2019-1177 (IPR2017-00447)
MOORE, O’MALLEY, STOLL
January 30, 2020
Brief Summary: Board IPR obviousness determination regarding Phillips’s claims affirmed (e.g., § 311(b) limitation on prior art does not mean one can “ignore the skilled artisan’s knowledge when determining” obviousness).
Summary: Philips appealed Board IPR decision finding claims 1-11 of US 7,529,806 relating to methods for providing multiple formats of a media presentation invalid for obviousness. The Board found the claims obvious over “SMIL 1.0” teaching a computer language including “a ‘switch’ element that specifies a set of alternative files…
Continue Reading Board IPR obviousness conclusion affirmed (cannot “ignore the skilled artisan’s knowledge”)

Galderma Labs., L.P. et al. v. Teva Pharmaceuticals, Inc.
Docket No. 2019-2396, -1213
MOORE, O’MALLEY, STOLL
January 29, 2020
Non-precedential
Brief Summary: DC finding of inherent anticipation reversed as it relied on a second reference to provide limitations missing from the first.
Summary: Galderma appealed DC holding that Orange Book (OB) patents US 9,089,587; 9,233,117; and 9,223,118 are invalid for anticipation (§ 102) due to inherent prior art disclosure. This case relates to Teva’s ANDA No. 210019 regarding a generic of Galderma’s Soolantra® (1% ivermectin topical cream, for treatment of papulopustular rosacea (PPR), NDA N206255, eight other OB patents not…
Continue Reading Galderma’s ivermectin claims not inherently anticipated since “claimed efficacy limitations” not disclosed by single prior art reference

Global Equity Management (GEMSA) v. Ebay Inc., Alibaba.com, Booking.com
Docket No. 2019-1304, -1304 (IPR Nos. 2016-01828, -01829)
WALLACH, CLEVENGER, STOLL
January 14, 2020
Non-precedential
Brief Summary: Board decision not to dismiss affirmed since “GEMSA did not meet its burden to ‘produce some evidence that tends to show that [Amazon] should be named a” RPI.
Summary: GEMSA appealed PTAB (“Board”) denial of its motions to terminate IPRs regarding US 6,690,400 and 7,356,677 (the Challenged Patents) pursuant to 35 USC § 315(a)(1) (2012) (“[IPR] may not be instituted if…the petitioner or real party in interest [RPI] filed a civil action challenging the…
Continue Reading Board denial of IPR dismissal request affirmed due to failure to produce evidence that Amazon should have been named a real party in interest on IPR petition