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.

Latest from Patrick J. Halloran, Ph.D., J.D. - Page 2

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-1236 (IPR2019-00569, -00570) (https://cafc.uscourts.gov/opinions-orders/21-1117.OPINION.4-11-2022_1934157.pdf) (Non-Precedential)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

Intuitive Surgical, Inc. v. Ethicon LLC (USPTO as intervenor)

Docket No. 2021-1481 (IPR2-18-01248) (https://cafc.uscourts.gov/opinions-orders/20-1481.OPINION.2-11-2022_1907139.pdf)

O’MALLEY, CLEVENGER, STOLL

February 11, 2021

Brief Summary:  Intuitive’s appeal of pending IPR in view of patentability findings in two simultaneously filed IPRs regarding the same claim dismissed as prohibited by section 315(e)(1).

Summary:  Intuitive appealed PTAB (“Board”) IPR decision upholding the patentability of claims 24-26 of US 8,479,969 relating to “a robotically controlled endoscopic surgical instrument”.  “The threshold question in this appeal is whether Intuitive is authorized by statute to pursue this appeal” or, as the Board found in terminating Intuitive as a
Continue Reading FC panel affirms Board dismissal of third IPR following patentability finding in other simultaneously filed IPRs regarding the same claims under section 315(e)(1)

Larry K. Junker v. Medical Components, Inc., Martech Medical Products, Inc.

Docket No. 2021-1649 (https://cafc.uscourts.gov/opinions-orders/21-1649.OPINION.2-10-2022_1906548.pdf)

DYK, REYNA, STOLL

February 10, 2021

Brief Summary:  DC decision finding no invalidity of design patent for invalidity due to pre-critical date offer for sale reversed.

Summary: Medcomp appealed the DC’s grant of Mr. Junker’s motion for summary judgment (SJ) of no invalidity of design patent D450,389 (D’839) under the on-sale bar (Pfaff, US 1998) and finding of willful infringement and damages of about $1.2 million under 35 USC section 289 (recovery of an infringer’s profits from the sale of infringing products).  D’839 is
Continue Reading DC grant of no invalidity of design patent reversed due to pre-critical date offer for sale

Plasmacam, Inc. v. CNCelectronics, LLC et al.

Docket No. 2021-1689 (https://cafc.uscourts.gov/opinions-orders/21-1689.OPINION.2-3-2022_1902753.pdf)

NEWMAN, DYK, REYNA

February 3, 2021

Brief Summary:  DC grant of Plasmacam’s motion to enforce its version of a settlement agreement reversed and remanded.

Summary:  CNC appealed DC grant of Plasmacam’s motion to enforce its version of a settlement agreement relating to infringement of Plasmacam’s (as exclusive licensee) US 7,071,441 directed to a plasma cutting system.  During settlement negotiations, the parties traded emails in which Plasmacam’s counsel wrote that “[t]he parties will enter into mutual releases which will include releasing CNCElectronics’s downstream customers from liability for infringing
Continue Reading DC grant of Plasmacam’s motion to enforce its version of a settlement agreement reversed and remanded

GlaxoSmithKline LLC, et al. v. Teva Pharmaceuticals USA, Inc.

Docket No. 2018-1976, -2023

PROST, NEWMAN, MOORE

October 2, 2020

Update (2/11/22):  Petition for rehearing denied.  Judges Moore, Newman, O’Malley, Taranto, Chen and Stoll concurred to address dissents by Judges Prost, Dyk and Reyna, Judge Dyk, and Judge Reyna.  Judge Dyk wrote, e.g., “the more specific and later-enacted provisions of the HatchWaxman Act override the general infringement provisions of the Patent Act” and “[i]t is hard to see how Congress could have intended that a mandated label could be used as evidence of infringement.”  Judge Reyna wrote “that en banc consideration
Continue Reading Teva’s ANDA carve-out does not save it from induced infringement (“when the provider of an identical product knows of and markets the same product for intended direct infringing activity, the criteria of induced infringement are met”) (petition for rehearing en banc denied (2/11/22))

Adapt Pharma, Inc. et al. v. Teva Pharmaceuticals USA, Inc. et al.

Docket No. 2020-2106 (https://cafc.uscourts.gov/opinions-orders/20-2106.OPINION.2-10-2022_1906561.pdf)

NEWMAN (D), PROST, STOLL

February 10, 2021

Brief Summary:  DC decision finding Adapt’s naloxone formulations obvious affirmed.

Summary:  Adapt appealed DC final judgment finding US 9,468,747; 9,561,177; 9,629,965; and 9,775,838 related to Adapt’s NARCAN intranasal 4 mg naloxone product invalid as obvious.  The patents-in-suit in this paragraph IV ANDA case are six of the patents listed on the FDA’s Orange Book for Adapt’s product.  Representative claim 9 of the ‘747 patent is directed to “[a] method of treatment of opioid overdose” by
Continue Reading DC decision finding Adapt’s naloxone formulations obvious affirmed

Kyocera Senco Ind. Tools, et al. v. International Trade Commission (ITC)

Docket No. 2020-1046, -2050 (https://cafc.uscourts.gov/opinions-orders/20-1046.OPINION.1-21-2022_1896055.pdf)

MOORE, DYK, CUNNINGHAM

January 21, 2021

Brief Summary:  ITC decision vacated and remanded for the parties to brief “what structures correspond to” the means-plus-function limitation “lifting member”; exclusion of expert testimony proper.

Summary: Kyocera and Koki each appealed ITC decision regarding Kyocera’s complaint against Koki for importing gas spring nailer products that were alleged to infringe five of Kyocera’s device and method of use patents.  The “appeals address five parts of the investigation below: (I) the exclusion of Dr. Pratt’s [expert] testimony,
Continue Reading ITC decision remanded for briefing on structure correlating to means-plus-function limitation