Life Science IP

Subscribe
Visit Blog
By: Patrick J. Halloran, Ph.D., J.D.

Blog Authors

Patrick Halloran

Latest from Life Science IP

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…
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

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)

Original Panel:  MOORE (D), LINN, O’MALLEY (January 3, 2022)

Rehearing Panel:  MOORE, LINN (D), HUGHES (June 21, 2022)

Update (June 21, 2022):  HEC petitioned for rehearing of prior FC affirmance of DC finding that Novartis’ ‘405 claims were not invalid for failing to describe a negative limitation (“absent…[a] loading dose”).  This FC panel found the prior decision erroneous and reversed.  This opinion explained that “[i]t is not enough that a claimed invention is ‘an obvious variant of that which…
Continue Reading Rehearing reverses prior FC panel decision, concluding instead that negative limitation not described by specification, reverses DC finding of no invalidity

Cornell Research Foundation, Inc. v. Katherine K. Vidal (USPTO)

Docket No. 2020-2334-40 (IPR2019-00578-82) (https://cafc.uscourts.gov/opinions-orders/20-2334.OPINION.5-24-2022_1955796.pdf) (Non-Precedential)

PROST, REYNA, TARANTO

May 24, 2022

Brief Summary:   Board IPR findings of obviousness based on inherency affirmed.

Summary: Cornell appealed USPTO Board final written decisions (FWDs) finding the challenged claims of US 8,993,300 (“representative in this appeal”) directed to methods for producing E. coli phytases A and B in fungi including Saccharomyces cerevisiae and Pichia pastoris.  The challenged claims include providing and expressing a polynucleotide encoding the E. coli phytase in fungal cells (claim 1) and dependent claims including “thermostability limitations” (e.g., optimum…
Continue Reading Board IPR findings of obviousness based on inherency affirmed

Micheal Philip Kaufman v. Microsoft Corporation

Docket No. 2021-1634, -1691 (https://cafc.uscourts.gov/opinions-orders/21-1634.OPINION.5-20-2022_1954422.pdf)

DYK, TARANTO, CUNNINGHAM

May 20, 2022

Brief Summary:   DC claim construction affirmed but denial of pre-judgment interest reversed.

Summary:  Mr. Kaufman appealed the DC’s denial of his motion to amend his motion to amend damages to include prejudgment interest after finding Microsoft (MS) infringed his patent (now expired US 7,885,981 claiming priority to a provisional application filed in 2000) directed to the creation of user interfaces allowing users to interact with data in relational databases.  MS also appealed the judgment of infringement.  Mr. Kaufman alleged MS’s…
Continue Reading DC correctly construed claims (e.g., “and” means “and/or”) but improperly denied pre-judgment interest

Mitek Systems, Inc. v. United Services Automobile Association

Docket No. 2021-1989 (https://cafc.uscourts.gov/opinions-orders/21-1989.OPINION.5-20-2022_1954430.pdf)

DYK, TARANTO, CUNNINGHAM

May 20, 2022

Brief Summary:   DC finding of no Article III case or controversy remanded; transfer from CA to TX affirmed. Summary:  Mitek’s originally requested the CA DC to grant a declaratory judgment (DJ) that its customers have not directly or indirectly infringed USAA’s patents-in-suit relating to digitally depositing a check (e.g., into a bank), but the CA court granted USAA’s request to transfer the case to the DC of the Eastern District of TX.  The TX court dismissed the case for…
Continue Reading DC finding of no Article III case or controversy remanded; transfer from CA to TX affirmed

Ethicon LLC v. Intuitive Surgical, Inc.

Docket No. 2021-1995, -1997 (IPR2020-00050, -00051) (https://cafc.uscourts.gov/opinions-orders/21-1995.OPINION.5-23-2022_1955050.pdf) (Non-precedential)

NEWMAN (D), REYNA, HUGHES

May 23, 2022

Brief Summary:   Board IPR finding of invalidity for obviousness affirmed.

Summary:  Ethicon appealed USPTO Board IPR final written decision (FWD) holding the challenged claims of US 9,844,379 B2 directed to surgical stapling instruments invalid for obviousness.  Ethicon argued the Board erred in placing the burden of proof on it, the patent owner, and that the Board’s finding of a reasonable expectation of success in combining the prior art (the Green and Solyntjes US patents) is not supported…
Continue Reading Board IPR obviousness decision affirmed (motivation to combine, reasonable expectation of success)

Ethicon LLC and Cilag GmbH Int. (“Ethicon”) v. Intuitive Surgical, Inc.

Docket No. 2021-1601 (IPR2019-00991) (https://cafc.uscourts.gov/opinions-orders/21-1601.OPINION.5-19-2022_1953841.pdf) (Non-precedential)

NEWMAN (D), CLEVENGER, STOLL

May 19, 2022

Brief Summary:   Board IPR finding of invalidity for obviousness affirmed.

Summary:  Ethicon appealed USPTO Board IPR final written decision (FWD) holding claims 13-15 and 17-18 of US 8,602,287 regarding a motor-driven surgical cutting instrument unpatentable as obvious, challenging “the Board’s fact findings regarding analogous art and motivation to combine prior art references.”  The FC panel opinion explains that “[t]he purportedly inventive feature of claim 13 is that the motor for driving the endocutter uses…
Continue Reading Board IPR obviousness decision affirmed (analogous art, motivation to combine)

Atlanta Gas Light Company v. Bennett Regulator Guards, Inc.

Docket No. 2021-1759 (IPR2015-00826) (https://cafc.uscourts.gov/opinions-orders/21-1759.OPINION.5-13-2022_1951471.pdf)

NEWMAN, LOURIE, STOLL

May 13, 2022

Brief Summary:   Appeal dismissed as FC lacked jurisdiction over IPR termination. Summary:  Atlanta Gas appealed USPTO IPR decision termination of its IPR proceeding regarding US 5,810,029 directed to an anti-icing device for a gas pressure regulator.  This is the third time this case has been in front of the FC.  The USPTO Board (“Board”) issued a final written decision (FWD) rejecting patent owner Bennett’s argument that Atlanta Gas was time-barred under 35 U.S.C. § 315(b) for failing…
Continue Reading Termination of IPR outside of FC jurisdiction, including regarding sanctions

Sound View Innovations, LLC v. Hulu, LLC

Docket No. 2021-1998 (https://cafc.uscourts.gov/opinions-orders/21-1998.OPINION.5-11-2022_1950301.pdf)

PROST, MAYER, TARANTO

May 11, 2022

Brief Summary:   DC claim construction affirmed but SJ grant of noninfringement vacated and remanded; exclusion of certain damages testimony affirmed.

Summary:  Sound View appealed DC claim construction of claim 16 of US 6,708,213 relating to multimedia streaming technologies, the DC’s grant of summary judgment (SJ) of noninfringement to Hulu, and the damages rulings.  The disputed “downloading/retrieving limitation” “requires ‘allocating a buffer’ at a helper server ‘to cache’ at least a portion of the [streaming multimedia] SM object”, which the DC held…
Continue Reading Claim construction affirmed, Hulu’s SJ grant of noninfringement vacated and remanded; damages testimony exclusion affirmed

Sunoco Partners Marketing & Terminals, L.P. v. U.S. Venture, Inc. et al. (“Venture”)

Docket No. 2020-1640, -1641 (https://cafc.uscourts.gov/opinions-orders/20-1640.OPINION.4-29-2022_1943607.pdf)

PROST, REYNA, STOLL

April 29, 2022

Brief Summary:  DC denial of on-sale bar defense reversed; claim construction affirmed; grant of enhanced damages reversed based on attorney opinion; reasonably royalty affirmed.

Summary: Venture appealed DC’s “(I) rejection of its on-sale-bar defense, (II) determination that it infringed two patents…since held invalid, (III) construction of two claim terms, and (IV) decision to enhance damages” relating to butane-blending systems for production of gasoline    Sunoco cross-appealed regarding the denial of lost-profit damages and the award of…
Continue Reading DC denial of on-sale bar defense reversed; claim construction affirmed; grant of enhanced damages reversed based on attorney opinion; reasonably royalty affirmed

Auris Health, Inc. v. Intuitive Surgical Operations, Inc.

Docket No. 2021-1732 (IPR2019-1533) (https://cafc.uscourts.gov/opinions-orders/21-1732.OPINION.4-29-2022_1943629.pdf)

DYK, PROST, REYNA (D)

April 29, 2022

Brief Summary:   IPR finding of no obviousness reversed and remanded as industry skepticism was too general and not specific to the actual combination.

Summary:  Auris appealed PTAB (“Board”) IPR final written decision (FWD) that it did not show the claims of Intuitive’s US 8,142,447 relating to robotic surgery systems unpatentable as obvious.  The Board determined that the asserted prior art (Smith and Faraz) disclose each limitation of the challenged claims, with the only remaining issue was whether…
Continue Reading IPR finding of no obviousness reversed as “generic industry skepticism cannot, standing alone, preclude a finding of motivation to combine”

Apple, Inc. v. Zipit Wireless, Inc.

Docket No. 2021-1760 (https://cafc.uscourts.gov/opinions-orders/21-1760.OPINION.4-18-2022_1937645.pdf)

HUGHES, MAYER, STOLL

April 18, 2022

Brief Summary:   DC dismissal of Apple’s DJ action based on a lack of personal jurisdiction reversed and remanded.

Summary:  Apple appealed Northern District (ND) of CA DC dismissal of its request for a declaratory judgment (DJ) of noninfringement against Zipit wireless (a DE corporation with a principal place of business in Greenville, SC) for lack of personal jurisdiction (PJ) (unreasonable based on the nature of Zipit’s communications with Apple in the ND).  The FC panel found the DC erroneously “read our…
Continue Reading DC dismissal of Apple’s complaint for lack of personal jurisdiction over Zipit reversed and remanded

Amgen Inc. et al. v. USPTO (Intervenor)

Docket No. 2019-2171 (IPR2016-01542) (https://cafc.uscourts.gov/opinions-orders/19-2171.OPINION.4-14-2022_1936036.pdf) (Non-Precedential)

CHEN, SCHALL, STOLL

April 14, 2022

Brief Summary:   Board IPR obviousness decision reversed due to erroneous claim construction (“[a] straightforward reading of the claim language”, “the only conclusion supported by substantial evidence”).

Summary:  Amgen appealed USPTO Board Final Written Decision (FWD) finding claims 1-124 of US 8,952,138 relating to methods for producing recombinant proteins unpatentable for obviousness that turned on the Board’s claim construction of the term “final thiol-pair ratio”.  The FC panel opinion explains that the ‘138 patent provides methods for avoiding recombinant protein…
Continue Reading Board IPR obviousness decision reversed due to erroneous claim construction

Niazi Licensing Corporation v. St. Jude Medical S.C., Inc.

Docket No. 2021-1864 (https://cafc.uscourts.gov/opinions-orders/21-1864.OPINION.4-11-2022_1934126.pdf)

TARANTO, BRYSON, STOLL

April 11, 2022

Brief Summary:   DC findings of indefiniteness reversed, but induced infringement, exclusion of expert witness report and damages findings affirmed.

Summary:  Niazi appealed DC indefiniteness finding of all but one claim of US 6,638,268 relating to cardiac cathers and no induced infringement of that one claim, the DC’s sanction excluding portions of Niazi’s technical and damages expert reports in part for being unreliable.  The DC found the claim terms “resilient” and “pliable” in all of the claims except method…
Continue Reading DC grant of SJ reversed and remanded due to improper finding of indefiniteness

Genuine Enabling Technology LLC v. Nintendo Co. et al.

Docket No. 2021-2167 (https://cafc.uscourts.gov/opinions-orders/20-2167.OPINION.4-1-2022_1930021.pdf)

NEWMAN, REYNA, STOLL

April 1, 2022

Brief Summary:   DC grant of summary judgment reversed as FC panel found claim construction errors. Summary:  Genuine sued Nintendo for infringement US 6,219,730 directed to combining computer data streams (e.g., a “voice mouse” as a new kind of “user input device” (“UID”)).  The apparatus of representative claim 1 includes an “input means for producing the at least one input signal” which the DC construed to mean “a signal having an audio or higher frequency”.  During prosecution, the inventor argued…
Continue Reading DC grant of SJ reversed as based on improper claim construction (no clear PHE)