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Sanofi-Aventis Deutschland GmbH v. Mylan Pharmaceuticals Inc. (USPTO as Intervenor)

Docket No. 2020-2066, -2068-9 (IPRs 2018-01679-80, -82) (https://cafc.uscourts.gov/opinions-orders/20-2066.OPINION.12-29-2021_1886477.pdf) (Non-Precedential)

DYK, CLEVENGER, TARANTO

December 29, 2021

Brief Summary:  Board IPR decision finding Sanofi’s patents obvious because priority application does not provide proper written description for proposed substitute claims affirmed.

Summary:  Sanofi appealed three IPR decisions finding its US 8,992,486 and 9,526,844 relating to pen-type injectors as shown to be invalid for obviousness in part because the Great Britain (GB) priority document (“GB Application”) lacks proper written description for its proposed substitute claims. In the ‘679 IPR, Sanofi’s proposed substitute
Continue Reading Board IPR decisions finding Sanofi’s injector claims obvious due to lack of written description in priority document affirmed

Evolusion Concepts, Inc. v. HOC Events, Inc., DBA Supertool USA / Juggernaut

Docket No. 2021-1963 and 2021-1987 (https://cafc.uscourts.gov/opinions-orders/21-1963.OPINION.1-14-2022_1893196.pdf)

PROST, TARANTO, CHEN

January 14, 2021

Brief Summary:  DC decisions reversed due to improper claim construction.

Summary:  Evolusion appealed DC grant of summary judgment (SJ) of non-infringement to HOC (2021-1963).  This opinion also addresses the appeal of the DC grant of SJ to Juggernaut on the same grounds (21-1987).  Both decisions were based on the claim construction of Evolusion’s US 8,756,845 directed to firearm magazines in which the DC’s “key ruling was that the term ‘magazine catch bar’…excludes a factory-installed”
Continue Reading DC decisions reversed-in-part due to improper claim construction findings

Intel Corporation v. Qualcomm Incorporated

Docket No. 2020-1664 (IPR2018-01429) (https://cafc.uscourts.gov/opinions-orders/20-1664.OPINION.12-28-2021_1885985.pdf)

PROST, TARANTO, HUGHES

December 28, 2021

Brief Summary:  Board’s IPR claim construction affirmed but obviousness decision reversed due to “apparent reason to combine” the prior-art elements.

Summary:  Intel appeal PTAB (“Board”) IPR decision finding some of Qualcomm’s claims of US 8,229,043 relating to radio frequency communication systems patentable.  Intel petitioned for IPR of the ‘043 patent with its customer Apple as real parties-in-interest, alleging anticipation by the prior art “Der” reference and obviousness in view of Der and “Razavi” or Der and “Valla”.  The Board found Intel did
Continue Reading Intel had Article III standing for appeal; Board IPR obviousness decision reversed as Intel showed motivation to combine under KSR

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 3, 2022

Brief Summary:  DC finding Novartis patent not invalid for lack of written description of negative limitation affirmed.

Summary:  HEC appealed DC bench trial decision that Novartis’ US 9,187,405 is not invalid for lack of written description and that HEC’s ANDA infringes.  The Novartis product is a 0.5 mg daily dose of fingolimod hydrochloride (FH) sold as Gileyna for treatment of relapsing-remitting multiple sclerosis (RRMS), and the ‘405 patent is one of three
Continue Reading FC panel finds negative limitation sufficiently described, affirms DC finding of no invalidity

Sky International AG v. Sky Cinemas LLC

Docket No. 2021-1575 (USPTO Appeal No. 91223952) (https://cafc.uscourts.gov/opinions-orders/21-1575.OPINION.12-17-2021_1881473.pdf) (Non-Precedential)

TARANTO, BRYSON, STOLL

December 17, 2021

Brief Summary:  Board decision finding Sky Int.’s and Sky Cinemas marks unlikely to cause confusion affirmed.

Summary:  Sky International (SKI) opposed a trademark (TM) application filed by Sky Cinemas (SC) for “SKY CINEMAS” for “movie theaters” due to SKI’s prior registration of similar marks including the work “SKY” (SKY NEWS for “broadcasting”, “news agencies”, and “television and radio news reporting” (“standard character marks…‘devoid of potentially distinguishing graphical elements’”).  SC alleged several of SKI’s “registrations were filed
Continue Reading Board decision finding Sky Cinemas mark unlikely to cause confusion with Sky International’s marks affirmed

Quest Diagnostics Investments LLC v. USPTO

Docket No. 2021-1115 (IPR2019-00738) (https://cafc.uscourts.gov/opinions-orders/21-1115.OPINION.12-27-2021_1885462.pdf) (Non-Precedential)

MOORE, CLEVENGER, STOLL

December 27, 2021

Brief Summary:  Board IPR decision of anticipation and obviousness of Quest’s claims affirmed.

Summary:  Quest appealed Board IPR decision that the challenged claims of US 8,409,862 relating to using mass spectrometry to detect low levels of testosterone in female humans including purifying the testosterone prior to mass spectrometry (MS).  With respect to this appeal, the Board found LabCorp showed claims 8 and 9 would have been obvious in view of Clark in combination with Draisci (both non-patent prior art).  Claims
Continue Reading IPR decision finding Quest’s testosterone-detection claims obvious affirmed

Alpek Polyester, S.A., DAK Americas LLC, et al. v. Polymetrix AG

Docket No. 2021-1706 (https://cafc.uscourts.gov/opinions-orders/21-1706.OPINION.12-16-2021_1880727.pdf) (Non-precedential)

LOURIE, O’MALLEY, STOLL

December 16, 2021

Brief Summary:  DC grant of SJ of no induced infringement by importation affirmed. Summary:  Alpek/DAK appealed DC grant of summary judgment (SJ) to Polymetrix of no infringement of the patents-in-suit (US 7,790,840; 7,868,125; and 7,192,545) directed to methods for producing polyethylene terephthalate (“PET”) used in bottles and containers.  Alpek is a Mexican company and DAK is an affiliate and exclusive licensee of Alpek’s patents-in-suit.  The FC panel opinion explains that “Polymetrix does not itself manufacture PET
Continue Reading DC finding that Polymetrix did not induce importation of samples into the US affirmed

Moderna Therapeutics, Inc. et al. v. Arbutus Biopharma Corp.

Docket No. 2020-2329 (IPR2-19-00554) (https://cafc.uscourts.gov/opinions-orders/20-2329.OPINION.12-1-2021_1872458.pdf)

LOURIE, O’MALLEY, STOLL

December 1, 2021

Brief Summary:  Board IPR decision of non-obviousness affirmed. Summary:  Moderna appealed USPTO (“Board”) IPR holding the claims of US 8,058,069 directed to “nucleic acid-lipid particle[s]” for delivery of RNAi nucleic acids are not unpatentable as obvious.  The claimed particles require nucleic acid, 50-65 mol % cationic lipid, 4-10 mol% (30-40 mol % of the total lipid) non-cationic lipid mixture of phospholipid and cholesterol (or a derivative thereof), and from 0.5-2 mol% “conjugated lipid that inhibits aggregation of particles”. 
Continue Reading IPR decision finding Moderna did not show Arbutus claims obvious 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

Brief Summary:  DC decision finding a lack of written description based on “[t]he specification’s sole reference to” the claimed dosage amount as well as inventor and expert testimony. Summary:  Biogen appealed DC finding that the claims of US 8,399,514 directed to methods of treating multiple sclerosis with dimethyl fumarate (DMF) invalid for lack of a written description of the claimed 480 mg per day dose.  The ‘514 patent is one of eight listed on the Orange Book for
Continue Reading Single mention of dose at lower end of range is insufficient written description, DC decision affirmed

Invidior UK Limited v. Dr. Reddy’s Laboratories S.A., et al.

Docket No. 2020-2073, -2142 (IPR2019-00329) (https://cafc.uscourts.gov/opinions-orders/20-2073.OPINION.11-24-2021_1870396.pdf)

DYK, O’MALLEY, HUGHES

November 24, 2021

Brief Summary:  IPR decision affirmed due to lack of written description of claimed range and affirmed as to claim to particular percentage shown in the examples. Summary:  Dr. Reddy’s (DRL) appealed USPTO Board final written decision (FWD) that claim 8 of Invidior’s US 9,687,454 directed to mucoadhesive films including “about 48.2 wt %” of a “water soluble polymeric matrix” was not anticipated by the 2009 Myers reference.  Invidior appealed the finding that ‘454 claims 1-5, 7
Continue Reading IPR finding insufficient disclosure of range percentage and anticipation affirmed

Horizon Medicines LLC v. Alkem Laboratories Ltd.

Docket No. 2021-1480 (https://cafc.uscourts.gov/opinions-orders/21-1480.OPINION.11-16-2021_1865455.pdf) (Non-precedential)

DYK, O’MALLEY, HUGHES

November 16, 2021

Brief Summary:  DC refusal to change inventorship, finding of obviousness and no infringement of Horizon’s patents affirmed.

Summary:  Horizon appealed DC finding claims 1, 8, 11 and 14 of US 8,067,033 invalid for obviousness and claims 1-3 and 8-10 of US 8,067,451 not infringed.  Horizon’s product is DUEXISTM (the ‘033 and ‘451 patents are two of six listed on the Orange Book) and Alkem filed a paragraph IV ANDA for a generic product.  Horizon’s patents are directed to combinations of
Continue Reading DC finding that Horizon’s OB patents are obvious and/or not infringed affirmed

Celgene Corp. v. Mylan Pharmaceuticals Inc., et al.

Docket No. 2021-1154 (https://cafc.uscourts.gov/opinions-orders/21-1154.OPINION.11-5-2021_1860406.pdf)

PROST, CHEN, HUGHES

November 5, 2021

Brief Summary:  DC finding of improper venue and failure to state a claim affirmed. Summary:  Celgene sued Mylan for infringement under the Hatch-Waxman Act (HW) following Mylan’s application to the FDA to bring generic pomalidomide (Celgene’s Pomalyst) to market.  The DC found that Celgene’s suit was improperly filed in New Jersey since the defendant Mylan companies are located in West Virginia (“MPI”) and the Netherlands (“NV”).  The FC panel agreed, finding that “Celgene did not show that those defendants committed
Continue Reading DC Hatch-Waxman decision finding improper venue and failure to state a claim affirmed

University of Strathclyde v. Clear-Vu Lighting LLC

Docket No. 2020-2243 (IPR2019-00431) (https://cafc.uscourts.gov/opinions-orders/20-2243.OPINION.11-4-2021_1859852.pdf)

REYNA, CLEVENGER, STOLL

November 4, 2021

Brief Summary:  Board IPR obviousness FWD reversed as “pure conjecture coupled with hindsight reliance”.

Summary:  University of Strathclyde (US) appealed Board final written decision (FWD) finding claims 1-4 of US 9,839,706 relating to methods for disinfecting air from Gram-positive bacteria (e.g., MRSA) using visible light without a photosensitizer unpatentable as obvious.  The Board determined that ‘706 claims 1 and 3 would have been obvious over two non-patent prior art references (Ashkenazi in view of Nitzan) and claims 2 and 4
Continue Reading Board IPR obviousness FWD reversed as “pure conjecture coupled with hindsight reliance”

CosmoKey Solutions Gmbh & Co. KG v. Duo Security LLC et al.

Docket No. 2020-2043 (https://cafc.uscourts.gov/opinions-orders/20-2043.OPINION.10-4-2021_1843694.pdf)

O’MALLEY, REYNA, STOLL

October 4, 2021

Brief Summary:  DC decision finding CosmoKey’s claims unpatentable under section 101 reversed (e.g., “the particular arrangement of steps in claim 1 provides a technical improvement”).

Summary:  CosmoKey appealed DC decision that the claims of US 9,246,903 “are directed to abstract ideas and fail to provide an inventive concept”.  The ‘903 patent claims methods of “authenticating a user to a transaction at a terminal”.  Under “step one of the Alice two-step framework for determining patent eligibility” (US,
Continue Reading DC section 101 ineligibility decision reversed as “the particular arrangement of steps in claim 1 provides a technical improvement” over conventional methods

In Re:  Surigisil, LLP et al.

Docket No. 2020-1940 (https://cafc.uscourts.gov/opinions-orders/20-1940.OPINION.10-4-2021_1843781.pdf)

MOORE, NEWMAN, O’MALLEY

October 4, 2021

Brief Summary:  Board decision finding design patent claim anticipated by art tool prior art reversed (e.g., “the claim is limited to lip implants and does not cover other articles of manufacture”). Summary:  Surgisil appealed USPTO Board decision affirming an examiner’s rejection of its design patent application (29/491,550) to a lip implant as anticipated by a Blick art tool “‘made of “tightly spiral-wound, soft gray paper’ and is used ‘for smoothing and blending large areas of pastel or charcoal.’”  Surgisil’s “claim language recites
Continue Reading Board design patent anticipation decision reversed as prior art is to an art tool while design patent claim is “limited to lip implants”

In Re:  Vivint, Inc.

Docket No. 2020-1992 (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1992.OPINION.9-29-2021_1841724.pdf)

MOORE, SCHALL, O’MALLEY

September 29, 2021

Brief Summary:  PTO has the authority to reconsider ex parte reexamination under § 325(d).

Summary:  Vivint appealed USPTO denial of its request to dismiss Alarm.com’s request for ex parte rexamination of U.S. 6,717,513 after Alarm’s multiple attempts to challenge the validity using the IPR system.  This FC panel opinion explained that “in the post-AIA world, a patent can be reexamined either in federal court during a defense to an infringement action, in an ex parte reexamination by the Patent Office, or in the suite
Continue Reading FC panel finds PTO has the authority to reconsider ex parte reexamination under § 325(d)