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By: Patrick J. Halloran, Ph.D., J.D.

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Patrick Halloran

Latest from Life Science IP

Pharmacyclics LLC, Jannsen Biotech, Inc. v. Alvogen, Inc., Natco Pharma Limited

Docket No. 2021-2270 (https://cafc.uscourts.gov/opinions-orders/21-2270.OPINION.11-15-2022_2033497.pdf) (Non-Precedential)

CHEN, BRYSON, HUGHES

November 15, 2022

Brief Summary:   DC decisions that Pharmacyclic’s patents were infringed and not invalid for lack of written description, enablement, obviousness, or obviousness-type double patenting affirmed.

Summary:  Pharmacyclics and Jannsen (“Pharmacyclics”) appealed DC finding that Alvogen and Natco’s (“Alvogen’s”) ANDA to market a generic version of Pharmacyclic’s Bruton’s tyrosine kinase (BTK) inhibitor Imbruvica (ibrutinib) for cancer treatment infringed several Pharmacyclic patents.  Pharmacyclic originally asserted many claims of 17 of its patents, but during the DC trial reduced…
Continue Reading DC decision of infringement and no invalidity of Pharmacyclic’s BTK inhibitor-related patents affirmed

CUPP Computer AS v. Trend Micro Inc. (USPTO as Intervenor)

Docket No. 2020-2262-4 (IPR2-19-00764, -00765, -00767 (https://cafc.uscourts.gov/opinions-orders/20-2262.OPINION.11-16-2022_2034079.pdf)

DYK, TARANTO, STARK

November 16, 2022

Brief Summary:   Board claim construction and obviousness findings affirmed.  FC panel explains that “a disclaimer in an IPR proceeding is binding in later proceedings, whether before the PTO or in court” but not “in the very IPR proceeding in which it is made”.

Summary:  CUPP appealed three IPR decision finding Trend Micro (TM) had shown the challenged claims of CUPP’s US 8,631,488; 9,106,683; and 9,843,595 (all pre-AIA) relating to methods for waking a mobile…
Continue Reading Board IPR claim construction and obviousness conclusions affirmed, disclaimer made during IPR not binding “in the very IPR proceeding in which it is made”

Juno Therapeutics, Inc., Sloan Kettering v. Kite Pharma, Inc.

Docket No. 2020-1758 (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1758.OPINION.8-26-2021_1825257.pdf)

MOORE, PROST, O’MALLEY

August 26, 2021 (updated November 9, 2022)

Update (Nov. 9, 2022):  SCOTUS denied Juno’s petition for certiorari (21-1566).  As summarized below, the FC reversed the DC’s original finding that Juno’s ‘190 patent provided sufficient written description (WD), the FC panel concluding “[t]he target” of the scFV “can be any target of clinical interest to which it would be desirable to induce a T cell response” (in the FC panel’s words “any scFv for binding any target”) and that the ‘190 WD “fails…
Continue Reading SCOTUS denies Juno’s petition for certiorari regarding written description

Amgen Inc. v. Sanofi, et al.

SCOTUS Docket No. 21-757; FC Docket No. 2020-1074 (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1074.OPINION.2-11-2021_1731739.pdf)

PROST, LOURIE, HUGHES

November 7, 2022 Update (original FC Panel decision on February 11, 2021)

Third Update (November 7, 2022):  SCOTUS granted certiorari regarding the second question raised in Amgen’s request regarding it functional anti-PCSK9 antibody-related claims and the District Court (DC) (Amgen Inc., et al. v. Sanofi, et al., Civ. No. 14-1317- SLR (D. Del.), judgment entered on January 3, 2017; Amgen Inc., et al. v. Sanofi, et al., Civ. No. 14-1317- RGA (D. Del.), judgment entered on October 3, 2019) and…
Continue Reading SCOTUS grants Amgen’s request for certiorari of lack of enablement of its anti-PCSK9 antibody claims; petition for FC en banc hearing previously denied (June 21, 2021)

Finjan LLC v. ESET, LLC, ESET SPOL. S.R.O.

Docket No. 2021-2093 (https://cafc.uscourts.gov/opinions-orders/21-2093.OPINION.11-1-2022_2027205.pdf)

PROST, REYNA, TARANTO

November 1, 2022

Brief Summary:   DC grant of SJ of invalidity for indefiniteness based on claim construction relating to incorporation-by-reference reversed. Summary:  Finjan appealed DC grant of summary judgment (SJ) of invalidity for indefiniteness based on its construction of the claim term “Downloadable’…to be restricted to ‘small’ executable or interpretable application programs based on the definition of ‘Downloadable’ provided by a patent in the same family that was incorporated by reference into the asserted patents” (US 6,154,844; 6,804,780; 8,079,086; and 9,186,621 (all…
Continue Reading DC claim construction based on definition incorporated-by-reference reversed

Microsoft Corp. v. Uniloc 2017 LLC

Docket No. 2021-2039 (IPR2020-00023) (https://cafc.uscourts.gov/opinions-orders/21-2039.OPINION.10-20-2022_2021742.pdf) (Non-Precedential)

LOURIE, DYK, HUGHES

October 20, 2022

Brief Summary:   Board decision finding claims not obvious vacated and remanded for lack of substantial evidence (contradictory conclusions, claimed steps do not require certain order).

Summary:  Microsoft (MSFT) appealed USPTO Board IPR decision finding it did not show the challenged claims of Uniloc’s US 6,467,088 directed to techniques for updating electronic devices (e.g., assess compatibility) unpatentable for obviousness.  The claims are directed to “[a] processor-implemented method for controlling the reconfiguration of an electronic device” by “receiving information” about the device,…
Continue Reading Board IPR decision finding MSFT did not show Uniloc’s claims obvious vacated and remanded

Shalon Weisner and Shmuel Nemanov v. Google LLC

Docket No. 2021-2228 (IPR2020-00040) (https://cafc.uscourts.gov/opinions-orders/21-2228.OPINION.10-13-2022_2017814.pdf)

REYNA, HUGHES, STOLL

October 13, 2022

Brief Summary:   DC decisions on patent ineligibility claims affirmed-in-part and reversed-in-part as two of the patents arguably “recite a specific implementation of the abstract idea that purports to solve a problem unique to the Internet” (citing, DDR Holdings, FC 2014). Summary:  Mr. Weisner appealed from DC dismissal of his patent infringement suit against Google after finding all of the asserted claims of US 10,380,202; 10,642,910; and 10,394,905; and 10,642,911 that share a common specification ineligible under 35 USC…
Continue Reading DC ineligibility findings for computer-related claims affirmed-in-part and reversed-in part as some showed improvement of “a problem unique to the Internet”

Mylan Pharmaceuticals Inc. v. Merck Sharp & Dome Corp.

Docket No. 2021-2121 (IPR2020-00040) (https://cafc.uscourts.gov/opinions-orders/21-2121.OPINION.9-29-2022_2010851.pdf)

LOURIE, REYNA, STOLL

September 29, 2022

Brief Summary:   Board IPR finding that Mylan did not show Merck’s DP-IV claims invalid for anticipation or obviousness affirmed. Summary:  Mylan appealed USPTO (“Board”) finding Merck’s claims 1-4, 17, 19 and 23 of US 7,326,708 directed to sitagliptin dihydrogenphosphate (DPH) (a dipeptidyl peptidase-IV (“DP-IV”)) were not invalid for anticipation or obviousness.  The ‘708 patent is listed on the FDA’s Orange Book for Steglujan (for glycemic control) as well Janumet, Janumet XR, Januvia, and Juvisync for treating Type…
Continue Reading IPR finding that Mylan did not show Merck’s DP-IV claims invalid for anticipation or obviousness affirmed

Polaris Innovations Limited v. USPTO

Docket No. 2019-1483 (IPR2017-01500), 2019-1484 (IPR2017-00901) (https://cafc.uscourts.gov/opinions-orders/19-1483.OPINION.9-15-2022_2004261.pdf)

PROST, CHEN, STOLL

September 15, 2022

Brief Summary:   Board denial of join request to dismiss IPRs following Arthrex II, claim construction (BRC as pre-Nov. 23, 2018), and invalidity decisions affirmed. Summary:  This decision relates to appeals of two PTAB (“Board”) IPR findings that NVIDIA shows Polaris’ US 6,532,505 and 7,405,993 relating to computer memory unpatentable.  The FC remanded the original decisions based on the Appointments Clause and its Anthrex (FC 2019, “Anthrex I”) decision that was subsequently vacated by SCOTUS (US 2021, “Anthrex II”). Between…
Continue Reading Board denial of IPR dismissal after Arthrex II, claim construction, and invalidity decisions affirmed

SawStop Holding, LLC vs. USPTO

Docket No. 2021-1537, -2105 (https://cafc.uscourts.gov/opinions-orders/21-1537.OPINION.9-14-2022_2003622.pdf)

NEWMAN, LINN, CHEN

September 14, 2022

Brief Summary:   DC and USPTO decision not to grant patent term adjustments to SawStop’s patents affirmed (type C delay extensions).

Summary:  SawStop appealed DC grant of summary judgment (SJ) to the USPTO for denying SawStop any prosecution-related patent term adjustment (PTA) under the American Inventors Protection Act of 1999 to the term of US 9.552,476 and 9,927,796.  There PTA is based on three categories of prosecution delays:  (A) when the PTO fails in certain specified ways to timely respond to the applicant;…
Continue Reading DC and USPTO decisions not to grant patent term adjustments to SawStop’s patents affirmed (type C delay extensions)

INVT SPE LLC v. Int. Trade Commission (ITC), HTC America, Inc. et al. (Intervenor)

Docket No. 2020-1903 (https://cafc.uscourts.gov/opinions-orders/20-1903.OPINION.8-31-2022_1997811.pdf)

NEWMAN, TARANTO, CHEN

August 31, 2022

Brief Summary:   ITC decision finding no infringement of functional computer claims affirmed; decision regarding expired patent dismissed. Summary:  INVT appealed ITC decision finding that HTC et al. did not violate 19 USC section 1337 (section 337) by importation and sale of smartphones, smart watches, and tablets due to failure “to meet the technical prong of the domestic industry requirement of” (ALJ decision not reviewed by the ITC) and non-infringement of five INVT patents, two…
Continue Reading ITC decision of non-infringement of functional/capability-type computer claims affirmed; decision as to expired patent found moot

Best Medical Int., Inc. v. Elekta Inc.

Docket No. 2021-2099, -2100 (IPR2020-0070-72) (https://cafc.uscourts.gov/opinions-orders/21-2099.OPINION.8-26-2022_1996028.pdf)

HUGHES, LINN, STOLL

August 26, 2022

Brief Summary:   Board IPR obviousness decisions affirmed, appeal regarding canceled claim dismissed. Summary:  BMI appealed two IPR Board decisions finding the challenged claims of US 6,393,096 directed to methods and apparatus for radiation therapy of tumors based on the Board’s conclusion “that a person having ordinary skill in the art would have had formal computer programming experience” and discounting BMI’s expert testimony.  Two IPR petitions were filed by Varian Medical Systems and two “copycat petitions” were filed by…
Continue Reading Board IPR obviousness decisions affirmed, appeal regarding canceled claim dismissed

In Re:  Jeffrey A. Killian

Docket No. 2021-2113 (https://cafc.uscourts.gov/opinions-orders/21-2113.OPINION.8-23-2022_1994643.pdf)

TARANTO, CLEVENGER, CHEN

August 23, 2022

Brief Summary:   Board decision finding claims ineligible under section 101 affirmed. Summary:  Mr. Killian appealed USPTO Board decision affirming the examiner’s rejection of certain claims of US Ser. No. 14/450,042 under 35 USC section 101 (Appeal No. 2020-003680, Feb. 1, 2021).  “The ‘042 application relates to a system and method “for determining eligibility for Social Security Disability Insurance [SSDI] benefits through a computer network” which includes obtaining information “from two sources: (1) a Federal Social Security database; and (2) a State database…
Continue Reading Board decision finding ineligibility under section 101 affirmed (abstract idea, generic computer)

Par Pharmaceutical, Inc. et al. v. Eagle Pharmceuticals, Inc.

Docket No. 2021-2342 (https://cafc.uscourts.gov/opinions-orders/21-2342.OPINION.8-18-2022_1993064.pdf)

MOORE, PROST, HUGHES

August 18, 2022

Brief Summary:   DC finding of no infringement under 271(e)(2) affirmed based on Eagle’s ANDA specification to which Eagle is bound, and its denial of DJ affirmed. Summary:  Par appealed DC finding that Eagle’s ANDA regarding Par’s Vasostrict® product (a vasopressin injection product used to treat patients with critically low blood pressure) does not infringe the claims of US 9,744,209 or 9,750,785 under 35 USC section 271(e)(2).  Eagle’s ANDA was filed before the ‘209 and ‘785 patents expired, and…
Continue Reading DC decision of no infringement by Eagle’s ANDA specification and denial of DJ affirmed

LSI Corporation and Avago Techs. U.S. Inc. v. Regents of the University of Minnesota

Docket No. 2021-2057 (IPR2017-01068) (https://cafc.uscourts.gov/opinions-orders/21-2057.OPINION.8-11-2022_1990664.pdf)

DYK, REYNA, HUGHES

August 11, 2022

Brief Summary:   Board decision that LSI did not timely raise arguments or show portions of prior art patent relied upon was “by another” affirmed.

Summary:  UMN sued LSI and Avago (“LSI”) for infringement of US 5,859,601 and LSI petitioned the USPTO (“Board”) for IPR of the ‘601 patent naming inventors J. Moon and B. Brickner relating to computer storage devices using maximum transition run (“MTR”) coding.  The Board instituted IPR of claims…
Continue Reading Board IPR decision of no anticipation affirmed (untimely arguments, portions of prior art relied upon not “by another”)

Hologic, Inc., et al. v. Minerva Surgical, Inc.

Docket No. 2019-2054, -2081 (https://cafc.uscourts.gov/opinions-orders/19-2054.OPINION.8-11-2022_1990706.pdf)

STOLL, CLEVENGER, WALLACH

August 11, 2022

Brief Summary:   On remand from SCOTUS, assignor estoppel decision affirmed as asserted claim not broader than assigned claim. Summary:  This case is on remand from SCOTUS which vacated the FC’s prior judgment affirming the DC’s grant of summary judgment (SJ) of no invalidity of claim 1 of US 9,095,348 to Hologic based on the doctrine of assignor estoppel, which precludes an assignor from challenging the validity of an assigned patent.  Here, the FC was required to “determine whether claim…
Continue Reading Assigned claim not broader than asserted claim, DC assignor estoppel decision affirmed