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

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Patrick Halloran

Latest from Life Science IP

Moskowitz asserted three spinal-implant patents: U.S. Patent Nos. 8,353,913, 9,889,022, and 10,478,319. The DC entered summary judgment of noninfringement of the ’913 and ’022 patents after construing “universal” and determining that preambles containing that term were limiting. A jury separately found no infringement of claim 1 of the ’319 patent, and the district court denied Moskowitz’s JMOL motion. The Federal Circuit affirmed all of those rulings, reiterating previous decisions (Catalina Marketing, Bicon, Bio-Rad, Pacing Technologies, and Poly-America).

Practical Takeaways from Moskowitz. (1) Do not assume a preamble is harmless: where the claim body relies on the preamble for antecedent basis,…
Continue Reading Moskowitz Family LLC v. Globus Medical, Inc. (Docket No. 2024-1696 (Sept. 11, 2026)

Parties: Cytiva Bioprocess R&D AB v. JSR Corp., et al.

Date of Decision: December 4, 2024Judges: Prost, Taranto, and Hughes

Appeal of:  Six IPR final written decisions

Background

  • The patents cover chromatography matrices and processes for isolating biomolecules, particularly antibodies, via affinity chromatography.
  • JSR filed six IPRs, alleging that various claims in the patents were unpatentable due to obviousness.
  • The PTAB held most claims unpatentable but upheld four claims based on the lack of evidence of a reasonable expectation of success.

Court’s Decision

  • Affirmed: The PTAB’s determination that 79 claims were unpatentable due to obviousness.
  • Reversed: The PTAB’s finding that

    • …
    Continue Reading Cytiva’s claims unpatentable for obviousness based on inherency

    Neonode Smartphone LLC v. Samsung Electronics America, Inc.

    Docket No. 2023-2024

    LOURIE, PROST, STARK

    August 20, 2024

    Non-Precedential

    Brief Summary:  DC indefiniteness finding reversed and remanded, the FC panel finding the prosecution history “provides sufficient clarity”.

    Summary:  Neonode sued Samsung for infringement of U.S. Patent No. 8,095,879, which relates to a user interface for a mobile handheld computer unit with a “touch sensitive area in which a representations of a function is provided…wherein the representation consists of only one option for activating the function” and “object gliding along the touch sensitive area away from the touched location.”  The DC concluded…
    Continue Reading DC indefiniteness finding reversed as prosecution history “provides sufficient clarity”

    Cisco Systems, Inc. et al. v. Hewlett Packard Enterprise Co.

    Docket No. 2022-2290, 2023-1183 (PR2021-00593, IPR2022-00081, IPR2022-00084)

    DYK, REYNA, STOLL

    August 16, 2024

    Non-Precedential

    Brief Summary:  FC panel vacated PTAB no obviousness decision vacated as specific benefit is not necessary for a motivation to combine and fact-based analysis was based only on attorney argument rather than evidence.

    Summary:  This is a nonprecedential opinion regarding the validity of K.Mizra’s U.S. Patent No. 8,234,705 relating to a system for protecting networks from infected devices by quarantining the devices and providing limited access to a remediation server.

    The primary issue on appeal was…
    Continue Reading PTAB IPR finding of no obviousness vacated and remanded (specific benefit not required in motivation to combine analysis)

    Maxell Ltd. v. Amperex Tech. Ltd.

    Docket No. 2023-1194

    LOURIE, CHEN, CUNNINGHAM

    March 6, 2024

    Brief Summary:  DC indefiniteness decision reversed and remanded as “there is no contradiction in the claim language” (limitations to Markush group of transition elements and 30-100% per mole).

    Summary:   U.S. Patent No. 9,077,035, owned by Maxell, describes a rechargeable lithium-ion battery and the claims are directed to a lithium-ion battery with a specific composition of lithium-containing transition metal oxides.  The DC found the claim language defining transition metal element M1 to be indefinite, leading to a partial final judgment in favor of Amperex.  The FC…
    Continue Reading DC indefiniteness finding reversed and remanded as no contradiction in claim limitations

    Sumitomo Pharma Co., Ltd. v. USPTO (Intervenor)

    Docket No. 2022-2276 (IPR2020-01053) (https://cafc.uscourts.gov/opinions-orders/22-2276.OPINION.4-5-2024_2296961.pdf)

    TARANTO, HUGHES, CUNNINGHAM

    April 5, 2024

    Brief Summary:  Sumimoto’s appeal of IPR obviousness decision vacated and remanded for dismissal as the disputed patent was expired as of the appeal and Sumimoto had no interest in past or future infringement.

    Summary:   Sumimoto appealed IPR decision finding all 75 claims of US 5,532,372 directed to “[a] method for treating schizophrenia in a patient without a clinically significant weight gain” (“weight gain being a recognized adverse side-effect of many antipsychotic drugs”) using lurasidone.  The FC panel opinion is focused…
    Continue Reading IPR obviousness decision vacated and remanded as patent expired and Sumimoto had no “interest in any forward-looking exclusion” or past infringement by unlicensed sales (IPR addresses “patient” vs. population but not discussed here)

    AI Visualize, Inc. v. Nuance Communications, Inc., Mach7 Technologies, Inc.

    Docket No. 2022-2109 (https://cafc.uscourts.gov/opinions-orders/22-2109.OPINION.4-4-2024_2296276.pdf)

    MOORE, REYNA, HUGHES

    April 4, 2024

    Brief Summary:  DC grant of motion to dismiss due to 101 ineligibility affirmed.

    Summary:   AI appealed DC grant of a motion to dismiss (12(b)(6)) that the claims of its US 8,701,167; 9,106,609; 9,438,667; and 10,930,397 asserted against Nuance are “directed to an abstract idea and failed to provide an inventive step that transformed that abstract idea into a patent-eligible invention” and therefore ineligible under section 101.  The patents related to systems for “advanced visualization of medical scans using…
    Continue Reading DC grant of motion to dismiss due to 101 ineligibility affirmed (abstract idea, no “improvement in computer technologies”)

    Salix Pharm., Ltd. et al. v. Norwich Pharm. Inc.

    Docket No. 2022-2153, -1952 (https://cafc.uscourts.gov/opinions-orders/22-2153.OPINION.4-11-2024_2300049.pdf)

    LOURIE, CHEN, CUNNINGHAM

    April 11, 2024

    Brief Summary:  DC obviousness of method of treatment and polymorph patents and ANDA-related (FDA cannot approve current ANDA, correctly denied ANDA amendment) decisions affirmed. 

    NOTE: Salix argued it “actually succeed[ed]” and did not expect to succeed because the beta form “remained undisclosed”, which the FC panel summarized as incorrectly suggesting “that no unknown entity could ever be obvious, as one cannot reasonably expect what was hitherto unknown”.

    Summary:  Salix appealed DC judgment holding claim 2 of US 8,309,569,…
    Continue Reading DC obviousness and procedural ANDA-related decisions affirmed

    Luv N’ Care, Ltd., Nouri E. Hakim v. Lindsey Laurain, Eazy-PZ, LLC

    Docket No. 2022-1905, -1970 (https://cafc.uscourts.gov/opinions-orders/22-1905.OPINION.4-12-2024_2300689.pdf)

    REYNA, HUGHES, STARK

    April 12, 2024

    Brief Summary:  DC grant of LNC’s unclean hands defense affirmed; DC findings of no obviousness or inequitable conduct vacated and remanded.

    Summary:   EZPZ appealed DC judgment against it for “unclean hands”, which the FC panel affirmed here.  LNC appealed DC judgment for EZPZ of no inequitable conduct (IE), which the FC panel vacated and remanded here.  The FC panel also vacated the DC’s grant of partial summary judgment (SJ) of invalidity for obviousness and order…
    Continue Reading LNC’s unclean hands defense affirmed; no obviousness or inequitable conduct findings vacated and remanded

    Edwards Life Sciences Corp. et al. v. Meril Life Sciences PVT. LTD. et al.

    Docket No. 2022-1877 (https://cafc.uscourts.gov/opinions-orders/22-1877.OPINION.3-25-2024_2290338.pdf)

    LOURIE, STOLL, CUNNINGHAM

    March 25, 2024

    Brief Summary:  DC grant of SJ to Meril based on determination of 271(e)(1) safe harbor affirmed. Summary:   Edwards appealed DC grant of summary judgment (SJ) finding “Meril’s act of importation of the two transcatheter heart valve systems fell within the safe harbor provision of 35 U.S.C. § 271(e)(1).” Meril is an India-based company that started clinical trials for its system (“Myval”) in India in October 2018 and was approved for sale in the European…
    Continue Reading DC grant of SJ based on determination of 271(e)(1) safe harbor affirmed

    Virtek International ULC v. Assembly Guidance Systems, Inc., DBA Aligned Vision

    Docket No. 2022-1998, -2022 (IPR2021-00062) (https://cafc.uscourts.gov/opinions-orders/22-1998.OPINION.3-27-2024_2292085.pdf)

    MOORE, HUGHES, STARK

    March 27, 2024

    Brief Summary:  IPR obviousness finding reversed due to no motivation to combine; IPR non-obviousness finding affirmed as substantial evidence supported conclusion of no motivation to combine.

    Summary:   Virtek appealed USPTO Board IPR holding that certain claims of Virtek’s US 10,052,734 directed to a “method for aligning a laser projector with respect to a work surface” to be invalid for obviousness.  ­­­Aligned Vision (AV) appealed the finding it did not show certain claims to be invalid…
    Continue Reading IPR obviousness finding reversed for no motivation to combine affirmed

    Janssen Pharmaceuticals, Inc. et al. v. Teva Pharmaceuticals USA, Inc., Mylan Labs. Ltd.

    Docket No. 2022-1258, -1307 (https://cafc.uscourts.gov/opinions-orders/22-1258.OPINION.4-1-2024_2293991.pdf)

    DYK, PROST, HUGHES

    April 1, 2024

    Brief Summary:  DC obviousness decision vacated and remanded; no indefiniteness finding affirmed. Summary:   Teva appealed DC bench trial decision that it had not proved the obviousness of the asserted claims of Janssens’ Orange Book (OB) US 9,439,906 relating to an extended-release intramuscular injectable paliperidone palmitate (PP) for treating schizophrenia (sold as Invega Sustenna).  The ‘906 patent claims “[a] dosing regimen…comprising” intramuscular (im) administration of “about 150 mg-eq sustained release PP “in the deltoid” on…
    Continue Reading DC analysis improper to support finding Teva did not show obviousness of Janssen’s schizophrenia drug OB claims

    Chewy, Inc. v. International Business Machines Corp.(IBM)

    Docket No. 2022-1756 (https://cafc.uscourts.gov/opinions-orders/22-1756.OPINION.3-5-2024_2280474.pdf)

    MOORE, STOLL, CUNNINGHAM

    March 5, 2024

    Brief Summary:  DC finding of noninfringment partially affirmed; ineligibility under 101 affirmed.

    Summary:   IBM appealed DC grant of summary judgment (SJ) of noninfringement of certain claims of US 7,072,849 and its 35 USC 101 ineligibility determination regarding the claims of US 7,076,443, both patents being related to improvements in web-based advertising.  The FC panel opinion explains that “[i]n the prior art, advertisements would be downloaded at the same time as applications” resulting in a “diminished service response” while the claimed methods…
    Continue Reading Patents NPE Filing Receipt DC finding of noninfringment partially affirmed; ineligibility under 101 affirmed

    Pfizer Inc. v. Sanofi Pasteur Inc. et al. (Merck)

    Docket No. 2019-1871, -1873, -1875-76, -2224 (IPR2017-02131-32, -02136, -02138, IPR2018-00187) (https://cafc.uscourts.gov/opinions-orders/19-1871.OPINION.3-5-2024_2280462.pdf)

    LOURIE, BRYSON, STARK

    March 5, 2024

    Brief Summary:  Five IPR FWDs finding Pfizer’s S. pneumoniae vaccine claims unpatentable for obviousness affirmed.

    Summary:   Pfizer appealed five IPR final written decisions (FWDs) concluding claims 1-45 of its US 9,492,559 directed to S. pneumoniae glyconjugates (pneumonia, febrile bacteremia, and meningitis vaccines) are unpatentable for obviousness.  Independent claim 1 relates to a composition comprising the S. pneumoniae serotype 22F glyoconjugate having “a molecular weight [MW] of between 1000 kDa and 12,500 kDa”…
    Continue Reading Board IPR FWDs finding Pfizer’s S. pneumoniae vaccine claims unpatentable for obviousness affirmed

    Weber, Inc. v. Provisur Technologis, Inc.

    Docket No. 2022-1751, -1813 (IPR2020-01556, -01557 (https://cafc.uscourts.gov/opinions-orders/22-1751.OPINION.2-8-2024_2267070.pdf)

    REYNA, HUGHES, STARK

    February 8, 2024

    Brief Summary:  Board IPR decisions reversed and vacated for improper determination of public availability of instruction manuals and claim construction determinations.

    Summary:   Weber appealed two IPR final written decisions (FWDs) finding that Provisur’s US 10,639,812 and 10,625,436 relating to “high-speed mechanical slicers used in food-processing plants to slice and package food articles, such as meats and cheeses” were shown to be unpatentable for obviousness.  The Board first concluded that “Weber’s operating manuals were not prior art printed publications” because…
    Continue Reading IPR decisions of no obviousness vacated and remanded for improper public accessibility and claim construction determinations

    Google LLC, et al. v. EcoFactor, Inc.

    Docket No. 2022-1750, -1767 (IPR2020-01504, -00792 (https://cafc.uscourts.gov/opinions-orders/22-1750.OPINION.2-7-2024_2266326.pdf))

    REYNA, TARANTO, STARK

    February 7, 2024

    Brief Summary:  Board implicitly construed claims; that construction was improper and led to a finding Google had not shown obviousness; decision vacated and remanded. Summary:   Google appealed from Board IPR final written decision (FWD) finding EcoFactor’s US 8,498,753 relating to thermostat-related systems and methods are not unpatentable.   Google’s IPR alleged obviousness in view of two US patents (Wedekind and Ehlers).  Representative claim 1 includes method steps 1a-1m, including 1m inputs [i]-[v] that are most relevant to this appeal. …
    Continue Reading Board’s incorrect implicit claim construction, and finding of no obviousness, vacated and remanded