Dropbox, Inc. et al. v. Synchronoss Technologies, Inc. Docket No. 2019-1765, -1767, -1823 PROST, WALLACH, HUGHES June 19, 2020 Non-precedential Brief Summary: DC holdings of patent ineligibility affirmed as claims did not, e.g., “describe how to solve the problem in a manner that encompasses something more than the ‘principle in the abstract’”. Summary: Dropbox appealed DC decision holding US 6,178,505, 6,058,399 and 7,567,541 relating to delivery, upload and backup of computer data ineligible under § 101. The DC found “that the patents claim abstract ideas, and…provide no inventive concept transforming the abstract idea into patentable subject matter.” The FC panel…

Boston Scientific Neuromodulation Corp. v. Nevro Corp., Andrei Iancu (USPTO, intervenor) Docket No. 2019-1582, -1635 (IPR2017-01812, -01920) LOURIE, MOORE, O’MALLEY May 29, 2020 Non-precedential Brief Summary: Board IPR final written decisions finding certain of Boston’s claim unpatentable for obviousness and others patentable affirmed. Summary: Boston appealed Board IPR decision finding certain claims of US 6,895,280 relating to “[a] spinal cord stimulation system”, methods for using, and recharging a battery used in the same unpatentable as obvious. Nevro cross-appealed Board IPR decision that certain ‘280 method claims are not unpatentable as obvious. The FC panel first concluded that the Board’s findings…

ESIP Series 2, LLC v. Puzhen Life USA, LLC Docket No. 2019-1659 (IPR2019-02197) LOURIE, REYNA, HUGHES May 19, 2020 Brief Summary: Board IPR obviousness decision affirmed. Board’s real-party-in-interest determination not appealable under § 314(d). Summary: ESIP appealed Board IPR decision finding the claims of US 9,415,130 relating to systems and methods for “germicidal protection and aromatic diffusion in enclosed habitable spaces” (“[a] method for introducing a scent into breathable air”) invalid for obviousness in view of two different combinations of prior art (Sevy and Cronenberg, Sevy and Giroux). The Board determined that “Sevy discloses every element of the challenged claims…

Cochlear Bone Anchored Solutions AB v. Oticon Medical AB, et al. Docket No. 2019-1105, -1106 (IPR2017-01018, -01019) NEWMAN, O’MALLEY, TARANTO May 15, 2020 Brief Summary: Board IPR obviousness findings affirmed, while its analysis of one means-plus-function claim vacated and remanded. The FC panel also emphasized that indefiniteness is not at issue in an IPR. Summary: Cochlear appealed Board IPR finding that Oticon proved claims 4-6 and 11-12 of US 7,043,040 directed to “bone-conducting bone-anchored hearing” aids unpatentable for obviousness. Oticon appealed the Board’s decision that claims 7-10 were not shown to be unpatentable. Cochlear disclaimed claims 1-3 and 13 during…

Boston Scientific Neuromodulation Corp. v. Nevro Corp., USPTO as Intervenor Docket No. 2019-1584 (IPR2017-01899) LOURIE, MOORE, O’MALLEY May 18, 2020 Non-precedential Brief Summary: Board IPR FWD finding BSN’s claims obvious affirmed (e.g., BSN “waived any claim construction argument…by failing to raise it before the Board”, obviousness decision supported by substantial evidence). Summary: BSN appealed the Board’s final written decision (FWD) holding claims 1-20 of US 7,587,241 claiming “[a] method for controlling an implantable medical device” by “monitoring a voltage of a power source” and, “if…above a first threshold…listening for a first type of telemetry” and a second type and discontinuing…

Jodi A. Schwendimann, Cooler Concepts, Inc. v. Arkwright Advanced Coating, Inc. Docket No. 2018-2416, 2019-1012 O’MALLEY, REYNA, WALLACH May 13, 2020 Brief Summary: DC finding of willful infringement and award of prejudgment interest affirmed; “corrected nunc pro tunc” assignment effective to show ownership. Summary: Arkwright appealed DC finding of willful infringement of six US patents regarding methods for transferring images onto a colored base and about $2.6 million damages and pre-judgment interest award. Ms. Schwendimann became the owner of patent applications leading to the disputed patents as part of a settlement with her previous employer. The original complaint against Arkwright…

Cisco Systems, Inc. v. Uniloc 2017 LLC Docket No. 2019-2048 MOORE, O’MALLEY, TARANTO May 13, 2020 Non-Precedential Brief Summary: DC finding of patent ineligibility under § 101 affirmed (abstract idea since claim includes “no specific asserted improvements”). Summary: Uniloc appealed DC finding that claim 6 of US 6,980,522 relating to a radio communication system with “a plurality of stations capable of forming an ad-hoc network” ineligible under § 101. Under the Alice (US 2014) eligibility framework, the DC found “that the claims were directed to the abstract idea of ‘ranking stations based on antenna performance characteristics and selecting the station…

Eagle Pharmaceuticals Inc. v. Slayback Pharma LLC Docket No. 2019-1924 O’MALLEY, REYNA, CHEN May 8, 2020 Brief Summary: DC finding of no infringement under DOE based on disclosure-dedication doctrine affirmed. Summary: Eagle appealed DC judgment of non-infringement of US Pat. Nos. 9,265,831; 9,572,796; 9,572,797; and 10,010,533 (four of six Orange Book patents for Eagle’s BELRAPZO® (bendamustine for CLL and indolent B-cell non-Hodgkin lymphoma; NDA N205580). The FC panel opinion explains that all four patents “share the same specification and all independent claims recite essentially the same limitations.” Claim 1 of the ‘796 patent claims “[a] non-aqueous liquid composition comprising…bendamustine…a pharmaceutically…

Grit Energy Solutions, LLC v. Oren Technologies, LLC Docket No. 2019-1063 (IPR2017-00768) PROST, NEWMAN, WALLACH April 30, 2020 Brief Summary: PTAB IPR decision of no obviousness vacated and remanded; Grit found to have Article III standing based on previously dismissed (without prejudice) litigation. Summary: Grit appealed PTAB IPR decision finding claims 1-7 of US 8,585,341 directed to a “proppant discharge system” (a proppant being “a material, such as sand or other particulates, that prevents ground fractures from closing during hydraulic fracturing”) were not shown to be unpatentable for obviousness in view of a US patent (“Eng Soon”) and a French…

Uniloc USA, Inc. et al. v. LG Electronics USA, Inc. et al. Docket No. 2019-1835 MOORE, REYNA, TARANTO April 30, 2020 Brief Summary: DC decision of patent ineligibility under § 101 for being abstract (Alice, step one) reversed and remanded (“patent-eligible improvement to computer functionality”). Summary: Uniloc appealed DC grant of summary judgment (SJ) to LG after finding the ‘049 patent claims directed to communication systems ineligible under § 101 as being directed to an abstract idea. The DC held the claims to be “directed to the abstract idea of ‘additional polling in a wireless communication system,’ analogizing the claims…

Pfizer Inc. v. Chugai Pharmaceutical Co., Ltd. Docket No. 2019-1513, -1514 (IPR2017=01357, -01358) REYNA, WALLACH, HUGHES April 27, 2020 (Non-precedential) Brief Summary: Pfizer’s appeal of IPR decision finding it did not show invalidity of Chugai’s protein purification claims dismissed for lack of Article III standing. Summary: Pfizer appealed Board IPR decision finding it did prove the challenged claims of Chugai’s US 7,332,289 and 7,927,815 regarding “methods for purifying proteins by ‘removing contaminant DNA from a sample containing a physiologically active protein’” (e.g., “the surprising finding that contaminant DNA can be efficiently removed…without using complicated chromatographic processes”) unpatentable. The FC panel…

Verinata Health, Inc., Illumina, Inc. v. Ariosa Diagnostics, Inc., Roche Mol. Sys., Inc. Docket No. 22018-2198, -2303, -2305, -2306, -2317 REYNA, WALLACH, HUGHES April 24, 2020 (Non-precedential) Brief Summary: DC denial of injunction and damages, as well as its refusal to grant JMOL of noninfringement and invalidity, affirmed. Summary: Illumina appealed the DC denial of permanent injunction and damages issues and Ariosa cross-appealed the DC denial of its motion for a judgment as a matter of law (JMOL) on noninfringement (regarding Ariosa’s Harmony Prenatal Test, versions 1 and 2 (V1, V2)) and invalidity (anticipation, enablement). Illumina’s disputed US 7,955,794 directed…

Biogen Int. GmbH v. Banner Life Sciences LLC Docket No. 2020-1373 LOURIE, MOORE, CHEN April 21, 2020 Brief Summary: DC judgment that patent extended under § 156 does not included metabolite covered by claim but not listed in Tecfidera® label affirmed. Summary: Biogen appealed DC judgment that Banner does not infringe the portion of US 7,619,001 that was extended by 811 days under the Hatch-Waxman Act (35 USC § 156) regarding the multiple sclerosis drug Tecfidera® (“DMF”, the dimethyl ester of fumaric acid). The FC panel explains that ‘001 method of treatment claim 1 covers administration of a “pharmaceutical preparation…