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

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Patrick Halloran

Latest from Life Science IP

Stephen Thaler v. Vidal/USPTO

Docket No. 2021-2347 (https://cafc.uscourts.gov/opinions-orders/21-2347.OPINION.8-5-2022_1988142.pdf)

MOORE, TARANTO, STARK

August 5, 2022

Brief Summary:   FC panel affirms ED VA and USPTO findings that only human beings and not computers (i.e., artificial intelligence) can be inventors under the Patent Act.

Summary:  Stephen Thaler appealed USPTO and DC denials of his patent applications “which failed to list any human as an inventor” because “the Patent Act defines ‘inventor’ as limited to natural persons; that is, human beings.”  The ED VA agreed with the USPTO, and Mr. Thaler appealed to the FC.  In the patent applications to a…
Continue Reading Artificial intelligence cannot be an inventor under the Patent Act, Fed. Cir. holds

TalexMedical, LLC v. Becon Medical Limited, et al.

Docket No. 2021-2069-70, 2021-2109-10 (IPR2020-0028, -00030) (https://cafc.uscourts.gov/opinions-orders/21-2069.OPINION.7-22-2022_1981627.pdf) (Non-Precedential)

LOURIE, SCHALL, REYNA

July 22, 2022

Brief Summary:   Board IPR obviousness decision vacated-in-part and remanded due to incorrect claim construction. Summary:  TalexMedical appealed two USPTO (“Board”) IPR decisions holding claims 4-7 of US 8,167,942 and claim 16 of US 8,853,277 (both Becon patents) relating to “correcting misshaped ears using a molding device” not unpatentable for obviousness.  Becon cross-appealed decisions of holding claims 1-3 and 9 of the ‘942 patent and claims 1-2 and 9-10 of the ‘277 patent invalid for obviousness. …
Continue Reading Board IPR obviousness decision vacated-in-part and remanded due to incorrect claim construction

Koninklijke Philips N.V. et al. v. Thales DIS AIS USA LLC, et al.

Docket No. 2021-2106 (https://cafc.uscourts.gov/opinions-orders/21-2106.OPINION.7-13-2022_1977322.pdf)

MOORE, DYK, CHEN

July 13, 2022

Brief Summary:   DC denial of Thales motion to enjoin Philips from seeking ITC exclusion order affirmed as Thales “failed to show it is likely to suffer irreparable harm”. Summary:  Thales appealed DC denial of Koninklijke Philips’ (Philips’) motion for a preliminary injunction enjoining Philips from seeking an exclusion order from the ITC.  The parties design and manufacture wireless communications equipment and had “been engaged in negotiations over what Philips asserts are standard essential patents (SEPs)…
Continue Reading DC denial of Thales’ motion to enjoin Philips’ ITC exclusion order as Thales did not show it was likely to suffer irreparable harm affirmed

Ethanol Boosting System, LLC (MIT) v. Ford Motor Company

Docket No. 2021-1949 (https://cafc.uscourts.gov/opinions-orders/21-1949.OPINION.7-18-2022_1979137.pdf) (Non-precedential)

MOORE, NEWMAN (D), HUGHES

July 18, 2022

Brief Summary:   DC grant of SJ vacated and remanded due faulty claim construction. Summary: EBS appealed DC order granting summary judgment (SJ) of non-infringement of the asserted patents (US 9,708,965; 10,619,580; and 10,781,760) related to fuel management systems to Ford.  That patents related to controlling engine knock by injecting an anti-knock agent (a fuel) directly into a combustion chamber.  Representative claim 1 recites a “fuel management system…comprising:  a first fueling system that uses direct injection; [and] a…
Continue Reading DC grant of SJ to Ford vacated and remanded for erroneous claim construction

CareDx, Inc. (Stanford Univ.) v. Natera, Inc. and Eurofins Viracor, Inc.

Docket Nos. 2022-1027-8 (https://cafc.uscourts.gov/opinions-orders/22-1027.OPINION.7-18-2022_1979207.pdf)

LOURIE, BRYSON, HUGHES

July 18, 2022

Brief Summary:   Stanford’s claims to detecting organ rejection found ineligible under section 101 (e.g., “applying standard techniques in a standard way to observe natural phenomena does not provide an inventive concept”).

Summary:  Stanford (with CareDx as exclusive licensee) appealed DC summary judgment (SJ) decision finding its US 8,703,652; 9,845,497; and 10,329,607 directed to method for detecting transplant rejection or organ failure by measuring an increase in donor DNA (“cfDNA”) in a patient’s biological sample using high…
Continue Reading DC finding of Stanford’s organ rejection detection claims ineligible under section 101 affirmed

Tris Pharma, Inc. v. Actavis Laboratories FL, Inc.

Docket No. 2021-1495 (https://cafc.uscourts.gov/opinions-orders/21-1495.OPINION.7-7-2022_1974736.pdf) (Non-precedential)

MOORE, CHEN, HUGHES

July 7, 2022

Brief Summary:   DC decision following remand finding Actavis did not show Tris’ claims obvious affirmed (e.g., “unexpected result”, long-felt unmet need). Summary:  Actavis appealed new DC decision (Remand Decision) following remand from a FC 2018 decision (Tris I) vacating a 2017 DC decision for failing “to make the necessary factual findings and provide sufficient analysis of the parties’ arguments to permit effective appellate review” and inviting it “to reconsider all the evidence of objective indicia in its overall…
Continue Reading DC finding Actavis did not show Tris’ liquid formulation/blood concentration claims obvious affirmed

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 Coca-Cola…
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