Genentech, Inc. v. Hospira, Inc. (United States, Intervenor) Docket Nos. 2018-1933 (IPR2016-01837) PROST, NEWMAN, CHEN January 10, 2020 Brief Summary: Board’s IPR anticipation and obviousness findings affirmed. Summary: Genentech appealed PTAB (“Board”) IPR final written decision (FWD) finding certain claims of US 7,807,799 directed to methods of purifying antibodies (“a protein which comprises CH2/CH3 region”) using “protein A affinity chromatography at a temperature in the range of from about 10oC to about 18oC” unpatentable as anticipated or obvious. The FC panel explained that prior art WO ‘389 (an alleged anticipatory reference) teaches use of temperature range of “room temperature (18-25oC)”,…

Hospira, Inc. v. Fresenius Kabi USA, LLC Docket Nos. 2019-1329, -1367 NEWMAN, LOURIE, TARANTO January 9, 2020 Brief Summary: DC obviousness judgment of affirmed as “wherein” clause only describes “a result that was inherent in the prior art”. Summary: Hospira appealed DC judgment finding claim 6 of US 8,648,106 relating to the Precedex Premix product (including the sedative dexmedetomidine; NDA N021038 also listing five other non-expired US patents (see FN1 re: ‘049 patent) invalid for obviousness. Sole independent ‘106 claim 1 is directed to “[a] ready to use liquid” dexmedetomidine in “a sealed glass container, wherein the liquid pharmaceutical composition…

Amgen Inc. v. Amneal Pharm., Pirimal, et al., Zydus Pharm., Cadila et al. Docket Nos. 2018-2414, 2019-1086 NEWMAN, LOURIE, TARANTO January 7, 2020 Brief Summary: DC claim construction reversed (“composition comprising” not closed to other components); no infringement by Amneal reversed; no infringement by Pirimal affirmed; Amneal); infringement by Zydus affirmed. Summary: Amgen appealed DC judgment that neither Amneal nor Pirimal infringes certain claims of US 9,375,405 relating to its Sensipar® product for secondary hyperparathyroidism (rapid dissolution cinacalcet hydrochloride, NDA 21688 which also lists US 7,829,595). Zydus and Cadila (“Zydus”) cross-appealed DC judgment that they do infringe certain ‘405 claims.…

SIPCO, LLC v. Emerson Electric Co. Docket Nos. 2018-1856 (IPR2016-01895) LOURIE, MOORE, TARANTO December 20, 2019 Non-precedential Brief Summary: IPR invalidity decision vacated and remanded due to erroneous claim construction (e.g., different claim terms “presume[d]” to “have different meanings”). Summary: SIPCO appeal PTAB IPR final written decision finding certain claims of SIPCO’s US 7,697,492 directed to a communication system unpatentable as anticipated and obvious based on construction of “scalable address” in the limitation “a receiver address comprising a scalable address of at least one remote device” as “an address that has a variable size based on the size and complexity…

Persion Pharmaceuticals LLC v. Alvogen Malta Operations Ltd. Docket Nos. 2018-2361 O’MALLEY, REYNA, CHEN December 27, 2019 Brief Summary: DC findings of invalidity of Persion’s hepatic insufficiency claims related to Zohydro ER for obviousness and no WD affirmed. Summary: Persion appealed DC decision finding US 9,265,760 and 9,339,449 relating to methods for treating pain in a “patient having mild or moderate hepatic impairment” using “extended release hydrocodone” (Zohydro ER, two of 17 OB patents) invalid as obvious and lacking written description (WD). The ‘760 and ‘449 patents share a common written description and priority date. The FC panel explained that…

Fox Factory Inc. v. SRAM LLC Docket Nos. 2018-2024, -2025 (IPR2017-00118, -00472) PROST, WALLACH, HUGHES December 18, 2019 Brief Summary: Board IPR decision of no obviousness vacated and remanded for reevaluation of secondary consideration evidence with respect to the required nexus. Summary: Fox appealed IPR final decision in which the USPTO (“Board”) finding the challenged claims of SRAM’s US 9,182,027 covering an improved bike chainring not invalid for obviousness. Two IPRs address two different sets of claims, the “outboard offset claims” (-00472 IPR) and the “inboard offset claims” (-00118 IPR), and the Board made similar findings in each decision. The…

Syngenta Crop Protection, LLC v. Willowood, LLC et al. Docket Nos. 2018-1614, -2044 REYNA, TARANTO, STOLL December 18, 2019 Brief Summary: DC dismissal of copyright claims relating to Syngenta’s label remanded as premature. DC erred by imposing single-entity requirement on § 271(g). Summary: Syngenta appealed DC dismissal of copyright claims relating to its product labels and findings of no infringement of its “Compound Patents” (US 5,602,076; 5,633,256 directed to fungicides including azoxystrobin) as well as US 5,847,138 directed processes including an “etherfication step” and US 8,124,761 using “between 0.1 and 2 mol % of” the chemical catalyst DABCO, respectively. Syngenta…

Johns Manville Corp. et al. (Petitioner) v. Knauf Insulation et al. (Patent Owner) IPR2018-00827 (US 9,828,287 B2) Final Written Decision entered October 16, 2018 Designated as Informative by the USPTO on December 11, 2019 Brief Summary: Informative FWD concluded Petitioner did not meet its burden to show obviousness (e.g., did not “explain[] sufficiently why” combination of references would have been made with a reasonable expectation of success). Summary: In this final written decision, designated as Informative by the USPTO, the Board denied institution of IPR after determining that Johns Manville (JM) did not establish a reasonable likelihood that it would…

Amgen Inc. et al. v. Hospira, Inc. Docket Nos. 2019-1067, -1102 MOORE, BRYSON, CHEN December 16, 2019 Brief Summary: DC denial of JMOL and new trial after jury findings of infringement, no anticipation and no Safe Harbor for certain batches of EPO affirmed. Summary: Hospira appealed DC denial of its motion for judgment as a matter of law (JMOL) or a new trial and the jury’s verdict that Amgen’s US 5,856,298 relating to erythropoietin (EPO) was infringed and not invalid, Hospira’s products were not covered by the § 271(e)(1) Safe Harbor provision, and Amgen was entitled to $70 million in…

Techtronic Industries Co. Ltd. et al. v. Int. Trade Comm., The Chamberlain Group, Inc. Docket Nos. 2018-2191 LOURIE, DYK, WALLACH December 12, 2019 Brief Summary: ITC claim construction and final determination of infringement reversed and vacated. Summary: Techtronic et al. (“Appellants”) appealed final International Trade Commission (ITC) decision finding Appellants violated Section 337(a)(1)(B) through the importation of garage door opener products that infringe” certain claims of Chamberlain’s US 7,161,319 (see FN3 regarding US 7,196,611). FN1 of this opinion indicates litigation is pending in IL but stayed pending the result of the ITC’s investigation. The ITC entered limited exclusion orders against…

Plastic Omnium Advanced Innovation and Research v. Donghee America, Inc. et al. Docket Nos. 2018-2087 NEWMAN, CLEVENGER, REYNA December 3, 2019 Brief Summary: DC grant of SJ of no literal infringement or under the DOE affirmed based on DC claim construction. Summary: PO appealed DC grant of summary judgment (SJ) of noninfringement of PO’s US 6,814,921 and 6,866,812 relating to processes for manufacturing plastic fuel tanks formed by blow molding and such that accessory components can be installed without cutting holes in the tanks. The claimed process requires “manufacturing plastic hollow bodies from two shells formed by molding, which are…

Fisher & Paykel Healthcare Ltd. v. ResMed Ltd. Docket Nos. 2018-2262 (IPR2017-00504) November 27, 2019 Non-Precedential Order Brief Summary: ResMed’s motion to dismiss appeal of IPR decision after underlying litigation was settled granted because Fisher did “not provide[] any, let alone sufficient, detail regarding features of its future products to enable us to determine that its activities create a substantial risk of future infringement”. Summary: ResMed moved to dismiss Fisher’s appeal of the Board IPR decision that the claims of ResMed’s US 9,027,556 relating to sleep disorder masks are not unpatentable. ResMed and Fisher settled the underlying litigation after Fisher…

Koninkijke KPN N.V. v. Gemalto, et al. and LG Electronics, Inc. Docket Nos. 2018-1863-65 DYK, CHEN, STOLL November 15, 2019 Brief Summary: DC finding of invalidity under § 101 reversed (claims “employs a new way of generating check data”). Summary: KPN appealed DC finding that claims 2-4 of US 6,212,662 were invalid under § 101 since “the claims recite no more than mere abstract data manipulation operations, such as ‘reordering data and generating additional data.’” The FC panel opinion explains that “[c]onventional prior art systems detected errors in data transmissions by generating something called ‘check data’ (or ‘supplementary data’)” that…