Arthrex, Inc. v. Smith & Nephew (USPTO as Intervenor) Docket Nos. 2018-2140 (IPR2017-00275) MOORE, REYNA, CHEN October 31, 2019 Brief Summary: Board IPR FWD vacated and remanded as APJs are “principal officers” that must be appointed by the President (as opposed to the Secretary of Commerce), suggesting that “severing the portion of the Patent Act restricting removal of the APJs is sufficient” to remedy the issue. Summary: Arthrex appealed Board IPR decision finding the claims of its US 9,179,907 unpatentable as anticipated. The merits of that decision was not reached in this opinion. Instead, the opinion is focused on whether…

Liqwd, Inc. v. L’Oreal USA, Inc. Docket Nos. 2018-2152 (PGR2017-00012) REYNA, HUGHES, STOLL October 30, 2019 Brief Summary: Board PGR obviousness decision vacated for error in disregarding evidence of copying as irrelevant. Summary: Liqwd appealed Board post-grant review (PGR) decision finding Liqwd’s keratin treatment-related formulation and method claims (“method for bleaching hair”) of US 9,498,419 unpatentable for obviousness. L’Oreal’s PGR request alleged anticipation and obviousness. The Board found no anticipation because although the prior art “disclosed all the limitations of the challenged claims”, those were “not as arranged in the claims as required for anticipation” (not at issue in this…

Idenix Pharmaceuticals LLC et al. v. Gilead Sciences Inc. Docket Nos. 2018-1691 PROST, NEWMAN, WALLACH October 30, 2019 Brief Summary: DC grant of JMOL to Gilead finding HCV treatment patent invalid for enabled affirmed; FC panel also finds lack of written description. Summary: Idenix appealed DC grant of a judgment as a matter of law (JMOL) to Gilead that Idenix’s US 7,608,597 directed to a method for treating hepatitis C virus (HCV) infection using nucleoside compounds (“2’-methyl-up nucleosides”) is invalid for lack of enablement. Gilead appealed the DC’s decision that the ‘597 patent is not invalid for a lack of…

Google LLC v. Kininklijke Philips, N.V. Docket Nos. 2018-2213 (IPR2017-00437) Moore, Bryson, Chen October 23, 2019 Non-precedential Brief Summary: Board IPR decision that Google did not show the challenged claims to be anticipated or obvious affirmed. Summary: Google appealed Board IPR final written decision (FWD) finding that Google failed to show the challenged claims of US 6,772,114 relating to a transmission system including a “high-pass filter” for transmitting audio signals was not anticipated by “Tucker” (WO 98/52187) or obvious “over Tucker in view of well-known art”. The Board construed the “high-pass filter” to be a filter that “transmits frequencies above…

Sweegen, Inv. v. PureCircle USA Inc., et al. IPR2019-01017 (US 9,243,273B2) October 24, 2019 Decision not to institute IPR Brief Summary: Petition for IPR denied as PTAB determined Sweegen did not present a reasonable likelihood of prevailing on obviousness or anticipation grounds. Summary: Sweegen petitioned for IPR of PureCircle’s US 9,243,273B2 directed to methods for preparing steviol glycosides from other steviol glycosides (i.e., Revaudioside X (“Reb X”) from Revaudioside D (“Reb D”) using a UDP-glycosyltransferase (“UGT”) enzyme (e.g., UGT76G1) where “the conversion…is at least about 50% complete”). The Reb D to Reb X conversion occurs “through the addition of a…

In Re: General Electric Company (“GE”) Docket No. 2019-1112, -1113, -1115 MOORE, REYNA, CHEN October 18, 2019 Non-precedential Brief Summary: Board decision that reissue claims improperly attempted to recapture surrendered subject matter affirmed (e.g., the attachment limitation was added during prosecution “in response to the examiner’s rejections”, and the reissue claims “eliminate the attachment-related limitations entirely”). Summary: GE appealed three PTAB decisions regarding resissue applications (§ 251) of US 7,990,705 directed to “a synthetic jet assembly”, each decision rejecting “the reissue claims as an attempt to recapture subject matter intentionally surrendered during prosecution of the ‘705 patent.” The PTAB “found…

Fraunhofer-Gesellschaft v. Sirius XM Radio Inc. Docket No. 2018-2400 DYK, LINN, TARANTO October 17, 2019 Brief Summary: DC grant of motion to dismiss reversed and remanded for reconsideration of evidence relating to survival of a sublicense after bankruptcy. Summary: Fraunhofer sued Sirius (SXM) for infringement of four of Fraunhofer’s patents and the DC dismissed the complaint after finding SXM had a valid license to those patents. That license came from an sublicensable exclusive license (“Master Agreement”) with WorldSpace International Network Inc. (“WorldSpace”) to Fraunhofer’s technology (“MCM IP rights”). WorldSpace sublicensed the MCM IP rights to SXM, and that license was…

In Re: Stepen Brian Gates, Jeremy Black Docket No. 2018-2331 MOORE, REYNA, STOLL October 16, 2019 Non-precedential Brief Summary: PTAB appeal decision affirming the examiner’s anticipation and obviousness rejections reversed and remanded since the prior art did not disclose the claimed device “arranged as claimed”. Summary: Patent applicant Gates appealed PTAB decision affirming the examiner’s rejection of the claims of their ‘668 application directed to an integrated handheld device that can operate via a computer mouse or a remote control depending on the proximity of the device to a surface (e.g., a table) for anticipation and obviousness. The claims include…

Knauf Insulation, Inc. et al. v. Rockwool International A/S Docket No. 2018-1810-11, -1891 DYK, LINN, TARANTO October 15, 2019 Non-precedential Brief Summary: PTAB inter partes reexamination obviousness determination vacated as being based on inherency. Summary: Knauf appealed PTAB’s inter partes reexamination decision finding certain claims of US 7,888,445 and 7,772,347 relating to compounds (malanoidins), compositions and methods used to produce fibrous products such as fiberglass to be invalid for obviousness. Rockwool cross-appealed the PTAB’s decision that other claims were not invalid for obviousness. PTAB found obviousness in view of a combination of three US patent references (Wallace, Worthington and Helbing).…

HZNP Medicines LLC et al. v. Actavis Laboratories UT, Inc. Docket No. 2017-2149, -2152-53, -2202-3, -2206 PROST, NEWMAN, REYNA October 10, 2019 Brief Summary: DC findings of indefiniteness, no induced infringement, and no invalidity for obviousness regarding Horizon’s OB patents for Pennsaid® affirmed. Summary: Horizon appealed DC judgment of invalidity and noninfringement of certain Orange Book (OB) patents relating to methods and compositions for treating osteoarthritis (Pennsaid®, topical 2% diclofenac sodium, “the first FDA-approved twice-daily topical diclofenac sodium formulation for the treatment of pain of osteoarthritis of the knees”), and Actavis (which filed ANDA 207238) cross-appealed the DC’s judgment of…

NeuroGrafix, et al. v. Brainlab, Inc. et al. Docket No. 2018-2363 NEWMAN, O’MALLEY, TARANTO October 7, 2019 Non-precedential Brief Summary: Grant of SJ reversed due to “genuine dispute of material fact on…whether the…software was capable of infringing uses”. Summary: NeuroGrafix (NG) appealed multidistrict litigation court (MDL) grant of summary judgment (SJ) of non-infringement of NG’s US 5,560,360 directed to neural tissue magnetic resonance imaging (MRI) systems to Brainlab. NG alleged user of Brainlab’s software directly infringed and that Brainlab induced direct infringement. Brainlab relied “on customer-protection provisions of settlement agreements [NG] had entered into with” Siemans, GE, and Philips”; the…

American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, et al. Docket No. 2018-1763 NEWMAN, TARANTO, STOLL October 3, 2019 Brief Summary: DC holding that AAM’s “method for manufacturing” claims are patent ineligible under § 101 affirmed (e.g., “the mechanism for achieving the desired result” using the “natural” Hooke’s law “are not actually claimed”). Summary: AA appealed DC grant of Neapco’s motion for summary judgment (SJ) and holding the asserted claims of US 7,774,911 directed to “[a] method for manufacturing” driveline propeller shafts (“propshafts”) in a way that “attenuate[s] at least two types of vibration transmitted through the shaft” using…

OSI Pharmaceuticals, LLC v. Apotex Inc. et al. Docket No. 2018-1925 (IPR2016-01284) NEWMAN, TARANTO, STOLL October 4, 2019 Brief Summary: PTAB’s IPR decision holding OSI’s OB ‘221 patent obvious reversed (e.g., the PTAB “misinterpreted the asserted references”, “NSCLC treatment was highly unpredictable”). Summary: OSI appealed PTAB IPR decision holding claims 44-46 and 53 of OSI’s Orange Book (OB) patent US 6,900,221 (listed for the epidermal growth factor receptor (EGFR) inhibitory Tarceva® (erlontinib HCl, along with one other unexpired patent; NDA 021743)) directed to methods for treating non-small cell lung cancer (NSCLC). The ‘221 patent specification describes “treating” as “reversing, alleviating,…