Latest from Life Science IP - Page 2

Nippon Sinyaku Co., Ltd. v. Sarepta Therapeutics, Inc.

Docket No. 2021-2369 (https://cafc.uscourts.gov/opinions-orders/21-2369.OPINION.2-8-2022_1904898.pdf)

NEWMAN, LOURIE, STOLL

February 8, 2021

Brief Summary:  DC denial of preliminary injunction against Sarepta’s IPR filings reversed.

Summary:  Nippon appealed from DC DE decision denying its motion for a preliminary injunction regarding a Mutual Confidentiality Agreement (MCA).   The purpose of the MCA “was for the parties ‘to enter into discussions concerning the Proposed Transaction,’ which the MCA defined as ‘a potential business relationship relating to therapies for the treatment of Duchenne Muscular Dystrophy.’”  The parties agreed “that during the Covenant Term [“twenty (20) days after
Continue Reading DC denial of preliminary injunction reversed as Sarepta’s IPR filings violated forum selection clause

Intuitive Surgical, Inc. v. Ethicon LLC (USPTO as intervenor)

Docket No. 2021-1481 (IPR2-18-01248) (https://cafc.uscourts.gov/opinions-orders/20-1481.OPINION.2-11-2022_1907139.pdf)

O’MALLEY, CLEVENGER, STOLL

February 11, 2021

Brief Summary:  Intuitive’s appeal of pending IPR in view of patentability findings in two simultaneously filed IPRs regarding the same claim dismissed as prohibited by section 315(e)(1).

Summary:  Intuitive appealed PTAB (“Board”) IPR decision upholding the patentability of claims 24-26 of US 8,479,969 relating to “a robotically controlled endoscopic surgical instrument”.  “The threshold question in this appeal is whether Intuitive is authorized by statute to pursue this appeal” or, as the Board found in terminating Intuitive as a
Continue Reading FC panel affirms Board dismissal of third IPR following patentability finding in other simultaneously filed IPRs regarding the same claims under section 315(e)(1)

Larry K. Junker v. Medical Components, Inc., Martech Medical Products, Inc.

Docket No. 2021-1649 (https://cafc.uscourts.gov/opinions-orders/21-1649.OPINION.2-10-2022_1906548.pdf)

DYK, REYNA, STOLL

February 10, 2021

Brief Summary:  DC decision finding no invalidity of design patent for invalidity due to pre-critical date offer for sale reversed.

Summary: Medcomp appealed the DC’s grant of Mr. Junker’s motion for summary judgment (SJ) of no invalidity of design patent D450,389 (D’839) under the on-sale bar (Pfaff, US 1998) and finding of willful infringement and damages of about $1.2 million under 35 USC section 289 (recovery of an infringer’s profits from the sale of infringing products).  D’839 is
Continue Reading DC grant of no invalidity of design patent reversed due to pre-critical date offer for sale

Plasmacam, Inc. v. CNCelectronics, LLC et al.

Docket No. 2021-1689 (https://cafc.uscourts.gov/opinions-orders/21-1689.OPINION.2-3-2022_1902753.pdf)

NEWMAN, DYK, REYNA

February 3, 2021

Brief Summary:  DC grant of Plasmacam’s motion to enforce its version of a settlement agreement reversed and remanded.

Summary:  CNC appealed DC grant of Plasmacam’s motion to enforce its version of a settlement agreement relating to infringement of Plasmacam’s (as exclusive licensee) US 7,071,441 directed to a plasma cutting system.  During settlement negotiations, the parties traded emails in which Plasmacam’s counsel wrote that “[t]he parties will enter into mutual releases which will include releasing CNCElectronics’s downstream customers from liability for infringing
Continue Reading DC grant of Plasmacam’s motion to enforce its version of a settlement agreement reversed and remanded

GlaxoSmithKline LLC, et al. v. Teva Pharmaceuticals USA, Inc.

Docket No. 2018-1976, -2023

PROST, NEWMAN, MOORE

October 2, 2020

Update (2/11/22):  Petition for rehearing denied.  Judges Moore, Newman, O’Malley, Taranto, Chen and Stoll concurred to address dissents by Judges Prost, Dyk and Reyna, Judge Dyk, and Judge Reyna.  Judge Dyk wrote, e.g., “the more specific and later-enacted provisions of the HatchWaxman Act override the general infringement provisions of the Patent Act” and “[i]t is hard to see how Congress could have intended that a mandated label could be used as evidence of infringement.”  Judge Reyna wrote “that en banc consideration
Continue Reading Teva’s ANDA carve-out does not save it from induced infringement (“when the provider of an identical product knows of and markets the same product for intended direct infringing activity, the criteria of induced infringement are met”) (petition for rehearing en banc denied (2/11/22))

Adapt Pharma, Inc. et al. v. Teva Pharmaceuticals USA, Inc. et al.

Docket No. 2020-2106 (https://cafc.uscourts.gov/opinions-orders/20-2106.OPINION.2-10-2022_1906561.pdf)

NEWMAN (D), PROST, STOLL

February 10, 2021

Brief Summary:  DC decision finding Adapt’s naloxone formulations obvious affirmed.

Summary:  Adapt appealed DC final judgment finding US 9,468,747; 9,561,177; 9,629,965; and 9,775,838 related to Adapt’s NARCAN intranasal 4 mg naloxone product invalid as obvious.  The patents-in-suit in this paragraph IV ANDA case are six of the patents listed on the FDA’s Orange Book for Adapt’s product.  Representative claim 9 of the ‘747 patent is directed to “[a] method of treatment of opioid overdose” by
Continue Reading DC decision finding Adapt’s naloxone formulations obvious affirmed

Kyocera Senco Ind. Tools, et al. v. International Trade Commission (ITC)

Docket No. 2020-1046, -2050 (https://cafc.uscourts.gov/opinions-orders/20-1046.OPINION.1-21-2022_1896055.pdf)

MOORE, DYK, CUNNINGHAM

January 21, 2021

Brief Summary:  ITC decision vacated and remanded for the parties to brief “what structures correspond to” the means-plus-function limitation “lifting member”; exclusion of expert testimony proper.

Summary: Kyocera and Koki each appealed ITC decision regarding Kyocera’s complaint against Koki for importing gas spring nailer products that were alleged to infringe five of Kyocera’s device and method of use patents.  The “appeals address five parts of the investigation below: (I) the exclusion of Dr. Pratt’s [expert] testimony,
Continue Reading ITC decision remanded for briefing on structure correlating to means-plus-function limitation

Plastronics Socket Partner, Ltd. et al. v. Dong Weon Hwang, HiCon Co., Ltd. et al.

Docket No. 2020-1739, -1781 (https://cafc.uscourts.gov/opinions-orders/20-1739.OPINION.1-12-2022_1892222.pdf) (Non-Precedential)

DYK, HUGHES, STOLL

January 12, 2022

Brief Summary:  DC award of breach of contract damages to inventor affirmed; award to Plastronics reversed due to four-year statute of limitations in Texas. Summary:  Plastronics and HiCon (including Hwang) each appealed DC award of damages to both parties under breach of contract claims relating to a license semiconductor chip testing devices (“H-Pins”).  Hwang began working for Plastronics in 2004 after moving from Korea to Texas and filed a Korean patent
Continue Reading Damages to inventor affirmed; award to Plastronics reversed due to Texas statute of limitations

Sanofi-Aventis Deutschland GmbH v. Mylan Pharmaceuticals Inc. (USPTO as Intervenor)

Docket No. 2020-2071 (IPRs 2018-01684) (https://cafc.uscourts.gov/opinions-orders/20-2071.OPINION.12-29-2021_1886454.pdf) (Non-Precedential)

DYK, CLEVENGER, TARANTO

December 29, 2021

Brief Summary:  Board IPR decision finding Sanofi’s patents obvious affirmed as substantial evidence supported the motivation to combine and claim constructions analyses.

Summary:  Sanofi appealed Board IPR decision finding US 9,604,008 unpatentable as obvious.  Sanofi argued the Board erred in finding there was a motivation to combined the two prior art references relied upon (Moller and Steenfeld-Jensen).  “The Board found that Steenfeldt-Jensen provided benefits supporting the combination of Møller’s dose-setting approach with Steenfeldt-Jensen’s dose-dispensing approach,
Continue Reading Board IPR decision finding Sanofi’s claims obvious affirmed due to motivation to combine references and proper claim construction

Sanofi-Aventis Deutschland GmbH v. Mylan Pharmaceuticals Inc. (USPTO as Intervenor)

Docket No. 2020-2066, -2068-9 (IPRs 2018-01679-80, -82) (https://cafc.uscourts.gov/opinions-orders/20-2066.OPINION.12-29-2021_1886477.pdf) (Non-Precedential)

DYK, CLEVENGER, TARANTO

December 29, 2021

Brief Summary:  Board IPR decision finding Sanofi’s patents obvious because priority application does not provide proper written description for proposed substitute claims affirmed.

Summary:  Sanofi appealed three IPR decisions finding its US 8,992,486 and 9,526,844 relating to pen-type injectors as shown to be invalid for obviousness in part because the Great Britain (GB) priority document (“GB Application”) lacks proper written description for its proposed substitute claims. In the ‘679 IPR, Sanofi’s proposed substitute
Continue Reading Board IPR decisions finding Sanofi’s injector claims obvious due to lack of written description in priority document affirmed

Evolusion Concepts, Inc. v. HOC Events, Inc., DBA Supertool USA / Juggernaut

Docket No. 2021-1963 and 2021-1987 (https://cafc.uscourts.gov/opinions-orders/21-1963.OPINION.1-14-2022_1893196.pdf)

PROST, TARANTO, CHEN

January 14, 2021

Brief Summary:  DC decisions reversed due to improper claim construction.

Summary:  Evolusion appealed DC grant of summary judgment (SJ) of non-infringement to HOC (2021-1963).  This opinion also addresses the appeal of the DC grant of SJ to Juggernaut on the same grounds (21-1987).  Both decisions were based on the claim construction of Evolusion’s US 8,756,845 directed to firearm magazines in which the DC’s “key ruling was that the term ‘magazine catch bar’…excludes a factory-installed”
Continue Reading DC decisions reversed-in-part due to improper claim construction findings

Intel Corporation v. Qualcomm Incorporated

Docket No. 2020-1664 (IPR2018-01429) (https://cafc.uscourts.gov/opinions-orders/20-1664.OPINION.12-28-2021_1885985.pdf)

PROST, TARANTO, HUGHES

December 28, 2021

Brief Summary:  Board’s IPR claim construction affirmed but obviousness decision reversed due to “apparent reason to combine” the prior-art elements.

Summary:  Intel appeal PTAB (“Board”) IPR decision finding some of Qualcomm’s claims of US 8,229,043 relating to radio frequency communication systems patentable.  Intel petitioned for IPR of the ‘043 patent with its customer Apple as real parties-in-interest, alleging anticipation by the prior art “Der” reference and obviousness in view of Der and “Razavi” or Der and “Valla”.  The Board found Intel did
Continue Reading Intel had Article III standing for appeal; Board IPR obviousness decision reversed as Intel showed motivation to combine under KSR

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)

MOORE (D), LINN, O’MALLEY

January 3, 2022

Brief Summary:  DC finding Novartis patent not invalid for lack of written description of negative limitation affirmed.

Summary:  HEC appealed DC bench trial decision that Novartis’ US 9,187,405 is not invalid for lack of written description and that HEC’s ANDA infringes.  The Novartis product is a 0.5 mg daily dose of fingolimod hydrochloride (FH) sold as Gileyna for treatment of relapsing-remitting multiple sclerosis (RRMS), and the ‘405 patent is one of three
Continue Reading FC panel finds negative limitation sufficiently described, affirms DC finding of no invalidity

Sky International AG v. Sky Cinemas LLC

Docket No. 2021-1575 (USPTO Appeal No. 91223952) (https://cafc.uscourts.gov/opinions-orders/21-1575.OPINION.12-17-2021_1881473.pdf) (Non-Precedential)

TARANTO, BRYSON, STOLL

December 17, 2021

Brief Summary:  Board decision finding Sky Int.’s and Sky Cinemas marks unlikely to cause confusion affirmed.

Summary:  Sky International (SKI) opposed a trademark (TM) application filed by Sky Cinemas (SC) for “SKY CINEMAS” for “movie theaters” due to SKI’s prior registration of similar marks including the work “SKY” (SKY NEWS for “broadcasting”, “news agencies”, and “television and radio news reporting” (“standard character marks…‘devoid of potentially distinguishing graphical elements’”).  SC alleged several of SKI’s “registrations were filed
Continue Reading Board decision finding Sky Cinemas mark unlikely to cause confusion with Sky International’s marks affirmed

Quest Diagnostics Investments LLC v. USPTO

Docket No. 2021-1115 (IPR2019-00738) (https://cafc.uscourts.gov/opinions-orders/21-1115.OPINION.12-27-2021_1885462.pdf) (Non-Precedential)

MOORE, CLEVENGER, STOLL

December 27, 2021

Brief Summary:  Board IPR decision of anticipation and obviousness of Quest’s claims affirmed.

Summary:  Quest appealed Board IPR decision that the challenged claims of US 8,409,862 relating to using mass spectrometry to detect low levels of testosterone in female humans including purifying the testosterone prior to mass spectrometry (MS).  With respect to this appeal, the Board found LabCorp showed claims 8 and 9 would have been obvious in view of Clark in combination with Draisci (both non-patent prior art).  Claims
Continue Reading IPR decision finding Quest’s testosterone-detection claims obvious affirmed

Alpek Polyester, S.A., DAK Americas LLC, et al. v. Polymetrix AG

Docket No. 2021-1706 (https://cafc.uscourts.gov/opinions-orders/21-1706.OPINION.12-16-2021_1880727.pdf) (Non-precedential)

LOURIE, O’MALLEY, STOLL

December 16, 2021

Brief Summary:  DC grant of SJ of no induced infringement by importation affirmed. Summary:  Alpek/DAK appealed DC grant of summary judgment (SJ) to Polymetrix of no infringement of the patents-in-suit (US 7,790,840; 7,868,125; and 7,192,545) directed to methods for producing polyethylene terephthalate (“PET”) used in bottles and containers.  Alpek is a Mexican company and DAK is an affiliate and exclusive licensee of Alpek’s patents-in-suit.  The FC panel opinion explains that “Polymetrix does not itself manufacture PET
Continue Reading DC finding that Polymetrix did not induce importation of samples into the US affirmed