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

Latest from Life Science IP - Page 3

Axonics, Inc. v. Medtronic, Inc.

Docket No. 2022-1451, -1452 (IPR2020-00715, -00679) (https://cafc.uscourts.gov/opinions-orders/22-1451.OPINION.7-10-2023_2154482.pdf)

LOURIE, DYK, TARANTO

July 10, 2023

Brief Summary:   Board IPR decision finding Axonics did not show Medtronic’s patents to be obvious reverses as based on incorrect narrowing of the prior art.

Summary:  Axonics timely appealed IPR final written decisions in which the Board found it had not shown Medtronic’s claims (of US 8,626,314 and 8,036,756) directed to implantable nerve stimulation systems obvious.  The claims include “features key to the present appeal:  at least two electrodes at the distal end of the lead, with ‘a plurality…
Continue Reading Board IPR decisions of no obviousness vacated and remanded for erroneous motivation to combine analysis

LKQ Corporation, et al. v. GM Global Technology Operations LLC
Docket No. 2022-00055 (PGR2020-00055) (https://cafc.uscourts.gov/opinions-orders/22-1253.OPINION.1-20-2023_2066551.pdf) (Non-Precedential)

LOURIE, CLEVENGER, STARK

January 20, 2023
Update (June 30, 2023):  The FC granted LKQ’s request (and various amicus briefs) for rehearing en banc.  The prior decision was therefore vacated and the appeal reinstated.  The parties were asked to file new briefs addressing:  1) Does KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), overrule or abrogate In re Rosen, 673 F.2d 388 (CCPA 1982), and Durling v. Spectrum Furniture Co., Inc., 101 F.3d 100 (Fed. Cir. 1996)? and, 2)  Assuming…
Continue Reading Prior FC panel decision affirming Board post-grantdecision finding GM’s design patent not anticipated or obvious vacated; en bancreview granted regarding the KSR and the Rosen-Durling tests

Docket No. 2022-1165 (PGR2019-00062) (https://cafc.uscourts.gov/opinions-orders/22-1165.OPINION.6-27-2023_2148484.pdf)

DYK, REYNA, STARK

June 27, 2023

Brief Summary:   Board post-grant review (PGR) decision denying entry of Medytox’s amended claims during an IPR for lack of enablement affirmed, and that decision found not violate the APA. Summary (ChatGPT4):  Medytox, Inc. appealed the Board’s PGR FWD that denied its revised motion to amend certain claims of its ‘728 patent directed to an animal-protein-free botulinum toxin composition with a longer-lasting effect compared to compositions containing animal-derived products. Medytox challenged the Board’s findings on claim construction, written description, and enablement, as well as the Board’s Pilot…
Continue Reading Medytox, Inc. v. Galderma S.A. (USPTO as Intervenor)

Blue Gentian, LLC et al. v. TriStar Products, Inc. Docket Nos. 2021-2316, -2317 (https://cafc.uscourts.gov/opinions-orders/21-2316.OPINION.6-9-2023_2139976.pdf) PROST, CHEN, STARK June 9, 2023   Brief Summary:   DC decision to correct inventorship of disputed utility and design patents affirmed.   Summary:  Blue Gentian sued Tristar for infringement of US 8,291,941; 8,291,942; 8,479,776; 8,757,213, D722,681 and D724,186 to flexible/expandable hoses, each naming Michael Berardi as the sold inventor, and Tristar counterclaimed to correct inventorship of each of the patents.  The DC ordered correction of the inventorship to add Gary Ragner as a co-inventor on each under 35 USC 256, and Blue Gentian…
Continue Reading DC decision requiring correction of inventorship on design and utility patents affirmed

Yita LLC v. MacNeil IP LLC

Docket Nos. 2022-1373, -1374 (IPR2020-01139, -00142) (https://cafc.uscourts.gov/opinions-orders/22-1373.OPINION.6-6-2023_2137962.pdf)

TARANTO, CHEN, STOLL

June 6, 2023

Brief Summary:   FC panel reverses one IPR obviousness decision because secondary considerations had nexus to only “a single feature”; affirmed second obviousness decision as Yita raised new arguments in its answer.

Summary:  Yita appealed Board IPR final written decisions (FWDs) finding MacNeil’s US 8,382,186 and 8,833,834 (which share a specification) related to vehicle floor trays/floor mats were not shown to be invalid for obviousness because “[MacNeil’s] evidence of secondary considerations [was] compelling and indicative of non-obviousness” (“commercial success,…
Continue Reading Board IPR obviousness decisions reversed (nexus tied to single feature) and affirmed (Yita raised new arguments in its answer)

Medtronic, Inc. et al. v. Teleflex Innovations S.À.R.L

Docket Nos. 2021-2357, -2360, -2364 (IPR2020-00127, -00130, -00136) (https://cafc.uscourts.gov/opinions-orders/21-2357.OPINION.6-5-2023_2137084.pdf)

MOORE, LOURIE, DYK

June 5, 2023

Brief Summary:   Board IPR decisions finding Medtronic failed to show Teleflex’s amended claims to be obvious, and allowing the amendment, affirmed. Summary:  Medtronic appealed Board IPR decisions finding Medtronic failed to show certain of Teleflex’s claims to coaxial extension catheters insertable into standard guide catheters to be obvious.  The patents-in-suit are US 8,048,032; RE45,380; and RE45,776 and relate to Teleflex’s GuideLiner products.  Claims of the ‘032 and ‘382 patents were amended and found not…
Continue Reading Board IPR decisions finding Medtronic did not show Teleflex’s claims obvious affirmed

Medtronic, Inc. et al. v. Teleflex Innovations S.À.R.L

Docket No. 2021-2356, -2358, -2361, -2363, -22365 (IPR2020-00126, -00128, -00132, -00135, -00137) (https://cafc.uscourts.gov/opinions-orders/21-2356.OPINION.5-24-2023_2131839.pdf)

LOURIE, LYNN, DYK (D)

May 24, 2023

Brief Summary:   Board IPR decisions finding patented invention was conceived and reduced to practice before the prior art critical date affirmed (e.g., “intended purpose”).

Summary (ChatGPT):  Medtronic, Inc. appealed five IPR final written decisions (FWDs) of the USPTO Board.  The decisions found that Itou, a prior art reference, did not qualify as prior art to certain patents owned by Teleflex.  The challenged pre-AIA (first-to-invent) patents relate to guide extension…
Continue Reading Board IPR decisions finding conception and reduction to practice before critical date affirmed

Amgen Inc. v. Sanofi, et al.

Docket No. 2020-1074 (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1074.OPINION.2-11-2021_1731739.pdf)

PROST, LOURIE, HUGHES

November 7, 2022 Update (original decision on February 11, 2021)

Fourth Update (May 18, 2023):  SCOTUS concludes Amgen’s specification does not support “’the entire genus’ of antibodies that (1) ‘bind to specific amino acid residues on PCSK9,” and (2) ‘block PCSK9 from binding to [LDL receptors]’” as it only “identified the amino acid sequences of 26 antibodies that perform these two functions.”  Decisions cited in support of its conclusions include Bonito Boats, Inc. v. Thunder Craft Boats, Inc. (“[t]he patent “bargain” describes the exchange that…
Continue Reading SCOTUS concludes Amgen’s anti-PCSK9 antibody claims not enabled

Bot M8 LLC v. Sony Interactive Entertainment LLC (USPTO as Intervenor)

Docket No. 2022-1291 (IPR2020-00922) (https://cafc.uscourts.gov/opinions-orders/22-1291.OPINION.5-9-2023_2123766.pdf)

DYK, BRYSON, PROST

May 9, 2023

Brief Summary:   Board IPR claim construction and obviousness determination affirmed; any error in claim construction found to be harmless.

Summary:  Bot M8 appealed Board IPR finding that all challenged claims of US 8,078,540 relating to a gaming machine that authenticates certain data and that has both a motherboard and a different board.  The claimed machines require “the ‘game program’ be written to the motherboard only after the game program has been authenticated” and “two different…
Continue Reading Board IPR claim construction (even with harmless error) and obviousness determination affirmed

Vanda Pharmaceuticals Inc. v. Teva Pharmaceuticals USA, Inc. and Apotex, Inc. et al.

Docket No. 2023-1247 (https://cafc.uscourts.gov/opinions-orders/23-1247.OPINION.5-10-2023_2124577.pdf) (Non-Precedential)

DYK, BRYSON, PROST

May 10, 2023

Brief Summary:   DC obviousness findings regarding Vanda’s method of treatment claims affirmed. Summary:  Teva and Apotex (“Apotex”) appealed DC holding that its ANDA infringed four claims of four of Vanda’s patents relating to “a method of treating Non-24-Hour Sleep-Wake Disorder (“Non-24”) with tasimelteon” (Hetlioz®). The disputed patents (RE46,604; US 10,149,829; 9,730,910; and 10,376,487) are four of many listed on the FDA’s Orange Book for this product.  The FC panel wrote that “[i]n a…
Continue Reading DC findings that Vanda’s method of treatment claims are invalid for obviousness affirmed

Sanofi-Aventis Deutschland GmbH v. Mylan Pharmaceuticals Inc.

Docket No. 2021-1981 (IPR2019-01657) (https://cafc.uscourts.gov/opinions-orders/21-1981.OPINION.5-9-2023_2123775.pdf)

REYNA, MAYER, CUNNINGHAM

May 9, 2023

Brief Summary:   IPR decision finding Sanofi’s claims obvious reversed as Mylan did not show art relied upon was analogous to Sanofi’s invention. Summary:  Sanofi appealed USPTO PTAB (“Board”) IPR decision finding all of the claims of US RE47,614 directed to “[a] drug delivery device comprising” including multiple components including “a spring washer” having “at least to fixing elements” unpatentable as obvious over the prior art (US 4,144,957 (“de Gennes”)).  Mylan brought the IPR and alleged obviousness in view of…
Continue Reading IPR obviousness decision reversed as prior art not shown to be analogous to Sanofi’s claimed invention

Hip, Inc. v. Hormel Foods Corporation

Docket No. 2022-1696 (https://cafc.uscourts.gov/opinions-orders/22-1696.OPINION.5-2-2023_2120058.pdf)

LOURIE, CLEVENGER, TARANTO

May 2, 2023

Brief Summary:   DC decision finding party should have been name a joint inventor reversed as contribution “not significant when measured against the scope of the full invention”. Summary:  Hormel appealed DC holding that David Howard should be added as a joint inventor under section 256 to US 9,980,498 directed to methods of precooking bacon.  ‘498 claim 1 is directed to “[a] method of making precooked bacon pieces using a hybrid cooking system” using “a microwave oven” (claim 1) (or “a microwave…
Continue Reading DC inventorship decision reversed as contribution “not significant when measured against the scope of the full invention”

In re Charger Ventures LLC

Docket No. 2022-1094 (https://cafc.uscourts.gov/opinions-orders/22-1094.OPINION.4-13-2023_2110336.pdf)

PROST, REYNA, STARK

April 13, 2023

Brief Summary:   TTAB affirmance of examiner’s refusal to register mark due to likelihood of confusion affirmed. Summary:  Charger appealed TTAB decision denying registration of its trademark SPARK LIVING “for leasing of real estate; real estate listing; real estate service, namely, rental property management” on grounds of likelihood of confusion with an earlier registered trademark SPARK for “[r]eal estate services, namely, rental brokerage, leasing and management of commercial property, offices and office space.”  After the examiner alleged a risk of confusion between the…
Continue Reading TTAB decision affirming rejection of mark for likelihood of confusion affirmed by FC panel

Sequoia Technology, LLC v. Dell, Inc., et al. (Red Hat, IBM)

Docket No. 2021-2263-67 (https://cafc.uscourts.gov/opinions-orders/21-2263.OPINION.4-12-2023_2109603.pdf)

LOURIE, DYK, STOLL

April 12, 2023

Brief Summary:   DC patent ineligibility decision regarding “computer-readable” medium limitation reversed; claim construction affirmed.

Summary:  Sequoia appealed judgment of noninfringement and invalidity of US 6,718,436 based on adverse claim construction ruling regarding “computer-readable recording medium storing instructions for executing a method”, “disk partition”, and “logical volume” (e.g., “creating the logical volume by gathering disk partitions”).  Sequoia initially file complaints against certain Red Hat (and its parent company being IBM) customers “that make or sell products or…
Continue Reading DC ineligibility finding regarding “computer-readable” medium reversed, claim construction affirmed

Amgen Inc. v. Sandoz Inc. et al.

Docket No. 2020-1147, 1149-51 (https://cafc.uscourts.gov/opinions-orders/22-1147.OPINION.4-19-2023_2113208.pdf)

LOURIE, CUNNINGHAM, STARK

April 19, 2023

Brief Summary:   DC finding that two of Amgen’s Otezla® composition patents not invalid for obviousness affirmed.  DC finding that another of Amgen’s Otezla® method of treatment patents invalid for obviousness affirmed.

Summary:  Sandoz appealed DC holding claims 3 and 6 of Amgen’s US 7,427,638 and claims 1 and 15 of its US 7,893,101 not invalid for obviousness.  Amgen cross-appealed DC finding that claims 2, 19 and 21 of its US 10,092,541 invalid as obvious.  These Orange Book patents (three…
Continue Reading FC panel affirms DC finding that Amgen’s Otezla® composition patents are not invalid, but also that method of treatment claims are invalid, for obviousness

UCB, Inc. et al. v. Actavis Laboratories UT, Inc. / Mylan Technologies, Inc.

Docket No. 2021-1924, -2336 (https://cafc.uscourts.gov/opinions-orders/21-1924.OPINION.4-12-2023_2109643.pdf)

MOORE, CHEN, STOLL

April 12, 2023

Brief Summary:   DC finding UCB’s ‘589 patent invalid for anticipation and obviousness affirmed.

Summary:  UCB appealed DC finding US 10,130,589 directed to transdermal rotigone patches (TTSs) for treating Parkinson’s disease (UCB’s product being Neupro®) invalid for anticipation and obviousness.  The FC panel affirmed the DC’s decision as its “fact findings on overlapping ranges, teaching away, unexpected results, and commercial success are not clearly erroneous”.  The FC panel opinion explains that UCB’s “original” Neupro®…
Continue Reading DC finding of UCB’s OB ‘589 patent invalid for anticipation and obviousness affirmed