Posts in Federal Circuit

On November 7, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision in Allgenesis Biotherapeutics Inc. v. Cloudbreak Therapeutics, LLC, dismissing Allgenesis’ appeal after an unsuccessful challenge to Cloudbreak’s patent claims at the Patent Trial and Appeal Board (PTAB). The Federal Circuit ruled that Allgenesis lacked Article III standing to bring the appeal for failing to establish an injury in fact stemming from potential infringement liability or the impact of the PTAB’s priority determinations on the scope of Allgenesis’ patent rights.

On August 22, 2023, the U.S. Court of Appeals for the Federal Circuit issued yet another decision reinforcing what can only be described as the “lead compound” rule for challenging pharmaceutical and other chemical compound patents on the basis of obviousness…. The Federal Circuit has been utilizing the “lead compound” construct since around 2000. The Sun panel cited an earlier decision which couched the construct as something the court “ordinarily” employs. Otsuka Pharm. Co., Ltd. v. Sandoz Inc., 678 F. 3d 1280, 1289 (Fed. Cir. 2012). That earlier decision cited yet an earlier decision which stated that the “lead compound” methodology is used “in general.” Esai Co. v. Dr. Reddy’s Labs., Ltd., 533 F. 3d 1353, 1359 (Fed. Cir. 2008).

If you’re a regular reader of IPWatchdog, it probably wouldn’t surprise you to hear that two different U.S. Court of Appeal for the Federal Circuit (CAFC or Federal Circuit) panels recently issued inconsistent, irreconcilable opinions. But what just happened over the last month is particularly concerning. Specifically, within the span of six days, the Federal Circuit held that: “A computer” means one and only one computer when a subsequent claim element recites “the computer” (Finjan v. Sonicwall); and “A sample stream” means one or more sample streams when a subsequent claim element recites “the sample stream” (ABS Global v. Cytonome/ST).

The U.S. Supreme Court on Monday denied certiorari to HIP, Inc. in a case that asked the Court to review the U.S. Court of Appeals for the Federal Circuit’s (CAFC’s) standard for determining joint inventorship. The petition, filed in August, asked the Court to resolve what it called “an indisputable conflict between the express language of Section 116(a) of Title 35, informed by the legislative history of its 1984 amendments, and requirements the Federal Circuit has imposed on the joint inventions statute since the 1984 amendments.”

Today, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision in Actelion Pharmaceuticals Ltd. v. Mylan Pharmaceuticals Inc. vacating an infringement judgment against Mylan in the Northern District of West Virginia. The Federal Circuit remanded the case for further consideration of extrinsic evidence from chemistry textbooks to determine the proper meaning of the claim term “a pH of 13 or higher.”

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential decision holding that a Delaware district court erred in its claim construction of a term with respect to Malvern Panalytical, Inc.’s patents. Specifically, the CAFC said the district court erred by relying heavily on the patent prosecution history statements for a related patent that had been cited in the information disclosure statement (IDS) during supplemental examination of one of the patents-in-suit to inform its construction of the term in question.

Late last week, more than half a dozen amicus briefs were filed in support of GM Global Technology Operations in a case that is set to potentially shake up design patent law. The latest briefs generally urged the en banc U.S. Court of Appeals for the Federal Circuit (CAFC) to keep the law as is in order to avoid major disruptions. In June of this year, the CAFC granted a rare en banc review of its January, 2023, decision in LKQ Corporation v. GM Global Technology Operations, which affirmed a Patent Trial and Appeal Board (PTAB) ruling that LKQ failed to show by a preponderance of the evidence that GM’s design patent was anticipated or would have been obvious.

On October 26, a panel majority of the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed a pair of final written decisions at the Patent Trial and Appeal Board (PTAB) invalidating patent claims owned by Monterey Research and covering improved static random access memory (SRAM) cell designs. Dissenting from the majority was Circuit Judge Timothy Dyk, who believed that both the Board and CAFC panel majority erred by concluding that claim amendments made during reexamination did not differentiate the claims from asserted prior art references.

Late yesterday evening, the New Civil Liberties Alliance (NCLA)—the firm representing U.S. Court of Appeals for the Federal Circuit (CAFC) Judge Pauline Newman in her district court case against CAFC Chief Judge Moore and other members of the panel of the Judicial Council who are accusing Newman of being unfit to serve on the court—filed a brief asking the D.C. district court to deny the Council’s September Motion to Dismiss and to halt her recent suspension from duties. The brief calls the Council’s actions thus far “ultra vires and inconsistent both with constitutional strictures and the [Judicial Conduct and Disability] Act [of 1980] itself.”

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential ruling finding that it is ultimately the petitioner’s burden to clearly present arguments in an inter partes review (IPR), and that Netflix failed to do so in challenging the relevant claims of DivX’s streaming technology patents. Judge Dyk dissented from the majority.  

Yesterday, Google waived its right to respond to a petition for writ of certiorari to the U.S. Supreme Court filed by the inventors of a method for protecting computers from malware. The inventors, Alfonso Cioffi and Allen Rozman (the patent is now assigned to Melanie, Megan and Morgan Rozman), are appealing a U.S. Court of Appeals for the Federal Circuit (CAFC) decision that reversed a district court ruling and $20 million verdict for the inventors. The CAFC held that the Texas district court erred in ruling that four claims across the three patents were not invalid and agreed with Google’s argument that the claims were invalid under the “original patent requirement” because they contained reissue claims not disclosed in the original patent.

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued two opinions today on appeals from a total of six inter partes review (IPR) decisions, affirming two of the decisions and dismissing the remaining four as moot. In the first decision, the CAFC affirmed the Patent Trial and Appeal Board’s (PTAB’s) finding in IPR2018-00874 that certain claims of Team Worldwide Corporation’s U.S. Patent 7,246,394, which is directed to an inflatable product, like an air mattress, with a built-in pump, were shown to be unpatentable as obvious. Because of that affirmance, the holdings in IPR2018-00872 and IPR2018-00873, from which Intex appealed, and the holdings in IPR2018-00870 and IPR2018-00871, from which Team Worldwide also cross-appealed along with its cross-appeal of the ‘874 decision, were rendered moot.

In Part I of this article, I recalled the early years of the U.S. Court of Appeals for the Federal Circuit, when the court was working well, and how it all went wrong. In this second half, I recount how the America Invents Act (AIA) has fundamentally shifted the power in patent enforcement and policy. I close on a positive note, detailing the current legislative efforts that, if enacted, will restore balance in the U.S. patent system, which is necessary for continued innovation leadership, economic success, and national security.

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Wednesday ruled in a precedential decision  that the U.S. Patent and Trademark Office (USPTO) Trademark Trial and Appeal Board (TTAB) cannot cancel a trademark based on the filing of a fraudulent declaration under Section 15 of the Lanham Act. Section 15 of the Lanham Act deals with acquiring incontestability status for an already-registered trademark. In the present case, the attorney for Great Concepts, LLC submitted a false declaration to the USPTO in an attempt to obtain incontestable status for the mark DANTANNA’S for a steak and seafood restaurant.

The U.S. Supreme Court on Monday denied certiorari to review a February ruling of the U.S. Court of Appeals for the Federal Circuit (CAFC) that held claims of ChromaDex, Inc.’s patent on an isolated form of vitamin B3 are directed to unpatentable subject matter under Section 101. The CAFC affirmed the Delaware district court’s grant of summary judgment for Elysium Health that the relevant claims of U.S. Patent No. 8,197,807, titled “Nicotinamide riboside kinase compositions and methods for using the same,” were invalid under Section 101 as being directed to a natural phenomenon, specifically, “compositions comprising isolated [NR], a naturally occurring vitamin present in cow milk.”