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Posts Tagged: "invalidity"

In Partial Reversal of District Court, CAFC Explains that ‘Hair-Splitting’ is Key to Literal Infringement Analysis

The U.S. Court of Appeals for the Federal Circuit (CAFC), with Judge Stoll writing, earlier today reversed a denial of judgment as a matter of law (JMOL) of no infringement relating to U.S. Patent No. 9,031,521, which is assigned to Dali Wireless, Inc. The court also affirmed the U.S. District Court of the Northern District of Texas on a number of other issues, including its denial of JMOL of invalidity of the ‘521 patent. The ‘521 patent is titled “System and Method for Digital Memorized Predistortion for Wireless Communication.” The patent solves the problem of unintended distortions to a signal caused by power amplifiers used to boost the signal on devices such as mobile phones. The patent does this through “through the use of a feedback loop and lookup tables.”

CAFC Affirms Decision Vacating Judgment and Injunction Due to Executive’s Misrepresentations

On May 5, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed the decision of the District Court for the Central District of California to vacate a judgment and injunction for Zinus, Inc., holding the district court did not abuse its discretion. The court concluded: “Here, Lawrie, Zinus’s president and expert witness, misrepresented his knowledge of highly material prior art. The district court properly declined to condone such conduct.”

Federal Circuit Affirms ITC Refusal to Rescind Exclusion Order Due to Assertion of Patent Invalidity

Last week, the U.S. Court of Appeals for the Federal Circuit affirmed a decision of the U.S. International Trade Commission in Mayborn Group, Ltd. v. ITC, wherein the U.S. International Trade Commission (the Commission) denied Mayborn’s petition for rescission of a general exclusion order that prohibited the importation of products that infringe U.S. Patent 8,028,850 (the ’850 patent).  The CAFC held that, while Mayborn had standing to appeal, the Commission lacked the authority to adjudicate its patent invalidity claim and an assertion of patent invalidity was insufficient grounds to support a petition to rescind or modify an exclusion order.

‘Substantially Equivalent’ Disclosure May Satisfy Written Description Requirement Under Certain Circumstances

The Federal Circuit recently affirmed in part and reversed in part a district court decision holding that Actavis Laboratories FL, Inc.’s (“Actavis’s”) generic Abbreviated New Drug Application (“ANDA”) product infringed claims of patents owned by Nalpropion Pharmaceuticals (“Nalpropion”) and that the asserted claims were not invalid. The Court found that the district court did not err in finding that Nalpropion’s U.S. Patent No. 8,916,195 (“the ’195 patent”) was not invalid for lack of written description, but that the district court did err in finding that the asserted claims of U.S. Patent Nos. 7,375,111 (“the ’111 patent”) and 7,462,626 (“the ’626 patent”) were not obvious in view of the prior art.

Federal Circuit Deems Written Description Requirement Satisfied if Specification Identifies the Claimed Invention in a Definite Way

The United States Court of Appeals for the Federal Circuit recently issued a ruling reversing a district court’s grant of summary judgment of non-infringement and invalidity for failure to satisfy the written description requirement. See CenTrak, Inc. v. Sonitor Techs., Inc., 2019 U.S. App. LEXIS 4442 (Fed. Cir. Feb. 14, 2019) (Before Reyna, Taranto, and Chen, Circuit Judges) (Opinion for the Court, Chen, Circuit Judge). The Court said the written description requirement does not require that the specification provide either examples or an actual reduction to practice. Instead, a constructive reduction to practice may be sufficient if the specification identifies the claimed invention in a definite way.

Limiting Section 325(d) Delegation Will Ensure a More Predictable Inter Partes Review Process

Congress created Inter Partes Review (IPR) to weed out clearly invalid patents that would not have been issued had the United States Patent and Trademark Office (USPTO) known about certain prior art. However, USPTO Director Iancu should consider limiting his delegated authority in 35 U.S.C. § 325(d) to prior art that was not presented to the USPTO during examination. As such, all references in the prosecution record would be presumed to have been fully considered by the examiner and could not form any part of a post grant petition. This change would exercise the discretion provided by Congress to its fullest, preserve USPTO resources by not reconsidering the Office’s prior decisions, and restore some predictability to the U.S. patent system.

ITC Misapplied Res Judicata, Can Modify Penalty After Asserted Patent Claims Found Invalid

The Federal Circuit panel of Chief Judge Sharon Prost and Circuit Judges Jimmie Reyna and Kimberly Moore determined that the ITC erred in applying res judicata to deny the petition without considering the effect of district court litigation which invalidated the claims asserted in the Section 337 proceeding… Ultimately, the Federal Circuit ruled that the ITC is not barred from reassessing the EPROM factors and determining whether to modify or rescind the civil penalty based on the final judgment of invalidity. The ITC’s decision was, therefore, reversed and the case remanded for the Commission to consider whether to rescind or modify the civil penalty in light of the final judgment of invalidity of the relevant claims.

The Evolution of Antibody Patents

As the pharmaceutical industry continues to shift toward biologic-based drugs, including monoclonal antibodies, protecting the underlying technology has been and continues to be a priority for companies. As with any drug, patenting therapeutic monoclonal antibodies as early as possible in the drug development process is crucial to protect the underlying invention. In the early days of antibody discovery for therapeutic development, protection could be obtained with minimal disclosure of the actual antibody. But as the art and case law have evolved, companies now need far more data to obtain the broadest scope of protection. For that reason, it has become more of a challenge to determine the best time to file with the U.S. Patent and Trademark Office (USPTO). After the America Invents Act (AIA), it is a race to the USPTO to be the first to claim your invention, but you may lack the requisite data to enable you to obtain patent protection in the end.

Are all U.S. Patent Claims Invalid?

Nobel Biocare Srvcs. AG v. Instradent USA, Inc. makes one wonder whether all U.S. patents are invalid, or will eventually become invalid. This case demonstrates that decisions affirming the validity of patent claims by the Federal Circuit are nothing more than advisory opinions. Decisions affirming validity of patent claims are merely a preliminary round in a fight that will last until the patent claims are all finally invalidated.

Fall Line Asserts Seemingly Invalid Patent Against a Host of Major Companies

On August 15, 2018, Fall Line Patents, LLC asserted U.S. Patent No. 9,454,748 against a number of companies. Specifically, Fall Line alleged in nine separate lawsuits that the mobile applications provided by AMC Entertainment, McDonald’s, Boston Market, Panda Express, Papa John’s, Pizza Hut, Regal Cinemas, Starbucks, and Zoe’s Kitchen directly infringe at least Claim 1 of the ‘748 patent. All of the lawsuits were filed in the Eastern District of Texas and request permanent injunctions as well as damages.

Hologic Wins $4.8M in Jury Verdict After Judge Determines Assignor Estoppel BarredPatent Invalidity Defenses

On July 27th, a jury verdict entered in the District of Delaware awarded $4.8 million in lost profit and reasonable royalty damages to Marlboro, MA-based medical technology company Hologic Inc. after the jury determined that two of its patents were infringed by Redwood City, CA-based medical device company Minerva Surgical. At issue in the case was a technology marketed by Minerva to treat women dealing with abnormal uterine bleeding (AUB).

Which Invalidity Avenue to Take: Inter Partes Review Verses Post-Grant Review

The United States Patent and Trademark Office (USPTO) provides invalidity tools via inter partes review (IPR) and post-grant review (PGR), but which route is better? …  PGRs are estimated to cost more because of their broader discovery rules.  If cost is a major factor, IPRs are a less-expensive option due to restricted allowance of discovery, the most expensive aspect of patent litigation… If the invalidating arguments or art are not strong, an IPR may be a better option due to its lower threshold for institution.  The same prior art arguments that failed in a petition for a PGR may have succeeded in an IPR petition due to the lower standard.

Federal Circuit Affirms District Court’s Finding of Validity of Claims Directed to Aveed®

When relying on scientific guidelines to support an obviousness rationale, practitioners should offer evidence for why contradictory guidelines should be discounted. A claimed constituent is not “necessarily present” if the prior art reference lists several alternative constituents and a skilled artisan could not reasonably deduce that the authors of the prior art reference used the claimed constituent.

Apple and Samsung Settle Patent Dispute Proving Patent Litigation Doesn’t Hinder Consumer Access

On Wednesday, June 27th, a pair of orders of dismissal, one entered in the District of Delaware and the other entered in the Northern District of California, marked the official end of the patent war which played out between consumer tech giants Apple and Samsung for the better part of the past decade. This legal dispute, which was brought to courts in 10 different countries and even went to the U.S. Supreme Court, is notable because it undermines the argument that major patent infringement battles harm tech consumers through added costs and blocking innovation.

WesternGeco’s Time-Bar Argument Fails to Save its Invalidated Patents

On appeal, WesternGeco argued 1) the Board erred as to its unpatentability determinations; and 2) the IPR proceedings were time-barred under 35 U.S.C. § 315(b) because ION acted in privity with PGS, and over a year passed between its infringement complaint against ION and the PGS IPR petition. Based on the Federal Circuit’s en banc decision known as Wi-Fi One, the time-bar issue was appealable, but WesternGeco’s argument was unpersuasive because the relationship between ION and PGS was not close enough to trigger the time bar.