Rajan Law Office Blog - Rajan Law Office, LLC | Intellectual Property & Litigation

courts have authority to compel ownership transfer of foreign patents

12/7/2020

On Dec. 7, 2020, the Federal Circuit held that courts have the authority to compel parties to transfer ownership of foreign patents. SiOnyx LLC v. Hamamatsu Photonics K.K., No. 19-2359 (Fed. Cir. Dec. 7, 2020). In reversing the district court's denial of plaintiff's request for sole ownership of several foreign patents reasoning that evidence establishing plaintiff's right to sole ownership of U.S. patents was equally applicable to the foreign patents because the U.S. patents claimed priority to foreign applications. The Court concluded that no rational basis existed for treating the U.S. and foreign patents differently when determining ownership.
Full text of the opinion is available here.

federal circuit limits anda venue

11/5/2020

On Nov. 5, 2020, the Federal Circuit affirmed a lower court's order dismissing the claims against two defendants for improper venue. Valeant Pharm. v. Mylan Pharm., No. 19-2402 (Fed. Cir. Nov. 5, 2020). The Federal Circuit concluded that for venue purposes in ANDA cases, infringement occurs only in districts where actions related to the submission of an ANDA occur and not all locations where future distribution of the generic products is contemplated.

settlement agreements have preclusive effect under Kessler doctrine

6/17/2020

On June 17, 2020, the Federal Circuit held that the Kessler doctrine barred future infringement suits against customers because an earlier lawsuit was dismissed with prejudice. In re PersonalWeb Technologies LLC, No. 2019-1918 (June 17, 2020).
Full text of opinion is available here.

ipr petitioners cannot seek new hearing post Arthrex

5/5/2020

On May 6, 2020, the Federal Circuit issued an order denying Caterpillar's motion to vacate and remand for a new hearing before a differently constituted panel in light of Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019). In denying the motion, the court reasoned that the panel members became constitutional prior to issuing the final written decision. Caterpillar Paving Products Inc. v. Wirtgen Am., Inc., No. 2020-1261 (Fed. Cir.). Order available here.

Supreme court GRANTS CERT IN copyright case between oracle and google

11/15/2019

The U.S, Supreme Court granted certiorari in the copyright case between Oracle and Google over the use of Java in Google's Android OS. Google LLC v. Oracle Am., Inc., No. 18-956 (Nov. 15, 2019) (cert granted). Two questions are presented in this case: (1) Whether copyright protection extends to software interface; and (2) whether the use of software interface in creating a new computer program a fair use.

Oracle sued Google in N.D.Cal. for copyright violations for using 37 packages of Java API in Android OS. Google claimed fair use to allegations of copyright infringement. Jury found Google guilty of infringement but was deadlocked on fair use. Therefore, the district judge ruled that the API packages were not copyrightable. Oracle appealed to the Federal Circuit and the appeals court reversed the district court find that the SSO of Java API packages were copyrightable. Google then filed a writ to the Supreme Court but the Court denied review based on the Solicitor General's views. The case then went back to the district court.

In the second trial, Google won on fair use defense. Oracle then appealed to the Federal Circuit and it once again reversed the district court concluding that Google's use of Java API packages was not fair use. Google then filed a writ and the Supreme Court granted cert.

federal circuit rules ptab judges appointment as unconstitutional

10/31/2019

On October 31, 2019, in a decision having far-reaching consequences to inter partes review, the Federal Circuit ruled that the appointment of judges to the Patent Trial and Appeal Board (PTAB) was unconstitutional. Arthrex, Inc. v. Smith & Nephew, Inc., No. 18-2140 (Fed. Cir. Oct. 31, 2019).

Full text of the opinion is available here.

treatment claims patent eligible, rules federal circuit

3/15/2019

A Federal Circuit panel reversed a district court's grant of motion for judgment on pleadings that the asserted claims were patent ineligible because the appellee's proposed claim constructions failed to render the claims invalid. Natural Alternatives Int'l v. Creative Compounds, LLC, No. 2018-1295 (Fed. Cir. Mar. 15, 2019). Natural Alternatives is the owner of patents relating to dietary supplements containing Beta-alanine, an amino acid, that helps to increase the anaerobic working capacity of muscle. Natural Alternatives sued Creative Compounds and the S.D. Cal. court granted Creative's motion for judgment on pleadings under Rule 12(c) holding that the asserted claims lacked inventive concept rendering them patent ineligible. Using the proposed claim constructions of Natural Alternatives, the district court held the asserted claim 1 is directed to the natural law because "ingesting certain levels of beta-alanine, a natural substance, will increase the carnosine concentration in human tissue and, thereby, increase the anaerobic working capacity in a human." Claim 1 recited, in part, "effective to increase beta-alanylhistidine dipeptide synthesis in the tissue...wherein the amino acid is provided through a dietary supplement." In reversing the district court, the Federal Circuit panel consisting of Judges Moore, Reyna and Wallach reasoned that the asserted claims are "treatment claims" and administering certain quantities of beta-alanine results in specific physiological benefits for athletes engaged in intensive exercise and the claims embodies this discovery requiring administration of certain dosage. Judge Reyna concurred with the panel's decision to reverse the district court's grant of motion for judgment but dissented from the majority's Section 101 analysis.
Full text of the opinion is available here.

Federal circuit reverses ptab's ipr ruling, in a setback to apple

3/8/2019

On March 3, 2019, the Federal Circuit reversed the PTAB's IPR decision that held the challenged claims as obvious. Personal Web Tech., LLC v. Apple, Inc., No. 2018-1599 (Fed. Cir. March 8, 2019). Apple filed an IPR petition against US7,802,310 asserting multiple grounds of unpatentability. Board issued a final written decision concluding that Apple had demonstrated by a preponderance of evidence that the challenged claims were obvious in view of prior art references. The '310 patent is directed to a system that uses content-based identifiers for various purposes in data processing systems.

Full text of the opinion is available here.

infringement action waives sovereign immunity defense to section 101 challenge

2/26/2019

On Feb. 26, 2019, the Federal Circuit affirmed the district court's motion to dismiss for failure to state a claim because the asserted claims were invalid under Section 101. Univ. of Fla. Research v. General Elec. Co., 2018-1284 (Fed. Cir. Feb. 26, 2019). University of Florida, the owner of US 7,062,251 directed to managing critical care physiologic data using data synthesis technology, sued General Electric for infringement. GE filed a Rule 12(b)(6) motion to dismiss arguing that the patent claims are directed to ineligible subject matter. The N.D. Fla. court granted the motion and applying the Alice test determined the claims to be directed to an abstract idea and lacking an inventive concept. Univ. of Florida appealed arguing that sovereign immunity precludes a Section 101 challenge.
In affirming the district court's decision, the Federal Circuit held that (a) the district court had subject matter jurisdiction because the plaintiff waived its sovereign immunity by bringing an infringement action and Section 101 eligibility challenge is a defense to infringement, and (b) the patent claims are directed to abstract idea of "collecting, analyzing, manipulating, and displaying data".
Full text of the opinion is available here.

Supreme court affirms federal circuit's on-sale bar decision in helsinn

1/22/2019

On Jan. 22, 2019, the U.S. Supreme Court unanimously affirmed Federal Circuit's decision regarding "on sale" bar under AIA's 35 USC 102(a)(1) by holding that the catchall phrase "otherwise available to the public" did not alter the meaning of "on sale." Helsinn Healthcare S.A. v. Teva Pharm. USA, Inc., 586 U.S. ___ (2019). Petitioner Helsinn, a Swiss pharma, acquired rights to palonosetron, the active ingredient in Aloxi. Helsinn submitted protocols for Phase III clinical trials for 0.25mg and 0.75mg dose of palonosetron. Helsinn and MGI Pharma entered into a license agreement, and a supply and purchase agreement. Both agreements included the dosage information and MGI disclosed these agreements in its SEC 8K filing after redacting the dosage information. Two years thereafter, Helsinn filed a provisional patent application covering the above dosages and the asserted patent issued from an application filed on May 2013 claiming priority to the provisional application. Teva filed an ANDA and asserted that the patent was invalid because the 0.25mg dose was "on sale" more than one year before Helsinn filed the provisional patent application.
The district court concluded that the "on sale" provision did not apply because the public disclosure of the agreements did not disclose the dosages and therefore the invention was not "on sale" before the critical date. The Federal Circuit reversed concluding that "if the existence of the sale is public, the details of the invention need not be publicly disclosed in the terms of sale" to fall within the AIA's on-sale bar. In affirming the Federal Circuit, the Supreme Court reasoned that the Court's precedence suggest that a sale or offer of sale need not make an invention available to the public and that "secret sales" can invalidate a patent. According to the Court, the phrase "on sale" had acquired a well-settled meaning when the AIA was enacted and that Congress did not intend to upset that precedent with the addition of a broad catchall phrase. The Court then held that Congress did not alter the meaning of "on sale" when it enacted the AIA and that an inventor's sale of an invention to a third party who is obligated to keep the invention confidential can qualify as a prior art under 35 USC 102(a).
The takeaway from the Supreme Court's decision is that secret sales can be prior art. Any patent application filing must consider the date of such sales for prior art purposes.
Full text of the opinion is available here.