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

supreme court invites acting SG to file brief in American axle

5/3/2021

On May 3, 2021, the U.S. Supreme Court invited the Acting Solicitor General to file a brief in the cert petition filed by American Axle & Manufacturing. On July 31, 2020, in a decision written by Judge Dyk, the Federal Circuit held American Axle's patent invalid for patent ineligible subject matter. American Axle & Mfg, Inc. v. Neapco Holdings LLC, et al., No. 2018-1763 (Fed. Cir. July 31, 2020). American Axle sued Neapco alleging infringement of its patent directed to a method of manufacturing drive shaft assemblies by inserting a liner into a drive shaft to dampen certain vibrational modes. The parties filed cross-motions for summary judgment as to eligibility of the asserted claims and the district court held the asserted claims ineligible under Section 101. At step 1 of the Mayo/Alice analysis, the district court concluded that the asserted claims considered as a whole are directed to the mere application of Hooke's law. At step 2 of the Mayo/Alice analysis, the district court determined that the additional steps consist of well-understood, routine, conventional activity already engaged in by the scientific community and add nothing significant beyond the sum of their parts taken separately. American Axle appealed to the Federal Circuit. In affirming the decision, the Federal Circuit held that the asserted claims are directed to a natural law because it clearly invokes a natural law, and nothing more, to accomplish a desired result. In her dissent, Judge Moore stated that the majority's true concern was not that the asserted claims are directed to Hooke's law but rather the patentee's failure to precisely claim how to tune a liner to dampen both bending and shell mode vibrations. Full text of the Federal Circuit opinion is available here.
After the Federal Circuit declined to hear the case en banc in a 6-6 vote, American Axle filed its cert petition with the Supreme Court.

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.