Latest 7 Cases This Week: BASF Corp. v. SNF Holding Co. (Fed. Cir.), Intellisoft, Ltd. v. Acer America Corp. (Fed. Cir.), Myco Industries, Inc. v. ...

How Allen v. Cooper Breaks Important New (if Dubious) Ground on Stare Decisis

VIKRAM DAVID AMAR

Illinois Law dean and professor Vikram David Amar comments on language in a recent U.S. Supreme Court decision, Allen v. Cooperdiscussing constitutional stare decisis in the context of state sovereign immunity. Amar points out some of the problems with the Court’s jurisprudence on state sovereign immunity and Congress’s Section 5 power, and he questions the Allen majority’s embrace of a “special justification” requirement for constitutional stare decisis.

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BASF Corp. v. SNF Holding Co.

Court: US Court of Appeals for the Federal Circuit

Docket: 19-1243

Opinion Date: April 8, 2020

Judge: Alan David Lourie

Areas of Law: Intellectual Property, Patents

SF’s 329 patent is directed to an improved process for preparing high-molecular-weight polymers for use as super-absorbers in fields such as waste treatment and paper manufacturing. The district court entered summary judgment that certain claims were invalid as anticipated and that another was invalid as obvious. The court concluded that a process performed by a third party, Celanese’s “Sanwet® Process,” evidenced prior art knowledge and use of the patented invention under 35 U.S.C. 102(a), and constituted both a public-use bar and an on-sale bar to the patented invention under 35 U.S.C. 102(b). The Federal Circuit reversed. The district court misinterpreted section 102(a) and the public-use bar of section 102(b); under the proper legal standard, genuine issues of material fact precluded summary judgment. The “known or used” prong of 102(a) means “knowledge or use which is accessible to the public.” Members of the public had access to the plant, where they could view the shape of the conical taper; no evidence suggests that any of these guests was a skilled artisan. The parties dispute whether the remaining elements of the Sanwet® Process were known, and to the extent they were not, whether they were concealed from the public on these tours, in newspaper articles, and in the commemoration video.

Intellisoft, Ltd. v. Acer America Corp.

Court: US Court of Appeals for the Federal Circuit

Docket: 19-1522

Opinion Date: April 3, 2020

Judge: Timothy B. Dyk

Areas of Law: Civil Procedure, Intellectual Property, Patents

Intellisoft sued Acer in California state court, asserting state law claims, including misappropriation of trade secrets. After more than three years of litigation, Acer sought to plead a patent inventorship counterclaim under federal law and thereafter removed the action to a federal district court, which denied Intellisoft’s motion to remand and later entered final judgment in favor of Acer. The Federal Circuit reversed. Removal was not proper under 28 U.S.C. 1441. Acer’s arguments do not establish that Intellisoft’s trade secret claim necessarily raised patent law issues. Intellisoft did not need to establish patent infringement to prove trade secrets misappropriation. A plaintiff’s reliance on a patent as evidence to support its state law claims does not necessarily require the resolution of a substantial patent question. Removal was not proper under section 1454, which requires that the claim supporting removal must be contained in an operative pleading. Acer’s cross-complaint was not operative, the counterclaim was never “asserted” under section 1454.

Myco Industries, Inc. v. Blephex, LLC

Court: US Court of Appeals for the Federal Circuit

Docket: 19-2374

Opinion Date: April 3, 2020

Judge: O'Malley

Areas of Law: Civil Procedure, Communications Law, Intellectual Property, Patents

Myco believed its competitor, BlephEx, made false and misleading statements about Myco’s product and whether it infringed BlephEx’s patent, entitled “Method and Device for Treating an Ocular Disorder.” The district court preliminarily enjoined BlephEx from making allegations of patent infringement and from threatening litigation against Myco’s potential customers. The Federal Circuit reversed. Federal law requires a showing of bad faith before a patentee can be enjoined from communicating his patent rights. A showing of “bad faith” must be supported by a finding that the claims asserted were objectively baseless. There was no adequate basis to conclude that allegations of patent infringement would be false or misleading. Even if the injunction were narrowly tailored to allegations of infringement and threats of litigation against Myco’s potential customers, the “medical practitioner immunity” provision of 35 U.S.C. 287(c) does not blanketly preclude a patent owner from stating that a medical practitioner’s performance of a medical activity infringes a patent. Myco asked the court to assume, without any supporting evidence, that a doctor would have interpreted general statements as an accusation of patent infringement and a threat of litigation against the doctor herself.

Nevro Corp. v. Boston Scientific Corp.

Court: US Court of Appeals for the Federal Circuit

Docket: 18-2220

Opinion Date: April 9, 2020

Judge: Kimberly Ann Moore

Areas of Law: Drugs & Biotech, Intellectual Property, Patents

Nevro sued, alleging infringement of 18 claims across seven patents that are directed to high-frequency spinal cord stimulation therapy for inhibiting pain. Conventional spinal cord stimulation systems deliver electrical pulses to the spinal cord to generate sensations, such as tingling or paresthesia, that mask or otherwise alter the patient’s pain. The claimed invention purportedly improves conventional spinal cord stimulation therapy by using waveforms with high-frequency elements or components, which are intended to reduce or eliminate side effects. The district court issued a joint claim construction and summary judgment order, holding certain claims invalid as indefinite. As to the remaining six claims, found not indefinite, the court granted summary judgment of noninfringement. The Federal Circuit vacated and remanded. The district court erred in holding invalid as indefinite the “paresthesia-free” system and device terms and in holding indefinite the claims reciting the term “configured to.” The Federal Circuit construed “configured to” to mean “programmed to” and construed “means for generating” as a means-plus-function term, having a function of “generating” and a structure of “a signal/pulse generator configured to generate” the claimed signals. The district court erred in its claim construction but correctly determined that the term “therapy signal” does not render the claims indefinite; a “therapy signal” is “a spinal cord stimulation or modulation signal to treat pain.”

Nike, Inc. v. Adidas AG

Court: US Court of Appeals for the Federal Circuit

Docket: 19-1262

Opinion Date: April 9, 2020

Judge: Stoll

Areas of Law: Government & Administrative Law, Intellectual Property, Patents

In an earlier appeal from inter partes review, the Federal Circuit vacated-in-part the Patent Trial and Appeal Board’s decision denying Nike’s motion to amend and remanded for the Board to address errors underlying its conclusion that Nike’s proposed substitute claims 47–50 were unpatentable for obviousness. On remand, the Board denied Nike’s request to enter substitute claims 47–50 of its patent on the ground that those claims are unpatentable under 35 U.S.C. 103. Nike asserts that the Board violated the notice provisions of the Administrative Procedure Act by finding that a limitation of substitute claim 49 was well-known in the art based on a prior art reference that, while in the record, was never cited by Adidas for disclosing that limitation. Nike also challenged the Board’s finding that Nike’s evidence of long-felt but unmet need was insufficient to establish the nonobviousness of substitute claims 47–50. The Federal Circuit affirmed in part. Substantial evidence supports the finding that Nike failed to establish a long-felt need for substitute claims 47–50. The court vacated in part. No notice was provided for the Board’s theory of unpatentability for substitute claim 49.

Technical Consumer Products, Inc. v. Lighting Science Group Corp.

Court: US Court of Appeals for the Federal Circuit

Docket: 19-1361

Opinion Date: April 8, 2020

Judge: Stoll

Areas of Law: Intellectual Property, Patents

The 968 patent is directed to replacement light-emitting diode (LED) light fixtures and seeks to minimize the need for customization by creating “low profile downlighting for retrofit applications” that accommodates various housing shapes and sizes. TCP petitioned for inter partes review of several claims. The Patent Trial and Appeal Board determined that TCP did not demonstrate by a preponderance of the evidence that claims 1–4, 6, 14, and 15 were anticipated by the “Chou” patent or that claims 3, 4, 7, 8, 11, 12, 16, 17, and 19–23 would have been obvious over Chou alone or in view of other prior art. The Board based its determinations exclusively on its finding that Chou does not disclose a single limitation (H/D limitation) in claims 1 and 20 of the 968 patent, the only independent claims at issue. The Federal Circuit vacated as to claims 2– 4, 6–8, 12, and 16. The Board’s determination that Chou does not disclose the H/D limitation in claim 1 of the 968 patent is not supported by substantial evidence. The Board’s conclusions regarding the H/D limitation resulted from an erroneous interpretation of the claim language and a misunderstanding of case law. The Board did not address any other arguments regarding the other limitations of claim 1 or of the rest of the challenged claims.

Valeant Pharmaceuticals International, Inc. v. Mylan Pharmaceuticals Inc.

Court: US Court of Appeals for the Federal Circuit

Docket: 18-2097

Opinion Date: April 8, 2020

Judge: Alan David Lourie

Areas of Law: Drugs & Biotech, Intellectual Property, Patents

Valeant’s patent claims stable methylnaltrexone pharmaceutical preparations; methylnaltrexone, a quaternary amine opioid antagonist derivative, can be useful for reducing the side effects of opioids but is unstable in aqueous solution. The inventors discovered that when the pH of a methylnaltrexone solution is adjusted, the percentage of total degradants drops significantly. The patent is listed in the Orange Book for Relistor®, an injectable drug used to treat constipation as a side effect of taking opioid medication. Mylan filed an Abbreviated New Drug Application seeking FDA approval to market a generic version of Relistor®. Mylan conceded that its ANDA product would infringe claim 8 of the patent. The district court entered the parties’ stipulation to the construction of claim 8’s stability limitation: the phrase “the preparation is stable to storage for 24 months at about room temperature” means “the methylnaltrexone degradation products in the preparation do not exceed 2.0% of the total methylnaltrexone present in the preparation and the preparation is suitable for pharmaceutical use when stored for 24 months at room temperature” and granted summary judgment that claim 8 would not have been obvious. The court rejected Mylan’s expert testimony and cited references and Mylan’s theory that the claimed pH range would have been obvious to try. The Federal Circuit reversed. Mylar raised at least a prima facie case of obviousness. The district court’s obvious-to-try analysis is inconsistent with precedent.