Monthly Archives: March 2017

TMC Fuel Injection System, LLC v. Ford Motor Company

Posted on March 31, 2017 by Patrick J. Halloran, Ph.D., J.D.

Docket No. 2016-2122 PROST, WALLACH, STOLL March 27, 2017 Non-precedential Brief Summary: DC grant of SJ of noninfringement of US 7,318,414 relating to fuel injection systems to Ford on the basis of prosecution history disclaimer (PHD) affirmed (“even if there … Continue reading →

Posted in Claim Construction, Inter Parties Review (IPR), IPR, Prosecution History Estoppel | Leave a comment

Lupin Ltd. et al. v. Pozen Inc.

Posted on March 30, 2017 by Patrick J. Halloran, Ph.D., J.D.

IPR2015-01775 (U.S. Pat. No. 8,865,190B2) February 28, 2017 Brief Summary: Pozen’s claims found not obvious as Lupin did not show by a preponderance of the evidence the limitation requiring that “release of at least a portion of said naproxen is … Continue reading →

Posted in Inter Parties Review (IPR), IPR, Obviousness | Leave a comment

In re: Steven C. Chudik

Posted on March 28, 2017 by Patrick J. Halloran, Ph.D., J.D.

Docket No. 2016-1817 DYK, REYNA, STOLL March 27, 2017 Brief Summary: Board affirmance of Examiner’s rejection of Mr. Chudik’s claims as anticipated reversed since “prior art that must be modified ‘to accomplish the function performed by the patent in question’ … Continue reading →

Posted in Anticipation (35 USC 102) | Leave a comment

Tomita Technologies USA, LLC et al. v. Nintendo Co., Ltd.

Posted on March 27, 2017 by Patrick J. Halloran, Ph.D., J.D.

Docket No. 2016-2015 PROST, BRYSON, WALLACH March 17, 2017 Non-precedential Brief Summary: DC finding of no infringement of means-plus-function limitation after consideration of “function-way-result” and “insubstantial differences” tests affirmed. Summary: Tomita appealed DC holding on remand (Tomita Techs., FC 2014) … Continue reading →

Posted in Doctrine of equivalents, Infringement, Means-plus-function | Leave a comment

University of Utah v. Max-Planck et al.

Posted on March 24, 2017 by Patrick J. Halloran, Ph.D., J.D.

Docket No. 2016-1336 O’MALLEY, REYNA, WALLACH March 23, 2017 Brief Summary: DC finding that this case was not “exceptional” under § 285 and thus denying Max-Planck’s motion for attorney fees of about $8 million affirmed since there is no “precise … Continue reading →

Posted in Attorney's Fees, Inventorship | Leave a comment

Intellectual Ventures I LLC, et al. v. Capital One Financial Company et al.

Posted on March 23, 2017 by Patrick J. Halloran, Ph.D., J.D.

Docket No. 2016-1077 PROST, WALLACH, CHEN March 7, 2017 Brief Summary: DC grant of SJ for collateral estoppel (issue preclusion) affirmed under Fourth Circuit law and finding of ineligibility under under § 101 affirmed under the two-step Alice/Mayo “abstract idea” … Continue reading →

Posted in Appeal, Collateral estoppel, Issue Preclusion, Patentability | Leave a comment

Coalition for Affordable Drugs V LLC, et al. v. Biogen MA Inc.

Posted on March 22, 2017 by Patrick J. Halloran, Ph.D., J.D.

Case No. IPR2015-01993 (US 8,339,514 B2) Final Written Decision March 21, 2017 Brief Summary: Board found CAD V failed to show obviousness by a preponderance of the evidence as Biogen presented persuasive evidence of unexpected results (“the magnitude of the … Continue reading →

Posted in Inter Parties Review (IPR), IPR, Obviousness | Leave a comment

Intellectual Ventures I LLC, et al. v. Erie Indemnity Company et al.

Posted on March 21, 2017 by Patrick J. Halloran, Ph.D., J.D.

Docket No. 2016-1128, -1132 PROST, WALLACH, CHEN March 7, 2017 Brief Summary: DC finding the IV lacked standing affirmed because assigning rights “‘in and to’ a particular patent” does not “automatically include[s] its child applications” (must explicitly refer to continuations … Continue reading →

Posted in Assignment / Ownership, Patentability | Leave a comment

Allergan, Inc. and Duke University v. Sandoz, Inc. (Akorn, Hi-Tech Pharm., Apotex)

Posted on March 20, 2017 by Patrick J. Halloran, Ph.D., J.D.

Docket No. 2016-1085, -1160 REYNA, WALLACH, CHEN March 17, 2017 Non-precedential Brief Summary: DC finding of collateral estoppel and obviousness for asserted claims affirmed but reversed as to the unasserted claims of the Allergan’s ‘953 patent (“Sandoz, Inc. has not … Continue reading →

Posted in Anticipation (35 USC 102), Article III disputes, Collateral estoppel, Issue Preclusion, Obviousness | Leave a comment

Michael Meiresonne v. Google, Inc.

Posted on March 17, 2017 by Patrick J. Halloran, Ph.D., J.D.

Docket No. 2016-1755 (IPR2014-01188) PROST, LOURIE, MOORE March 7, 2017 Brief Summary: PTAB’s finding of no teaching away “supported by substantial evidence” (e.g., “nothing in either reference indicates that descriptive text would render Finseth’s rollover area inoperative for its intended … Continue reading →

Posted in Obviousness, Obviousness-Teaching Away | Leave a comment