Markman Orders and Federal Circuit Deference
TransData, Inc., a manufacturer of advanced solid-state power and energy metering products, recently announced that an Oklahoma federal judge issued a significant and favorable ruling in its ongoing patent infringement litigation against a group of the nation’s largest electric utilities over wireless smart electric meter technology developed by the company.
The exceptionally brief Order, issued October 1, 2013, by Judge Robin Cauthron of the U.S. District Court for the Western District of Oklahoma, construed the disputed claim terms of TransData’s U.S. Patent Nos. 6,181,294; 6,462,713; and 6,903,699 in a manner consistent with the constructions offered by TransData. More specifically, the court rejected all of the defendants’ proposed constructions in an Order that was only a few lines longer than three double-spaced pages. The relevant claim constructions were as follows:
The Court finds that the term “electric meter chassis” will be construed to mean the base or supporting structure of the electric meter, including any circuit board rack.
[T]he Court finds that “unbalanced output port” is defined as “output port with unbalanced impedance.” “Balance Circuit” means: “a circuit that balances impedance.”
CAFC Finds Promise Not to Infringe Insufficient in ANDA Litigation
On September 26, 2013, the United States Court of Appeals for the Federal Circuit issued a panel decision in Sunovion Pharmaceuticals v. Teva Pharmaceuticals USA et al.
Sunovion appealed from the decision of the United States District Court for the District of New Jersey granting summary judgment that Dr. Reddy’s Laboratories, Ltd. and Dr. Reddy’s Laboratories, Inc. (collectively “Reddy”) do not infringe claims 1, 2, and 8 of Sunovion’s U.S. Patent 6,444,673 (the “’673 patent”). The Federal Circuit panel, per Judge Lourie, with Judges Schall and Reyna joining in the decision, concluded that, although the district court did not err in construing the asserted claims, Sunovion was entitled to a judgment of infringement as a matter of law under 35 U.S.C. § 271(e)(2)(A).
Sunovion owns the rights to the ’673 patent, which is directed to pharmaceutical compositions of the single-enantiomer drug eszopiclone, the active ingredient in the chiral drug marketed as a sleep medication under the brand name LUNESTA®. Pursuant to 21 U.S.C. § 355(b)(1), the ’673 patent is listed as referenced to LUNESTA® in the FDA’s Approved Drug Products with Therapeutic Equivalence Evaluations publication (commonly known as the “Orange Book”). During the second quarter of 2013 alone, LUNESTA® had sales of nearly $200 million.
The dispute started when Reddy submitted an Abbreviated New Drug Application (“ANDA”) to the FDA, which included a so-called paragraph IV certification with respect to the ’673 patent under the Hatch-Waxman Act, 21 U.S.C. § 355(j)(2)(A)(vii)(IV), seeking approval to manufacture, use, and sell 1 mg, 2 mg, and 3 mg eszopiclone tablets as generic versions of Lunesta® prior to the expiration of the ’673 patent. As the Hatch-Waxman Act allows Sunovion to do, they then initiated a patent infringement lawsuit, asserting that Reddy’s ANDA submission constituted an act of infringement of claims 1, 2, and 8 of the ’673 patent according to 35 U.S.C. § 271(e)(2)(A).
10.2.13 | Federal Circuit Cases, Patent Issues, posts | Gene Quinn
St. Jude: Double Patenting at the Federal Circuit
In the recent Federal Circuit case of St. Jude Medical v. Access Closure, the defendant Access Closure, Inc. (ACI) appealed several rulings made by the United States District Court for the Western District of Arkansas in favor of St. Jude Medical, the patentee-plaintiff. The rulings relate to three patents that St. Jude asserted against ACI, namely U.S. Patent No. 7,008,439 to Janzen et al., U.S. Patent No. 5,275,616 to Fowler, and U.S. Patent No. 5,716,375, also to Fowler.
St. Jude filed its complaint in the United States District Court for the Western District of Arkansas on October 22, 2008, alleging that ACI infringed various claims of the aforementioned patents. During the litigation, the district court issued a Markman order in which it construed various claim terms found in the Janzen patent, including “means for ejecting” and “ejecting mechanism.” Unable to resolve the dispute, the parties proceeded to trial before a jury.
The jury rendered a verdict that ACI had infringed claims 7 and 8 of the Janzen patent, but that claims 7, 8, and 9 of the Janzen patent were invalid for double patenting in light of the sibling ’498 patent. Implicit in the jury’s double patenting finding was the jury’s conclusion that claims 7, 8, and 9 of the Janzen patent were not patentably distinct from claim 7 of the sibling patent.
09.23.13 | CAFC, Patent Issues, posts | Gene Quinn
CAFC Making it Easier to Get an Injunction?
Several weeks ago, the Federal Circuit issued an interesting decision in Aria Diagnostics v. Sequenom, which seems to continue a recent trend showing that at least certain panels of the Federal Circuit would like to see a different interpretation by district courts relative to the injunction standards.
Aria (known as Ariosa Diagnostics, Inc. at the time of appeal) sought a declaration that its Harmony test did not infringe any claim of U.S. Patent No. 6,258,540 (the ’540 patent), owned by defendant Isis Innovation Limited (Isis) and licensed by Isis exclusively to Sequenom, Inc. Sequenom counter-claimed, alleging that Ariosa’s Harmony test infringes the ’540 patent. The United States District Court for the Northern District of California denied Sequenom’s motion for a preliminary injunction to prevent Ariosa from making, using, or selling that test. However, the Federal Circuit (per Chief Judge Rader, with Judges Dyke and Reyna) determined that the district court incorrectly interpreted the asserted claims and improperly balanced factors regarding issuance of a preliminary injunction.
Most interesting was the discussion about how the district court failed to properly consider the familiar four-factor injunction test. The district found that price and market erosion would occur. Under Federal Circuit precedent, price erosion, loss of goodwill, damage to reputation, and loss of business opportunities are all valid grounds for finding irreparable harm. Yet, the district court denied the injunction for four specific reasons.
08.26.13 | CAFC, Patent Issues | Gene Quinn
CAFC Upholds ITC Exclusion Order in Rule 36 Judgment
“Man Controlling Trade” outside the ITC in DC, by NY sculptor Michael Lantz (1942).
The United States Court of Appeals recently issued a Rule 36 Summary Affirmance of the April 27, 2012 Final Determination of the International Trade Commission (hereinafter “Commission” or “ITC”) in In the Matter of Certain Ground Fault Circuit Interrupters and Products Containing Same. A Rule 36 judgment can be entered without an opinion when it is determined by the panel that any one of five conditions exist and a written opinion would not have precedential value. See What is a Rule 36 Judgment? The Federal Circuit judgment affirmed the Commission’s general exclusion order, “prohibiting the unlicensed importation of infringing ground fault circuit interrupters and products containing same,” inhibiting infringement on Leviton Manufacturing’s U.S. Patent No. 7,737,809.
The Commission instituted this particular investigation on October 8, 2010, based on a complaint and an amended complaint filed by Leviton Manufacturing Co., of Melville, New York (“Leviton”). The complaint and amended complaint alleged violations of section 337 of the Tariff Act of 1930, as amended (19 U.S.C. § 1337), in the importation into the United States, the sale for importation, and the sale within the United States after importation of certain ground fault circuit interrupters and products containing the same by reason of infringement of claims 1-7, 9-11, 13-17, 23-26, and 32-36 of U.S. Patent No. 7,463,124 (“the ’124 patent”); claims 1-11, 13-28, 30-59, 61-64, and 74-83 of U.S. Patent No. 7,737,809 (“the ’809 patent”); and claims 1-4 and 8 of U.S. Patent No. 7,764,151 (“the ’151 patent”).
08.19.13 | CAFC, ITC, Patent Issues | Gene Quinn
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10.10.13 | posts | Gene Quinn