Intellectual Property and Tech Law Reports

Enzo Biochem. Inc. v. Applera Corp.

Enzo Biochem, Inc., Enzo Life Sciences, Inc., and Yale University (collectively, “Enzo”) appeal the grant of summary judgment by the U.S. District Court for the District of Connecticut in favor of Applera Corp. and Tropix, Inc. (collectively, “Applera”) that all asserted claims of U.S. Patents No. 5,328,824 (“the ’824 patent”), No. 5,449,767 (“the ’767 patent”), and No. 5,476,928 (“the ’928 patent”) are invalid as either indefinite or anticipated, and that U.S. Patent No. 5,082,830 (“the ’830 patent”) is not infringed. Enzo Biochem, Inc. v. Applera Corp., No. 3:04-CV-929 (D. Conn. Mar. 5, 2009). Because we conclude that the claims of the ’824 and ’767 patents are not indefinite, and because we find genuine issues of material fact as to anticipation, we reverse the district court’s summary judgment of invalidity of those two patents. Although we find that the ’928 patent is not indefinite, we affirm the district court’s judgment of anticipation as to that patent. Because the district court correctly construed the claims of the ’830 patent, under which the patent is not infringed, we affirm the judgment of noninfringement. The case is remanded.

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Pressure Prods. Med. Supplies, Inc. v. Greatbatch Ltd.

The United States District Court for the Eastern District of Texas construed the claim term “score line” during trial, denied Enpath Medical Inc.’s (“Enpath”) motion for Judgment as a Matter of Law (“JMOL”) that U.S. Patent Nos. 5,125,904 (the “’904 patent”) and 5,312,355 (the “’355 patent”) (collectively, the “Lee patents”) are invalid, and denied Enpath’s motion for leave to amend its answer to assert inequitable conduct. Because the record does not support the district court’s claim construction, this court vacates the district court’s finding of infringement and remands for further proceedings in light of the correct claim construction. As the record supports the district court’s denial of Enpath’s motions for JMOL and leave to amend its answer, this court affirms those denials.

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Odom's Tennessee Pride Sausage, Inc. v. FF Acquisition, LLC.

Odom’s Tennessee Pride Sausage, Inc. (“Odom’s”) appeals the decision of the United States Patent and Trademark Office, Trademark Trial and Appeal Board granting summary judgment in favor of FF Acquisition, L.L.C. (“FF”) and dismissing Odom’s opposition to a trademark application filed by FF. Odom’s Tenn. Pride Sausage, Inc. v. FF Acquisition, L.L.C., Opposition No. 91/182,173 (TTAB Apr. 17, 2009). Odom’s opposed the registration of FF’s mark, alleging likelihood of confusion with its own marks. We affirm.

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Marrin v. Griffin

Appellants Jeffrey and Claudia Griffin (“the Griffins”) appeal from a judgment of the United States District Court for the Central District of California. The district court granted summary judgment, finding the Griffins’ United States Patent No. 5,154,448 (“the ’448 patent”) invalid under 35 U.S.C. § 102(b) as anticipated. Marrin v. Griffin, Nos. CV07-239-GW and CV07-2100-GW, 2008 U.S. Dist. LEXIS 79708, at *1-2 (C.D. Cal. Sept. 4, 2008).

On appeal, the Griffins’ primary contention is that the trial court improperly failed to treat the “for permitting” language in the preamble as a claim limitation. We affirm.

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Ariad Pharm., Inc. v. Eli Lilly & Co.

Ariad Pharmaceuticals, Inc., Massachusetts Institute of Technology, the Whitehead Institute for Biomedical Research, and the President and Fellows of Harvard College (collectively, “Ariad”) brought suit against Eli Lilly & Company (“Lilly”) in the United States District Court for the District of Massachusetts, alleging infringement of U.S. Patent 6,410,516 (“the ’516 patent”). After trial, at which a jury found infringement, but found none of the asserted claims invalid, a panel of this court reversed the district court’s denial of Lilly’s motion for judgment as a matter of law (“JMOL”) and held the asserted claims invalid for lack of written description. Ariad Pharms., Inc. v. Eli Lilly & Co., 560 F.3d 1366 (Fed. Cir. 2009).

Ariad petitioned for rehearing en banc, challenging this court’s interpretation of 35 U.S.C. § 112, first paragraph, as containing a separate written description requirement. Because of the importance of the issue, we granted Ariad’s petition and directed the parties to address whether § 112, first paragraph, contains a written description requirement separate from the enablement requirement and, if so, the scope and purpose of that requirement. We now reaffirm that § 112, first paragraph, contains a written description requirement separate from enablement, and we again reverse the district court’s denial of JMOL and hold the asserted claims of the ’516 patent invalid for failure to meet the statutory written description requirement.

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Pinnacle Pizza Co. v. Little Caesar's Enters., Inc.

Pinnacle Pizza Company, Inc. ("Pinnacle"), a franchisee, brought suit against Little Caesar Enterprises, Inc. (LCE), the franchisor, alleging, inter alia, breach of the corporation's franchise agreement and violation of the South Dakota Franchise Act (SDFA). Pinnacle also sought to cancel LCE's federal trademark for the phrase "Hot- N-Ready." LCE counterclaimed, alleging breach of the franchise agreement on thepart of Pinnacle. The district court granted LCE summary judgment on all claims. On appeal, Pinnacle argues that the district court erred in granting LCE's motions for summary judgment. Specifically, Pinnacle argues that the district court erred in finding that (1) LCE did not breach the franchise agreement; (2) LCE did not violate the SDFA; (3) LCE did not obtain its federal trademark through fraudulent means; and (4) Pinnacle did breach the franchise agreement by challenging LCE's trademark application. We affirm.

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Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co.

Ariad Pharmaceuticals, Inc., Massachusetts Institute of Technology, the Whitehead Institute for Biomedical Research, and the President and Fellows of Harvard College (collectively, “Ariad”) brought suit against Eli Lilly & Company (“Lilly”) in the United States District Court for the District of Massachusetts, alleging infringement of U.S. Patent 6,410,516 (“the ’516 patent”). After trial, at which a jury found infringement, but found none of the asserted claims invalid, a panel of this court reversed the district court’s denial of Lilly’s motion for judgment as a matter of law (“JMOL”) and held the asserted claims invalid for lack of written description. Ariad Pharms., Inc. v. Eli Lilly & Co., 560 F.3d 1366 (Fed. Cir. 2009).

Ariad petitioned for rehearing en banc, challenging this court’s interpretation of 35 U.S.C. § 112, first paragraph, as containing a separate written description requirement. Because of the importance of the issue, we granted Ariad’s petition and directed the parties to address whether § 112, first paragraph, contains a written description requirement separate from the enablement requirement and, if so, the scope and purpose of that requirement. We now reaffirm that § 112, first paragraph, contains a written description requirement separate from enablement, and we again reverse the district court’s denial of JMOL and hold the asserted claims of the ’516 patent invalid for failure to meet the statutory written description requirement.

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Delaware Valley Floral Group, Inc. v. Shaw Rose Nets, LLC

Appellants Shaw Rose Nets, LLC and Kenneth P. Shaw (“Mr. Shaw”) (collectively, “Shaw”) appeal a final judgment in a patent infringement case in favor of Plaintiffs-Appellees Delaware Valley Floral Group, Inc. (formerly known as Flower Transfers, Inc. and Delaware Valley Wholesale Florist, Inc.) and Esprit Miami, Inc., and Superior Florals, Inc., and Choice Farms Corp., and Continental Farms, LLC and Continental Flowers, Inc., and Olamor Flowers, Inc. (collectively, “Plaintiffs”). Shaw appeals the district court’s grant of summary judgment that U.S. Patent No. 5,765,305 (“’305 patent”) is invalid based on the application of the on-sale bar pursuant to 35 U.S.C. § 102(b), and the court’s subsequent denial of its motion for reconsideration. We affirm.

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Lab. Corp. of Am. Holdings v. Metabolite Labs., Inc.

Metabolite appeals from the United States District Court for the District of Colorado’s grant of summary judgment. See Lab. Corp. of Am. Holdings v. Metabolite Labs., Inc., 571 F. Supp. 2d 1199 (D. Colo. 2008). The district court granted LabCorp’s motion for summary judgment on its complaint for declaratory judgment that it did not breach a license agreement for failure to pay know-how royalties on homocysteine assays performed after judgment had been entered in a prior patent infringement and breach of contract action brought, in part, by Metabolite. Because the present cause of action does not arise under federal patent law nor does Metabolite’s right to relief necessarily depend on resolution of a substantial question of federal patent law, this court does not have jurisdiction over this appeal. The action is a state law contract dispute over know-how royalties brought pursuant to the district court’s diversity jurisdiction. Therefore, we transfer the appeal to the United States Court of Appeals for the Tenth Circuit.

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Richardson v. Stanley Works, Inc.

David Richardson appeals from a final decision of the United States District Court for the District of Arizona. Richardson v. Stanley Works, Inc., 610 F. Supp. 2d 1046 (D. Ariz. 2009). After a bench trial, the district court found that Stanley Works, Inc. (“Stanley”) did not infringe U.S. Patent D507,167 (“the ’167 patent”). Because the court correctly construed the claim at issue and correctly determined that the patent was not infringed, we affirm.

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