Honeywell International, Inc. v. Mexichem Amanco Holding S.A.

Honeywell International, Inc. (“Honeywell”) appeals from a decision of the U.S. Patent and Trademark Office (“the PTO”) Patent Trial and Appeal Board (“the Board”) affirming the Examiner’s rejection, in two merged inter partes reexaminations, of claims 1–26, 31–37, 46–49, 58, 59, 61–68, 70–75, 80, and 81 of U.S. Patent 7,534,366 (“the ’366 patent”) under 35 U.S.C. § 103. See Mexichem Amanco Holding S.A. De C.V. v. Honeywell Int’l Inc., No. 2015-006430, 2016 WL 1254603 (P.T.A.B. Mar. 29, 2016) (“Decision”). Because the Board erred in its analysis, and hence its decision, we vacate and remand.

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Regeneron Pharmaceuticals, Inc. v. Merus N.V.

Regeneron Pharmaceuticals, Inc. (“Regeneron”) appeals from a final judgment of the district court holding U.S. Patent No. 8,502,018 (“’018 patent”) unenforceable because of Regeneron’s inequitable conduct during prosecution. Regeneron also appeals the district court’s construction of several claim terms and determination of indefiniteness. Because we conclude that Regeneron engaged in inequitable conduct during prosecution of the ’018 patent, we affirm.

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Soft Gel Technologies, Inc. v. Jarrow Formulas, Inc.

Soft Gel Technologies, Inc., appeals from three inter partes reexamination decisions of the Patent Trial and Appeal Board. The Board’s decisions invalidated numerous claims in each of three related Soft Gel patents for obviousness. We affirm.

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NobelBiz, Inc. v. Global Connect, L.L.C.

Global Connect, L.L.C. and T C N, Inc. (collectively, the Defendants) appeal from a jury verdict finding they infringed U.S. Patent Nos. 8,135,122 and 8,565,399. Because the district court erred in its claim construction, we reverse and remand.

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Millenium Pharmaceuticals, Inc. v. Sandoz, Inc.

Velcade®. Appellees in Appeal Nos. 15-2066, 16-1008, 16- 1009, 16-1010, 16-1110, 16-1283, and 16-1762 (collectively, “Sandoz”) all filed abbreviated new drug applications (“ANDAs”), admitting infringement and seeking to invalidate various claims of the ’446 Patent. Based on the litigation that ensued, the district court held that claims 20, 31, 49, and 53 of the ’446 Patent were invalid,1 leading to this appeal.

Millennium filed a notice of appeal in Appeal No. 16- 1109 after the district court entered final judgment against Millennium in separate cases arising from ANDAs filed by Apotex and Teva, based on collateral estoppel arising from the district court’s judgment of invalidity of claims 20, 31, 49, and 53 of the ’446 Patent in the Sandoz-Millennium action. We consolidated the appeals in the Sandoz, Apotex, and Teva actions.

On review of the record and the applicable law, we conclude that the district court erred in the Sandoz litigation and that invalidity was not established. We reverse and enter judgment in favor of Millennium in the Sandoz litigation. We also vacate the district court’s judgment in the action between Millennium, Teva, and Apotex based on our decision in the Sandoz litigation and remand that action for further proceedings.

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Genband US LLC v. Metaswitch Networks Corp.

Appellant Genband US LLC sued Metaswitch Networks Corp. and Metaswitch Networks Ltd. (together, Metaswitch) for patent infringement. After a jury found that Metaswitch infringed various claims of several of Genband’s patents, and that the claims at issue had not been proven invalid, Genband sought a permanent injunction. The district court denied the request, concluding that Genband had not established irreparable harm from the infringing activities. That conclusion, however, may have relied on too stringent an interpretation of the requirement, for an injunction, that the allegedly irreparable harm is being caused by the infringement. Based on the district court’s opinion and the briefing in this court, moreover, we cannot be confident of the answer to the causation question under the standard properly governing the inquiry or whether there is any independent ground for finding no irreparable harm or otherwise denying an injunction. Accordingly, we vacate the denial of the injunction and remand for reconsideration.

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IPCom GmbH & Co. v. HTC Corp.

IPCom GmbH & Co. (IPCom) is the owner of U.S. Patent No. 6,879,830 (’830 patent), which describes and claims a method and system for handing over a mobile phone call from one base station to another base station. After IPCom sued HTC Corporation (HTC) for infringing the ’830 patent, HTC requested that the U.S. Patent and Trademark Office (PTO) conduct inter partes reexamination of claims 1, 5–26, and 28–37 of the ’830 patent, which the PTO granted. The reexamination went through two rounds of review by the Examiner and the Patent Trial and Appeal Board (Board). In the first round, the Examiner concluded that the claims were patentable, but HTC appealed to the Board, which issued a new ground of rejection for claims 1 and 5–30. In the second round, IPCom amended claims 1, 5–26, and 28–37,1 but the Board found that these amended claims were obvious under 35 U.S.C. § 103 in view of various combinations of McDonald,2 Anderson,3 GSM,4 and PACS.5

In its appeal, IPCom alleges that, even though it had amended the scope of claims 31–37 during its second round before the Examiner, the Board lacked jurisdiction to review the Examiner’s patentability determination of these amended claims in the Board decision now on appeal. IPCom also argues that the Board’s obviousness rejections were based on a flawed claim construction, because the Board never identified the structure in the patent specification that corresponds to the “arrangement for reactivating the link” means-plus-function claim limitation. IPCom also appeals the Board’s factual findings for several other claim limitations and the motivation to combine the prior art references in the manner claimed by the ’830 patent.

We conclude that, under the circumstances of this case, the Board properly had the authority to consider the patentability of claims 31–37 and thus reject IPCom’s procedural challenge to the Board’s rejection of these claims. But we agree with IPCom that the Board failed to conduct a proper claim construction of the “arrangement for reactivating the link” claim limitation, and we vacate and remand the obviousness rejections based on that limitation. We affirm the Board’s findings in all other respects.

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AdjustaCam, LLC v. Newegg, Inc.

AdjustaCam sued Newegg and dozens of other defendants for patent infringement. Although AdjustaCam voluntarily dismissed most defendants early in the litigation, it continued to litigate against Newegg, including through a Markman order and extended expert discovery. Just before summary judgment briefing, AdjustaCam voluntarily dismissed its infringement claims against Newegg with prejudice. Newegg then filed a motion for attorneys’ fees. The district court denied Newegg’s motion, and Newegg appealed to this court. We remanded to the district court in light of intervening Supreme Court precedent. On remand, the district court again denied Newegg’s motion for fees. Newegg then filed this appeal. Because the district court erred in denying Newegg’s motion, we reverse.

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AdjustaCam

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Nantkwest, Inc. v. Matal

Nantkwest, Inc. appeals from a decision of the United States District Court for the Eastern District of Virginia granting-in-part and denying-in-part the United States Patent and Trademark Office (“USPTO”) Director’s motion for fees. In its order, the district court granted the Director’s requested witness’ fees but denied the requested attorneys’ fees. The Director appeals the court’s denial of attorneys’ fees. We reverse.

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Stanford University v. Chinese University of Hong Kong

The Board of Trustees of the Leland Stanford Junior University (“Stanford”) appeals from orders of the Patent Trial and Appeal Board (“Board”) in three interference proceedings between Stanford and the Chinese University of Hong Kong (“CUHK”). In all of these proceedings, the Board found that Stanford’s claims were unpatentable for lack of written description. See Quake v. Lo, No. 105,920 (P.T.A.B. Apr. 7, 2014); Lo v. Quake, No. 105,923 (P.T.A.B. Apr. 7, 2014); Lo v. Quake, No. 105,924 (P.T.A.B. Apr. 7, 2014).1 Because we conclude that the Board relied on improper evidence to support its key findings and did not cite to other substantial evidence to support its findings, we vacate the Board’s interference decisions and remand for further proceedings.

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