Praxair Distribution Inc. v. Mallinckrodt Hospital Products IP, Ltd.

Praxair Distribution, Inc. (“Praxair”) appeals from the inter partes review decision of the United States Patent and Trademark Office Patent Trial and Appeal Board (“the Board”) holding claim 9 of U.S. Patent 8,846,112 (the “’112 patent”) not unpatentable as obvious under 35 U.S.C. § 103 (2006).1 Praxair Distrib., Inc. v. Mallinckrodt Hosp. Prods. IP Ltd., No. IPR2015-00529, 2016 WL 3648375 (P.T.A.B. July 7, 2016) (“Decision”). Mallinckrodt Hospital Products IP Ltd. (“Mallinckrodt”) crossappeals from the same decision holding, inter alia, claims 1–8 and 10–11 unpatentable as obvious. Because we conclude that the Board did not err in its conclusions as to claims 1–8 and 10–11, but did err with respect to claim 9, we affirm the Board’s decision in part and reverse it in part.

Download Praxair Distribution Inc. v. Mallinckrodt Hospital Products IP Ltd.

Need help protecting your intellectual property? Visit Gehrke & Associates, SC to learn more about how we can help enhance and defend your intellectual property.  Thank you.

SAP America, Inc. v. Investpic, LLC

InvestPic, LLC’s U.S. Patent No. 6,349,291 describes and claims systems and methods for performing certain statistical analyses of investment information. We addressed this patent in In re Varma, 816 F.3d 1352 (Fed. Cir. 2016), where we construed key claim terms and partly reversed and partly vacated the Patent Trial and Appeal Board’s cancellations of various claims in two reexamination proceedings involving issues of anticipation and obviousness under 35 U.S.C. §§ 102 and 103. The present appeal involves a declaratory judgment action filed in 2016 by SAP America, Inc., which alleges, among other things, that the claims of the ’291 patent are invalid because their subject matter is ineligible for patenting under 35 U.S.C. § 101. When SAP moved for a judgment on the pleadings on that ground, the district court granted the motion, holding all claims ineligible under § 101 and hence invalid. SAP Am., Inc. v. InvestPic, LLC, 260 F. Supp. 3d 705, 718–19 (N.D. Tex. 2017).

We affirm. We may assume that the techniques claimed are “[g]roundbreaking, innovative, or even brilliant,” but that is not enough for eligibility. Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013); accord buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1352 (Fed. Cir. 2014). Nor is it enough for subject-matter eligibility that claimed techniques be novel and nonobvious in light of prior art, passing muster under 35 U.S.C. §§ 102 and 103. See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 89–90 (2012); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new abstract idea is still an abstract idea. The search for a § 101 inventive concept is thus distinct from demonstrating § 102 novelty.”); Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016) (same for obviousness) (Symantec). The claims here are ineligible because their innovation is an innovation in ineligible subject matter. Their subject is nothing but a series of mathematical calculations based on selected information and the presentation of the results of those calculations (in the plot of a probability distribution function). No matter how much of an advance in the finance field the claims recite, the advance lies entirely in the realm of abstract ideas, with no plausibly alleged innovation in the nonabstract application realm. An advance of that nature is ineligible for patenting.

Download SAP America Inc. v. Investpic LLC

Need help protecting your intellectual property? Visit Gehrke & Associates, SC to learn more about how we can help enhance and defend your intellectual property.  Thank you.

M-I Drilling Fluids, U.K. Ltd. v. Dynamic Air Ltda.

M-I Drilling Fluids U.K. Ltd. and M-I LLC sued Dynamic Air Ltda. in the U.S. District Court for the District of Minnesota, alleging infringement of five U.S. patents. The district court dismissed the case for lack of personal jurisdiction. Because Rule 4(k)(2) of the Federal Rules of Civil Procedure supports the exercise of specific personal jurisdiction over Dynamic Air Ltda., we reverse and remand for further proceedings.

Download M-I Drilling Fluids U.K. Ltd. v. Dynamic Air Ltda.

Need help protecting your intellectual property? Visit Gehrke & Associates, SC to learn more about how we can help enhance and defend your intellectual property.  Thank you.

Anacor Pharmaceuticals, Inc. v. Iancu

This is an appeal from a decision of the Patent Trial and Appeal Board in an inter partes review proceeding. The Board held all of the claims of a patent owned by Anacor Pharmaceuticals, Inc., to be unpatentable for obviousness. Anacor has appealed with respect to only one of the rejected claims. We affirm.

Download Anacor Pharmaceuticals Inc. v. Iancu

Need help protecting your intellectual property? Visit Gehrke & Associates, SC to learn more about how we can help enhance and defend your intellectual property.  Thank you.

AIDS Healthcare Foundation, Inc. v. Gilead Sciences, Inc.

This appeal is from the dismissal of a declaratory judgment action filed by AIDS Healthcare Foundation, Inc. (“Healthcare” or “AHF”) against Gilead Sciences, Inc. et al. (“Defendants”) in the United States District Court for the Northern District of California.1 On appellate review, we conclude that this action does not meet the requirements of the Declaratory Judgment Act.

Download AIDS Healthcare Foundation Inc. v. Gilead Sciences Inc.

Need help protecting your intellectual property? Visit Gehrke & Associates, SC to learn more about how we can help enhance and defend your intellectual property.  Thank you.

WesternGeco LLC v. ION Geophysical Corp.

HEN, Circuit Judge. WesternGeco LLC (WesternGeco) appeals from the final written decisions of the Patent Trial and Appeal Board (Board) in inter partes review (IPR) proceedings instituted on six petitions filed by Petroleum GeoServices, Inc. (PGS)1 against three patents owned by WesternGeco: U.S. Patent Nos. 7,080,607 (the ’607 Patent), 7,162,967 (the ’967 Patent), and 7,293,520 (the ’520 Patent) (collectively, the WesternGeco Patents). PGS filed its IPR petitions in two rounds: the first three petitions challenged certain claims of each of the three WesternGeco Patents; and the second three petitions challenged additional claims of each of the WesternGeco Patents. After the first round of IPRs was instituted, ION Geophysical Corp. and ION International S.A.R.L. (together, ION) moved, under 35 U.S.C. § 315(c), to join those IPRs. The Board granted ION’s request but restricted its involvement to receiving notification of filings and attending, rather than actively participating in, depositions and oral hearings.

 The Board issued six final written decisions, finding all of the instituted claims in the six proceedings to be unpatentable as anticipated or obvious. It also rejected WesternGeco’s arguments that the IPR proceedings were time-barred under 35 U.S.C. § 315(b). We conclude that substantial evidence supports the Board’s unpatentability determinations, as well as its conclusion that the proceedings were not time-barred. We thus affirm the Board’s decisions.

Download WesternGeco LLC v. ION Geophysical Corp.

Need help protecting your intellectual property? Visit Gehrke & Associates, SC to learn more about how we can help enhance and defend your intellectual property.  Thank you.

Energy Heating, LLC. v. Heat On-the-Fly, LLC

Appellants Heat On-The-Fly, LLC and Super Heaters North Dakota, LLC (together, “HOTF”)1 appeal the district court’s judgment of inequitable conduct, summary judgment of obviousness, denial of judgment as a matter of law of no tortious interference, construction of disputed claim terms, and dismissal of HOTF’s counterclaim of direct infringement. Cross-Appellants Energy Heating, LLC and Rocky Mountain Oilfield Services, LLC (together, “Energy”); and Marathon Oil Company and Marathon Oil Corporation (together, “Marathon”) appeal the district court’s denial of attorneys’ fees under 35 U.S.C. § 285.

 We affirm the district court’s declaratory judgment that U.S. Patent No. 8,171,993 is unenforceable due to inequitable conduct, and therefore do not reach the district court’s summary judgment of obviousness, claim construction order, or summary judgment of no direct infringement. We also affirm the district court’s judgment of tortious interference and denial of remedies under the North Dakota Unlawful Sales or Advertising Practices Act. Finally, we vacate the district court’s denial of attorneys’ fees under § 285 and remand on that issue alone.

Download Energy Heating LLC. v. Heat On-the-Fly LLC

Need help protecting your intellectual property? Visit Gehrke & Associates, SC to learn more about how we can help enhance and defend your intellectual property.  Thank you.

General Hospital Corp. v. Sienna Biopharmaceuticals, Inc.

General Hospital Corp. (“GHC”) appeals the Patent Trial and Appeal Board’s dismissal of an interference determining it lacked standing because claims of U.S. Patent Application No. 13/789,575 lacked sufficient written description under § 112 of the Patent Act. It further appeals the Board’s denial of its contingent motion to add a new claim. We vacate the Board’s termination of the interference and remand for further proceedings.

Download General Hospital Corp. v. Sienna Biopharmaceuticals Inc.

Need help protecting your intellectual property? Visit Gehrke & Associates, SC to learn more about how we can help enhance and defend your intellectual property.  Thank you.

In re: Verhoef

Jeff H. VerHoef (“VerHoef”) appeals from the decision of the Patent Trial and Appeal Board (the “Board”) affirming the examiner’s rejection of all claims of VerHoef’s pending application 13/328,201 (the “’201 application”) as unpatentable under 35 U.S.C. § 102(f) (2006). Ex parte VerHoef, No. 2015-005270, 2017 WL 745052 (P.T.A.B. Feb. 23, 2017) (“Decision”). Because the Board correctly concluded that VerHoef did not solely invent the claimed subject matter of the ’201 application on which he claimed sole inventorship, we affirm.

Download In re Verhoef

Need help protecting your intellectual property? Visit Gehrke & Associates, SC to learn more about how we can help enhance and defend your intellectual property.  Thank you.

Disc Disease Solutions Inc. v. VGH Solutions, Inc.

Disc Disease Solutions Inc. appeals an order from the United States District Court for the Middle District of Georgia that dismissed with prejudice its complaint for failure to state a claim and denied its request to file a first amended complaint. The district court erred when it dismissed the complaint for failure to state a claim. We reverse the district court’s grant of the motion to dismiss and remand for further proceedings.

Download Disc Disease Solutions Inc. v. VGH Solutions Inc.

Need help protecting your intellectual property? Visit Gehrke & Associates, SC to learn more about how we can help enhance and defend your intellectual property.  Thank you.