Justia Civil Procedure Opinion Summaries

Articles Posted in U.S. Federal Circuit Court of Appeals
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P&G owns patents that claim systems or methods for whitening teeth. P&G sued TT, alleging infringement of the three patents; in another district, Clio, which manufactured the accused products, sought a declaratory judgment action against P&G, alleging that the patents were invalid, unenforceable, or not infringed. In its declaratory-judgment action. P&G amended its complaint in the Ohio action to add Clio as a defendant. When TT and Clio then moved for a stay or a transfer to New Jersey, the Ohio district court denied both motions. The New Jersey district court dismissed Clio’s declaratory-judgment action there without prejudice. Clio then timely petitioned the PTO to institute inter partes reviews of the patents under 35 U.S.C. 311-319. P&G responded, arguing that Clio’s earlier declaratory judgment action involving the same three patents, though it had been voluntarily dismissed, barred the institution of inter partes reviews under section 315(a). The Patent Trial and Appeal Board disagreed and granted all three petitions, because 35 U.S.C. 315(a)(1) states: “An inter partes review may not be instituted if, before the date on which the petition for such a review is filed, the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent.” P&G sought a writ of mandamus under 28 U.S.C. 1651. The Federal Circuit denied the petition, stating that mandamus action is not available. View "In re: Procter & Gamble Co." on Justia Law

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In 2010, St. Jude sued Volcano, alleging infringement of five patents. Volcano counterclaimed, asserting infringement of the 994 patent. More than two years later, the district court, based on the stipulations of the parties, dismissed all claims relating to the 994 patent. Six months after the dismissal, St. Jude sought inter partes review of the 994 patent. The Director of the U.S. Patent & Trademark Office, through the Board, denied the petition, stating that a counterclaim alleging infringement constitutes a “complaint alleging infringement of the patent” under 35 U.S.C. 315(b), which bars institution of an inter partes review of a patent if the petitioner was served with a complaint alleging infringement of the patent more than one year before filing the petition. Accordingly, the 2010 counterclaim against St. Jude barred the Director from instituting an inter partes review. The Federal Circuit dismissed, based on the structure of the inter partes review provisions, on the language of section 314(d) within that structure, and on its jurisdictional statute read in light of those provisions. View "St. Jude Medical, Cardiology Div., Inc. v. Volcano Corp." on Justia Law

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Vaillancourt obtained ownership of the 221 patent from his mother through an assignment recorded with the PTO in 2011. Vaillancourt represents that the assignment took effect in 2005. In 2010, BD requested an inter partes reexamination of the 221 patent. During the reexamination proceedings, Vaillancourt added claims 21 through 37 to the original 20 claims. The patent examiner rejected all 37 claims. While an appeal was pending, Vaillancourt assigned to VLV “the entire right, title and interest in and to” the 221 patent, “including full and exclusive rights to sue upon and otherwise enforce” the patent. VLV sued BD for infringement in its own name and did not join Vaillancourt. The Board subsequently affirmed all of the examiner’s rejections. Despite no longer being the owner of the patent, Vaillancourt unsuccessfully requested rehearing in his own name. Vaillancourt appealed to the Federal Circuit, identifying himself in the notice of appeal as both the patent owner and appellant. BD moved to dismiss for lack of jurisdiction. The Federal Circuit ultimately dismissed for lack of standing. View "Vaillancourt v. Becton Dickinson & Co." on Justia Law

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AVS filed a patent infringement suit in the Eastern District of Texas, five months after AVS was incorporated in the Western District of Texas. AVS is a subsidiary of a patent-licensing company Acacia and shares an office in the Eastern District of Texas with other Acacia subsidiaries of Acacia. Some of the patents at issue are in the same family as patents that were the subject of cases previously litigated in the Eastern District of Michigan. A few months later, Toyota and Gulf States moved to sever claims against Gulf States; to transfer the claims against Toyota to the Eastern District of Michigan under 28 U.S.C. 1404(a); and to stay claims against Gulf States s pending resolution of the transferred case. Gulf States is located in Houston, Texas (the Southern District of Texas), and is an independent distributor of Toyota vehicles in five states. The district court denied the motions. The Federal Circuit vacated. Nothing favors the transferor forum, but several factors favor the transferee forum. Toyota has a clear right to transfer. View "In re: Toyota Motor Corp." on Justia Law

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Endo sells Opana® ER extended-release tablets containing a painkiller, oxymorphone. In earlier litigation, Endo sued Roxane and Actavis for patent infringement, 35 U.S.C. 271(e)(2)(A), based on their Abbreviated New Drug Applications to market generic versions of Opana® ER. The lawsuits settled; Endo granted defendants a license and a covenant not to sue. After making the agreements the 122 and 216 patents issued to Endo. They are continuations of the same parent application and directed to extended-release oxymorphone compositions and methods of treating pain using those compositions. Endo also acquired the unrelated 482 patent, concerning purified oxymorphone compositions and methods of making those compositions. The asserted patents are listed in the Approved Drug Products with Therapeutic Equivalence Evaluations (Orange Book) entry for Opana® ER. Endo again sued for infringement and sought a preliminary injunction to prevent marketing or sales of generic oxymorphone formulations. The district court held that Endo was estopped from claiming that the activity of defendants, “which has gone on for a substantial period of time, is now suddenly barred because of these new patents.” The Federal Circuit vacated, finding that the defendants did not have an express or implied license to practice the patents at issue.View "Endo Pharm. Inc. v. Actavis, Inc." on Justia Law

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Senju’s patent covers an ophthalmic solution for eye drops containing Gatifloxacin, an antimicrobial agent, to kill bacteria. Tear dilution and the outer layer of the eye can prevent Gatifloxacin from passing into and treating the aqueous humor. The patent discloses a solution combining Gatifloxacin with disodium edetate, to expand the intercellular spaces of the cornea, accelerating passage of Gatifloxacin solution into the eye. In 2007, Apotex filed an Abbreviated New Drug Application with the FDA (Hatch-Waxman Act, 98 Stat. 1585), requesting approval to manufacture and sell a generic version of the solution. Senju filed an infringement action. The district court held that, though the ANDA product infringed claims 1–3, 6, 7, and 9, claim 7 was invalid as obvious. The Federal Circuit affirmed. In the gap between the court’s 2010 issuance of findings and its December 2011 entry of final judgment, Senju requested reexamination of claims 1–3, 6, 8, and 9; amended claim 6 to include additional limitations; and added new independent claim. In October 2011, the PTO issued a reexamination certificate cancelling claims 1–3 and 8–11, and certifying amended claim 6, new independent claim 12, and new dependent claims as patentable. Before entry of final judgment in the first action, Senju sought a declaratory judgment that Apotex’s manufacture, use, or sale of Gatifloxacin ophthalmic solution infringed claims set forth in the reexamination certificate. The district court dismissed. The Federal Circuit affirmed, finding the suit barred by claim preclusion. View "Senju Pharm. Co., Ltd. v. Apotex, Inc." on Justia Law

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B.E. sued Barnes & Noble in the Western District of Tennessee, alleging that Barnes & Noble’s Nook® devices infringed a B.E. patent. B.E.’s CEO, Hoyle, the named inventor on that patent, has lived in the Western District of Tennessee since 2006 and run the company from there since 2008. Barnes & Noble is incorporated in Delaware and headquartered in New York, but has an office in California, where most of its activities related to Nook® take place. Barnes & Noble moved to transfer the case pursuant to 28 U.S.C. 1404(a) “for the convenience of parties and witnesses, in the interest of justice.” The district court denied the motion, agreeing that the case should remain in Tennessee. The court found that party and non-party witnesses reside in California, but that transfer would impose the burden of travel and time away for any witness in Tennessee. The court faulted Barnes & Noble for not addressing how many employees would be unavailable to testify in Tennessee or why deposition testimony would not suffice. Barnes & Noble sought a writ of mandamus. The Federal Circuit denied its petition, stating that it saw no clear abuse of discretion in the district court’s decision to deny transfer. View "In re: Barnes & Noble, Inc." on Justia Law