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Endo Pharmaceuticals Inc., Mallinckrodt LLC, vs. Actavis LLC

Endo Pharmaceuticals Inc., Mallinckrodt LLC, vs. Actavis LLC, FKA Actavis Inc., Actavis South Atlantic LLC, Teva Pharmaceuticals USA, Inc., US Court of Appeals for the Federal Circuit.

Case Summary: Gaurav Mohindra

Appeal from the United States District Court for the District of Delaware

Plaintiff “Endo” sued defendants “Actavis” in district court alleging that two Abbreviated New Drug Applications filed by Actavis infringed claims from a patent licensed to Endo by Mallinckrodt.  The District Court held that Actavis failed to prove that any of the asserted claims were invalid as obvious or anticipated and entered judgement of infringement.  Actavis appealed the district court’s decision to the Federal Circuit Court of Appeals.

On appeal, Actavis puts forward that the District Court erred by misconstruing the claims, and in determining that the claims in questions were not obvious in light of prior art.  In rendering its analysis, the Federal Circuit provided the standard of review and legal standard for claim construction.  “Claim construction must begin with the words of the claims themselves…. Words of a claim are generally given their ordinary and customary meaning…that they would have to a person of ordinary skill in the art in question at the time of the invention.”  The Court continued by emphasizing the importance of the specification for claim construction, and prosecution history.  The Court further indicated that extrinsic evidence may also be applied, however such evidence generally holds less significance than the intrinsic record.

After laying out the framework, the Court found that the District Court properly construed the claims in question by properly relying on the intrinsic and extrinsic evidence.  In its analysis, the Federal Circuit reviewed the claims themselves, the specification, and extrinsic evidence (expert testimony) and found that the evidence supports the Districts Court’s construction of the clams.

The Federal Circuit further found that the District Court did not clearly err in finding that person having ordinary skill in the art at the time of the invention would not have a reasonable expectation of success in combining the prior art.  An interesting consideration of this case is that the District Court relied, in part, on confidential communications between the patentee and the FDA, says Gaurav Mohindra

The District Court found that those communications did not provide a reasonable expectation of success because they were not teachings and provided no substantive information about how the patentee were to produce the claimed compound.  The Federal Circuit found that the FDA communications recited a goal without teaching how the goal is attained.

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Trading Technologies International, Inc. v. IBG LLC

Case Commentary: Trading Technologies International, Inc. v. IBG LLC, et. al., United States Court of Appeals for the Federal Circuit, Appeal from the USPTO, PTAB no. CBM2015-00179.

By Gaurav Mohindra

Opinion date:  April 18, 2019

Trading Tech holds several patents related to electronic trading.  Particularly, their patents cover the graphical user interface permitting remote traders to evaluate and monitor trade information in an effective and organized fashion.

IBG LLC and Interactive Brokers LLC petitioned the review of certain claims pursuant to the Transitional Program for Covered Business Method patents.  As a result of the review, the  Patent Trial and Appeal Board held that the patents are eligible for review under the Covered Business Methods program and that the claims were found to be invalid under 35 Sec 101 as unpatentable subject matter.  In addition, certain claims were also found to be obvious.

Trading Tech appeals.

On appeal, the Federal Circuit held that the patents in question were eligible for review under CBM.  A CBM patent is defined in the America Invents Act as a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions says Gaurav Mohindra.

The Federal Circuit found that the claims are directed to a covered business method patent.  Specifically, the court stated that “These claims are directed to a financial method used by a computer. We see no technological invention in this software method for trading.”

The Court went on to emphasize that this invention makes the trader faster and more efficient, not the computer – and that it is not a technical solution to a technical problem.

The Court proceeded to evaluate the patentability of the claimed subject matter.  The Court applied two-step approach as defined by the Supreme Court in Alice Corp. Pty. Ltd. V CLS Bank Int’l, 573 U.S. 208, 216 (2014).  In applying Alice, the Court agreed with the PTAB who found the claims lacked an inventive concept since receiving market information is simply routine data gathering, and displaying information as indicators along a scaled price axis is well understood, routine, conventional activity that does not add something significantly more to the abstract idea.

In affirming the PTAB’s decision, the Court also rejected Trading Tech’s assertion that CBM review is unconstitutional.

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Bradium Technologies LLC. vs Andrei Iancu

Bradium Technologies LLC. v. Andrei Iancu, Under Secretary of Commerce For Intellectual Property and Director of The United States Patent and Trademark Office, U.S. Federal Circuit Court of Appeals.

           Case Summary: Gaurav Mohindra

Appeal from USPTO, Patent Trial and Appeal Board

Decided May 13, 2019

Plaintiff, Bradium Technologies, appeals the final decisions of the Patent Trial and Appeal Board fining the claims of US Patent Nos. 7,908,343 and 8,924,506 unpatentable as obvious in two inter partes review proceedings.

The patents in question are both related, as the ‘506 patent is a continuation -in-part of the ‘343 patent.  Both patents have similar written descriptions.  The claims are directed towards retrieving and processing images over networked communications channels having low bandwidth and rendering said images on low powered client devices.

The images are often three dimensional geographic images, such as maps or satellite imagery.  The high-res images are pre-processed to lower the resolution for improved processing capabilities under lower bandwidth and lower computational powered devices.  The client devices determines the priority of the images requested from the server based on a user’s field of view, thereby not requiring the entire file to be transmitted and rendered in its entirety.

Microsoft Corporation petitioned the PTAB for an inter partes review of the patents. An inter partes review is a proceeding before the PTAB to assess of the patentability of a patent, says Gaurav MohindraThe PTAB found both patents as obvious over two prior art references.  Post institution, Bradium proposed that term “limited bandwidth communication channel” be construed as “wireless or narrowband communications channel.” 

Microsoft argued that no construction should be required and the term should be construed on its plain and ordinary meaning.  Accordingly, the PTAB agreed with Microsoft and found that the term means “a communications channel whose bandwidth is limited.”  While assessing the patentability of the claims, the PTAB found that claims were disclosed in prior art references.

On appeal, the Federal Circuit found that the PTAB properly construed “limited bandwidth communications channel” to have its plain and ordinary meaning.  The Court found that that the PTAB properly relied on the written description and inventor testimony.

The Court also agree with the PTAB in finding that that the claims are obvious in light of the prior art.  In conclusion the Court held that the PTAB properly construed the term “limited bandwidth communications channel,” and that substantial evidence supports the PTAB’s obviousness finding. 

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What is a Trademark?

A trademark is a phrase or symbol that serves as a representation of a brand.  The concept of a trademark stretches back to historical times when stained glass makers and metal workers would apply a distinctive mark on their products signifying the source of the origin.  Trademark law has matured over the years to permit trademark owners to protect their brands, says Gaurav Mohindra.

Trademark law is rather flexible in that protection extends to words, symbols, logos, and even in some cases color or sounds.  Shoemaker, Christian Louboutin, has successfully attained a trademark on the color red when applied on the sole of shoes.  The key to successfully registering a trademark is tied to how distinct the mark is, when applied to your goods and services, compared to how others may utilize the mark.

For example, an Apple trademark of its Apple logo is fairly strong within the technology field. Other entities are generally unable to use that specific symbol defensibly. On the other hand, Apple trying to trademark the word “apple” would be considered very weak.  Apple would not be able to prevent a grocery store from marketing the fruit apples, nor would they be able to prohibit clothing being labeled as The BIG APPLE.  The key consideration is that consumers would not be confused that those goods (fruits or clothes) originate from the technology behemoth – Apple, says Gaurav MohindraApple is considered an arbitrary trademark in that it is a known word (Apple), but associated with a completely different product (computers).

Arbitrary trademarks are considered strong.  In addition, fanciful trademarks are also considered strong.  A fanciful trademark includes a word that is completely made up. The brand name Kodak is one such example. There was no entity or name called Kodak prior to the company creating the name and using it in its branding. It’s very strong now, as any other reference to it is necessarily in reference to their usage of it.

Suggestive trademarks are the next category down the distinctiveness scale. These trademarks are suggestive of the goods or services for which the trademark is used. These trademarks are also distinctive, and they will relate to some kind of quality or characteristic of the product, but it will not actually describe it. “NETFLIX” (internet movies), “AIRBUS” (planes), and “KitchenAid” (kitchen appliances) are good examples, says Gaurav Mohindra.

Avoid generic or descriptive words that simply describe the actual goods and services you are providing, says Gaurav Mohindra