• Getting Ahead of ADA Website Accessibility Lawsuits

    The lack of regulations here has led to the absolute worst-case scenario. People with disabilities have not been served since most companies are unaware this is an issue. Most don’t even realize this is something they have to consider until they receive a demand letter. That has certainly been the case for some of my clients. This leads to a scramble to get compliant. Unfortunately, it can take up to a year to do so depending on the complexity of the site. Meanwhile, plaintiffs’ attorneys…

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  • Declaration Submitted during IPR from Inventor of Prior Art Confirmed its Inherent Disclosure to Invalidate Monsanto’s Patent Claims

    Monsanto Tech. LLC v. E.I. Dupont De Nemours & Co.: Jan. 5, 2018.  Before Dyk, Reyna, and Wallach. Takeaway: In support of an inherency contention, extrinsic evidence in the form of a declaration submitted by an author/inventor of a prior art reference may be submitted to elucidate the subject matter …

    The post Declaration Submitted during IPR from Inventor of Prior Art Confirmed its Inherent Disclosure to Invalidate Monsanto’s Patent Claims appeared first on CAFC Blog .

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  • Apotex prevails at the CAFC in case about extended release dosage forms of cyclobenzaprine hydrochloride

    The decision of Judge Robinson of D. Delaware in APTALIS v. Apotex was vacated :

    In this Hatch-Waxman case, Apotex Inc. and Apotex
    Corp. appeal from the district court’s claim construction of
    “extended release coating” and its finding that Apotex’s
    product infringes U.S. Patent Nos. 7,790,199 and
    7,829,121. We conclude that the district court erred by
    not construing the term “extended release coating” to
    require a continuous outer film, as taught by the intrinsic
    evidence. Accordingly, we vacate the infringement finding
    and remand for further proceedings.


    When construing claims, “there is sometimes a fine
    line between reading a claim in light of the specification,
    and reading a limitation into the claim from the specification.”
    Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d
    1182, 1186 (Fed. Cir. 1998). This case tiptoes that line.
    The specification does not provide a lexicographic definition
    of “coating,” and the prosecution history contains no
    clear and unmistakable disavowal of claim scope. Nonetheless,
    Apotex contends that the intrinsic evidence would
    have taught an ordinarily skilled artisan at the time of
    the invention that an “extended release coating” is limited
    to a continuous outer film, not simply “[a] layer of any
    substance that is applied onto the surface of another.”
    For the reasons explained below, we agree and adopt
    Apotex’s proposed construction of “extended release
    coating” as “a continuous outer film applied onto the
    surface of the active-containing core to provide an extended
    release of the active core.” See Appellants Br. 21.

    Of the issue

    The specification bolsters our conclusion that the extended
    release coating must be a continuous outer film.
    See Phillips, 415 F.3d at 1315 (“[T]he specification ‘is
    always highly relevant to the claim construction analysis.’”
    (internal citation omitted)). First, every embodiment
    in the specification that discusses a coating describes a
    process in which the water insoluble polymer coating is
    external to the active-containing core. See, e.g., ’199
    patent col. 4 ll. 15–17 (“ER Beads can be produced by
    applying a functional membrane comprising a water
    insoluble polymerThe prosecution history offers additional support for
    construing “extended release coating” to require a continuous
    outer film. See Markman v. Westview Instruments,
    Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (en banc) (“To
    construe claim language, the court should also consider
    the patent’s prosecution history, if it is in evidence.”).
    During prosecution of the ’199 patent, the applicants
    submitted a declaration from Dr. James W. McGinity.
    The Declaration summarizes Dr. McGinity’s interview
    with the examiner during the prosecution of a related
    patent application that shares the same specification as
    the asserted patents. alone or in combination with a water
    soluble polymer onto IR Beads.”);


    Finally, Aptalis contends that the prosecution history
    is irrelevant to the claim construction question here
    because there is no clear and unmistakable disavowal of
    claim scope. Our precedent does not support this proposition.
    We have stated that “[a]ny explanation, elaboration,
    or qualification presented by the inventor during patent
    examination is relevant, for the role of claim construction
    is to ‘capture the scope of the actual invention’ that is
    disclosed, described, and patented.” Fenner Invs., Ltd. v.
    Cellco P’ship, 778 F.3d 1320, 1323 (Fed. Cir. 2015) (quoting
    Retractable Techs., Inc. v. Becton, Dickinson & Co.,
    653 F.3d 1296, 1305 (Fed. Cir. 2011)). Although the
    prosecution history may lack the clarity imbued by the
    specification, it “can often inform the meaning of the
    claim language by demonstrating how the inventor understood
    the invention and whether the inventor limited
    the invention in the course of prosecution, making the
    claim scope narrower than it would otherwise be.” Phillips,
    415 F.3d at 1317. Accordingly, even in the absence of
    a clear and unmistakable disavowal, we conclude that the
    prosecution history can be evaluated to determine how a
    person of ordinary skill would understand a given claim

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  • Trade Secrecy in Data being Sold

    The newly filed trade secret lawsuit Collateral Analytics v Nationstar Mortgage (N.D. Cal., No 18-cv-019) may be interesting to follow.  Collateral Analytics offers a searchable database of real estate information to its customers (a large number of customers).  According to the complaint, Nationstar was one of the customers and abused that relationship by downloading much of the database and is preparing to use […]

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  • Everlight prevails against Nichia at CAFC in LED case

    Everlight brought a declaratory judgment suit against
    Nichia seeking a determination of non-infringement,
    invalidity, or unenforceability of U.S. Patent Nos.
    5,998,925 (the ’925 patent) and 7,531,960 (the ’960 patent)
    (together, the Patents-in-Suit). Nichia filed counterclaims
    for infringement against Everlight.
    Following the trials, Nichia moved for judgment as a matter
    of law (JMOL) of validity and/or a new trial, which the
    district court denied, holding that substantial evidence
    supported the jury verdict of invalidity. See Everlight
    Elecs. Co. v. Nichia Corp., No. 12-cv-11758, 2016 WL
    8232553, at *1 (E.D. Mi. Jan. 19, 2016); J.A. 34−35 (Final
    Judgment). Nichia appeals this ruling. Everlight cross
    appeals the ruling of no inequitable conduct. We have
    jurisdiction pursuant to 28 U.S.C. § 1295(a)(1). Because
    the jury verdict is supported by substantial evidence, and
    because the district court did not err in denying Everlight’s
    inequitable conduct claim, we affirm on all

    The technical area:

    Both Patents-in-Suit are directed to the combination
    of a blue light-emitting diode (LED) and a blue-to-yellow
    phosphor—a chemical which absorbs one color of light and
    emits another—to produce a white LED.

    All elements of the claims in question were known in the art.
    Of motivation to combine:

    As to motivation to combine, the district court noted
    that evidence was presented to the jury that (1) there was
    a large market demand for white LEDs; (2) the gallium
    nitride blue LED was a revolutionary breakthrough which
    was necessary to the development of a white LED;
    (3) testimony from both parties indicated that the invention
    of the blue LED naturally led to the use of a blue-toyellow
    phosphor to produce a white LED; (4) there were a
    limited number of blue-to-yellow phosphors; and
    (5) YAG’s properties were well-known to skilled artisans
    at the time of the alleged invention. Id. at *10. Thus, the
    district court found that a reasonable jury could have
    concluded that the alleged invention was no more than
    the “combination of familiar elements according to known
    methods” to “yield predictable results.” Id. (citing KSR
    Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007)).

    Simultaneous invention arose:

    Furthermore, the court noted,
    Everlight had presented substantial evidence of simultaneous
    invention of the alleged invention by Osram, a
    competitor of Nichia. Everlight, 2016 WL 8232553, at
    *12−13 (citing Geo. M. Martin Co. v. All. Mach. Sys. Int’l
    LLC, 618 F.3d 1294, 1305 (Fed. Cir. 2010)). Thus, a
    reasonable jury could have found that secondary considerations
    did not weigh in favor of nonobviousness.
    For example, the jury heard evidence of independent
    development by Osram of a white LED “within weeks
    of Nichia.” Id. at *12; see J.A. 17817−19, 20353−55.
    Furthermore, the jury heard evidence undermining
    whether Nichia’s evidence of commercial success and
    contemporary praise were actually due to the claimed
    invention and whether Nichia’s expert was unbiased. See
    Everlight, 2016 WL 8232553, at *12−13; see also J.A.
    18019, 21808, 22447−49 (awards and licenses that cover
    products beyond the inventions in the Patents-in-Suit).

    Nichia’s arguments on the ‘925:

    Nichia argues before this court that a person of ordinary
    skill would not have been motivated to combine a
    blue LED with a YAG phosphor because (1) the disclosure
    of blue LEDs in the prior art focused on a so-called “threecolor”
    solution in which multiple phosphors produced a
    combination of red, green, and blue light to achieve white
    light rather than the “two-color” solution of the ’925
    patent (i.e. blue + yellow), Appellant’s Br. 30−33; (2) a
    person of ordinary skill would not have recognized useful
    properties of YAG phosphors such as moisture resistance,
    id. at 30−33, 47−48; and (3) the prior art discouraged use
    of YAG with a blue light source because of poor color
    rendering, id. at 43−47. We disagree on all points.

    The CAFC did not accept these arguments:

    First, it is not necessary that the prior art teach a
    two-color solution in order for the jury verdict to be supported
    by substantial evidence.3 It is sufficient that the
    prior art recognize that blue LEDs can be combined with
    phosphors to produce varying light profiles
    ,4 that combi
    nation with a blue-to-yellow phosphor would yield white
    light, and that a strong market demand existed for a
    white LED. See Everlight, 2016 WL 8232553, at *9 (“[I]t
    was known that blue LEDs could be combined with phosphors
    to change the color of light emitted by the LED.”
    (citing trial exhibits and transcript)), id. (“[I]t has been
    known for over 300 years that mixing blue and yellow
    light results in white light (citing trial transcript)), id. at
    *10 (“[It was an] undisputed fact that there was a large
    market demand for white LEDs. . . . Nichia’s expert
    conceded [that] the development of a commercially viable
    blue LED ‘gave everyone the inventive to move forward to
    create a simple blue plus yellow LED that emits white
    light.’” (quoting trial transcript))

    Footnote 4 begins: We recognize that Everlight’s expert made arguably
    inaccurate statements at trial regarding whether Baretz
    and Tadatsu disclose a blue-to-yellow phosphor.

    Of the ‘960 patent, The ’960 patent is directed to a similar LED/phosphor
    system as the ’925 patent without the YAG phosphor
    limitation. Instead, the ’960 patent teaches that the
    phosphor is concentrated near the surface.

    As to inequitable conduct:

    Everlight argued before the district court that statements
    in the ’960 patent specification submitted to the
    U.S. Patent and Trademark Office (USPTO) that the
    inventors achieved an LED with peak wavelengths “near
    600 nm” were intentionally false. J.A. 60–61. The district
    court held that Everlight had not shown but-for materiality
    because it had not sufficiently questioned the inventors
    to establish a record that their statements to the USPTO
    were actually false. Everlight, 143 F. Supp. 3d at 658−59.
    The district court additionally concluded that Everlight
    had not shown specific intent to deceive the USPTO
    because the single most reasonable inference to be drawn
    from the evidence was that “the inventors should have
    been more careful in keeping a record of this information
    and documenting their findings.” Id. at 662 (emphasis in
    See Therasense., 649 F.3d at 1290 (“In
    a case involving nondisclosure of information, clear and
    convincing evidence must show that the applicant made a
    deliberate decision to withhold a known material reference.”)
    (emphasis in original). Because we agree that the
    requisite showing of specific intent is lacking, we need not
    reach the issue of but-for materiality. See id. (“To prevail
    on a claim of inequitable conduct, the accused infringer
    must prove that the patentee acted with the specific
    intent to deceive the PTO.”).

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