Alston & Bird
Viavi Solutions Inc. v. Platinum Optics Technology Inc. 2023-1227 (Fed. Cir. (PTAB) Aug. 16, 2024). Opinion by Cecchi (sitting by designation), joined by Moore and Taranto.
Viavi owns a patent related to optical filters with layers of hydrogenated silicon and to sensor systems comprising such optical filters. Viavi sued Platinum Optics in two lawsuits filed in the Northern District California for infringement. Platinum Optics filed an IPR petition in response to Viavi’s lawsuit. The Patent Trial and Appeal Board, in the IPR proceeding issued a written decision concluding that Platinum Optics had failed to prove the challenged claims as unpatentable. Platinum Optics appealed to the Federal Circuit on the grounds that Platinum Optics had not established a sufficient injury to confer standing. Although “a party does not need Article III standing to appear before an administrative agency,” “standing is required once the party seeks review of an agency’s final action in a federal court.”Platinum Optics made two arguments. Platinum Optics first argued that the Board’s decision was appealable based on a potential infringement liability arising from supplying accused Viavi II filters to parts integrators abroad. The Federal Circuit disagreed and explained that “mere speculation of a possible suit, without further evidence, is not sufficient to confer standing.” Platinum Optics therefore failed to establish a real injury based on the continued distribution of filters accused Platinum Optics relied upon a statement by a representative of the company stating that Platinum Optics is continuing to develop new filters and that Viavi expects them to assert their patent again. The Federal Circuit ruled that this was not sufficient to confer standing. The declaration does not explain the details of these new models or how they may relate to the
patent. The declaration does not explain the specifics of these models or how they may relate to the patent
.”
The Court ruled that “vague and conclusory statement” in the Declaration are insufficient Platinum Optics therefore failed to establish that its development activities “will cause a substantial risk of infringement or will likely cause Viavi to assert a claim of infringement.”
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[it]Allergan USA, Inc., et al. v. MSN Laboratories Private Ltd., et al.[Viavi], No. 2024-1061 (Fed. Cir. (D. Del.) Aug. 13, 2024). Lourie’s opinion, with Reyna’s support. Dyk’s opinion, concurring in parts and dissenting on others.
The FDA has approved a New Drug Application (NDA) for eluxadoline tablet. Allergan markets Five patents cover the drug compound and its compositions. Sun certified in Paragraph IV that Allergan’s claims were invalid or Sun’s generic product would not infringe on them. The district court conducted a bench-trial on the validity issues. Following trial, the court ruled that claim 40 of Allergan’s ‘356 patent is invalid for obviousness-type double patenting (ODP) and that the asserted claims of the other four patents are invalid for lack of written description.
As to claim 40, Allergan did not contest Sun’s argument that the claim is not patentably distinct from the reference claims. Allergan instead argued that because the ‘356 was the first patent to claim eluxadoline and the first to issue, claim 40 is not subjected to ODP over claims later filed and later issued Sun argued, however, that the claims of the remaining Patents were invalid due to lack of written description. This is because the specification does not support a pharmaceutical tablet without a glidant. The district court agreed with Sun, finding that for all the formulations disclosed in the patent specification, “a glidant is used without any indication that it was not required to practice the invention.”Allergan appealed, and the Federal Circuit reversed as to both issues. Federal Circuit ruled that the reference claims “are not proper ODP references.” The Federal Circuit explained that this is “the only conclusion consistent with the purpose of the ODP doctrine, which is to prevent patentees from obtaining The reference claims “are not proper ODP references.” The Federal Circuit explained that this “is the only conclusion consistent with the purpose of the ODP doctrine, which is to prevent patentees from obtaining a second patent on a patentably indistinct invention to effectively extend the life of a first patent to that subject matter.” “To hold otherwise … would not only run afoul of the fundamental purposes of ODP, but effectively abrogate the benefit Congress intended to bestow on patentees when codifying
.”Turning to the written description issue, the Federal Circuit determined that “the written description generally matches the scope of the claims.” The issue was whether the inventors possessed “a formulation that lacked a component
that is not claimed, or only optional.” The district court held that they did not, but the Federal Circuit disagreed because “the specification describes at least two embodiments in which a glidant is not required.” Also, claim 1 as originally filed recited a formulation without a glidant, and “originally filed claims have long been held to be part of the specification to be considered in any SS 112 analysis.”
On that issue, the Federal Circuit also determined that it was not error for the district court to have relied on expert testimony when evaluating the written description. The Federal Circuit determined that the district court did not commit error by relying on expert testimony to evaluate the written description. Judge Dyk would affirm as to that issue “because ample expert testimony supports the district court’s factual finding.” “The unrebutted expert testimony was that a person of ordinary skill in the art would normally use a glidant and that, absent a teaching to the contrary, he would interpret the specification to show that the inventor possessed only formulations that include a glidant.”
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Celanese International Corp., et al. v. ITC, et al.
, No. 2022-1827 (Fed. Cir. (ITC) Aug. 12, 2024). Opinion by Reyna, joined by Mayer and Cunningham.
Celanese launched an ITC investigation alleging that Anhui Jinhe Industrial and Jinhe USA violated 19 U.S.C. SS 337 by importing Ace-K (an artificial sweetener) made using a process that infringes Celanese’s patents.[patent term adjustments]During the investigation, Jinhe moved for summary determination of no violation on the ground that the claims were invalid under the on-sale bar provision, 35 U.S.C. SS 102 (a)(1). Celanese sold Ace-K in the United States using the patented Celanese process before the critical dates of the asserted Patents. It was also undisputed the Celanese patented process had been used in secret in Jinhe argued that pre-critical date sales triggered on-sale bars. Celanese responded that the AIA had changed pre-AIA laws such that Celanese’s pre-critical dates sales of Ace-K using its secret processes would not trigger an on-sale ban. The ALJ ruled that the prior sales triggered an on-sale ban and that the AIA had not changed settled pre-AIA precedent. Celanese requested a review by the Commission. The Commission denied the request. Celanese appealed.
The Federal Circuit agreed that the AIA, in line with the Supreme Court’s ruling in Helsinn did not change the “on-sale” bar to cover The Federal Circuit explained, first, that it has “long held that sales of products that are made using a secret method before the critical date will bar the patentability for that process.” Second, the court “presume010010 The Federal Circuit affirmed that the ‘on sale category’ has never required a qualifying commercial sales to reveal the details of a claimed invention. The Federal Circuit held that the AIA had not changed the theory behind the statutory on sale bar provision, 35 U.S.C. SS 102 (a)(1) to ensure that sales of products manufactured using a secret method cannot trigger the on-sale ban.”
