Federal Circuit Finds No Abuse of Discretion in Trial Court’s Refusal to Exclude Plaintiff’s Settlement Agreement with Defendant’s Competitor

Author: Paula E. Miller 
Editor: Jeff T. Watson

In Prism Technologies LLC v. Sprint Spectrum L.P, Nos. 16-1456, -1457 (Fed. Cir. Mar. 6, 2017), the Federal Circuit affirmed the district court’s denial of Sprint’s motion for a new trial based on, among other things, the admission of a settlement agreement between Prism and Sprint’s competitor, AT&T.

Prism sued Sprint for the infringement of two patents relating to a system for managing access to protected computer resources. The jury found Sprint liable for infringement and awarded $30 million in reasonable-royalty damages. Sprint argued the district court erred for four reasons, including error in admitting a settlement agreement between AT&T and Prism regarding the patents-in-suit (and others). Continue reading

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Section 101 Gaining Momentum: Applying Physics to Uncommon Inertial Sensor Configuration Is Not an Abstract Idea

Author: Christopher C. Johns 
Editor: Kevin D. Rodkey

In Thales Visionix Inc. v. United States, No. 15-5150 (Fed. Cir. Mar. 8, 2017), the Federal Circuit reversed a decision of the Court of Federal Claims that found claims drawn to an inertial tracking system patent-ineligible under Section 101.

Thales sued the U.S. Government, alleging infringement of Thales’s patent directed to an inertial tracking system by the helmet-mounted display of the F-35 Joint Strike Fighter. The patent claims a tracking system with a first sensor on an object being tracked, a second sensor on a moving reference frame, and an element that determines the tracked object’s orientation relative to the moving reference frame using signals from both sensors. Continue reading


FDA Request for Justification Found to Provide a Mere Research Suggestion—Not Conception of Claimed Formulation

Author: Thomas J. Sullivan
Editor: Jeff T. Watson

In Cumberland Pharmaceuticals Inc. v. Mylan Institutional LLC, Nos. 16-1115, -1259 (Fed. Cir. Jan. 26, 2017), the Federal Circuit affirmed the lower court’s holding that a patent covering a chelating-agent-free drug formulation was not derived from someone at the FDA.

Mylan’s derivation argument centered around communications between the inventor and the FDA regarding Cumberland’s application to market a pharmaceutical formulation that included the chelating agent EDTA. Specifically, the FDA requested that Cumberland provide justification for including EDTA in the formulation. Mylan argued that the FDA request (along with other exchanges) established conception of the claimed chelating-agent-free formulation by the FDA. Continue reading

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