United States: Federal Circuit Patent Watch: Dietary Supplement Patent Invalid Under 35 U.S.C. § 101 Because "The Asserted Claims Do Not Have Characteristics Markedly Different From Milk"

Precedential Federal Circuit Opinions

1. SSI TECHNOLOGIES, LLC v. DONGGUAN ZHENGYANG ELECTRONIC MECHANICAL LTD. [OPINION] (2021-2345, 2022-1039, 2/13/2023) (Reyna, Bryson, and Cunningham)

Bryson, J. The Court affirmed in part, reversed in part, vacated in part, and remanded in a patent case involving two patents directed to sensors for determining the characteristics of fluid in a container, such as a fuel tank. For one asserted patent, the Court affirmed the district court's claim construction and affirmed its grant of summary judgment of non-infringement because there was no evidence that one of the claim requirements was met. The Court also affirmed the district court's exercise of discretion in dismissing the invalidity counterclaim for that patent without prejudice. For the second patent, the Court reversed the district court's construction of the claim term "filter" as improperly limiting the claims to disclosed embodiments, and then vacated the district court's summary judgment of non-infringement and its dismissal of the invalidity counterclaim for that patent.

2. CHROMADEX, INC. v. ELYSIUM HEALTH, INC. [OPINION] (2022-1116, 2/13/2023) (Prost, Chen, and Stoll)

Prost, J. The Court affirmed the district court's grant of summary judgment that the asserted patent claims were invalid for claiming unpatentable subject matter under 35 U.S.C. § 101. The asserted patent was "directed to dietary supplements containing isolated nicotinamide riboside ('NR'), a form of vitamin B3 naturally present—in non-isolated form—in cow's milk and other products." The Court explained that "the only difference between at least one embodiment within the scope of the claims and natural milk is that the NR in the former is isolated." The Court then held that "the act of isolating the NR compared to how NR naturally exists in milk is not sufficient, on its own, to confer patent eligibility." The Court also explained that "the asserted claims do not have characteristics markedly different from milk," and "[b]ecause the claims are broad enough to encompass a product of nature, it is invalid under § 101."

3. MINERVA SURGICAL, INC. v. HOLOGIC, INC. [OPINION] (2021-2246, 2/15/2023) (Prost, Reyna, and Stoll)

Reyna, J. The Court affirmed the district court's summary judgment "that the asserted claims are anticipated under the public use bar of pre-AIA 35 U.S.C. § 102(b)." The Court explained its decision affirming the district court's application of the public use bar as follows: "First, the patented technology was 'in public use' because, before the critical date, Minerva disclosed fifteen devices having the technology at an event—the industry's 'Super Bowl.' Minerva's disclosure of these devices spanned several days and included Minerva showcasing them at a booth, in meetings with interested parties, and in a technical presentation. Minerva did not disclose the devices under any confidentiality obligations, despite the commercial nature of the event. Second, at the time of the public use, the technology was 'ready for patenting.' Specifically, Minerva had created working prototypes and enabling technical documents describing the claimed technology."

4. HAWK TECHNOLOGY SYSTEMS, LLC v. CASTLE RETAIL, LLC [OPINION] (2022-1222, 2/17/2023) (Reyna, Hughes, and Cunningham)

Reyna, J. The Court affirmed the district court's decision on a motion to dismiss that the asserted patent claims were invalid as directed to ineligible subject matter under 35 U.S.C. § 101. The Court agreed with the district court that the "patent claims were directed to the abstract idea of storing and displaying video and failed to provide an inventive step that transformed that abstract idea into a patent-eligible invention." The Court explained that the claims lack an inventive step because "[n]othing in the claims, understood in light of the specification, requires anything other than off-the-shelf, conventional computer, network, and display technology for gathering, sending, and presenting the desired information."

5. LITE-NETICS, LLC v. NU TSAI CAPITAL LLC [OPINION] (2023-1146, 2/17/2023) (Lourie, Taranto, and Stark)

Taranto, J. The Court vacated the district court's preliminary injunction barring the plaintiff from suggesting to others, including customers of the parties, that the defendant was a patent infringer. The Court held that "the district court abused its discretion in issuing the preliminary injunction because the applicable speech-protective legal standards are not met." The Court explained that "federal patent law preempts state law tort liability for a patent holder's good faith conduct in communications asserting infringement of its patent and warning about potential litigation." Thus, a party seeking to enjoin infringement allegations must show that the allegations are being made in bad faith and are "objectively baseless." The Court held the district court abused its discretion in finding the plaintiff's infringement allegations were objectively baseless and concluded that the district court used incorrect legal standards in its analysis.

6. JAZZ PHARMACEUTICALS, INC. v. AVADEL CNS PHARMACEUTICALS, LLC [OPINION] (2023-1186, 2/24/2023) (Lourie, Reyna, and Taranto)

Lourie, J. The Court affirmed the district court's injunction directing the plaintiff to delist an asserted patent from the U.S. Food and Drug Administration's ("FDA's") "Approved Drug Products with Therapeutic Equivalence Evaluations publication, more colloquially known as the 'Orange Book.'" The Court explained that the patent must be delisted because it was directed to "system claims" and did not claim a drug or method of using the drug under 21 U.S.C. § 355(c)(2) and § 355(c)(3)(D)(ii)(I).

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