This morning the Federal Circuit issued two precedential opinions in patent cases. The first opinion addresses issues related to the on-sale bar for a design patent. The second opinion addresses a district court’s finding after a bench trial that claims were invalid for failing to meet the non-obviousness requirement. Notably, Judge Newman wrote a dissenting opinion in this second case. The court also issued two nonprecedential opinions in an employment case and a veterans disability case. Finally, the court issued two Rule 36 judgments. Here are the introductions to the opinions and links to the Rule 36 judgments.

Junker v. Medical Components, Inc. (Precedential)

Larry G. Junker, the named inventor of U.S. Design Patent No. D450,839, sued Medical Components, Inc. and Martech Medical Products, Inc. (collectively, “MedComp”) for infringement of the sole claim of the D’839 patent. The parties filed cross-motions for summary judgment, debating whether a letter sent before the critical date was a commercial offer for sale of the claimed design, rendering the claim invalid under the on-sale bar, 35 U.S.C. § 102(b). The district court granted Mr. Junker’s motion for summary judgment of no invalidity under the on-sale bar. The district court thereafter held a bench trial on several remaining issues in the case, including MedComp’s remaining invalidity challenges, infringement, and damages. The court again ruled in Mr. Junker’s favor. The court rejected each of MedComp’s invalidity challenges, found that each of the accused products infringed the D’839 patent claim and that the infringement was willful, and awarded Mr. Junker $1,247,910 in damages under 35 U.S.C. § 289, which allows recovery of an infringer’s profits from sale of the infringing products.

MedComp appeals the district court’s summary judgment of no invalidity under the on-sale bar, the judgment of infringement, and the damages award. For the reasons below, we agree with MedComp that the pre-critical date letter was a commercial offer for sale. Because there is no dispute that the claimed design was ready for patenting, we reverse the district court’s summary judgment of no invalidity. We therefore do not reach the remaining issues on appeal.

Adapt Pharma Operations v. Teva Pharmaceuticals USA, Inc. (Precedential)

Adapt Pharma Operations Limited, Adapt Pharma, Inc., Adapt Pharma Limited, and Opiant Pharmaceuticals, Inc. (collectively, “Adapt”) appeal the United States District Court for the District of New Jersey’s final judgment of invalidity. After a two-week bench trial, the district court determined that the asserted claims of U.S. Patent Nos. 9,468,747; 9,561,177; 9,629,965; and 9,775,838 (collectively, the “patents-in-suit”) would have been obvious in view of the prior art. For the reasons below, we conclude that the district court did not err in its obviousness determination and therefore affirm.

NEWMAN, Circuit Judge, dissenting.

This appeal concerns the patentability of Adapt Pharma’s new method of treatment of opioid overdose. The claimed method solves the previously unmet needs of enhanced efficacy and ease of administration of the known medication naloxone. Patentability is challenged under the provisions of the Hatch-Waxman Act.

The claimed method concerns the product having the brand name Narcan® whose active ingredient is naloxone. The claimed method is reported by the Food & Drug Administration (“FDA”) to deliver 56% more naloxone into the bloodstream compared with the closest prior art. Adapt Pharma states that “Narcan became ‘the first and only’ FDA-approved naloxone intranasal spray,” and it “captured over 95% of the retail market.” Adapt Br. 11.

Nonetheless, the court now holds that this new method was obvious. The court’s ruling is contrary to the law of section 103, for there was no teaching or suggestion in the prior art to make this combination of ingredients for use in the claimed method to achieve the described beneficial results.

I respectfully dissent.

Ross v. Merit Systems Protection Board (Nonprecedential)

Petitioner Robert Sean Ross seeks review of an order of the Merit Systems Protection Board (“MSPB” or “Board”) dismissing his Individual Right of Action (“IRA”) appeal for lack of jurisdiction. We affirm.

Reaves v. United States (Nonprecedential)

Joseph D. Reaves joined the United States Army in 1981. While serving, he was diagnosed with ulcers. In 1986, after initiation of court-martial proceedings against him, Mr. Reaves requested a “discharge for the good of the service” in lieu of continuation of the court-martial proceedings, and the Army granted his request and discharged him. Two decades later, in 2009, Mr. Reaves filed a petition with the Army Board for Correction of Military Records (Board), arguing that he should have been given a retirement for physical disability under 10 U.S.C. § 1201. The Board rejected the contention and denied the petition.

In 2016, Mr. Reaves brought the present action against the United States in the Court of Federal Claims (Claims Court) under the Tucker Act, 28 U.S.C. § 1491, arguing that the Board had erred and that he was entitled to disability retirement pay starting in 1983, when he allegedly should have been given a disability retirement because of his ulcers. The Claims Court dismissed the case for lack of subject-matter jurisdiction, relying on two independent grounds: first, that Mr. Reaves’s voluntary request for discharge deprived the court of Tucker Act jurisdiction over his case; second, that Mr. Reaves’s action was time-barred by 28 U.S.C. § 2501 because his claim had accrued upon discharge (in 1986), not when the Board denied his request for a correction. Reaves v. United States, 155 Fed. Cl. 137, 142 (2021). Mr. Reaves appeals.

We reverse the dismissal for untimeliness. The accrual standard requires that Mr. Reaves have had sufficient knowledge of the permanent nature of the asserted disability at the time of his discharge. The Claims Court, relying only on the complaint, cited nothing that supports a determination of such knowledge; and it made no finding of fact about other record material. We vacate the dismissal based on the voluntary request for discharge, a dismissal the government did not seek in the Claims Court. We conclude that the Claims Court did not support its determination that voluntary resignation defeats the entitlement at issue here, and that gap in support has not been filled by the government, which provides no elaboration on this ground in this court in defending the Claims Court’s holding. We remand for further proceedings.

Rule 36 Judgments