United States: Federal Circuit Patent Updates - April 2018

April 26, 2018 11:07 AM

Mayer J. Affirming plaintiff's motion for a new trial motion. The defendant did not improperly assert a "practicing the prior art" defense. While a defendant "cannot defeat a claim of literal infringement or establish invalidity merely by pointing to similarities between an accused product and the prior art," this rule does not "preclude a litigant from arguing that if a claim term must be broadly interpreted to read on an accused device, then this same broad construction will read on the prior art."

WilmerHale represented the defendants-appellees.

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Taranto, J. Affirming finding of unenforceability based on unclean hands. While inequitable conduct requires that the conduct be material, unclean hands may be based on improper conduct  between the parties or litigation misconduct.

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Bryson, J. Affirming PTAB decision that the challenged claims were invalid as anticipated by the prior art. The Court also rejected arguments that the IPR proceeding was time-barred under 35 U.S.C. § 315(b). Regarding the time-bar, the Court explained that "the Board did not apply a legally erroneous standard in deciding the 'real party in interest, or privy' issue." The Court also held that the Board did not abuse its discretion in denying additional discovery regarding the issue of privity. Reyna, J., dissented.

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Lourie, J. Affirming district court decision dismissing patent infringement claim under Fed. R. Civ. P. 12(b)(6), and holding that the asserted patent claims were invalid under 35 U.S.C. § 101. The Court explained that "the claims as a whole are drawn to the concept of voting, verifying the vote, and submitting the vote for tabulation. Humans have performed this fundamental activity that forms the basis of our democracy for hundreds of years.... These steps are therefore nothing more than abstract ideas." The Court further explained that "there is no inventive concept in the claims sufficient to transform them into patent-eligible subject matter," because the claims merely "recite the use of general purpose computers that carry out the abstract idea."

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Taranto, J. Reversing and remanding district court decision dismissing a correction-of-inventorship claim on the ground that the plaintiff lacked standing. The Court held that the district court erred in finding no standing, because there was a factual dispute about whether the plaintiff had agreed to assign his patent rights.

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O'Malley, J. Affirming PTAB decision that the challenged patent claims were invalid as obvious based on an earlier filed international publication with the same specification. The Court explained that, under 35 U.S.C. § 120,  incorporation by reference of a provisional application is not sufficient to establish priority to the provisional application. The Court therefore held that "[b]ecause the [Challenged] Patent expressly claims priority only to an immediately preceding application, and not the provisional application before that, the Board correctly determined that an earlier-filed reference—an international publication with the same specification—invalidated all claims of the [Challenged] Patent."  

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Reyna, J. Reversing summary judgment that patent infringement claims were barred under the doctrines of laches and equitable estoppel. The finding of laches was precluded by the US Supreme Court's decision in SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, 137 S. Ct. 954 (2017), because the alleged infringement occurred within the six-year period prior to the filing of the complaint. In addition, the Court held that the district court abused its discretion in finding equitable estoppel based on activity that occurred prior to the issuance of the asserted patent claims in an ex parte reexamination proceeding.

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O'Malley, J. Affirming district court's award of attorney fees and costs where plaintiff repeatedly failed to produce evidence that he owned the asserted patents and had standing to bring the case. The Court also held that the dismissal with prejudice of the plaintiff's claims for lack of standing was sufficient to confer "prevailing party" status on the defendant for purposes of awarding fees under 35 U.S.C. § 285.

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Stoll, J. Affirming judgment of infringement of a patent claim depicting a compound's chemical structure. The Court held that, at a minimum, the claim encompasses the specific orientation of the chemical compound depicted in the claim. The Court explained that "[b]ecause this orientation is the active pharmaceutical ingredient in each party's commercial product, we need not determine what else falls within the claim's ambit to resolve the present dispute." 

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April 13, 2018 2:18 PM

Lourie, J. Affirming district court's determinations that the asserted claims were infringed and not invalid following a bench trial. The Court held that, under the Hatch-Waxman Act, "amendments to an ANDA, including a Paragraph IV certification for a later-issued patent, can constitute an act of infringement under [35 U.S.C.] § 271(e)(2)(A)." In addition, the Court held that "a patentee does not need to prove an actual past instance of direct infringement by a physician to establish infringement under 35 U.S.C. § 271(e)(2)(A)." Rather, "section 271(e)(2)(A) makes it possible for a patent owner to have the court determine whether, if a particular drug were put on the market, it would infringe the relevant patent." The Court also held that the patent covers patent-eligible subject matter under 35 U.S.C. § 101 because the claims are directed to "a new way of using an existing drug," including a "dosage regimen based on the results of genetic testing." Prost, C.J., dissented and would have found the asserted patent claims invalid under Section 101 as directed to a patent-ineligible "law of nature."

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April 6, 2018 11:47 AM

Wallach, J. Affirming PTAB decision in inter partes reexamination that claims were unpatentable as anticipated or obvious. "Our precedent allows the USPTO to intervene to defend a PTAB decision when a petitioner withdraws on appeal, necessarily implying jurisdiction." Newman, J., dissented.

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