Recent Patent Cases July 2015 - PowerPoint Presentation

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Recent Patent Cases

July 2015

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SCOTUS – October 2014 TermTeva Pharmaceuticals v. Sandoz574 U.S. ___ (2015)Kimble et al. v. Marvel Entertainment

576 U.S. ___ (2015)Commil v. Cisco575 U.S. ___ (2015)

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Teva Pharmaceuticals v. SandozTeva, et al. owns a patent covering a manufacturing method for Copaxone, a drug used to treat MS.

Claim limitation that the API had “a molecular weight of 5 to 9 kilodaltons”Weight of most prevalent molecule (Mp)?

Average weight of all molecules (Mn)?Average where larger molecules count for more (M

w

)?

Is the claim limitation indefinite?

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District CourtThe claim limitation was sufficiently definite and the patent was valid.In the context of the specification, one of ordinary skill in the art would have understood the term to refer to the weight of the most prevalent molecule.

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Federal CircuitThe Fed. Cir. Reviewed de novo all aspects of the District Court’s claim construction, including subsidiary facts.Held the claims invalid.

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SCOTUSWhen the district court reviews only evidence intrinsic to the patent, the judge’s determination is solely a determination of law, and the court of appeals will review that construction de novo.The ultimate construction of the claim is a legal conclusion that the appellate court can review

de novo. But, to overturn the judge’s resolution of an underlying factual dispute, the appellate court must find that the judge, in respect to those factual findings, has made a clear error.

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Kimble v. MarvelIn Brulotte, the Court held a post-patent royalty provision unlawful per se. Such a provision continued the patent monopoly beyond the patent period and, in doing so, conflicted with patent law’s policy of establishing a post-expiration public domain.

The Court refused to overturn Brulotte.However, Brulotte leaves parties free to enter alternative arrangements that may suffice to accomplish parties’ payment deferral and risk-spreading goals.

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Commil v. CiscoDirect infringement under §271(a) is a strict liability offense in which a defendant’s mental state is irrelevant.Inducement liability under §271(b) attaches only if the defendant knew of the patent and that the induced acts constitute patent infringement.

Contributory infringement under §271(c), like inducement liability, requires knowledge of the patent in suit and knowledge of patent infringement.

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Commil v. Cisco (cont.)Induced infringement and validity are separate issues and have separate defenses under the Patent Act--belief regarding validity cannot negate §271(b)‘s scienter requirement of “actively induce[d] infringement.”

When infringement is the issue, the patent’s validity is not the question to be contronged.If a parte believes that a patent is invalid, they have proper ways to obtain a ruling to that effect, e.g.,

ex parte reexamination.There is no defense of belief of invalidity for induced infringement.

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Fed. Cir.In re Cuzzo Speed TechnologiesTomTom v. Michael AdolphTeva v. Sandoz (on remand from SCOTUS)

Internet Patents v. Active NetworkMicrosoft v. ProxyconnWilliamson v. CitrixEPLUS v. LawsonAriosa Diagnostics Center v.

SequenomAlps South v. Ohio Willow Wood Co.ArcelorMittal v. AK SteelSukumar

v. Nautilus

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In re Cuzzo Speed TechnologiesThe Fed. Cir. Lacks jurisdiction to review the PTO’s decision to institute IPR.IPR’s have two phasesPTO determine whether to institute IPR

Petitioner files document requestingPatent owner can file a response, with some limits on doing so.Board Conducts the IPR and issues a final decision.This final decision in then appealable, and is the point where estoppel attaches.

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TomTom v. AdolphA preamble is not limiting where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.

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Teva v. SandozClaims are still indefinite.“We may now steer by the bright star of ‘reasonable certainty,’ rather than the unreliable compass of ‘insoluble ambiguity.’”“A party cannot transform into a factual matter the internal coherence and context assessment of the patent simply by having an expert offer an opinion on it. The internal coherence and context assessment of the patent, and whether it conveys claim meaning with reasonable certainty, are questions of law.”

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Teva v. Sandoz (cont.)“Determining the meaning or significance to ascribe to the legal writings which constitute the intrinsic record is legal analysis. . . . Teva cannot transform legal analysis about the meaning or significance of the intrinsic evidence into a factual question simply by having an expert testify on it.”

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Internet Patents v. Active NetworkThe “back” button on your web browser is an abstract idea.The district court held that “retaining information lost in the navigation of online forms as an ineligible abstract idea.” (quotations omitted.)

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Microsoft v. Proxyconn“[t]he protocol of giving claims their broadest reasonable interpretation . . . does not include giving claims a legally incorrect interpretation.” In re Skvorecz, 580 F.3d 1262,1267 (Fed. Cir. 2009).“A

construction that is “unreasonably broad” and which does not ‘reasonably reflect the plain language and disclosure’ will not pass muster.” “[t]he protocol of giving claims their broadest reasonable interpretation . . . does not include giving claims a legally incorrect interpretation

.”

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Williamson v. Citrix Online“Our consideration of this case has led us to conclude that such a heightened burden is unjustified and that we should abandon characterizing as ‘strong’ the presumption that a limitation lacking the word ‘means’ is not subject to 112, para 6.”“We also overrule the strict requirement of ‘a showing that the limitation essentially is devoid of anything that can be construed as structure.”

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Williamson v. Citrix Online“The standard is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.”“When a claim term lacks the word ‘means,’ the presumption can be over come and 112, para 6 will apply if the challenger demonstrates that the claim term fails to ‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function.’”

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EPLUS v. Lawson SoftwareAn injunction cannot continue after the PTO has cancelled the only claim upon which the injunction was based.“[c]ivil contempt sanctions must be set aside when the resolution of the case requires overturning the injunction on which those sanctions are based.”

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Ariosa Diagnostics v. SequenomFor process claims that encompass natural phenomenon, the process steps are the additional features that must be new and useful.

Once claims are determined to disclose only ineligible subject matter under the Mayo test, “preemption concerns are fully addressed and made moot.” “[w]hile preemption may signal ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility

.”

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Alps South v. Ohio Willow Wood“[N]unc pro tunc assignments are not sufficient to confer retroactive standing

.”

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ArcelorMittal v. AK SteelThe Court stated that although an inventor’s subjective understanding of patent terminology is irrelevant to claim construction, “when an inventor’s understanding of a claim term is expressed in the prior art, it can be evidence of how those skilled in the art would have understood that term at the time of the invention.”

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Arcelormittal v. AK SteelThe commercial success of an embodiment with an additional unrecited feature may be considered when evaluating the obviousness of the claim, provided that there is a nexus between the embodiment’s success and the claimed and novel features of the invention.

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Sukumar v. NautilusCase deals with “competitive injury” and standing.“We hold that a potential competitor may suffer competitive injury if it has attempted to enter the market. An attempt is made up of two components: (1) intent to enter the market with a reasonable possibility of success, and (2) an action to enter the market

.”

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Par Pharm. v. TWI (Dec. 2014)Use of inherency in obviousness rejections."[T]he use of inherency, a doctrine originallyrooted in anticipation, must be carefully circumscribed in the context of obviousness

.""A party must, therefore, meet a high standard in order to rely on inherency to establish the existence of a claim limitation in the prior art in an obviousness analysis—the limitation at issue necessarily must be

present, or the natural result of the combination of elements explicitly disclosed by the prior art."