In Organic Seed Growers and Trade Association v. Monsanto Co., the Federal Circuit dismissed the plaintiffs’ declaratory judgment action against Monsanto, but in so doing held that Monsanto would be judicially estopped from asserting its patents against these farmers for inadvertent infringement that results in the production, use, or sale of only trace amounts of infringing seed.
In Dey, L.P. v. Sunovion Pharmaceuticals, Inc., the Federal Circuit vacated the district court’s grant of summary judgment in favor of Sunovion, and remanded for further consideration of whether Sunovion’s clinical trial constituted a “public use” of the formulation claimed in Dey’s patents. As noted by the court, this case is interesting because most pharmaceutical ”public use” cases involve the patent holder’s own clinical trial, while this one involves that of the alleged infringer.Continue reading this entry
In Uship Intellectual Properties, LLC v. United States, the Federal Circuit upheld the claim construction applied by the Court of Federal Claims when it held that the United States and IBM Corporation did not infringe the claims at issue. Coming on the heels of the Biogen case, this decision provides another warning that any statements made during prosecution can give rise to prosecution history disclaimer.
In a fractured en banc decision, the Federal Circuit affirmed the district court’s holding that the claims at issue in CLS Bank v. Alice Corporation are invalid under 35 USC § 101. The multiple opinions reveal the judge’s fundamental differences as to the meaning and role of the statute, and the difficulty of applying Supreme Court precedent. The court’s inability to agree on even an appropriate framework for assessing patent-eligibility guarantees that this fundamental inquiry will be a murky area of law for the foreseeable future.
In Allergan, Inc. v. Sandoz, Inc., the Federal Circuit reversed the district court in part, finding that Allergan’s composition claims and most of its method claims are invalid as obvious, but upholding one method claim because it recites a non-obvious result. Some of the court’s reasoning in this opinion is troubling, and the non-obvious result may be difficult to extrapolate to other cases, but this case illustrates the value of including a variety of claims that focus on different aspects of the same invention.Continue reading this entry
In Biosig Instruments, Inc. v. Nautilus Inc., the Federal Circuit reversed the district court’s finding that the claims at issue were invalid as indefinite, because the claims were not “insolubly ambiguous.” This case underscores the difficulty of challenging a patent under 35 USC § 112, second paragraph.
In Bayer Healthcare Pharmaceuticals, Inc. v. Watson Pharmaceuticals, Inc., the Federal Circuit reversed the district court and held that Bayer’s patent covering its Yaz® birth control pill product is invalid as obvious. The court found a strong prima facie case of obviousness, and rejected each of Bayer’s arguments relating to secondary indicia of non-obviousness.
In Biogen Idec, Inc. v. GlaxoSmithKline LLC, the Federal Circuit upheld a narrow claim interpretation based on prosecution history disclaimer. The court held that the applicants’ arguments against an enablement rejection served to disclaim the broader claim scope sought in the infringement action. This case highlights the risk that any statement made during prosecution can be used to construe the scope of the claims.
In In re Morsa, the Federal Circuit reversed an anticipation rejection where the applicant had challenged the enabling quality of the cited prior art reference, even though the applicant had not submitted evidence in support of its position. While the court agreed with the USPTO that a prior art reference is presumptively enabled, it held that an applicant need not always bring forth evidence of non-enablement in order to shift the burden to the USPTO. This decision may make it easier to challenge the enabling quality of prior art, but pursuing an appeal without developing a supporting factual record still can be risky.
In Frolow v. Wilson Sporting Goods Co., the Federal Circuit refused to adopt the doctrine of marking estoppel, but held that evidence that Wilson had marked some accused tennis racket models constituted evidence of infringement sufficient to raise a genuine issue of material fact and prevent summary judgment of non-infringement. Continue reading this entry
In Dawson v. Dawson, the Federal Circuit considered an unusual case with a question that often arises in interferences: when did the inventor invent the subject matter at issue. While the decision does not break new ground in the law of conception, it highlights the issues that can arise when an inventor changes employment before an invention has been reduced to practice.Continue reading this entry
In a nonprecedential order issued March 15, 2013, the Federal Circuit granted rehearing en banc in Lighting Ballast Control, LLC v. Philips Electronics North America Corp., to consider the following questions:
- Should this court overrule Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed. Cir. 1998)?
- Should this court afford deference to any aspect of a district court’s claim construction?
- If so, which aspects should be afforded deference?
The order expressly invites amicus briefs:
The court invites the views of the United States Patent and Trademark Office as amicus curiae. Other briefs of amici curiae will be entertained, and any such amicus briefs may be filed without consent and leave of court but otherwise must comply with Federal Rule of Appellate Procedure 29 and Federal Circuit Rule 29.
In Radio Systems Corp. v. Lalor, the Federal Circuit held that equitable estoppel barred Bumper Boy’s infringement charges based on one patent, but did not preclude infringement charges based on a continuation-in-part (CIP) patent, even though the asserted claims of the CIP patent were supported by the first patent. The court also held that Radio Systems could not challenge the district court’s decision upholding the validity of the CIP patent because it had not filed a cross-appeal.Continue reading this entry
Obviousness-type double patenting usually arises between commonly-owned patents or patent applications. While the USPTO has interpreted the judicially-created doctrine as pertaining when there is common or overlapping inventorship, without regard to common ownership, the Federal Circuit had not upheld that interpretation of the doctrine until last week, in In re Hubbell.Continue reading this entry
In Cephalon, Inc. v. Watson Pharmaceuticals, Inc., the Federal Circuit reversed the district court’s finding that two Orange Book-listed patents for Cephalon’s FENTORA® product were invalid, but affirmed the district court’s finding that Watson’s ANDA product would not infringe the patents. The Federal Circuit decision reviews the “undue experimentation” standard for lack of enablement, and underscores the importance of aligning evidence of infringement with the governing claim construction.Continue reading this entry
When the Federal Circuit denied the Request for Panel Rehearing and Rehearing en banc in In re Baxter, the court let stand its two decisions that affirmed conflicting rulings on the validity of the same patent. In Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288 (Fed. Cir. 2009), the court affirmed the district court decision that upheld the validity of claims 26-31 of U.S. Patent 5,247,434, while in its May 17, 2012 decision in In re Baxter, the court affirmed the USPTO Board decision that the claims were invalid as obvious. Parallel litigation and USPTO proceedings involving the same patent may become more rare now that the America Invents Act (AIA) has replaced inter partes reexamination with inter partes review and placed restrictions on parallel litigation proceedings, but still could arise from pending inter partes reexamination proceedings or from ex parte reexamination proceedings, which are not subject to the same restrictions.Continue reading this entry
In Ritz Camera & Image, LLC v. Sandisk Corp., the Federal Circuit held that a direct purchaser of a patented product has standing to bring a Walker Process antitrust claim, even if it does not have standing to bring a declaratory judgment action to invalidate the patent. The case reached the court on an interlocutory appeal from the U.S. District Court for the Northern District Of California.Continue reading this entry
In K-Tec, Inc. v. Vita-Mix Corp., the Federal Circuit affirmed the district court’s finding that two design patents relating to pitchers were non-analogous art to utility patent claims relating to a blender jar. The Federal Circuit’s analysis focused on the problem being solved by the invention, and differs from a decision of the U.S. Patent Office Board of Appeals and Interferences, which focused on similarities between the functions of pitchers and blender jars.
In Pozen, Inc. v. Par Pharmaceutical Inc., the Federal Circuit upheld the district court’s determination that the patents at issue were not invalid as obvious and were infringed by the subject Abbreviated New Drug Applications (ANDAs). Comparing this case to In re Droge, I cannot help but wonder how much the procedural posture impacted the Federal Circuit’s decisions. While the court reached opposite determinations as to obviousness, in each case it affirmed the decision on appeal. Continue reading this entry
In Eli Lilly and Company v. Teva Parenteral Medicines, Inc., the Federal Circuit affirmed the district court’s decision that Eli Lilly’s patent to pemetrexed is not invalid for obviousness-type double patenting. The Federal Circuit’s decision provides important guidance on one of the most complex areas of U.S. patent jurisprudence, and explains how information in the specification can be used in a double patenting analysis, discusses when obviousness-type double patenting may arise between product and method claims, and notes that unexpected results may be relevant to obviousness-type double patenting.Continue reading this entry
In In re Droge, the Federal Circuit upheld the decision of the USPTO Board of Patent Appeals and Interferences that found that claims directed to recombinant biotechnology methods were obvious. At 8 pages, the decision is one of the shortest precedential opinions that I’ve read, and illustrates the difficulty of overturning a Board decision of obviousness. Continue reading this entry
In 1st Media, LLC v. Electronic Arts, Inc., the Federal Circuit reversed the district court’s finding that the patent at issue was unenforceable due to inequitable conduct, “[because the record contains no evidence of a deliberate decision to withhold [the] references from the PTO as required under Therasense.” This case may be welcomed by patent practitioners and applicants burdened by the specter of inequitable conduct charges, but reminds me that the USPTO still has not revised its Duty of Disclosure rule (36 CFR § 1.56) or guidance in view of the year-old Therasense decision.Continue reading this entry
In Loughlin v. Ling, the Federal Circuit affirmed a decision of the USPTO Board of Patent Appeals and Interferences that had canceled the sole claim of Loughlin’s patent in an interference proceeding. The decision turned on the interplay between the interference statute of limitations (35 USC § 135(b)(2)) and the domestic priority statute (35 USC § 120).
On August 31, 2012, the Federal Circuit issued an en banc, per curiam opinion deciding both Akamai Technologies, Inc. v. Limelight Networks, Inc. and McKesson Technologies, Inc. v. Epic Systems Corp., which each relate to the requirements for establishing infringement when all of the steps of a method claim are not performed by a single party. The court overruled its 2007 decision in BMC Resources, Inc. v. Paymentech, L.P., and held that induced infringement can be found even if a single entity is not liable for direct infringement. While the cases before the court pertain to computer-related inventions, this decision will be important to patents in the field of personalized medicine, where a doctor, patient, and laboratory may be involved in various steps of a diagnostic or therapeutic method.
Direct Infringement Of Method Claims
The court did not disturb the principle that in order for “a party to be liable for direct patent infringement under 35 U.S.C. § 271(a), that party must commit all the acts necessary to infringe the patent, either personally or vicariously.” The court explained that, “[i]n the context of a method claim, that means the accused infringer must perform all the steps of the claimed method, either personally or through another acting under his direction or control.” Thus, “this court has rejected claims of liability for direct infringement of method claims in cases in which several parties have collectively committed the acts necessary to constitute direct infringement, but no single party has committed all of the required acts,” unless there was ”an agency relationship between the actors.”
Induced Infringement Of Method Claims
The court decided that induced infringement is best suited “to address the problem presented by the cases before us, i.e., whether liability should extend to a party who induces the commission of infringing conduct when no single ‘induced’ entity commits all of the infringing acts or steps but where the infringing conduct is split among more than one other entity.”
The court noted that to be liable for induced infringement, “the accused inducer [must] act with knowledge that the induced acts constitute patent infringement.” Moreover, “inducement gives rise to liability only if the inducement leads to actual infringement.” Revisiting and overruling its decision in BMC, the court reasoned:
Requiring proof that there has been direct infringement as a predicate for induced infringement is not the same as requiring proof that a single party would be liable as a direct infringer. If a party has knowingly induced others to commit the acts necessary to infringe the plaintiff’s patent and those others commit those acts, there is no reason to immunize the inducer from liability for indirect infringement simply because the parties have structured their conduct so that no single defendant has committed all the acts necessary to give rise to liability for direct infringement.
Applying the new interpretation to the cases before it, the court noted:
In the McKesson case, Epic can be held liable for inducing infringement if it can be shown that (1) it knew of McKesson’s patent, (2) it induced the performance of the steps of the method claimed in the patent, and (3) those steps were performed.
* * * * *
[In the Akami case,] Limelight would be liable for inducing infringement if the patentee could show that (1) Limelight knew of Akamai’s patent, (2) it performed all but one of the steps of the method claimed in the patent, (3) it induced the content providers to perform the final step of the claimed method, and (4) the content providers in fact performed that final step.
The court reversed the judgments of non-infringement in both cases, and remanded “for further proceedings on the theory of induced infringement.”
Judge Newman’s Dissent
Judge Newman dissented and criticized the court for failing to resolve the issue of divided direct infringement, and for expanding liability for induced infringement.
This en banc court has split into two factions, neither of which resolves the issues of divided infringement. A scant majority of the court adopts a new theory of patent infringement, based on criminal law, whereby any entity that “advises, encourages, or otherwise induces,” maj. op. 14, or “causes, urges, encourages, or aids the infringing conduct,” id. at 15, is liable for the infringing conduct. The majority further holds that only the “inducer” is liable for divided infringement, and that the direct infringers are not liable although the patent rights are “plainly being violated by the actors’ joint conduct.” Id. at 10. These are dramatic changes in the law of infringement.
Judge Linn’s Dissent
Judge Linn’s dissenting opinion was joined by Judges Dyk, Prost, and O’Malley. These judges disagree with the court’s decision that liability for induced infringement can exist independently of liability for direct infringement:
On this unsound foundation, the majority holds that in the present appeals there has been predicate “infringement” even though § 271(a)’s requirements are not satisfied. On that basis, the majority vacates the contrary judgments of the district courts and remands for further proceedings concerning liability under § 271(b). In my view, the plain language of the statute and the unambiguous holdings of the Supreme Court militate for adoption en banc of the prior decisions of the court in BMC … and Muniauction … , which hold that liability under § 271(b) requires the existence of an act of direct infringement under § 271(a), meaning that all steps of a claimed method be practiced, alone or vicariously, by a single entity or joint enterprise.
Impact On Personalized Medicine Claims
Barring a Supreme Court decision that reverses or refines this holding, the Federal Circuit’s decision in Akami may make it easier to obtain patents in the personalized medicine space that both satisfy 35 USC § 101 as interpreted by the Supreme Court’s Prometheus decision, and that are enforceable against a single infringer or inducer. As I wrote previously, certain aspects of the Prometheus decision encourage method steps that would be carried out by different actors, such as one or more doctors, a testing laboratory, and/or the patient. While it is possible that an agency relationship could link those parties, the holding in Akami may make it easier to assert such patents against an inducer who encourages others to commit some or all of method steps that constitute infringement, even where the parties performing individual steps are acting independently.