In the non-precedential opinion in Lee v. Mike’s Novelties, Inc., the Federal Circuit affirmed the district court’s judgment of infringement and no invalidity, but reversed the finding of willful infringement. In so doing, the court provides a summary of the black letter law on enhanced patent damages. Continue reading this entry
When the Federal Circuit denied Baxter’s petition for panel rehearing and rehearing en banc in Fresenius USC, Inc. v. Baxter International, Inc., Judge Dyk wrote an opinion concurring in the denial that was joined by Judge Prost, Judge O’Malley wrote an opinion dissenting from the denial that was joined by Chief Judge Rader and Judge Wallach, and Judge Newman wrote a separate opinion dissenting from the denial. The judges’ different views of the case appear to stem primarily from different views of what it means for a case to be “final.”
Co-authored by Benjamin R. Dryden.
The Federal Trade Commission (FTC) has issued final rules under the Hart-Scott-Rodino Antitrust Improvements Act of 1976 (HSR Act) relating to the transfer of exclusive patent rights in the pharmaceutical industry. These new FTC rules go into effect on December 16, 2013. Importantly, these rules clarify when transfers of rights to a patent in the pharmaceutical sector are deemed a potentially reportable acquisition of assets under the HSR Act, and expand application of the HSR Act to exclusive licenses where the licensor retains limited patent rights to manufacture product for the licensee. Although these updated rules focus on and provide clarification with regard to exclusive licenses in the pharmaceutical area, it has been and will remain the position of the FTC that exclusive patent licenses (i.e., those that are exclusive even against the licensor) regardless of the industry are subject to the HSR Act, assuming the HSR Act reporting thresholds are met and no exemptions apply.
In Ohio Willow Wood Co. v. Alps South, LLC, the Federal Circuit found that Ohio Willow Wood had both withheld material information and made material representations during proceedings before the USPTO. Because the district court had granted summary judgment of no inequitable conduct in Ohio Willow Wood’s favor, the Federal Circuit vacated and remanded for the district court to assess the credibility of Ohio Willow’s witnesses on the issue of intent to deceive. Continue reading this entry
In LifeScan Scotland, Ltd. V. Shasta Technologies, LLC, the Federal Circuit found that LifeScan’s distribution of its One-Touch Ultra glucose meters exhausted its patent rights such that it could not prevent Shasta from selling disposable test strips for use in the meters. In so doing, the court reversed the district court’s grant of a preliminary injunction that was based in part on the fact that LifeScan gave away at least 60% of its glucose meters and on its determination that the glucose meters likely did not embody the methods claimed in the patent at issue, which required both the meters and the test strips. Several aspects of this case are troubling, including the court’s emphasis on LifeScan’s failure to obtain a patent on its test strips when determining that the glucose meters alone substantially embody the claimed methods.