Intellectual Property Rights - News Letter Issue No:2020--086
August 2020 Issue
1. Amarin Pharma, Inc. v. Hikma Pharmaceuticals USA Inc. (Fed. Cir. 2020)
Federal Circuit affirmed under Rule 36 the decision by the District Court of Nevada (Du, J.) in March that the claims asserted by Amarin Pharma against West-Ward Pharmaceuticals Inter national Ltd., Hikma Pharmaceuticals USA Inc., Dr. Reddy's Laboratories, Inc., and Dr. Red dy's Laboratories, Ltd. were invalid for obviousness, in Amarin Pharma, Inc. v. Hikma Phar maceuticals USA Inc. Rule 36 decisions are rarely further discussed; this case (while not par ticularly remarkable) does provide an opportunity to understand the factual and legal cir cumstances surrounding this increasingly frequent outcome.More
2. marin loses Vascepa patent appeal, putting generics defense on life support
Amarin's blockbuster hopes for fish oil derivative Vascepa came to a crashing halt in March after a district judge struck down its key patents, just months after a major new FDA ap proval. Amarin put all its hopes into a successful appeal—but those chances now appear slim after another negative ruling.The U.S. Court of Appeals for the Federal Circuit on Thursday upheld a lower court's ruling that patents protecting Amarin's purified fatty acid pill Vascepa from generic challengers were invalid based on obviousness, according to court filings. More More
3. Fed. Circ. OKs Google's Partial PTAB Win Over BlackBerry
The Federal Circuit has ruled that the Patent Trial and Appeal Board correctly invalidated parts of BlackBerry's digital sign-in patent that were challenged by Google, but it was unmoved by the tech giant's attempts to strike down other disputed claims on appeal. More
4. Anacor Pharmaceuticals, Inc. v. Flatwing Pharmaceuticals, LLC (Fed. Cir. 2020)
The Federal Circuit recently applied well-established principles of obviousness in affirming the Patent Trial and Appeals Board's invalidation of several patents related to antifungal formula tions in Anacor Pharmaceuticals, Inc. v. Flatwing Pharmaceuticals, LLC.More
5. Phytelligence, Inc. v. Washington State University (Fed. Cir. 2020)
One of the banes of any practicing patent attorney's professional existence is counseling clients on licensing agreements where the parties attempt to avoid setting forth definitive terms on contract provisions regarding circumstances expected to arise in future. This is an understand able inclination, because such terms are likely to depend on such future circumstances that nei ther party wishes to anticipate and thus later find that they are at a disadvantage as a conse quence. But such an inclination neglects to consider other ways to structure a contract to avoid these risks, and also neglects to acknowledge the possible consequences of failing to address these issues during current contract negotiations. For such clients, the Federal Circuit's recent decision in Phytelligence, Inc. v. Washington State University provides a cautionary tale (as well as an example for the intrepid attorney to use for convincing such clients of the pitfalls that can arise and problems that can be created by fainthearted conduct during contract negotia tions).More
6. Baxalta Inc. v. Genentech, Inc. (Fed. Cir. 2020)
The Federal Circuit recently vacated a District Court decision by Federal Circuit Judge Dyk, sit ting by designation, based on erroneous claim construction in Baxalta Inc. v. Genentech, Inc. More
7. PATENT INFRINGEMENT
With over 100 years of combined experience performing patent infringement damages anal yses across a diverse array of industries and technologies, our professionals possess exten sive expertise in measuring and testifying about patent damages. In fact, over 50% of the pro jects on which we’ve been retained involve patent infringement allegations. More
8. Federal Circuit Affirms District Court Claim Construction in Foundation Pile Patent Infringement Dispute
The United States Court of Appeal for the Federal Circuit recently upheld the Central District of California’s ruling of summary judgment that certain accused products of Foundation Construc tors, Inc. and Foundation Pile, Inc. (Foundation) do not infringe certain claims of U.S. Patent Nos. 7,914,236 (the ’236 patent) and 9,284,708 (the ’708 patent) (collectively, the patents-in suit) after plaintiffs-appellants Steve Neville, Substructure Support, Inc., and TDP Support, Inc. (collectively, Substructure) appealed the district court’s ruling, as based on an improper claim construction. See Neville v. Found. Constructors, Inc., No. 2020-1132, 2020 U.S. App. LEXIS 27321 (Fed. Cir. Aug. 27, 2020) (Before Lourie, O’Malley, and Chen, Circuit Judges) (Opinion for the Court, Chen, Circuit Judge). More
9. Federal Circuit Remands District Court Decision for Erroneous Claim Construction
United States Court of Appeals for the Federal Circuit (CAFC) reversed and remanded a deci sion of the U.S. District Court for the District of Delaware in Baxalta Inc. v. Genentech, Inc. The CAFC reversed the district court’s claim construction of the terms “antibody” and “antibody fragment” in Baxalta’s patent claims and remanded for proceedings consistent with the correct constructions. More
10.Federal Circuit Affirms Dismissal of Patent Infringement Complaint Under Res Judica ta
On November 24, 2015, Dr. Richard Sowinski, the owner of Patent No. 6,601,033 (the ’033 patent), sued the Califor nia Air Resources Board (CARB) and several individual and corporate defendants for in fringement of the ’033 patent. After Dr. Sowinski failed to file a response to several motions to dismiss, the district court dismissed the complaint with prejudice and without leave to amend pursuant to Central District of California Local Rule 7–12. On appeal, the Federal Circuit affirmed the dismissal, concluding that the Central District of California had consid ered all of the relevant factors and that there was no clear error of judgment. More
11.Federal Circuit Finds Calculating Machine Ineligible
In a unanimous panel ruling, the Federal Circuit has found that the calculating machine of U.S. Patent No. 388,116 fails to meet the eligibility requirements of 35 U.S.C. § 101. Inven tor W.S. Burroughs of St. Louis described the machine as "mechanically assisting arithmeti cal calculations." Particularly, it includes "one or more registers, of a series of independent keys and intervening connections constructed, arranged, and operating, as fully specified hereinafter, so as to indicate upon the register the sum of any series of numbers by the proper manipulation of the keys, and also so as to print or permanently record the final re sult." But this device ran afoul of recent Federal Circuit case law regarding the so-called "abstract idea" exception to patentability. More
12. Takeda Pharmaceuticals U.S.A., Inc. v. Mylan Pharmaceuticals Inc. (Fed. Cir. 2020)
ANDA litigation, pursuant to the Hatch-Waxman Act, has become more complicated over the years since enactment of the statute in 1984, with more patents being asserted and more parties participating over the opportunity to market a generic version of a branded, in novator drug. Particularly under circumstances where there are several ANDA litigants, and where most of them are not the sole "first filer" entitled to 180-day market exclusivity should they prevail in invalidating the innovator's patent(s) or (less often) showing that their generic product will not infringe, there is an incentive for the branded drug maker and at least some of the competing generic companies to enter into a settlement agreement. (It should be noted that these settlements are not in the manner of "pay-for-delay" agreements; that is a separate topic). One feature of these settlement agreements is that, absent any first filer garnering exclusivity status, each settling generic company seeks an agreement granting them the right enter the market when any non-settling generic company succeeds in invali dating the branded drug patent(s) or proving non-infringement. The Federal Circuit's deci sion over such a settlement agreement in Takeda Pharmaceuticals U.S.A., Inc. v. Mylan Pharmaceuticals Inc. illustrated the impossibility of crafting an agreement that encompasses all contingencies, the difficulty in foreseeing all contingencies, and the efforts a patentee will expend to enforce provisions of an agreement despite the agreement not being satisfied (as well as the toxic effect even the hint of gamesmanship can produce, even where the fact of a party engaging in gamesmanship may be very much in doubt). More
13. Marico Limited vs Abhijeet Bhansali (Notice of Motion No. 1094 of 2019 In COMIP No. 596 of 2019) Bobmay Highcourt
Marico Ltd., one of India’s leading FMCG (Fast Moving Consumer Goods) company, had recently filed an application at the Bombay High Court, seeking an interim injunction against Abhijeet Bhansali, a YouTuber/V-Blogger who operates the YouTube channel “Bearded Chokra”. It was alleged by Marico that Abhijeet Bhansali in his video, made comments dis paraging or denigrating Marico’s Parachute Coconut Oil, thus infringing its trademark “Para chute”. The Bombay High Court while passing an injunction against Abhijeet held that there was unauthorized use of the trademark “Parachute” and under the garb of educating the public one cannot provide misleading information to disparage any product. The court also ordered to take down the YouTube video uploaded by Abhijeet and emphasised the need for higher responsibility on the part of a social media influencer. More
14. B/E Aerospace, Inc. v. C&D Zodiac, Inc. (Fed. Cir. 2020)
B/E Aerospace, Inc. appealed a final written decision of the Patent Trial and Appeal Board (PTAB) that found certain claims of B/E's aircraft lavatory-related patents obvious.B/E contend ed that the Board's decision is erroneous because the Board incorporated a claim limitation that is not present in the prior art. Ultimately, the Federal Circuit affirmed the Board's findings hold ing the patents invalid. More
15. IBSA Institut Biochimique, S.A. v. Teva Pharmaceuticals USA, Inc. (Fed. Cir. 2020)
The Federal Circuit has spent the past few years applying the Supreme Court's most recent precedent, Nautilus, Inc. v. Biosig Instruments, Inc., on the indefiniteness standards in the pa tent statute. 35 U.S.C. § 112(b). The Federal Circuit's latest decision, in IBSA Institut Bio chimique, S.A. v. Teva Pharmaceuticals USA, Inc., affirmed a District Court's finding that the asserted claims to a pharmaceutical formulation were indefinite.The case arose in ANDA litiga tion over IBSA's Tirosint® product, which is a soft gel capsule formulation of the active ingredi ent levothyroxine sodium, as claimed in U.S. Patent No. 7,723,390. Claim 1 is representative of the asserted claims. More
16.Federal Trade Commission v. Qualcomm Ins. (9th Cir. 2020)
The Federal Trade Commission has a history of taking positions and aggressively pursuing them, despite getting reversed (sometimes continually) by Circuit Courts (see "Reverse Pay ments in Generic Drug Settlements"), although occasionally finding an ally in the Supreme Court (see "Federal Trade Commission v. Actavis, Inc. (2013)"). Most recently, the FTC has waged a campaign against chipmakers involved in the cell phone industry, and their most spec tacular victory was in convincing U.S. District Court Judge Lucy Koh (Northern District of Cali fornia) to impose a worldwide injunction against Qualcomm. That victory was short-lived, how ever, with the Ninth Circuit ruling on Tuesday that Qualcomm's business practices, while ag gressive did not rise to antitrust violations. (The result may have been telegraphed by the Court in granting a stay on the injunction, where it said that the "district court's order and injunc tion [was] either 'a trailblazing application of the antitrust laws' or 'an improper excursion be yond the outer limits of the Sherman Act.'"). More
17. American Axle & Mfg. v. Neapco Holdings LLC (Fed. Cir. 2019)
Federal Circuit has begun a practice of withdrawing an original opinion and handing down a substitute opinion in response to a petition for rehearing and rehearing en banc (see "IIllumina, Inc. v. Ariosa Diagnostics, Inc. (Fed. Cir. 2020)"). The Court followed this practice in what is perhaps its most confusing and controversial application of the Supreme Court's subject mat ter eligibility jurisprudence under Alice Corp. Pty. Ltd. v. CLS Bank International by reissuing its decision in American Axle & Mfg. v. Neapco Holdings LLC (prior decision discussed here). More
18. Nike Innovate C.V vs. G.B. Shoe (CS (Comm) No.542/19)
Delhi District Court has passed a permanent injunction against three footwear companies, G.B. Shoe, Vishal Footwear and New Hira Shoes, located in Agra, the Defendants, for violating the trademark(s) of Nike, the celebrated sports shoes manufacturer. Since its adoption in 1971, Nike has been using its brand name continuously worldwide and is the registered trademark holder of marks such as NIKE, SWOOSH (logo), etc. Based on the evidence and the reports submitted by the appointed Local Commissioner, the Court noted that the Defendants’ adoption and usage is creating undue enrichment by creating confusion in the minds of customers. The Court further ordered the Defendants to pay Nike a nominal damage of Rs. 50,000 each. More
19. India: Intellectual Property Updates From India - July 2020
While the world continues to grapple with the coronavirus pandemic and its impact, we contin ued to witness some interesting case updates that took place in the field of intellectual property, particularly trademarks and copyrights, in the second quarter of this year. This newsletter brings to you the key intellectual property related updates in India for the second quarter of the year.In an interesting case, the Bombay High Court, in a suit for trademark infringement de-clared ISKCON the registered trademark of International Society for Krishna Consciousness to be a "well-known trademark" in India.More