Intellectual Property Rights - News Letter Issue No:2020--081
March 2020 Issue
1. What is an Abstract Idea, Anyway?
In 2014's Alice Corp. v. CLS Bank Int'l case, Justice Thomas famously wrote, "we need not labor to delimit the precise contours of the 'abstract ideas' category in this case." Instead, he found the claims of patentee Alice to have "no meaningful distinction" under 35 U.S.C. § 101 from those the Court previously found ineligible in Bilski v. Kappos. More
2. Illumina, Inc. v. Ariosa Diagnostics, Inc. (Fed. Cir. 2020)
The latest Federal Circuit decision on subject matter eligibility in the life sciences came down (by a divided court) in favor of eligibility, in Illumina, Inc. Ariosa Diagnostics, Inc. The claims at issue fell into the third "bucket" of eligibility, being neither diagnostic method claims (always ineligible at the Federal Circuit) nor method of treatment claims (eligible, at least until the Supreme Court grants certiorari in the next iteration of Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals), but rather (as denoted in the majority opinion), method of preparation claims, a philosophical cousin to the claims in Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc. And as an added bonus, Judge Reyna dissented in a manner that illustrates his thinking on patent eligibility of inventions involving natural phenomena (and natural products). The case arose over U.S. Patent No. 9,580,751 (the '751 patent) and U.S. Patent No. 9,738,931 (the '931 patent), directed to the solution of an unexpected difficulty in detecting cell-free fetal DNA (cffDNA). More More
3. Inequitable Conduct Voids IP In Ethanol MDL
Until recently, this case, originally filed in this court, was part of a multidistrict litigation ("MDL") in the Southern District of Indiana. Plaintiff, GS CleanTech Corporation ("CleanTech"), sued a number of defendants throughout the United States for infringement of CleanTech's patented method for extracting corn oil from byproducts produced during the manufacture of ethanol. The litigation ended badly for CleanTech, as Judge Larry J. McKinney, to whom the MDL was assigned, concluded that the patents-in-suit are invalid and not infringed. More More
4. Insanity (AKA Copyright Statutory Damages) Rules: Cox Hit With $1 Billion (With A B) Jury Verdict For Failing To Magically Stop Piracy
We've highlighted the many problems with the various lawsuits against Cox Communications arguing that the company should be held liable for failing to wave a magic wand and stop all piracy from occurring on its service. The internet access provider was originally sued by music publisher BMG, and they got a judge who made it clear that he was not a fan of the internet, and didn't see why it should be a problem for anyone to be kicked off the internet at all. Cox lost the case mostly because the company didn't really follow its own internal repeat infringer policy. That ruling was upheld on appeal, leading the company to settle the case for $25 More More
5. GSK Settles Anemia Drug Patent Claims On Eve Of Trial
British pharmaceutical giant GlaxoSmithKline settled claims it infringed two patents for anemia treatments with patent holder FibroGen Inc. and licensee Astellas Pharma. More
6. Hetero, Zydus Settle Novartis MS Drug Suits Before IP Trial
Novartis AG on Saturday told a judge it had settled patent infringement cases against two generic drug companies vying to launch versions of its blockbuster multiple sclerosis drug Gilenya, averting a trial.In two separate notices filed in Delaware federal court, Novartis and its lawyers at Gibson Dunn & Crutcher said they had settled claims that generic versions of Gilenya proposed by Hetero Drugs Ltd and Zydus Pharmaceuticals Inc would infringe one of the Swiss drugmaker‟s patents. More
7. Facebook, Inc. v. Windy City Innovations, LLC (Fed. Cir. 2020)
The dispute between Facebook and Windy City began on June 2, 2015, when Windy City sued Facebook for infringement of four patents in the U.S. District Court for the Western District of North Carolina. Those four patents, U.S. Patent Nos. 8,458,245; 8,694,657; 8,473,552; and 8,407,356, have 58, 671(!), 64, and
37 claims, respectively. The Complaint did not identify which of those 830 claims Facebook allegedly infringed. Facebook was served with the Complaint the day after it was filed, and moved to dismiss it on July 24, 2015, arguing that the Complaint was deficient because it did not identify the allegedly infringed claims. Facebook then filed a motion to transfer the case to the Northern District of California on August 25, 2015. More
8. Allen v. Cooper (2020)
In a decision containing not a small amount of whimsy (more regarding that aspect anon), Justice Kagan, joined almost unanimously by her brethren today upheld a State's (here, North Carolina) sovereign immunity against suit for copyright infringement, in Allen v. Cooper. More
9. Germany’s Top Court Voids EU Unified Patent Court Approval
Judges in Germany have dealt what may be a fatal blow to the project to create a Unified Patent Court (UPC) in Europe.In a decision published, the German Federal Constitutional Court said the Act of the Approval of the UPC Agreement was void. (BVerfG, Beschluss des Zweiten Senats vom 13. February 2020 – 2 BvR 739/17 -, Rn. (1-21).) The Act of Approval was passed unanimously by the Second Chamber of the Bundestag but only about 35 members were present. The Court said that a two-thirds majority of the Bundestag was required. More
10. Fed. Circ. Affirms Automakers’ PTAB Wins On Motor Patent
Federal Circuit on March 23, 2020 backed wins by Toyata and Aisin Seiki Co.Ltd.upholding consolidated decisions by PTAB that the automakers showed showed several claims in intellectual ventures electric motor patents are invalid. Patent holding company Itellectual Ventures II LLC had urged the panel to vacate PTAB decision urging that PTAB‟s invalidity decision rested upon improper claim construction but panel‟s one line order affirming the PTAB consolidated decision did not elaborate on panel‟s decision.
11. Chugai sues Fresenius Kabi in the USA for patent infringement
Chugai Pharmaceutical (TYO: 4529) says that, along with majority-owner Roche (ROG: SIX) and Genentech, has filed a patent infringement lawsuit in the US District Court for the District of Delaware as follows.The Japanese drugmaker explains the Fresenius Kabi USA, and affiliates have filed an Abbreviated New Drug Application (ANDA) for approval of a generic version of Alecensa (alectinib), an ALK inhibitor, anti-cancer agent to the US Food and Drug Administration. Under the framework of the Drug Price Competition and Patent Term Restoration Act (known as Hatch-Waxman Act), Chugai, Roche and Genentech filed a patent infringement lawsuit against Fresenius alleging submission of ANDA infringed Chugai‟s US Patents (Nos 9,126,931; 9,440,922; 9,365,514 and 10,350,214).
12. Mallinckrodt Files Certiorari Petition in iNO v. Praxair
Mallinckrodt filed a certiorari petition with the Supreme Court last week, over the Federal Circuit panel decision (by Chief Judge Prost joined by Judge Dyk; Judge Newman dissented on the issue before the Court in this petition) affirming dismissal of a suit by Mallinckrodt's subsidiary, iNO Pharmaceuticals, in iNO Therapeutics LLC v. Praxair Distribution Inc. From the first sentence, the petition frames the issue as one of lower court confusion with the Supreme Court's subject matter eligibility jurisprudence: More
13. DOE Infringers Petition for Certiorari over PHE "Tangential Relationship" Test
Federal Circuit has taken up issues relating to infringement under the doctrine of equivalents (DOE) and a related doctrine, prosecution history estoppel (PHE), that limits the scope of equivalents that can be asserted under DOE. See, e.g., Pharma Tech Solutions, Inc. v. Lifescan, Inc.; Amgen Inc. v. Coherus BioSciences Inc.; Indivior Inc. v. Dr. Reddy's Laboratories, S.A.; and UCB, Inc. v. Watson Laboratories Inc. In three cases (stemming in one instance from a Federal Circuit opinion consolidated from two cases in the district court, by Eli Lilly & Co. against two ANDA defendants), the defendants found to be infringers under the DOE have filed petitions for certiorari challenging how the Federal Circuit adjudged the interplay between the DOE and PHE in affirming the infringement determinations (see Eli Lilly & Co. v. Hospira, Inc. and Ajinomoto Co. International Trade Commission). More
14. CAFC Holds Sequenom’s Prenatal DNA Patent Claims Eligible Under 101
The U.S. Court of Appeals for the Federal Circuit (CAFC) has reversed a district court decision finding certain claims of two patents covering prenatal DNA testing patent ineligible. The CAFC held that “the claimed methods utilize the natural phenomenon that the inventors discovered by employing physical process steps” and thus were patent-eligible. The patents at issue in the case acknowledge but are not related to the patented invention held invalid in Ariosa Diagnostics, Sequenom, Inc., 788 F.3d 1371, 1373 (Fed. Cir. 2015). The opinion was authored by Judge Lourie, with Judge Reyna dissenting. U.S. Patent 9,738,931 (the ‟931 patent) and U.S. Patent 9,580,751 (the ‟751 patent) are owned by Sequenom and licensed by Illumina. The two companies brought suit against Ariosa Diagnostics, Inc., Roche Sequencing Solutions, Inc., and Roche Molecular Systems, Inc. (Roche) for infringement in the United States District Court for the Northern District of California in 2018, three years after the decision in Ariosa v. Sequenom. More More
15. Abbott wins MitraClip patent spat with Edwards — for now
The U.S. Patent Trial and Review Board (PTAB) this week shot down an attempt by Edwards Lifesciences (NYSE:EW) to invalidate the patents that Abbott (NYSE:ABT) holds on its MitraClip transcatheter mitral valve repair (TMVR) device.In a ruling published Thursday, the PTAB said Edwards failed to show that it would prevail in with at least one of the claims it made against the patents owned by Abbott subsidiary Evalve, which . makes MitraClip. Abbott bought Evalve in 2009 for $410 million.Edwards filed the petition in July 2019, asking the board to review 25 claims that Evalve/Abbott hold on the MitraClip patent. Edwards maintains that the claims are unpatentable. Abbott responded that the patent claims Edwards challenged could be resolved in a trial scheduled to begin May 4, 2020. Abbott sued Edwards for patent infringement in U.S. District Court in Delaware in January 2019 over the same „493 patent on MitraClip. More
16. 58 Patents Upheld in District Court Invalidated by PTAB on Same Grounds
There has been some public debate over research regarding the validity of patents that are upheld in federal district court and which are then invalidated through various review challenges instituted at the Patent Trial and Appeal Board (PTAB). One particular commentator trotted five examples out of a set of patents upheld in district court and invalid at the PTAB to note that an apples-to-apples comparison of the data shows that the district court and the PTAB are deciding validity on different grounds; for instance, an argument made under to 35 U.S.C. § 112 for indefiniteness may have failed at district court, but the PTAB invalidated claims over 35 U.S.C. § 102 for anticipation based on submitted prior art. The two decisions on validity happened on different grounds, and thus there‟s no actual controversy, at least in the minds of some. More
17. Serta Simmons Bedding, LLC v. Casper Sleep Inc. (Fed. Cir. 2020)
In Serta Simmons Bedding, LLC v. Casper Sleep Inc., the Federal Circuit vacated a decision by the U.S. District Court for the Southern District of New York granting summary judgment of non- infringement to Defendant-Cross-Appellant Casper Sleep Inc. and remanded with instructions to enforce a settlement agreement between Casper and Plaintiffs-Appellants Serta Simmons Bedding, LLC and Dreamwell, Ltd. The Federal Circuit also affirmed the District Court's denial of Casper's motion for fees and costs. More
18. Sharp Sues Vizio for LCD Patent Infringement
LCD television manufacturer Sharp filed a complaint against defendants Vizio and other companies in its supply chain for patent infringement arising from the alleged use of patented LCD display technology. The suit was filed in the California Central District Court. Sharp is represented by K&L Gates. Sharp, according to its complaint, has created numerous liquid crystal display (LCD) innovations. The company claims that its “intellectual property is the backbone of Sharp‟s commercial success.” More
19. USPTO Issues Clarification Regarding Petitions Based on Unintentional Delay
U.S. Patent and Trademark Office issued a notice in the Federal Register (85 Fed. Reg. 12222), in which the Office clarified its practice with respect to those situations where the Office will require additional information about whether a delay in seeking the revival of an abandoned application, acceptance of a delayed maintenance fee payment, or acceptance of a delayed priority or benefit claim was unintentional. In particular, for petitions decided on or after March 2, 2020, the Office will require additional information when a petition to revive an abandoned application is filed more than two years after the date the application became abandoned, a petition to accept a delayed maintenance fee payment is filed more than two years after the date the patent expired for nonpayment, or a petition to accept a delayed priority or benefit claim is filed more than two years after the date the priority or benefit claim was due. More
20. Valeant Sues Mylan to Block Copies of Antifungal Jublia and Mylan says Generic drug can’t override IP Venue law
The Hatch-Waxman Act didn‟t create an exemption to patent venue law that allows generic- drug makers to be sued in states where there‟s been no alleged infringement, Mylan has told the Federal Circuit as part of a fight with Valeant over competing versions of the antifungal medication Jublia. More
21. Boehringer Ingelheim Pharmaceuticals, Inc. v. Aurobindo Pharma Ltd.
Boehringer asserts infringement of theUS9,286,526 patent. Boehringer is the holder of NDA No. 201280 for TRADJENTA® for oral use for the treatment of type 2 diabetes via increasing incretin levels. Aurobindo submitted ANDA No. 208415 seeking approval to engage in the commercial manufacture and sale of generic copies of TRADJENTA®. More
22. Amgen Bid to Extend Enbrel Patent Term Troubles Federal Circuit
A Federal Circuit panel plumbed a doctrine that prevents a party from owning more than one patent on the same invention in a case testing Amgen Inc. subsidiary Immunex‟s 30-year term for its patents on the blockbuster rheumatoid arthritis drug Enbrel. More
23. Supreme Court Rejects 3 Alice Patent Appeals.
The U.S. Supreme Court on Monday rejected three appeals calling for more clarification on what is and isn‟t eligible for patents under the high court‟s Alice ruling, despite warnings that refusing to resolve the uncertainty will lead to “staggering consequences.” More
24. New ANDA Cases - Winter 2020
Summary of New ANDAcases. More
25. Mitsubishi, Janssen Seek To Block Generic Diabetes Drug
Mitsubishi Tanabe Pharma and the licensees of its diabetes drug Invokamet XR have hit generic-drug manufacturer Aurobindo Pharma USA with a patent infringement suit in New Jersey federal court over what they allege to be a hasty attempt to sell generic versions of the medication. More More