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Practical Perspectives on Intellectual Property Legal Developments

Category Archives: Patent

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Federal Circuit Finds Internet-Based Claims Directed to an Abstract Idea Still Patent-Eligible

Posted in Patent
In the aftermath of the Supreme Court’s 2014 decision in Alice Corp. Pty. Ltd. v. CLS Bank International, the U.S. Court of Appeals for the Federal Circuit (CAFC) has rarely found Internet-based patent claims challenged under 35 U.S.C. § 101 and Alice to be patent-eligible. The Court’s recent decision in BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC marks just the third such occurrence.… Continue Reading

Supreme Court Review Sought on Federal Circuit’s Standard for Appellate Review of Damages Awards

Posted in Patent
Recently, the Commonwealth Scientific and Industrial Research Organization (CSIRO) filed a petition requesting the Supreme Court to review a Federal Circuit decision that vacated a $16 million award against Cisco Systems Inc. Supreme Court Docket No. 15-1440 CSIRO states that the case really revolves around a set of “rigid rules about damages awards in patent infringement cases.” The consequences of these rigid rules, according to CSIRO, is that trial judges in effect are stripped of their ability to determine damages.… Continue Reading

IRS’ Aggressive Position Challenging the Treatment of a License Agreement as a Sale of a Capital Asset Rejected on Summary Judgment

Posted in Patent
We previously reported that the Internal Revenue Service (the “IRS”) took an aggressive position in challenging the treatment of a license agreement as a sale of a capital asset in the Tax Court case Mylan Inc. & Subsidiaries v. Commissioner of Internal Revenue (Docket Nos. 16145-14 and 27086-14). Recently, Tax Court Judge Laro denied the IRS’s Motion for Summary Judgment in Mylan’s challenge of the IRS’s determination that Mylan’s 2008 amendment to the contract with Forest Labs was not a sale of its interest in rights to a certain drug product but merely an extension of the parties’ 2006 license agreement, giving rise to ordinary income to Mylan.… Continue Reading

New Jersey Follows Federal Circuit in Finding Jurisdiction Over Hatch-Waxman Defendants

Posted in Patent, Pharmaceuticals
We recently reported on the Federal Circuit’s holdings in Acorda Therapeutics, Inc. v. Mylan Pharm. Inc. and AstraZeneca AB v. Mylan Pharm., Inc., where it held that Mylan was subject to jurisdiction in Delaware because “Mylan’s ANDA filings constitute formal acts that reliably indicate plans to engage in marketing of the proposed generic drugs.” Earlier this month, the first decision from the District of New Jersey District applying the Federal Circuits ruling was rendered. In Helsinn Healthcare S.A., et al. v. Hospira, Inc., No. 15-2077 (MLC), 2016 U.S. Dist. LEXIS 45826 (D.N.J. April 5, 2016), Judge Mary L. Cooper held that sufficient minimum contacts is to find specific jurisdiction is established by the fact that Hospira filed an ANDA seeking to market a generic version of Helsinn’s Aloxi® product that if approved, the marketing of will take place in New Jersey.… Continue Reading

Interesting Trends in Establishing Personal Jurisdiction in Hatch-Waxman/ANDA Litigations

Posted in Patent, Pharmaceuticals
Last week the Federal Circuit handed down one of its more anticipated decisions regarding jurisdiction in cases brought under 35 U.S.C. § 271(e)(2) (aka Hatch-Waxman or ANDA litigation). In its holding, the Federal Circuit stated that a “[defendant’s] ANDA filings and its distribution channels” are enough to “establish that [the defendant’s] plans to market its proposed [ANDA product in the forum state]” are enough to meet the minimum-contacts requirement to establish jurisdiction. It further held “there is no substantial argument that considerations of unfairness override the minimum-contacts basis for [the forum state’s] exercise of specific personal jurisdiction over” the defendants. This holding is much broader than the underlying district court rulings and limited the analysis to specific jurisdiction without addressing the underlying general jurisdictional questions.… Continue Reading

Long Lost Wright Brothers’ Patent File Found

Posted in Patent
On Sunday, The Washington Post published an interesting article explaining how the long lost Wright brothers’ patent file for the “Flying Machine” was finally found in March. The government had been searching for this file for the last 16 years. The file, which was last seen in 1980, was thought to be stored in a vault at the National Archives. But, in 2000, when an official commemoration was being planned, they realized it was missing. Ultimately, they were able to locate it in a limestone storage cave in Lenexa, Kansas. Although there was concern that the important record was stolen, the conclusion now is that it was probably just misfiled. The article indicates that the National Archives was able to identify this file as a part of a larger effort to locate missing documents.… Continue Reading

Need to Construe “Plain and Ordinary Meaning”?

Posted in Patent, Pharmaceuticals
In 2005, the Federal Circuit established the framework for the construction of patent claim terms. In its landmark holding in Philips v. AWH Corp., the Federal Circuit stated that “words of a claim ‘are generally given their ordinary and customary meaning . . . [and] that the ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art . . . ."… Continue Reading

PTAB “Broadest Reasonable Construction” for Connector Patents Deemed Unreasonable by CAFC

Posted in Patent, USPTO
In two related opinions (Docket Nos. 2015–1361, 2015–1369, 2015–1366, 2015–1368 and Docket No. 2015-1364) issued February 22, 2016 (each captioned PPC Broadband, Inc. v. Corning Optical Communications RF, LLC), the U.S. Court of Appeals for the Federal Circuit (“CAFC”) vacated and remanded portions of decisions rendered by the Patent Trial and Appeal Board (“PTAB”) of the U.S. Patent & Trademark Office (“USPTO”) in five separate inter partes review proceedings initiated by Corning Optical Communications RF, LLC (“Corning”) against PPC Broadband, Inc. (“PPC”). PPC is the owner of three patents at issue in the inter partes review proceedings (US 8,287,320, US 8,323,060, and US 8,313,353). The patents are related and directed to features of a coaxial cable connector. The CAFC decisions focus primarily on claim construction issues relating to the application of the PTAB’s “broadest reasonable construction” (“BRC”) claim construction standard and illustrate how the Court may evaluate the reasonableness of claim constructions in PTAB decisions on appeal.… Continue Reading

Federal Circuit Reaffirms its Patent Exhaustion Doctrine Decisions

Posted in Licensing, Patent
On February 12, 2016, the en banc Federal Circuit, in a 10-2 decision in Lexmark Int’l, Inc. v. Impression Prods., Inc., reaffirmed its long-standing rules that: (1) the exhaustion doctrine does not apply to patented articles sold subject to single-use/no-resale restrictions that were communicated to the buyer at the time of sale; and (2) the exhaustion doctrine does not apply to the sale of patented goods outside of the U.S.… Continue Reading

The New European Unitary Patent and Unified Patent Court: Are You Opting In?

Posted in Patent
The Gibbons Institute of Law, Science & Technology recently hosted a program to explore significant changes underway for the European patent landscape. At this program, Dr. Christoph Cordes, Partner at the German law firm Esche Schümann Commichau, presented an overview of the new European Unitary Patent and Unified Patent Court, and was joined by several panelists in a discussion about the anticipated impact of this new European patent regime.… Continue Reading

IRS Takes Aggressive Position in Challenging the Treatment of a License Agreement as a Sale of a Capital Asset

Posted in Patent
Recently, a Memorandum in Support of Motion for Summary Judgment was filed by the Internal Revenue Service (the “IRS”) in the Tax Court case Mylan Inc. & Subsidiaries v. Commissioner of Internal Revenue (Docket Nos. 16145-14 and 27086-14). Mylan’s opposition brief to the IRS’s motion followed shortly thereafter. This case illustrates the importance of exercising care when transferring intellectual property rights if you intend to benefit from capital gains treatment. An improperly structured sale may be recharacterized by the IRS as a license, resulting in a much larger tax liability for the transferor than what was anticipated.… Continue Reading

Supreme Court to Review Willful Infringement under 35 U.S.C. § 284

Posted in Patent
Last week, the U.S. Supreme Court granted certiorari to review the standard for willful infringement under 35 U.S.C. § 284. The Court was specifically asked to reject the rigid two-part test set forth by the Federal Circuit in In re Seagate, 497 F.3d 1360 (Fed. Cir. 2007), which requires the court to determine whether an alleged infringer: (1) acted despite an objectively high likelihood that its actions constituted infringement of a valid patent; and (2) this objectively-defined risk was either known or so obvious that it should have been known to the accused infringer.… Continue Reading

Federal Circuit En Banc Reaffirms Laches as a Defense to Patent Suits

Posted in Patent
Recently, the Federal Circuit, sitting en banc, ruled in SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC that laches remains a viable defense in patent infringement actions. In doing so, the Federal Circuit rejected the extension of the Supreme Court’s 2014 decision in Petrella v. Metro-Goldwyn-Mayer, Inc., which held that the laches defense does not apply in copyright cases because the copyright statute provides a three year statute of limitations for bringing an infringement suit.… Continue Reading

State of Vermont v MPHJ Technology Investments: A Case Study in the Timeliness and Basis of Removal

Posted in Patent
In State of Vermont v MPHJ Technology Investments, what appears initially as a factual simple matter, presents a complex procedural lesson in the timeliness and basis for removal of a matter from state court to federal court. In 2012, a number of Vermont businesses began receiving correspondence from MPHJ shell corporations alleging patent infringement. As a pattern, a business would receive an initial letter from the MPHJ corporation saying that the business had been identified as using patented technology. The letter included a survey to determine infringement and offered a licensing arrangement. If there was no response from Letter No. 1, Letter Nos. 2 and 3 would follow from MPHJ’s counsel, stating that the lack of a response was an admission and implying that litigation would follow.… Continue Reading

Federal Circuit Considering En Banc Rehearing in Ariosa Diagnostics, Inc. v. Sequenom, Inc.

Posted in Patent
The United States Court of Appeals for the Federal Circuit is deciding whether to reconsider en banc its panel decision in Ariosa Diagnostics, Inc. v. Sequenom, Inc. Numerous amici have lined up in support of rehearing. At stake is what room recent U.S. Supreme Court jurisprudence leaves for obtaining patent claims involving diagnostic innovations that use established processes.… Continue Reading

USPTO Proposes a Pilot Program to Allow a Single APJ to Institute an Inter Partes Review

Posted in Patent, USPTO
The United States Patent and Trademark Office (“USPTO”) has published a request for comments in the Federal Register for a proposed pilot program which would allow for a single Administrative Patent Judge (APJ) to determine whether to institute an inter partes review (IPR), with two additional APJs being assigned to the IPR if a trial were instituted.… Continue Reading

Federal Circuit Expands Liability for Direct Infringement Under § 271(a)

Posted in Patent
Last week, en banc, the United States Court of Appeals for the Federal Circuit in Akamai Technologies Inc. v. Limelight Networks, Inc. “unanimously set forth the law of divided infringement under 35 U.S.C. § 271(a),” and expanded direct infringement liability to include instances where, “an alleged infringer conditions participation in an activity or receipt of a benefit upon performance of a step or steps of a patented method and establishes the manner or timing of that performance.”… Continue Reading

Federal Circuit Directs Magistrate Judge to Decide Motion to Transfer After Long Delay and Substantive Rulings While Motion Was Pending

Posted in Patent
The Court of Appeals for the Federal Circuit recently granted yet another writ of mandamus, this time directing a magistrate judge in the Eastern District of Texas to stay proceedings and decide a motion to transfer that had been pending for over nine months. In re: Google, Inc., 2015-138 (Fed. Cir. July 16, 2015). This decision is a part of a continuing trend, since 2008, of the Federal Circuit taking issue with rulings from the Eastern District of Texas denying transfer motions in patent infringement actions or denying the stay of proceedings in favor of an action pending in another jurisdiction.… Continue Reading

CRISPR Technology: A First-To-Invent Dispute in a Now First Inventor to File Patent Regime

Posted in Patent
On March 16, 2013, with the enactment of certain provisions of the America Invents Act (AIA), the United States’ patent system moved from being a first to invent patent system (first-to-invent) to a first inventor to file patent system (first-to-file) and retired the use of interference proceedings to determine priority of invention. Prior to and after the initiation of first-to-file system, there has been much debate as to the virtues of both systems. One aspect of this debate was that inventors with less resources and universities benefited more from the first-to-invent patent system rather than the first-to-file where resources can impact the ability to file quickly. It was in this atmosphere and as forecasted, that there was a surge in pre-March 16 application by inventors who sought to have their application reviewed under the first-to-invent system.… Continue Reading
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