In Energy Heating, LLC, et al. v. Heat On-the-Fly, LLC, et al., 13-cv-00010 (D. N.D.), the District Court for the District of North Dakota recently granted partial summary judgment of noninfringement for the Plaintiffs, who provide portable water heaters in North Dakota. Plaintiffs had brought a declaratory judgment action against Defendants, who had allegedly reported the suspected infringement of their patent to Plaintiffs’ customers.
On Friday, the Supreme Court granted a writ of certiorari in Alice Corp. v. CLS Bank Int’l (Docket No. 13-298). In this case, the Court will take up the issue of: Whether claims to computer-implemented inventions – including claims to systems and machines, processes, and items of manufacture – are directed to patent-eligible subject matter within the meaning of 35 U.S.C. § 101 as interpreted by this Court.
Ranbaxy Laboratories, Ltd. (“Ranbaxy”) and Vertex Pharmaceutical, Inc. (“Vertex”) recently settled an inter partes review (“IPR”) proceeding regarding Vertex’s U.S. Patent No. 6,436,989 (“the ‘989 Patent”). Vertex had listed the ‘989 Patent in the FDA’s published Approved Drug Products with Therapeutic Equivalence Evaluations, otherwise known as the Orange Book, as covering its HIV drug, Lexiva®. The significance of this event is the rarity of the use of IPR on patents typically challenged under the Hatch-Waxman framework. Recent statistics show that the majority of IPR have involved electrical/computer patents. Less than 6% of IPRs have been directed to biotechnology/pharmaceutical patents. The likely reason for the limited use of IPR on pharmaceutical patents, particularly those listed in the Orange Book, is the estoppel provisions of the IPR proceedings. See 35 U.S.C. §§ 315(e).
On Monday, a group of some 60 law school professors from across the country formally joined the debate on the perceived abuses by Patent Assertion Entities (“PAEs”), or so-called patent trolls. The Professors signed a letter to Congress that decries “abusive patent enforcement” by trolls. The result of these litigations, according to the Professors, is the diversion of billions of dollars from employee hiring and retention and product development to “wasteful litigation.”
Just ten months after issuing its Decision to Initiate Trial in the very first Inter Partes Review (“IPR”) proceeding (IPR2012-00001, Garmin International, Inc. et al. v. Cuozzo Speed Technologies LLC ), the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office (“USPTO”) has issued a Final Written Decision in favor of the Petitioner, Garmin. In its Decision, the PTAB found the claims at issue to be unpatentable as obvious in view of the cited prior art, and further denied Patent Owner Cuozzo’s Motion to Amend the claims.
Last week, Senate Judiciary Chairman Orrin Hatch (D. UT) introduced the Patent Litigation Integrity Act, S. 1612. The Senate bill follows the introduction of a bill proposed by House Judiciary Committee Chairman Bob Goodlatte (R. VA), H.R. 3309, entitled “Innovation Act,” which also proposes a number of significant changes to patent litigation procedures.
Last week, House Judiciary Committee Chairman Bob Goodlatte (R-VA) introduced H.R. 3309, entitled “Innovation Act,” a 51-page bill proposing a number of significant amendments to the Patent Act (Title 35 U.S.C.). We reported last month on an earlier proposed draft of this bill. As we noted last month, among the more noteworthy provisions of the bill is a proposed new 35 U.S.C. § 281A, which heightens the pleading requirements for patent cases. Specifically, the proposed new section mandates providing detailed information about the patents alleged to be infringed, identifying each accused product/process, and providing information with “detailed specificity” regarding how the product infringes. This provision also sets forth that, for any required information not disclosed, the plaintiff must establish why such undisclosed information was not readily accessible, and the efforts made by such party to access it.
We have previously reported on the Federal Circuit’s en banc decision in Therasense, Inc. v. Becton Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) issued on May 25, 2011. In that decision, the Federal Circuit heightened the standard required to show that a patent holder committed inequitable conduct during the prosecution of the patent at issue. Prior to Therasense, an accused infringer asserting inequitable conduct as a defense had to show that the withheld information or false statements were material and the patent applicant intended to deceive the USPTO. Materiality and intent were analyzed on a sliding scale, where intent could be inferred if the withheld information was considered highly material.
Recently, House Judiciary Committee Chairman Bob Goodlatte (R-VA) announced a 47-page draft of a bill that proposes various amendments to the Patent Act, Title 35 of the United States Code and the Leahy-Smith America Invents Act. Importantly for IP practitioners, the draft bill would heighten pleading requirements for patent cases under a new 35 U.S.C. § 281A, by requiring detailed information in a complaint, including all the patents alleged to be infringed, an identification of each accused product and information with “detailed specificity” regarding how the product infringes. The proposed revisions would eliminate the current “Form 18,” which is the baseline model for alleging patent infringement.