The U.S. Courts’ Influence on Patent Law – Case Law Update
• Judge Paul Michel (ret.) – Federal Circuit • Judge Faith Hochberg (ret.) – District of New Jersey • Tina Chappell – Intel • Charles Kinzig -- GlaxoSmithKline • Paul Berghoff – McDonnell Boehnen Hulbert & Berghoff LLP
Cuozzo v. Lee (Supreme Court)
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Cuozzo v. Lee (Supreme Court)
§ The AIA authorizes the USPTO to construe claims in IPRs using the “broadest reasonable construction in light of the specification of the patent in which it appears.”
§ “[T]hough it may not bar consideration of a constitutional question … [the statute] does bar judicial review of the kind of mine-run claim at issue here, involving the Patent Office’s decision to institute” an IPR.
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IPRs and the Federal Circuit
§ Lots of decisions (mostly) affirming the PTAB
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In re Magnum Oil Tools (Fed. Cir.)
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In re Magnum Oil Tools (Fed. Cir.)
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§ USPTO argued that the institution decision “operates to shift the burden of producing evidence of obviousness” to the patentee.
§ Federal Circuit disagreed in a 3-0 outright reversal
§ “To satisfy its burden of proving obviousness, a petitioner cannot employ mere conclusory statements. The petitioner must instead articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.”
Arendi v. Apple (Fed. Cir.)
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§ Patent allows a user to search using a second
program while remaining in the first program
Arendi v. Apple (Fed. Cir.)
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§ Common sense may be used to show a “known motivation to combine” or to supply an “unusually simple” limitation missing from the prior art.
§ Common sense “cannot be used as a wholesale substitute for reasoned analysis and evidentiary support, especially when dealing with a limitation missing from the prior art.”
Ariosa v. Sequenom (Fed. Cir.)
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§ Original panel affirmed invalidity based on Mayo.
§ Rehearing en banc denied 11-1 § Judge Lourie -- “I find no principled basis to distinguish this case
from Mayo, by which we are bound.”
§ Certiorari denied
Rapid Litigation Management v. CellzDirect (Fed. Cir.)
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§ Patent claimed method of cryopreserving liver cells § District court invalidated patent under Section 101
as claiming a law of nature plus well-known steps
Rapid Litigation Management v. CellzDirect (Fed. Cir.)
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§ Federal Circuit reversed in a 3-0 opinion authored by Chief Judge Prost
§ “The inventors certainly discovered the cells’ ability to survive multiple freeze-thaw cycles, but that is not where they stopped, nor is it what they patented.”
§ “The end result… is not simply an observation or detection” but rather “a better way of preserving hepatocytes.”
Enfish, LLC v. Microsoft (Fed. Cir.)
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§ District court invalidated patents based on Section 101 § Federal Circuit reversed (3-0) in an opinion written by Judge
Hughes
Enfish v. Microsoft (Fed. Cir.)
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§ The patents in suit “are directed to an innovative logical model for a computer database.”
§ “Software can make non-abstract improvements to computer technology.”
§ Patents in suit “are directed to a specific improvement to how the computers operate, embodied in the self-referential table.”
§ “[T]he claimed invention achieves other benefits over conventional databases, such as increased flexibility, faster search times, and smaller memory requirements.”
§ “[W]e are not persuaded that the invention’s ability to run on a general-purpose computer dooms the claims.”
Bascom v. AT&T (Fed. Cir.)
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§ Bascom’s patent claimed an internet filtering system that allows customized filtering of websites for each user
§ District court granted 12(b)(6) motion based on Alice § Claiming an abstract idea § No inventive concept
Bascom v. AT&T (Fed. Cir.)
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§ The Federal Circuit vacated the district court 3-0
§ “The inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art. As is the case here, an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.”
Halo v. Pulse (Supreme Court)
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§ Halo’s patent claimed transformers for printed circuit boards § Halo won a jury verdict and sought enhanced damages
based on willfulness § District court denied willfulness and Federal Circuit affirmed § Supreme Court reversed unanimously
Halo v. Pulse (Supreme Court)
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§ Section 284’s language (“the court may increase the damages up to three times”) is not consistent with Seagate’s rigid two-part test
§ “As with any exercise of discretion, courts should continue to take into account the particular circumstances of each case.”
§ District courts should be guided by the nearly two centuries of enhanced damages under patent law, which has been “reserved for egregious cases typified by willful misconduct.”
CSIRO v. Cisco (Fed. Cir.)
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§ CSIRO held basic wireless technology patents § One was a standards-essential patent for 802.11 § Sued Cisco and won in a bench trial § Federal Circuit vacated and remanded the damages award
CSIRO v. Cisco (Fed. Cir.)
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§ “[D]amages awards for SEPs must be premised on methodologies that attempt to capture the asserted patent’s value resulting not from the value added by the standard’s widespread adoption, but only from the technology’s superiority.”
§ Applies regardless of whether there was an obligation to license on RAND terms
Medicines Co. v. Hospira (Fed. Cir.)
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§ ANDA litigation for an anticoagulant § MedCo contracted with a third party to make three
commercial batches of Angiomax § Batches were paid for and delivered before the
critical date. § But were not made available for commercial sale
until after the critical date
Medicines Co. v. Hospira (Fed. Cir.)
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§ Under Pfaff, focus is in “on those activities that would be understood to be commercial sales and offers for sale in the commercial community.”
§ Looking to the UCC, the en banc court found no “on sale” bar for 3 reasons: § “only manufacturing services were sold to the inventor – the invention
was not” § “the inventor maintained control of the invention” § “’stockpiling,’ standing alone, does not trigger the on-sale bar.”
§ “[T]he transaction must be one in which the product is ‘on sale’ in the sense that it is ‘commercially marketed.’”
Lexmark v. Impression (Fed. Cir.)
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§ Patent exhaustion
§ Two en banc decisions in one
Lexmark v. Impression (Fed. Cir.)
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§ “[W]hen a patentee sells a patented article under otherwise-proper restrictions on resale and reuse communicated to the buyer at the time of sale, the patentee does not confer authority on the buyer to engage in the prohibited resale or reuse.”
Lexmark v. Impression (Fed. Cir.)
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§ “[A] foreign sale of a U.S.-patented article, when by or with the approval of the U.S. patentee, does not exhaust the patentee’s U.S. patent rights in the article sold, even when no reservation of rights accompanies the sale.”
Acorda v. Mylan (Fed. Cir.)
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§ ANDA litigation in Delaware § Mylan moved to dismiss for lack of personal
jurisdiction
§ Mylan was registered to do business, appointed an agent to accept service and intended to market its drugs in Delaware
§ Enough for minimum contacts
In re TC Heartland (Fed. Cir.)
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§ Kraft sued Heartland in Delaware § Heartland moved to transfer to S.D. Indiana § When denied, Heartland filed a writ of
mandamus
In re TC Heartland (Fed. Cir.)
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§ Federal Circuit denied the writ § “The general statement in [the Supreme
Court] footnote … cannot be transmogrified into the argument made by Heartland.”
Coming Attractions
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§ Supreme Court § Design patent damages – Samsung v. Apple § Foreign assembly – Life Tech v. Promega § Laches – SCA Hygiene v. First Quality
§ Federal Circuit § IPR claim amendments – In re Aqua Products
Thank You!
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