Posts in Litigation

Why Helsinn v. Teva Creates Inscrutable Uncertainty About the Scope of Prior Art Instead of Confirming Longstanding Law

To the casual observer, the Supreme Court’s January 23 decision in Helsinn v. Teva may seem like no big deal. In just a few pages of text, the Court informs us that Congress did not change the established meaning of “on sale” prior art when it rewrote Section 102 of the Patent Act in 2011. Move along, nothing to see here, right? More than a few commentators seem to assume that we’ll simply return to the pre-America Invents Act (AIA) status quo, and that sales of an invention, whether public or private, will just continue to trigger a familiar statutory one-year clock for filing a patent application. But nothing could be further from the truth. In fact, the impact of private sales (and of non-public commercial uses) on the patentability of later-filed patent applications will be significant, and very different from pre-AIA law. Patent applicants and owners of patents that were issued under the AIA have every reason to worry about traps for the unwary.

Federal Circuit Rule 36 Judgment in VirnetX v. Cisco and Apple: A Look at the Oral Arguments

IPWatchdog has been closely following the growing trend of Rule 36 affirmances at the Federal Circuit. Perhaps one of the most widely publicized of these was the January 15 decision in VirnetX Inc. v. Cisco Systems, in which co-defendant Apple appealed a September 2016 jury verdict from the Eastern District of Texas awarding $302.4 million in damages to secure communications patent owner VirnetX. That verdict said that Apple had infringed two patents through its VPN On Demand and FaceTime services. While some might say a judgment that ultimately totaled more than $400 million after enhanced damages and interest warrants some kind of explanation, a look at the oral argument transcript suggests that this might be one where Rule 36 was actually appropriate—or, at least, expected. Nonetheless, “with $400 million at stake, the Federal Circuit at a minimum should have explained in a page or two why the decision below was so clearly correct, and Apple’s appeal was so clearly unnecessary,” said IPWatchdog’s Gene Quinn.

Standard Essential Patents: The Myths and Realities of Standard Implementation

Standard Essential Patents (SEPs) are patents that are unavoidable for the implementation of a standardized technology. They represent core, pioneering innovation that entire industries will build upon. These patents protect innovation that has taken extraordinary effort to achieve. Standard Development Organizations (SDOs) exist as a mechanism for industry innovators to work together to collectively identify and select the best and most promising innovations that will become the foundation for the entire industry to build upon for years to come. Those contributing patented technologies to the development of a standard are asked to provide a FRAND (which stands for Fair, Reasonable and Non-Discriminatory) assurance, in essence committing to providing access to patents that are or may become essential to the implementation of the standard.

No License No Cry: Ninth Circuit Nixes Jammin Java Appeal in Bob Marley Trademark Case

Early last month, the U.S. Court of Appeals for the Ninth Circuit issued a memorandum affirming the district court’s grant of partial summary judgment in Hope Road Merchandising v. Jammin Java Corporation. The Ninth Circuit’s decision upholds a nearly $2.5 million damages award for trademark infringement in favor of Hope Road, the licensing and merchandising arm for the family of the late reggae icon Bob Marley, against coffee distributor Jammin Java.

Other Barks & Bites: IP News to Watch, February 1, 2019

This week in Other Barks & Bites: Huawei is in hot water with both the U.S. and UK governments, while Qualcomm has just completed a new patent licensing deal with Huawei; IBM tops a new global list for most artificial intelligence-related patent applications filed; Apple files another appeal of a major patent infringement damages award handed to VirnetX in the Eastern District of Texas; and see how the biggest IP players are doing Wall Street.

District of Delaware Makes it Harder to Corner the Market on Antibody Patents in MorphoSys v. Janssen

Patents covering an antibody are often claimed by the antibody’s function (the residues where it binds to the antigen) rather than its structure (amino-acid sequence). This tactic can successfully cast a very wide net of patent protection over potentially millions of different antibodies. In doing so, even if the patent holder’s own antibodies never make it out of the laboratory, the patents can nevertheless corner the market on intellectual property covering a new class of inhibitors. The risk of this strategy, however, is that extremely broad patent scope can simultaneously doom a patent’s validity for not being sufficiently enabled or lacking written description. As an example, a recent decision from the District of Delaware, MorphoSys AG v. Janssen Biotech, Inc., No. 16-221 (LPS) (Dkt. 471) (Jan. 25, 2019), invalidated broad antibody patents for not being sufficiently enabled, as well as coming near to invalidating the same patents for lacking written description. The case is important to the growing body of patents covering biologic drugs because it delineates more precisely when functionally-claimed antibody patents can survive enablement and written description challenges.

IBM Calls for an End to the ‘Legal Fiction’ of Current 101 Law

This marks the final installment in my four-part interview with IBM’s Vice President and Assistant General Counsel Mark Ringes and Chief Patent Counsel Manny Schecter. I found our conversation fascinating and want to thank them both again for their time and insight. Below, we conclude with an in-depth discussion on how the U.S. patent system is affecting startups and the state of enforceability following Director Iancu’s Section 101 Guidance.

Wayne Evans: One Inventor’s Battle With the Patent Troll Issue

When you see a docket report with a patent lawsuit filed by a non-practicing entity (NPE), do you think it’s just another ‘patent troll’ taking advantage of the system? Or would you be willing to consider that underlying every patent litigation is a human story of invention, which is the embodiment and manifestation of an innovator’s aspirations and sacrifices? These human stories are too often marginalized in the ‘patent troll’ debate. One such story is that of Wayne Evans. His life took him from the depths of poverty and loss to the struggles of being an entrepreneur raising a family and, ultimately, to late-in-life success as an inventor, innovator, and author.

Google Tries Again at Supreme Court in Copyright Fight With Oracle

Following a Federal Circuit ruling last March in which Google lost the latest in a nine-year battle with Oracle over Google’s unauthorized use of nine lines of code and 37 packages of Oracle’s Java API packages in its Android operating system, Google has once again petitioned the Supreme Court to step in.

No End in Sight for Rule 36 Racket at Federal Circuit

According to Federal Circuit Rules, a Rule 36 judgment can be entered without an opinion when it is determined by the panel that one of five conditions exist relating to the underlying decision being sufficient or exhibiting no error of law. In such cases, because a written opinion would not have precedential value, a judgment of affirmance without opinion is allowed.

The Federal Circuit use of Rule 36 has been well documented and extremely problematic. As of January 28, the Federal Circuit has issued 44 decisions in 2019. Of those 44 decisions, 24 have been Rule 36 judgments, which are simply one-word judgments that substantively say: “Affirmed.” Twenty of the decisions have been non-precedential decisions. So far in 2019, only 13 decisions of the Federal Circuit have been designated precedential. To do the math, this means 42.1% of the Court’s decisions have been Rule 36 judgments. More generally, combining Rule 36 and non-precedential opinions together, we see that 77.2% of the Court’s decisions are non-precedential, and only 22.8% are precedential.

Other Barks & Bites: IP News to Watch, January 25, 2019

Today marks the return of our Other Barks & Bites feature, which will profile a collection of news headlines from around the IP world and across practice areas every Friday. This week, the patent spat between Apple and Qualcomm heats up at the PTAB; China’s intellectual property court at Beijing shows signs of heightened requirements in trademark appeals for foreign entities; and the European Union delays debate on copyright reforms that would affect major tech firms that aggregate news and videos online.

The Supreme Court Should Grant Cert in Zup to Correct Obviousness Doctrine

On behalf of nonprofit, U.S. Inventor, Inc., and over a dozen other amici, Flachsbart & Greenspoon, LLC has submitted a Brief of Amici Curiae urging the Supreme Court to grant certiorari from the Federal Circuit’s notoriously error-ridden decision in the waterskiing case: Zup, LLC v. Nash Manufacturing, Inc. Reviewing this decision will be an excellent way to get obviousness doctrine back on track.

In that 2-1 decision (with Judge Newman dissenting), the Federal Circuit held that even “considerable” or “strong” objective evidence of nonobviousness will sometimes not save a patent from an obviousness ruling. That ruling is wrong. It is also out of touch with Supreme Court doctrine.

District Court Upholds Orexo Patent for Opioid Dependency Treatment Over Actavis’ Generic

On January 10, the U.S. District of Delaware held that Actavis’ generic version of Orexo’s opioid dependency treatment infringed an Orexo patent. The patent-at-issue in this order was U.S. Patent No. 8940330, titled Abuse-Resistant Pharmaceutical Composition for the Treatment of Opioid Dependence. This non-appealable infringement judgment prevents Actavis from commercializing its generic opioid dependency treatment until Orexo’s patent rights expire in September 2032. The judgment covers all dosage levels of the Actavis generic product.

Filer of an ANDA Paragraph III Certification has Standing to Appeal from PTAB in IPR

The ‘650 patent covers a compound called fesoterodine, which is an antimuscarinic drug marketed as Toviaz® and used to treat urinary incontinence. Mylan Pharmaceuticals petitioned for IPR of the ‘650 patent alleging certain claims were obvious. After institution of the IPR, Amerigen and two other companies joined as parties to the proceeding. After the PTAB’s finding that the challenged claims were not unpatentable, Amerigen—but not Mylan—appealed the decision.

On appeal, UCB asserted Amerigen lacked standing. Specifically, UCB argued that, based on the Paragraph III certification accompanying Amerigen’s abbreviated new drug application (ANDA), the FDA will not approve Amerigen’s ANDA until the expiration of the ‘650 patent, previously upheld in a separate suit in the District of Delaware, in 2022. Consequently, UCB contends Amerigen is foreclosed from infringing the ‘650 patent, and without a possibility of infringement there can be no justiciable dispute.

The Federal Circuit rejected UCB’s argument for several reasons. First, this case did not arise under the Hatch-Waxman Act. Second, Amerigen did not rely a risk of infringement liability as a basis for injury. Rather, Amerigen pointed to a concrete commercial injury that it incurred from the listing of the ’650 patent in the Orange Book, which was only possible so long as the ’650 patent was not found invalid. Specifically, the listing of the ‘650 patent blocked the launch of Amerigen’s tentatively approved ANDA, and invalidation of the patent would advance its drug’s launch.

Motivation to Combine Unnecessary Under Section 103 if Secondary Reference Does Not Supply Element or Teaching

On January 10, the Federal Circuit issued an opinion affirming a decision of the Patent Trial and Appeal Board (PTAB) invalidating several claims of U.S. Patent No. 6,597,812 (the ‘812 patent) as obvious. Realtime Data, LLC v. Iancu, No. 2018-1154 (Fed Cir. Jan. 10, 2019) (Before Dyk, Taranto, and Stoll, Circuit Judges) (Opinion for the court, Stoll, Circuit Judge).

Hewlett Packard Enterprise Co., HP Enterprise Services, LLC, and Teradata Operations, Inc. (collectively, HP) sought inter partes review (IPR) of U.S. Patent No. 6,597,812, alleging that the claims were obvious under 35 U.S.C. §103(a) over U.S. Patent No. 4, 929, 946 (O’Brien) and further, in view of a data compression textbook by Mark Nelson (Nelson). After instituting review, the PTAB found the challenged claims obvious over the prior art. Realtime Data appealed on two grounds: (1) that the PTAB erred in determining that a person of ordinary skill would have been motivated to combine the teachings of O’Brien and Nelson, and (2) that the PTAB erred by failing to properly construe the term “maintaining the dictionary”.

On appeal, the Federal Circuit accepted HP’s primary argument that all of the challenged claims were disclosed in O’Brien, with Nelson used only to demonstrate that the term “dictionary encoder” used in the ‘812 patent was actually what was disclosed in O’Brien. HP thus relied on Nelson merely to explain that O’Brien’s algorithm was a dictionary algorithm, which Realtime conceded. Because the PTAB did not rely on Nelson for the disclosure of any particular element or teaching and instead relied on O’Brien alone to supply the elements and teachings, there was no obligation to make any finding regarding a motivation to combine O’Brien and Nelson. Therefore, the PTAB “did not err when it concluded that claim 1 was invalid under § 103 based on O’Brien alone,” Judge Stoll wrote.