Posts in Litigation

SCOTUS Takes on Scope of Enablement Inquiry in Amgen v. Sanofi: Implications for Pharma/ Biotech and Beyond

On November 4, the U.S. Supreme Court granted Amgen’s petition for certiorari against the advice of the U.S. government – taking up Amgen’s challenge to the Federal Circuit’s enablement review of its PCSK9 antibody patents covering evolocumab (Repatha®). In its petition, Amgen asserts that the Federal Circuit has gone too far in invalidating its PCSK9 antibody patents by imposing a disclosure burden beyond the requirements of 35 U.S.C. § 112. Notably, the Supreme Court, albeit with a different composition, recently declined to hear several other similar cases raising issues with the Federal Circuit’s enablement precedent.

Federal Circuit Affirms Preliminary Injunction for CPAP Company

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential decision affirming the grant of a narrowly-tailored preliminary injunction to SoClean, Inc., a medical device company that makes CPAP machines, based on trademark infringement claims against Sunset Healthcare Solutions, Inc. SoClean alleged in 2021 that Sunset infringed its U.S. Trademark Registration No. 6,080,195. The registration covers the configuration of replacement filters for its sanitizing devices.

Supreme Court’s Denial of Juno Therapeutics is Another Blow to the Life Science Patent Industry

On November 7, the U.S. Supreme Court issued an order list showing that it had denied the petition for writ of certiorari filed in Juno Therapeutics, Inc. v. Kite Pharma, Inc. In denying the petition, the Court refused yet again to clarify the Federal Circuit’s questionable interpretation of U.S. patent code, this time within the context of the written description requirement of 35 U.S.C. § 112, and leaves in place an appellate court ruling that many believe will be very damaging to the United States’ life sciences innovation sector.

Federal Circuit Reins in Albright Again, Orders Quick Ruling on Apple’s Venue Transfer Motion

The U.S. Court of Appeals for the Federal Circuit (CAFC) today said in a precedential order that Judge Alan Albright’s Scheduling Order in a case between Aire Technology Limited and Apple, Inc. went too far in mandating additional substantive discovery and re-briefing that would result in nearly a year passing before the court rules on Apple’s venue transfer motion. Apple asked the U.S. District Court for the Western District of Texas in April 2022 to transfer Aire’s patent infringement case against it to the Northern District of California. Apple filed declarations during venue discovery to support the need for transfer, including a request to supplement its motion with additional declarants just prior to the close of venue discovery, and offered to make the declarants available for deposition and to extend the transfer proceedings for a “reasonable” amount of time.

CAFC Shoots Down Patentee’s Bid to Reclaim Deducted Patent Term

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Monday said the U.S. Patent and Trademark Office (USPTO) properly deducted days from a patentee’s Patent Term Adjustment (PTA) under Supernus Pharms., Inc. v. Iancu because there were clear steps the applicant could have taken to conclude prosecution. Eurica Califorrniaa owns U.S. Patent 10,245,075 for a “Nondestructive means of ectopic pregnancy management.” Following a lengthy prosecution, the examiner made an amendment indicating minor additional changes to the claim language and issued a notice of allowance on December 11, 2018. Califorrniaa requested an additional interview on January 7, 2019, and included a new proposed amendment.

Supreme Court Grants Two IP Cases, Including Amgen v. Sanofi on Enablement

The U.S. Supreme Court granted petitions for certiorari in two intellectual property cases Friday, one dealing with the limits of extraterritorial application of the Lanham Act and another asking the High Court to weigh in on whether “enablement” means a specification must enable those skilled in the art “to reach the full scope of claimed embodiments” without undue experimentation.

Patent Filings Roundup: Old IP Edge Filings Explode; No New Discretionary Denials Again; Fortress-Backed DivX Rolls On

It was a return to form this week in the district courts, with 115 new patent filings (led by more than 40 new IP Edge complaints) to just 23 new Patent Trial and Appeal Board (PTAB) filings—the latter number being bolstered by a number of challenges to patents held by Raymond Anthony Joao subsidiary Beteiro, LLC by a conglomerate of gambling companies, including PointsBet USA, DraftKings, Inc., BetMGM, LLC, Hillside New Jersey LLC, and Entain Corporate Services Ltd. Micron filed another set of challenges against Katana Silicon Technologies patents, Ecobee challenged another Magnetar entity, Ollnova, which has brought suit on Internet of Things (IoT) related devices; and it was another week without any discretionary denials.

Amici Back Jump Rope Company in Supreme Court Case

Three amici filed briefs last week in Jump Rope System’s petition asking the U.S. Supreme Court to review a U.S. Court of Appeals for the Federal Circuit (CAFC) decision upholding a Patent Trial and Appeal Board (PTAB) finding of unpatentability. Eagle Forum Education and Legal Defense Fund and the Fair Inventing Fund filed briefs in support of the jump rope company while DivX filed in support of neither party .

Jump Rope Systems, the inventor of a novel jump rope system, is petitioning the Supreme Court to clarify “whether, as a matter of federal patent law, a determination of unpatentability by the Patent Trial and Appeal Board in an inter partes review proceeding, affirmed by the Federal Circuit, has a collateral estoppel effect on patent validity in a patent infringement lawsuit in federal district court.”

Federal Circuit Says Patent Incorporated by Reference Does Not Invalidate Finjan’s Asserted Patents

The U.S. Court of Appeals for the Federal Circuit (CAFC) today ruled in a precedential decision that the definition of a claim term in a patent incorporated by reference into the patents at issue does not dictate the definition of claims in the asserted patents. The CAFC thus reversed the district court’s claim construction and vacated and remanded its grant of summary judgment of invalidity based on indefiniteness.

CAFC Vacates Preliminary Injunctions Against Online Hoverboard Sellers

In two separate precedential opinions issued Friday, October 28, the U.S. Court of Appeals for the Federal Circuit (CAFC) vacated two separate preliminary injunction orders granted by the U.S. District Court for the Northern District of Illinois against hoverboard products alleged to infringe four design patents due to “substantive defects” in the court’s reasoning for granting the injunctions. Judges Dyk, Taranto and Stoll heard both appeals.

P.S., I Don’t Love You: UK Court Delivers Blow to Apple in FRAND Fight with Optis But Laments ‘Dysfunctional’ SEP Dispute System

The England and Wales Court of Appeal this morning said that Optis Cellular Technology is entitled to an injunction before a lower court has set fair, reasonable and non-discriminatory (FRAND) terms for a license to Optis’ standard essential patents (SEPs) if Apple refuses to take a court-determined FRAND license. But in a post script to the ruling, Lord Justice Arnold said both Apple’s appeal and Optis’s cross-appeal “illustrate yet again the dysfunctional state of the current system for determining SEP/FRAND disputes” and that the European Telecommunications Standards Institute (ETSI) and other standards development organizaitons (SDOs) should “make legally-enforceable arbitration of such disputes part of their IPR policies” to curb the problem.

Patent Filings Roundup: Another Slow Week in the Courts; Discretionary Denials Drop to Near-Zero in Q3

It was another surprisingly light week in patent filings, compared at least with recent memory—just 29 new suits and 17 new filings at the Patent Trial and Appeal Board (PTAB), all inter partes reviews (IPRs). The filings include a few challenges against patents asserted by the Fortress-funded Neo Wireless and Netlist, as well as a slew of filings by Apple against Mullin Industries, LLC. After a week’s respite there were five new IP Edge suits—not as many as usual, but still enough to represent almost a fifth of all suits filed this week.

Johnny Depp and Jeff Beck Sue Folklorist Accusing Them of Stealing Lyrics to ‘Hobo Ben’ Poem

Johnny Depp and guitarist Jeff Beck filed a lawsuit last Friday against folklorist and SUNY Buffalo professor Bruce Jackson, who accused the pair of plagiarizing a song on their latest album, “18”. In two demand letters the folklorist sent in August, Jackson alleged that Depp and Beck infringed the copyright of the poem “Hobo Ben” by copying entire passages. However, in their lawsuit filed in the U.S. District Court for the Western District of New York, Depp and Beck’s lawyers argue that Jackson never owned the copyright to “Hobo Ben,” as it was “part of an oral tradition passed down for generations and performed by an unidentified individual.” Therefore, they are asking the judge for a declaration of noninfringement, so the pair can “preserve their rights, defend their good names, and protect their business and business relationships.”

Michel Calls Out CAFC for ‘Tremendous Failure’ to Provide Clarity on Eligibility Law

During IPWatchdog’s Life Sciences Masters 2022 today, Retired Chief Judge of the U.S. Court of Appeals for the Federal Circuit (CAFC) Paul Michel said a lot could be fixed by the CAFC itself with respect to patent eligibility law if it would just go en banc more often. “By my recollection the Federal Circuit hasn’t gone en banc on a major patent case in a decade,” Michel said. “And yet, all CAFC judges are on record saying that 101 law is a total mess and needs to be fixed.” Michel was speaking on a panel moderated by Laura Smalley of program sponsor, Harris Beach, and including Mike Cottler of biosimilars company Alvotech and Tom Stoll of Genentech. The panelists were discussing the effect of U.S. patent eligibility law on the life sciences industry, including the potential impact of current efforts to reform patent eligibility law, such as Senator Thom Tillis’ (R-NC) Patent Eligibility Restoration Act. While Michel said he believes it’s ultimately Congress’ job to make the kind of policy judgments the Supreme Court and Federal Circuit have been making in this sphere, there is still a lot more the Federal Circuit could be doing to help the situation

How the Unified Patent Court Will Shake Up the Landscape of Patent Courts Worldwide

The Unified Patent Court (UPC) plans to open for business on April 1, 2023. Its likely place among the world’s preeminent patent courts can be inferred, at least in part, from the territorial and subject matter jurisdiction of this novel court. In Europe, several courts enjoy established reputations for patent litigation, notably in France, Germany, the United Kingdom, Holland and Italy. These courts, as well as the European Patent Office (EPO), which also enjoys a strong reputation for its case law, are the preferred venues of plaintiffs for enforcing or seeking to invalidate European patents. Due to the size and economic weight of the region, the importance of European patents, and the bench of experienced patent judges and practitioners, Europe will without doubt continue to attract a substantial share of patent litigation worldwide.