Posts in Litigation

Lucky Brand Oral Arguments: SCOTUS Likely to Reverse Second Circuit Claim Preclusion Rule

On the morning of Monday, January 13, the U.S. Supreme Court heard oral arguments in Lucky Brand Dungarees Inc. v. Marcel Fashion Group Inc. The case asks the High Court to decide “whether, when a plaintiff asserts new claims, federal preclusion principles can bar a defendant from raising defenses that were not actually litigated and resolved in any prior case between the parties.” While the case originally involved allegations of trademark infringement, oral arguments indicated that the Justices of the Supreme Court will issue a decision with far-reaching implications on the question of what constitutes a single cause of action.

It’s Official: SCOTUS Will Not Unravel Section 101 Web

The Supreme Court this morning released its orders list, in which it denied all pending petitions for certiorari on cases concerning patent eligibility. The Court has now made it fully clear that it does not plan to wade back into the Section 101 debate, leaving it up to Congress to clarify the law. Thus—with an impeachment trial and presidential election looming this year—a quick 101 fix seems increasingly unlikely. The Court considered a number of petitions concerning Section 101 on Friday. Of them, Athena Diagnostics v. Mayo Collaborative Services was thought to have the best chance of being granted. In December, the United States Office of the Solicitor General (SG) weighed in on the petition in Hikma Pharmaceuticals v. Vanda Pharmaceuticals, recommending against granting cert in that case in favor of hearing one like Athena instead.

What Brand Owners and Small Businesses Can Learn from’s Trademark Enforcement Campaign

U.S.-based online outdoor goods retailer,, has faced a significant social media backlash over the past month, with both customers and competitors publicly reacting to its aggressive trademark enforcement campaign. It all started when news broke that the brand had taken action against a huge number of smaller companies that happened to use the term “backcountry” in their names. Public documents revealed that had been attempting to cancel trademarks against businesses using the term, filing lawsuits against a multitude of smaller companies over the past two years. The impact was far ranging, with disputed trademarks, product and business names including American Backcountry, Backcountry Babes, Marquette Backcountry Skis, Backcountry Denim Co., Backcountry Nitro, Cripple Creek Backcountry and many more.

CAFC Affirms District Court Finding that Hospira Precedex Patent Claim is Obvious

On January 9, the Court of Appeals for the Federal Circuit (CAFC) affirmed a decision of the U.S. District Court for the Northern District of Illinois, holding claim 6 of U.S. Patent No. 8,648,106 (the ‘106 patent) invalid as obvious. The ‘106 patent, owned by Hospira, Inc. (Hospira), is one of many patents covering Hospira’s dexmedetomidine products under the brand Precedex, such as the ready-to-use Precedex Premix product. Hospira sued Fresenius Kabi USA LLC (Fresenius) for infringement of claim 6 of the ‘106 patent, over its filing of an Abbreviated New Drug Application (ANDA) regarding its ready-to-use generic dexmedetomidine product.

Top Tips for Trying Your First (or Next) Patent Jury Trial

Writing about tips for trying patent jury trials is, in some ways, like teaching skills for hunting dinosaurs. To start, patent jury trials are challenging, which (presumably, at least) would be true for hunting a T-Rex. But patent jury trials have also trended toward the same fate as dinosaurs over the last several years. Creating the Patent Trial and Appeal Board (PTAB) and Inter Partes Review (IPR) process has shifted patent litigation from district court to the U.S. Patent and Trademark Office (USPTO). The now infamous patent “death squads” at the PTAB have mooted the need for many jury trials. At the same time, the Federal Circuit and district courts have used the Supreme Court’s Alice decision and Section 101 as a tool to dismiss large swaths of cases on the pleadings with no discovery, let alone the opportunity to offer evidence or call witnesses at trial. Finally, changes in the law on venue selection have limited patent holders’ ability to select a venue with an express reverence for the right to trial by jury, like the Eastern District of Texas. Thus, like the overall trend in civil cases in general, patent jury trials today are in decline compared with even the last decade.  

CAFC Reverses PTAB Non-Obviousness Decision in Finding for Google

On January 6, the U.S. Court of Appeals for the Federal Circuit (CAFC) reversed the Patent Trial and Appeal Board’s (PTAB) decision that Google failed to prove Koninklijke Philips’ (Philips) U.S. Patent No. RE44,913 (the ‘913 patent) obvious. The patent describes a method for entering primary and secondary characters on the keypad of a device such as a handheld mobile device. After Philips sued Acer, Inc. and other companies for infringement based on devices that use Google operating systems, Google petitioned the PTAB for inter partes review (IPR) of the ‘913 patent and the board found for Philips. Google appealed the Board’s decision to the CAFC, which held that the Philips invention would have been obvious in light of the prior art.

TQ Delta Reminds Me: May We Dispense with the Puzzle Simile?

In KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), the United States Supreme Court discussed legal principles of obviousness in the patent context. Justice Anthony Kennedy wrote for the Court: “Common sense teaches, however, that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” This simile, comparing obviousness analysis to the fitting together of pieces of a puzzle, has been referenced and quoted by a number of trial and appellate courts. Expert witnesses have used it in their testimonies. It also appears twice in the current Manual of Patent Examining Procedure (MPEP). With due respect to former Justice Kennedy, may we dispense with this terrible analogy? Although it has at least one redeeming aspect, the puzzle simile does more to confuse than to enlighten.

Federal Circuit Affirms Decision Finding Zohydro ER Patents Obvious

On December 27, U.S. Court of Appeals for the Federal Circuit (CAFC) Judge Jimmie Reyna authored an opinion affirming the U.S. District Court for the District of Delaware’s finding that the asserted claims of U.S. Patent Nos. 9,265,760 (‘760) and 9,339,499 (‘499), both titled “Treating Pain in Patients with Hepatic Impairment,” held by Persion Pharmaceuticals LLC,  were invalid due to obviousness. The CAFC found no reversible error in the district court’s decision and therefore affirmed.

The Top Five European IP Developments of 2019—and Five to Watch for 2020

As the year winds down, IPWatchdog is running a series of articles on the top stories of 2019 and what’s ahead for the year to come. In Europe, all eyes will be on Brexit and its effect on IP rights, the Unwired Planet case, and the Skykick trademark decision, among others. Overall, IP law developments across the EU have offered decidedly more clarity for IP owners than in the United States this year. Here are the highlights:  

The Fifth Circuit Must Preserve the Patent-Antitrust Balance by Upholding Actavis

The pharmaceutical industry presents some of the most important and challenging issues lying at the intersection of the patent and antitrust laws. On the one hand, patents play a crucial role in the industry, which is unique in the cost and duration of reaching the market. But on the other, a complicated regulatory regime and the event of generic entry (which dramatically lowers price and which the brand firm has interest in delaying) opens the door for potentially anticompetitive behavior. One area where this tension has surfaced in recent years has involved the settlement of patent litigation. In 2013, in FTC v. Actavis, the Supreme Court held that agreements by which brand-name drug companies pay generics to settle patent litigation and delay entering the market could have “significant anticompetitive effects” and violate the antitrust laws.

Four Issues Highlighted in the Supreme Court Oral Argument on Copyrightability of Statutory Annotations

On December 2, the U.S. Supreme Court heard oral argument in the matter of Georgia v. Public.Resource.Org, Inc. The issue on appeal was on whether annotations to the Official Code of the State of Georgia, which were prepared by Mathew Bender & Co under the supervision of Georgia’s Code Revision Commission, which was itself created by Georgia’s General Assembly, were capable of copyright protection, or whether they were an integral part of the laws of the State of Georgia, which, like all legislation, is part of the public domain and cannot be copyrighted. The outcome of this decision will affect legal publishing schemes in a number of states which, similar to Georgia, contract the work of preparing annotations to private sector companies, which then monetize those copyrights through a license fee structure. Indeed, concern for states’ publishing schemes led to the Solicitor General’s office and various other states joining in on the side of petitioner, the State of Georgia, who is seeking to establish that the annotations are subject to copyright. The case also presents a fascinating, almost philosophical discussion on the nature of annotations and the legal or persuasive force they should be afforded.

All Parties in Arthrex Want the Full Federal Circuit to Render a Better Decision

On December 16, the U.S. Government, Arthrex, Inc., and Smith & Nephew, Inc. each submitted petitions for rehearing and/or rehearing en banc asking the full Federal Circuit to reconsider its October 31 ruling in Arthrex v. Smith & Nephew, Inc, which made Patent Trial and Appeal Board  (PTAB) judges “inferior officers” under the U.S. Appointments Clause, in order to skirt the problem that they had been unconstitutionally appointed under the America Invents Act. Many have criticized the quick-fix approach. The case stems from Arthrex, Inc.’s appeal from the final written decision of the PTAB holding certain claims of its U.S. Patent No. 9,179,907 unpatentable as anticipated. On appeal, Arthrex argued that the appointment of the PTAB’s Administrative Patent Judges (APJs) by the Secretary of Commerce violated the Appointments Clause of the U.S. Constitution. The Court somewhat surprisingly agreed and remedied the problem by simply “severing any ‘problematic portions while leaving the remainder intact,’” as outlined in Free Enterprise Fund v. Public Company Accounting Oversight Board and Intercollegiate Broadcasting System, Inc. v. Copyright Royalty Board.

Is a Common Word Added to a TLD Like ‘.com’ Inherently Generic? Who Decides?

On November 8, the U.S. Supreme Court granted a Petition for Writ of Certiorari from the U.S. Patent and Trademark Office (USPTO) on the following issue: “Whether the addition by an online business of a generic top-level domain (“.com”) to an otherwise generic term can create a protectable trademark.” The issue stems from B.V.’s attempt to register four versions of the trademark “” for, among other services, “making hotel reservations for others.” The applications, filed in 2011 and 2012, were refused by the USPTO on the grounds that “booking” and “.com” are generic terms which, when combined, nonetheless create a generic term which describes the travel agency and reservation services. In general, generic terms do not function as trade or service marks and cannot be registered.

Italian Supreme Court Holds that Rights ‘On Patents’ and ‘To Patents’ are Different Legal Concepts

TPA IMPEX Spa is the owner of European parent n.567044, validated in Italy, regarding a cleaning device for household work. TPA sued DAVY Srl and SIEL srl in the first instance, accusing them of having infringed the Italian portion of the European patent. The defendants answered and counter-claimed for nullification of the the Italian portion of the European patent. The Court of first instance upheld the counter-claim of the defendants, declaring the Italian fraction of the European patent invalid with reference to most of the claims. It concluded that the defendant was entitled to manufacture and sell its cleaning devices. TPA IMPEX appealed. It asked in part that the judgment should be declared void because the inventor was not involved in the proceedings, thus violating Article 102 of the Italian Civil Procedure Code.

Federal Circuit Upholds $70 Million Judgment for Amgen in Epogen Biosimilar Case

Yesterday, in an opinion authored by Judge Moore, the Court of Appeals for the Federal Circuit (CAFC) affirmed the District of Delaware’s decision that: 1) U.S. Patent No. 5,856,298 (the ‘298 patent) belonging to Amgen was infringed by Hospira and not invalid; 2) 14 batches of drug substance for Hospira’s erythropoietin biosimilar drug product were not covered by the Safe Harbor provision of 35 USC § 271(e)(1); and 3) Amgen had proven that it was entitled to a jury verdict of $70 million in damages. Additionally, the CAFC affirmed the jury’s verdict of noninfringement of U.S. Patent No. 5,756,349 (the ‘349 patent).

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