Posts Tagged: "patent infringement"

On appeal, Novartis argued that the PTAB unlawfully reached different conclusions than the Federal Circuit and U.S. District Court for the District of Delaware in addressing the “same” arguments and the “same” evidence… The Court stated that “Novartis’s argument fails on factual and legal grounds.” First, the record in front of the PTAB differed from that of the prior litigation, meaning that Novartis’ argument rests on a “faulty factual predicate.”… “Nevertheless, even if the record were the same, Novartis’s argument would fail as a matter of law.” The PTAB reviews patentability under the “preponderance of the evidence” standard. See 35 U.S.C. § 316(e). District court litigation requires “clear and convincing” evidence. Therefore, “the PTAB may properly reach a different conclusion based on the same evidence.”

On April 6, 2017, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in The Medicines Company v. Mylan, Inc. (2015-1113, 2015-1151, and 2015-1181) that imports certain subject matter from the specification into the claims… This case provides some key takeaways for patent practitioners, some more obvious than others. First, as has been known for some time, referring to the “invention” in a patent’s specification can hurt, as can indicating that a particular process “includes all” of the embodiments the specification describes. This is why patents for inventions in the U.S. now curiously, if understandably, usually avoid using the word “invention”. Also, setting forth definitions in a specification can have unintended consequences not just for the term being defined but also for terms that are not explicitly defined even if unequivocally characterized in some other way. Prosecution history also matters too, particularly where an applicant distinguishes its invention during prosecution by explicitly characterizing “the invention” in terms divorced from the language of the claims themselves.

Tensions between Costco Wholesale Corporation (“Costco”) and Acushnet Holdings Corp. (“Acushnet”), maker of the Titleist golf ball, have risen since Costco escalated matters last Friday by filing suit seeking a declaratory judgment in an ongoing dispute between the corporate heavyweights. The most recent in the series of intensifying clashes is over Acushnet’s claims that Costco’s Kirkland Signature (“KS”) golf ball infringes on some eleven (11) Acushnet patents, and that Costco is engaged in false advertising holding the KS golf ball against the Titleist.

The makers of TRX fitness and training equipment, was awarded more than $6.8 million in damages after a jury verdict finding willful patent infringement by San Carlos, CA-based Woss Enterprises LLC. The lawsuit surrounded allegations that Woss infringed upon patents covering Fitness Anywhere’s suspension trainer equipment. The jury verdict included a finding of willful infringement of patents asserted in the case. The case was tried and decided in the U.S. District Court for the Northern District of California (N.D. Cal.).

Justices Kagan and Ginsburg seemed skeptical. Indeed, Congress has already passed a general venue statute that defined residency “for all venue places – all venue purposes,” as Justice Ginsburg put it. Justice Kagan chimed in, questioning the propriety of overturning the broader rule, which she called “the decision that the practice has conformed to” and the “practical backdrop” against which Congress was legislating. Next, Justice Breyer noted the many arguments and briefs discussing the Eastern District of Texas, but which he felt were not relevant.

The Federal Circuit heard the case on TVIIM, LLC v. McAfee, Inc. A unanimous panel of the Federal Circuit affirmed jury determinations of non-infringement and patent invalidity and affirmed the district court’s denial of motions for judgment as a matter of law (“JMOL”) and for a new trial… Litigators risk jury confusion by relying on “ordinary meaning” for a key claim term, without articulating what that meaning is. An alternative “ordinary meaning” will not be considered for the first time on appeal. Furthermore, alternative meanings may be considered harmless, if substantial evidence nevertheless supports a finding of invalidity under any construction.

The Federal Circuit heard the case on Univ. of Utah v. Max-Planck-Gesellschaft Zur Foerderung der Wissenschaften e.V. At issue is whether the district court abused its discretion in declining to award attorney fees to Max Planck. The case involved an inventorship dispute over the “Tuschl II patents,” for certain RNAi discoveries, and owned by Max Planck. March 2000, the Max Planck inventors published an article describing certain RNAi discoveries. A month later, Dr. Bass of the University of Utah published a review article discussing the Max Planck article and offering some hypotheses regarding RNAi. The Tuschl II patents were filed on subject matter that was influenced by testing Dr. Bass’ hypotheses. The University of Utah sued Max Planck, alleging that Dr. Bass is either a sole or joint inventor of the Tuschl II patents… The Court will not second-guess a district court’s finding that a case was not “exceptional” so long as the Court reasonably explained why the case does not stand out from other patent cases. A district court is not constrained to a specific or formulaic approach proposed in cases like Octane Fitness.

In a strong reversal of the Federal Circuit, the US Supreme Court held in SCA Hygiene Products Aktiebolag v First Quality Baby Products, LLC, No. 15-927 (March 21, 2017), that delay by a patentee will not give rise to a laches defense during the statutory six-year damages period under 35 U.S.C. § 286. Justice Samuel Alito authored the 7–1 majority opinion, extending the court’s decision in Petrella v. Metro-Goldwyn-Mayer, Inc. (2014), which held that laches is inapplicable for copyright infringement, a provision similar to Section 286 of the Patent Act… The Supreme Court noted that its determination regarding laches does not preclude a defense based on equitable estoppel…

“In our time together today we are going to try and take stock of the health of the American patent system,” Michel began. “It is important to remember that the patent system was founded in the Constitution… and although the world ‘right’ appears many times in the Bill of Rights, in the original Constitution the only ‘right’ mentioned is the patent right.”… Investment is being disincentivized by uncertainty created by the aforementioned three waves of changes to the system. We should be looking at the impact on the flow of money, Michel explained.

In conclusion, the Court held the district court did not abuse its discretion in determining that, under the totality of circumstances, this was an exceptional case, and affirmed the district court’s grant of § 285 fees… The Supreme Court’s totality of the circumstances analysis for fees under § 285 is a “holistic and equitable approach in which a district court may base its discretionary decision on other factors, including the litigant’s unreasonableness in litigating the case, subjective bad faith, frivolousness, motivation, and ‘the need in particular circumstances to advance considerations of compensation and deterrence.’”

Anticipation can arise when the disclosure of a limited number of alternative combinations discloses the one that is claimed. However, a reference does not anticipate because an artisan would immediately envision a missing limitation… In Kennametal, the challenged claim required a ruthenium binding agent and a PVD coating to be used together. The prior art reference disclosed five binding agents (including ruthenium) and three coating techniques (including PVD), and taught that any binding agents could be used with any coatings. Thus, Kennametal held that the reference effectively taught fifteen combinations, one of which anticipated the challenged claim. A limited number of possible combinations effectively disclosed one of them. Kennametal does not hold that a reference can anticipate a claim if a skilled artisan would “at once envisage” the missing limitation. As a result, the Court reversed the Board’s finding of anticipation.

Various Synopsys parties and EVE-USA, Inc. (collectively “Synopsys”) sued Mentor Graphics, seeking a declaration that Mentor’s ’376, ’531, and ’176 patents were invalid and not infringed. Mentor counterclaimed for willful infringement of those three patents, and also asserted infringement of two more (the ’526 and ’109 patents). The court consolidated the case with another involving a fourth patent owned by Mentor (the ’882 patent)… A jury does not have to further apportion lost profits to patented features of a larger product after applying the Panduit factors, which implicitly incorporate apportionment into the lost profit award. Claim preclusion applies when a claim was asserted, or could have been asserted, in a prior action. It does not bar allegations that did not exist at the time of the earlier action.

On Tuesday, March 21st, the U.S. Supreme Court issued a decision in SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, a case which looked at the issue of whether and to what extent the defense of laches may bar a claim for patent infringement brought within the six-year statutory limitations period, as defined by 35 U.S.C. Section 286. In a 7-1 vote, the Supreme Court decided that the equitable defense of laches cannot be invoked against claims for infringement occurring during the statutory period.

On Tuesday, March 21st, a pre-trial hearing will take place in a case involving patent infringement claims targeting the sale of mice having mutated genes which make them useful for research into Alzheimer’s disease… The original complaint filed in University of South Florida Board of Trustees v. The Jackson Laboratory, which is in the U.S. District Court for the Middle District of Florida (M.D. Fla.), asserts a single patent: U.S. Patent No. 5898094, entitled Transgenic Mice Expressing APPK670N, M671L and a Mutant Presenilin Transgenes. Issued in April 1999, it protects a transgenic mouse with enhanced Alzheimer’s disease-related amyloid accumulation in its brain produced by selecting the offspring of two mice, one expressing the mutant presenilin encoded in its genes and the other expressing the APPK670N, M671L genetic sequence; this results in a mouse that develops accelerated deposition of amyloid beta in a period of weeks rather than nine months.

On March 21, 2017, the Supreme Court of the United States will hear oral arguments for the case of Impression Products, Inc. v. Lexmark International, Inc. The Court will decide: (i) whether the patent exhaustion doctrine applies in instances where a patented article is sold by the patent holder subject to a lawful and clearly communicated post-sale restriction; and (ii) whether the foreign sale of a U.S. patented article, authorized by the patent holder, exhausts the patent holder’s U.S. patent rights in that article.