Recent Patent Cases

July 2015

SCOTUS – October 2014 Term• Teva Pharmaceuticals v. Sandoz

– 574 U.S. ___ (2015)• Kimble et al. v. Marvel Entertainment

– 576 U.S. ___ (2015)• Commil v. Cisco

– 575 U.S. ___ (2015)

Teva Pharmaceuticals v. Sandoz• Teva, et al. owns a patent covering a

manufacturing method for Copaxone, a drug used to treat MS.

• Claim limitation that the API had “a molecular weight of 5 to 9 kilodaltons”– Weight of most prevalent molecule (Mp)?– Average weight of all molecules (Mn)?– Average where larger molecules count for more

(Mw)?• Is the claim limitation indefinite?

District Court• The claim limitation was sufficiently definite

and the patent was valid.• In the context of the specification, one of

ordinary skill in the art would have understood the term to refer to the weight of the most prevalent molecule.

Federal Circuit• The Fed. Cir. Reviewed de novo all aspects of

the District Court’s claim construction, including subsidiary facts.

• Held the claims invalid.

SCOTUS• When the district court reviews only evidence

intrinsic to the patent, the judge’s determination is solely a determination of law, and the court of appeals will review that construction de novo.

• The ultimate construction of the claim is a legal conclusion that the appellate court can review de novo. But, to overturn the judge’s resolution of an underlying factual dispute, the appellate court must find that the judge, in respect to those factual findings, has made a clear error.

Kimble v. Marvel• In Brulotte, the Court held a post-patent

royalty provision unlawful per se. Such a provision continued the patent monopoly beyond the patent period and, in doing so, conflicted with patent law’s policy of establishing a post-expiration public domain.

• The Court refused to overturn Brulotte.• However, Brulotte leaves parties free to enter

alternative arrangements that may suffice to accomplish parties’ payment deferral and risk-spreading goals.

Commil v. Cisco• Direct infringement under §271(a) is a strict

liability offense in which a defendant’s mental state is irrelevant.

• Inducement liability under §271(b) attaches only if the defendant knew of the patent and that the induced acts constitute patent infringement.

• Contributory infringement under §271(c), like inducement liability, requires knowledge of the patent in suit and knowledge of patent infringement.

Commil v. Cisco (cont.)• Induced infringement and validity are separate

issues and have separate defenses under the Patent Act--belief regarding validity cannot negate §271(b)‘s scienter requirement of “actively induce[d] infringement.”

• When infringement is the issue, the patent’s validity is not the question to be contronged.

• If a parte believes that a patent is invalid, they have proper ways to obtain a ruling to that effect, e.g., ex parte reexamination.

• There is no defense of belief of invalidity for induced infringement.

Fed. Cir.• In re Cuzzo Speed Technologies• TomTom v. Michael Adolph• Teva v. Sandoz (on remand from SCOTUS)• Internet Patents v. Active Network• Microsoft v. Proxyconn• Williamson v. Citrix• EPLUS v. Lawson• Ariosa Diagnostics Center v. Sequenom• Alps South v. Ohio Willow Wood Co.• ArcelorMittal v. AK Steel• Sukumar v. Nautilus

In re Cuzzo Speed Technologies• The Fed. Cir. Lacks jurisdiction to review the

PTO’s decision to institute IPR.• IPR’s have two phases

– PTO determine whether to institute IPR Petitioner files document requesting Patent owner can file a response, with some limits

on doing so.– Board Conducts the IPR and issues a final

decision. This final decision in then appealable, and is the

point where estoppel attaches.

TomTom v. Adolph• A preamble is not limiting where a patentee

defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.

Teva v. Sandoz• Claims are still indefinite.• “We may now steer by the bright star of

‘reasonable certainty,’ rather than the unreliable compass of ‘insoluble ambiguity.’”

• “A party cannot transform into a factual matter the internal coherence and context assessment of the patent simply by having an expert offer an opinion on it. The internal coherence and context assessment of the patent, and whether it conveys claim meaning with reasonable certainty, are questions of law.”

Teva v. Sandoz (cont.)• “Determining the meaning or significance to

ascribe to the legal writings which constitute the intrinsic record is legal analysis. . . . Teva cannot transform legal analysis about the meaning or significance of the intrinsic evidence into a factual question simply by having an expert testify on it.”

Internet Patents v. Active Network• The “back” button on your web browser is an

abstract idea.• The district court held that “retaining

information lost in the navigation of online forms as an ineligible abstract idea.” (quotations omitted.)

Microsoft v. Proxyconn• “[t]he protocol of giving claims their broadest

reasonable interpretation . . . does not include giving claims a legally incorrect interpretation.” In re Skvorecz, 580 F.3d 1262,1267 (Fed. Cir. 2009).

• “A construction that is “unreasonably broad” and which does not ‘reasonably reflect the plain language and disclosure’ will not pass muster.”

• “[t]he protocol of giving claims their broadest reasonable interpretation . . . does not include giving claims a legally incorrect interpretation.”

Williamson v. Citrix Online• “Our consideration of this case has led us to

conclude that such a heightened burden is unjustified and that we should abandon characterizing as ‘strong’ the presumption that a limitation lacking the word ‘means’ is not subject to 112, para 6.”

• “We also overrule the strict requirement of ‘a showing that the limitation essentially is devoid of anything that can be construed as structure.”

Williamson v. Citrix Online• “The standard is whether the words of the

claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.”

• “When a claim term lacks the word ‘means,’ the presumption can be over come and 112, para 6 will apply if the challenger demonstrates that the claim term fails to ‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function.’”

EPLUS v. Lawson Software• An injunction cannot continue after the PTO

has cancelled the only claim upon which the injunction was based.

• “[c]ivil contempt sanctions must be set aside when the resolution of the case requires overturning the injunction on which those sanctions are based.”

Ariosa Diagnostics v. Sequenom• For process claims that encompass natural

phenomenon, the process steps are the additional features that must be new and useful.

• Once claims are determined to disclose only ineligible subject matter under the Mayo test, “preemption concerns are fully addressed and made moot.”

• “[w]hile preemption may signal ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.”

Alps South v. Ohio Willow Wood• “[N]unc pro tunc assignments are not sufficient

to confer retroactive standing.”

ArcelorMittal v. AK Steel• The Court stated that although an inventor’s

subjective understanding of patent terminology is irrelevant to claim construction, “when an inventor’s understanding of a claim term is expressed in the prior art, it can be evidence of how those skilled in the art would have understood that term at the time of the invention.”

Arcelormittal v. AK Steel• The commercial success of an embodiment

with an additional unrecited feature may be considered when evaluating the obviousness of the claim, provided that there is a nexus between the embodiment’s success and the claimed and novel features of the invention.

Sukumar v. Nautilus• Case deals with “competitive injury” and

standing.• “We hold that a potential competitor may

suffer competitive injury if it has attempted to enter the market. An attempt is made up of two components: (1) intent to enter the market with a reasonable possibility of success, and (2) an action to enter the market.”

Par Pharm. v. TWI (Dec. 2014)• Use of inherency in obviousness rejections.• "[T]he use of inherency, a doctrine originally• rooted in anticipation, must be carefully

circumscribed in the context of obviousness."• "A party must, therefore, meet a high standard

in order to rely on inherency to establish the existence of a claim limitation in the prior art in an obviousness analysis—the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art."