On February 14, 2018, the Federal Circuit issued a precedential decision providing important guidance regarding the circumstances under which dismissal on patent eligibility grounds is appropriate at the pleadings stage. In Aatrix Software, Inc. v. Green Shades Software, Inc., the Federal Circuit ruled that “patent eligibility can be determined at the Rule 12(b)(6) stage . . . only when there are no factual allegations that, taken as true, prevent resolving the eligibility question as a matter of law.” No. 2017-1452, slip op. at 5 (Fed. Cir. Feb. 14, 2018). Continue reading
(*Originally published as a Michael Best client alert on January 10, 2018, co-authored by J. Donald Best and Kenneth M. Albridge, III)
On January 8, 2018, in Wi-Fi One, LLC v. Broadcom Corp., the United States Court of Appeals for the Federal Circuit issued an en banc decision expanding the range of issues subject to judicial review on appeal from decisions of the Patent Trial and Appeal Board (PTAB) in inter partes review (IPR) proceedings. In a 9-4 decision, the full Federal Circuit overruled its prior panel decision in Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015) and held for the first time that the PTAB’s time-bar determinations under 35 U.S.C. § 315(b) are not exempt from judicial review under § 314(d). Wi-Fi One, LLC v. Broadcom Corp., No. 2015-1944, slip op. at 21 (Fed. Cir. Jan. 8, 2018). Continue reading
In 2014, the Supreme Court issued its decision in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014), rejecting the Federal Circuit’s “insolubly ambiguous” standard for determining compliance with the definiteness requirement under 35 U.S.C. § 112. Criticizing that standard as leaving “courts and the patent bar at sea without a reliable compass,” the Supreme Court held that a patent is indefinite and invalid if the “patent’s claims, read in light of the specification and the prosecution history fail to inform with reasonable certainty those skilled in the art about the scope of the invention.” Nautilus, Inc., 134 S. Ct. at 2124, 2129-30. On November 20, 2017, the Federal Circuit issued a precedential decision on indefiniteness, adding to its growing jurisprudence applying the Supreme Court’s decision in Nautilus. Continue reading
Under 35 U.S.C. § 103, patentability of an invention is not to be negated by the manner in which the invention was made. This provision, according to past Federal Circuit decisions, “was enacted to ensure that routine experimentation does not necessarily preclude patentability.” Honeywell Int’l Inc. v. Mexichem Amanco Holdings S.A. DE C.V., 865 F.3d 1348, 1356 (Fed. Cir. 2017). Nevertheless, in certain cases, the Federal Circuit has considered routine experimentation or testing as a reason to invalidate a patent. On October 26, 2017, in Merck Sharp & Dohme Corp. v. Hospira, Inc., the Federal Circuit did so again. Continue reading
There are two types of direct infringement: (1) literal infringement; and (2) infringement under the doctrine of equivalents. The former asks whether a product or process meets all of the requirements of a claim, exactly. The latter is a long-standing judicial doctrine that focuses on whether a given requirement of the claim, though not literally met, is nevertheless equivalent to that requirement. Recognizing the potential for the doctrine of equivalents to subvert the public notice function of a patent’s claims, the federal courts have developed a number of legal defenses that constrain its application. Prosecution history estoppel, which generally prevents a patentee from recapturing through the doctrine of equivalents claim scope that it surrendered during prosecution for purposes of patentability (subject to certain exceptions), tends to be the most common. But there are others, and they can be equally important when addressing a doctrine-of-equivalents theory of direct infringement. The ensnarement defense is one of those other defenses, and it holds that a doctrine of equivalents theory cannot be asserted if it will encompass or “ensnare” the prior art.
On September 29, 2017, in Jang v. Boston Scientific Corp., the Federal Circuit issued a relatively rare precedential decision addressing the application of the ensnarement defense. Nos. 2016-1275, 2016-1575, slip op. at 14-23 (Fed. Cir. Sept. 29, 2017). Continue reading
For several years now, the Federal Circuit has seemingly struggled to articulate the proper role of objective evidence of non-obviousness, often referred to as secondary considerations, in obviousness determinations. In accordance with the Supreme Court’s decision in Graham v. John Deere Co., 383 U.S. 1 (1966), the Federal Circuit requires that legal determinations of obviousness be based on factual inquiries regarding: (1) the scope and content of the prior art; (2) differences between the prior art and the claims at issue; (3) the level of ordinary skill in the pertinent art; and (4) any objective indicia of non-obviousness, such as commercial success, long-felt but unsolved need, failure of others, industry praise, unexpected results, and copying. On one hand, the Federal Circuit has appeared to reject a formal burden-shifting framework under the Graham factors, directing courts to consider all evidence relevant to obviousness or non-obviousness, and to consider it collectively, before reaching a conclusion of obviousness. See, e.g., In re Cyclobenzprine, 676 F.3d 1063, 1077-78 (Fed. Cir. 2012). On the other hand, the Federal Circuit also has held that, in particular cases, a patent owner’s objective evidence failed to overcome a prima facie case of obviousness based on the first three factors. See, e.g., Cubist Pharm., Inc. v. Hospira, Inc., 805 F.3d 1112, 1130 (Fed. Cir. 2015).
On September 7, 2017, in Intercontinental Great Brands LLC v. Kellogg North America Co., a 2-1 panel decision of the Federal Circuit again endorsed the latter approach, affirming a district court’s summary judgment of obviousness. Nos. 2015-2082, 2015-2084, majority slip op. at 1, 14-19 (Fed. Cir. Sept. 7, 2017). Continue reading
When a patent claims an invention directed toward a combination of previously known elements, evidence that the combination produced unexpected results can often play a critical role in rebutting a challenge to the patent’s validity based on obviousness. On August 1, 2017, in Honeywell International Inc. v. Mexichem Amanco Holdings S.A. DE C.V., the Federal Circuit rejected a Patent Trial and Appeal Board obviousness determination that failed to properly consider such evidence in two merged inter partes reexaminations. No. 2016-1996, slip op. (Fed. Cir. Aug. 1, 2017). Continue reading