In its first decision addressing patent venue since the Supreme Court’s ruling in TC Heartland LLC, the Federal Circuit struck down the patent venue test established by Judge Gilstrap of the U.S. District Court for the Eastern District of Texas. The Federal Circuit concluded that the district court “misunderstood the scope and effect” of Federal Circuit precedent in determining that patent infringement defendant Cray Inc. has a “regular and established place of business” in the Eastern District of Texas under the patent venue statute 28 U.S.C. § 1400(b) and abused its discretion in refusing to transfer venue. In re Cray Inc., No. 2017-129 (Fed. Cir. Sept. 21, 2017). In doing so, the Federal Circuit provided highly-anticipated clarification of what constitutes a “regular and established place of business.” Continue reading
On August 25, 2017, a 2-1 Federal Circuit panel vacated and remanded the Patent Trial and Appeal Board’s affirmance of an examiner’s obviousness rejection of Stepan Company’s herbicide formulation patent claims, holding that the Board “failed to adequately articulate its reasoning, erroneously rejected relevant evidence of nonobviousness, and improperly shifted to Stepan the burden of proving patentability.” In re Stepan Co., No. 2016-1811, slip op. at 6 (Fed. Cir. Aug. 25, 2017). Continue reading
On July 27, 2017, a Federal Circuit panel affirmed 2-1 a district court’s determination that Regeneron Pharmaceuticals, Inc.’s patent on genetically modified mice is unenforceable due to inequitable conduct during prosecution of the patent. In Regeneron Pharmaceuticals, Inc. v. Merus N.V., the Federal Circuit upheld the district court’s unconventional approach to finding inequitable conduct, holding that the district court did not clearly err in finding the prior art Regeneron withheld from the Patent Office to be “but-for material” to patentability and did not abuse its discretion by drawing an adverse inference of specific intent to deceive the Patent Office as a sanction for Regeneron’s misconduct during litigation, and therefore, the district court did not abuse its discretion in holding the patent unenforceable due to inequitable conduct. No. 2016-1346 (Fed. Cir. July 27, 2017) (precedential).
During prosecution of Regeneron’s patent-in-suit, and only days before its allowance, a third-party submitted three relevant prior art references to the Patent Office during prosecution of another application related to the patent-in-suit. Regeneron’s in-house counsel admittedly knew of these references, as well as a fourth reference authored by a member of Regeneron’s scientific advisory board. Regeneron disclosed the references in other related Regeneron patent applications after the patent-in-suit was allowed but never disclosed them during prosecution of the patent-in-suit. Continue reading