In Sanofi v. Watson Laboratories et al., the Federal Circuit affirmed the United States District Court for the District of Delaware’s ruling that the defendants’ sale of their proposed generic drugs would induce infringement by physicians, as well as the district court’s rejection of the defendants’ obviousness arguments and finding of direct infringement by both defendants. Nos. 2016-2722, 2016-2726, slip op. at 3 (Fed. Cir. Nov. 9, 2017). The patents-in-suit related to a heart rhythm medication, sold as Multaq® by Sanofi. Id. at 2. Continue reading
The Federal Circuit issued another precedential decision adding to its line of cases delineating between patent-eligible and patent-ineligible improvements in computer-related technology. On November 1, 2017, the Federal Circuit issued a decision concluding that four patents related to a system for streaming audio/visual data over a communications system like the internet are directed to patent ineligible subject matter under 35 U.S.C. § 101.
In Two-Way Media Ltd. v. Comcast Cable Communications, LLC, the Federal Circuit affirmed the United States District Court for the District of Delaware’s ruling granting defendants’ motion for judgment on the pleadings under Federal Rule of Civil Procedure 12(c) based on patents being ineligible under § 101. Nos. 2016-2531, 2016-2532, slip op. at 7, 9 (Fed. Cir. Nov. 1, 2017). The patents-in-suit were entitled “Multicasting Method and Apparatus” and described a system to provide a way to transmit one packet of information to multiple recipients. Id. at 3. More specifically, “[t]he patents describe the invention as an improved scalable architecture for delivering real-time information.” Id. 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
The Federal Circuit has issued two additional precedential decisions to its line of cases delineating between patent-eligible and patent-ineligible improvements in computer-related technology. On October 16, 2017, the Federal Circuit issued a decision concluding that seven patents related to a system used to identify and track letters and packages are directed to patent ineligible subject matter under 35 U.S.C. § 101. Similarly, on October 18, 2017, the Federal Circuit issued another decision finding four patents directed to mass transit fare payment technology unpatentable under section 101. Continue reading
On October 4, 2017, in Aqua Products, Inc. v. Matal, No. 2015-1177 (Fed. Cir. Oct. 4, 2017) (en banc), a divided en banc court for the Federal Circuit issued a significant ruling that has the potential to make it far easier, and more common, for patent owners to amend their claims during inter partes review (“IPR”) proceedings. Specifically, the Federal Circuit held that the PTAB may not place on the patentee the burden of persuasion of proving patentability of amended claims submitted in an IPR, absent a USPTO rule directed to the issue. 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
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