CONTOUR IP HOLDING LLC v. GOPRO, INC.
Before Reyna, Prost, and Schall. Appeal from the United States District Court for the Northern District of California.
Summary: Claims are patent-eligible under 35 U.S.C. § 101 where the written description discloses improving technology through specific technological means and the claims reflect that improvement.

BROADBAND ITV, INC. v. AMAZON.COM, INC.
Before Dyk, Reyna, and Stark. Appeal from the United States District Court for the Western District of Texas.
Summary: When assessing patent eligibility under 35 U.S.C. § 101, combining two abstract ideas does not make either less abstract, and conventionality can be analyzed at both steps of the Alice test.

OSSEO IMAGING, LLC v. PLANMECA USA INC.
Before Dyk, Clevenger, and Stoll. Appeal from the United States District Court for the District of Delaware.
Summary: An expert witness can testify from the perspective of a POSITA at the time of the invention even if they did not qualify as a POSITA until later.

Today Representatives Kevin Kiley (R-CA) and Scott Peters (D-CA) introduced the Patent Eligibility Restoration Act (PERA), bipartisan legislation mirroring a proposed law introduced last year by Senators Thom Tillis (R-NC) and Chris Coons (D-DE). The proposed law seeks to restore patent eligibility to inventions across many fields and affirms the basic principle that the patent system is central to promoting technology-based innovation.

On August 19, 2024, the Association for Molecular Pathology (AMP) sued the FDA to challenge a new rule that allows the FDA to regulate laboratory developed tests (LDTs). The rule, which became effective on July 5, 2024, explicitly categorizes in vitro LDTs intended for clinical use as medical devices, placing such LDTs within the purview of the FDA. The complaint was filed in the Southern District of Texas. AMP’s suit follows another suit filed by a trade association, the American Clinical Laboratory Association, targeting the same rule.

The U.S. Advanced Research Projects Agency for Health (ARPA-H) announced new funding for a “program to help AI-enabled medical tools maintain peak performance.” The new funding is through the Performance and Reliability Evaluation for Continuous Modifications and Usability of Artificial Intelligence (PRECISE-AI) program.

Medical device companies are often well versed in prosecuting multiple patents within a single “family.” Indeed, such families are often of significant value to early stage (and later stage) medical device companies. But a Federal Circuit decision from last year raised the possibility that the continued prosecution of patents within a family could invalidate those early, valuable patents. In a clarifying decision, the Federal Circuit recently explained that “a first-filed, first-issued, later-expiring claim (e.g., in a Parent Patent) cannot be invalidated (under the doctrine of obviousness-type double patenting – “ODP”) by a later-filed, later-issued, earlier-expiring reference claim (e.g., in a child patent) having a common priority date.” This may sound complicated, but it can be good news for patent owners who own a family of patents because it is now less likely that a later prosecution will invalidate an earlier issued patent.

Judge Andrews of the District of Delaware recently denied Novartis’s request for a preliminary injunction against MSN Pharmaceuticals. Novartis Pharm. Corp. v. MSN Pharm. Inc., Civil Action No. 20-md-2930-RGA, Dkt. No. 1456 (D. Del. Aug. 12, 2024). Novartis had requested a preliminary injunction to block MSN Pharmaceuticals from launching a generic version of Novartis’s top-selling oral heart failure drug Entresto®.

On July 10, the Senate unanimously passed the Affordable Prescriptions for Patients Act of 2023 (S.150), which seeks to increase competition and lower drug prices by imposing limits on patent litigation related to biological products. The bill attempts to target “patent thickets” or the large patent portfolios companies create with significantly overlapping patent rights seen by lawmakers as obstacles to competitors entering the market.

On August 13, 2024, the Federal Circuit issued its decision in Allergan USA, Inc. v. MSN Laboratories Private Ltd., No. 24-1061, which limits the scope of obviousness-type double patenting for patents in the same family. The Federal Circuit held that a first-filed, first-issued, later-expiring patent claim cannot be invalidated for obvious-type double patenting based on a later-filed, later-issued, earlier-expiring child patent when the patents share a common priority date.