HOSPIRA, INC. V. FRESENIUS KABI USA, LLC

Before Lourie, Dyk, and Moore. Appeal from the U.S. District Court for the Northern District of Illinois.

Summary: Evidence of the properties of claimed embodiments may be proper evidence of inherency, even when the evidence itself is not prior art.

Amgen, Inc. v. Amneal Pharmas. LLC et al

Before Newman, Lourie, and Taranto. Appeal from the U.S. District Court for the District of Delaware.

Summary: An examiner amendment may give rise to prosecution history estoppel, even when the examiner suggests the amendment in the absence of a pending office action.

On December 11, 2019, the PTAB designated two additional decisions as “informative.” Such informative decisions are not binding on subsequent panels, but are meant to provide guidance on recurring issues encountered by PTAB panels in post-grant proceedings. Here, both of the newly designated decisions—one a Decision on Institution and the other a Final Written Decision—provide guidance to petitioners on their obligation to set forth in the petition a well-developed rationale for combining prior art references as part of an obviousness combination.

Persion Pharmaceuticals LLC (“Persion”) sued Alvogen Malta Operations Ltd. for infringement of patents directed to treating pain with an extended-release hydrocodone-only formulation in a patient with hepatic impairment (i.e., compromised liver functionality).

Intellectual Ventures (“IV”) sued Trend Micro for patent infringement.

SYNGENTA CROP PROTECTION, LLC v. WILLOWOOD, LLC

Before Reyna, Taranto, and Stoll. Appeal from the U.S. District Court for the Middle District of North Carolina.

Summary: Infringement under § 271(g) does not require a single entity to perform, direct, or control all of the steps of a patented process for infringement liability to arise from importation into the United States, or offer to sell, sale, or use within the United States of a product made by a process patented in the United States.

THE CHAMBERLAIN GROUP, INC. v. ONE WORLD TECHNOLOGIES, INC.

Before Dyk, Reyna, and Hughes. Appeal from the Patent Trial and Appeal Board.

Summary: New arguments may be raised during PTAB oral hearings so long as they clarify an earlier position, are responsive to arguments presented in the opponent’s reply, and do not raise entirely new issues or evidence.

FOX FACTORY, INC. v. SRAM, LLC
Before Prost, Wallach, and Hughes. Appeal from the Patent Trial and Appeal Board (PTAB).

Summary: When a commercial product contains unclaimed features, a presumption of nexus between the claims and secondary consideration evidence can be assumed only if unclaimed features of the commercial product do not materially impact the functionality of the product.

AMGEN INC. v. HOSPIRA, INC.

Before Moore, Bryson, and Chen. Appeal from the United States District Court for the District of Delaware.

Summary: Biological engineering activity that would otherwise constitute patent infringement is protected under a safe harbor, if the activity is solely for uses reasonably related to submitting information to the FDA. Where the patent covers a method of manufacture, the relevant safe harbor inquiry is whether the act of manufacture is solely for submitting information to the FDA. The relevant inquiry is not whether the products of the manufacture are for uses related to submitting information to the FDA.

BLACKBIRD TECH LLC v. HEALTH IN MOTION LLC

Before Wallach, Prost, and Hughes. Appeal from U.S. District Court for the Central District of California.

Summary: The Federal Circuit affirmed a finding that a frivolous patent case was exceptional and an award of more than $360,000 in attorney fees after Plaintiff persisted with the case for nineteen months and then dismissed the case with prejudice before trial.