EcoServices asserted two patents against Certified Aviation related to aircraft engine washing services. The jury found that Certified Aviation willfully infringed and awarded $1,949,600 in reasonable royalty damages. The Court ordered the parties to negotiate a post-trial royalty, and they agreed to $400 per wash.
For many practitioners, it seems that change is the only certainty at the Patent Trial and Appeal Board. And only five months into the year, change in 2019 has become more certain than ever.
Late last year, the PTAB revamped its standard operating procedures in a document known as Revised SOP2. With these revisions, the PTAB created the “Precedential Opinion Panel” or “POP.” The POP is tasked, in part, with rehearing matters of “exceptional importance” in pending trials and appeals. By default, the POP members consist of the Director, the Commissioner for Patents, and the Chief Judge of the PTAB.
BTG INTERNATIONAL LIMITED v. AMNEAL PHARMACEUTICALS LLC
Before Wallach, Moore, and Chen. Consolidated appeals from the Patent Trial and Appeal Board and the U.S. District Court for the District of New Jersey.
Summary: The PTAB correctly construed the claim term “treatment,” based on the challenged patent’s specification, to include both anti-cancer effects and reduction in side effects.
Nuvo Pharmaceuticals v. Dr. Reddy’s Laboratories, Inc.
Before Prost, Clevenger, and Wallach. Appeal from the U.S. District Court for the District of New Jersey.
Summary: Written description is not satisfied when the claimed drug is understood to be ineffective by a person skilled in the art and the description includes only making and using the drug.
AVX CORPORATION V. PRESIDIO COMPONENTS, INC.
Before Newman, O’Malley, and Taranto. Appeal from the Patent and Trial Appeal Board.
Summary: Appellants from an IPR decision to the Federal Circuit must have concrete claims of current or non-speculative interest in practicing the claims under the patent at issue in order to have standing to appeal.
NOVARTIS PHAMACEUTICALS CORP V. WEST-WARD PHARMACEUTICALS
Before Stoll, Plager, and Clevenger. Appeal from the United States District Court for the District of Delaware.
Summary: When a method of using a prior art compound is claimed rather than the compound itself, the standard for motivation to combine is whether a person of skill in the art would have been motivated to modify the prior art disclosing the compound. A limited pharmaceutical study may not be enough to show that a person of ordinary skill in the art would have a reasonable expectation of success.
BRADIUM TECHNOLOGIES LLC V. ANDREI IANCU
Before Moore, Reyna, and Chen. Appeal from the Patent Trial and Appeal Board.
Summary: A clear and unambiguous definition of a claim term is required to redefine the term to mean something other than its plain and ordinary meaning.
Finisar alleged that Kaiam’s optoelectronic transceivers infringed 13 of Finisar’s patents. Optoelectronic transceivers provide electrical-to-optical conversion, and vice versa, used to communicate over fiber optic cables. The asserted patents claim digital diagnostics technology that monitors the transceivers in real time.
Summary: The General Plastic factors used to determine whether the PTAB will exercise its discretion to deny a follow-on IPR petition can weigh against institution even if the follow-on petition is filed by a different party.
The PTAB recently designated another decision as precedential: Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019-00062, -00063, -00084, Paper 11 (PTAB Apr. 2, 2019). Valve Corp. filed a petition for IPR challenging the ’934 patent and patent owner, Electronic Scripting Products (ESR), argued the PTAB should exercise its discretion under 35 U.S.C. § 314(a) to deny the follow-on petition. Before Valve filed its petition, ESR sued both Valve and HTC in the district court for infringement of the ’934 patent. Valve was voluntarily dismissed from the case, while HTC remained and filed an IPR petition challenging the ’934 patent. The PTAB denied institution of the HTC petition. After this denial, Valve filed the petition at issue in this decision.
Before Dyk, Mayer, and Clevenger. Appeal from the International Trade Commission.
Summary: Trademark decisions of the International Trade Commission, like the Commission’s patent decisions, do not have preclusive effect.
