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.
Recently, the PTO issued a Notice providing guidance on how the Board treats reissue and reexamination proceedings while an AIA trial on the same patent is co-pending. The guidance comes in response to public comments and questions seeking to understand the interplay, particularly with respect to claim amendments, between the PTO’s long-established reissue and reexamination proceedings, and the PTO’s relatively new AIA trials (inter partes review, post-grant review, and cover business methods). Questions concerning a patent owner’s potential use of reissue or reexamination as an alternative route to amending claims in an AIA trial are not surprising given the PTO’s low rate of granting Motions to Amend in AIA trials, on the order of just10% through the end of fiscal year 2018. Even though the Notice is “only meant to summarize existing practice,” several important lessons can be drawn from it.
A Delaware jury awarded automated milkshake maker, f’real Foods, approximately $3.2 million in damages based on Hamilton Beach’s and Hershey Creamery’s infringement of patents related to milkshake blending machines.
A Delaware jury awarded Hologic $4.2 million in lost profit patent damages and more than half a million dollars in reasonable royalty patent damages, based on Minerva Surgical’s infringement of patents related to detecting uterine perforations during uterine ablation.
On April 1, 2019, the Federal Circuit issued a non-precedential decision in Cleveland Clinic Foundation, Cleveland HeartLab, Inc. v. True Health Diagnostics LLC (“Cleveland Clinic II”), affirming the district court’s holding that claim 1 of U.S. Patent No. 9,575,065 (the “ ’065 patent”) and claims 1 and 2 of U.S. Patent No. 9,581,597 (the “’597 patent”) were invalid under 35 U.S.C. § 101 as being directed to a patent-ineligible law of nature. In its decision, the Federal Circuit held that the courts are not bound by United States Patent and Trademark Office (USPTO) guidance, and concluded that a portion of the USPTO’s guidance on subject matter eligibility was inconsistent with controlling judicial precedent.
ENDO PHARM, INC., v. ACTAVIS LLC
Before Wallach, Clevenger, and Stoll. Appeal from the United States District Court for the District of Delaware.
Summary: Regulatory guidelines addressing drug product impurities may serve as a market force in motivating a PHOSITA to modify prior art references. However, if the guidelines lack a solution overcoming the impurity issues, they cannot provide a PHOSITA with a reasonable expectation of success to achieve the claimed purity levels.
