Allen Sokal

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Federal Circuit Splits on Approach to Analyzing Graham Factors

Photo of David FarsiouBy Wade Haaland, Allen Sokal and David Farsiou on Posted in Patent
In Merck Sharp & Dohme Corp. v. Hospira, Inc.,[1] the Federal Circuit affirmed the lower court’s ruling that the asserted claims of Merck’s U.S. Patent No. 6,486,150 (the ’150 patent) were obvious despite evidence of commercial success and copying by others. Concerned that the majority’s opinion constituted a shortcut around a proper Graham analysis, Judge … Continue Reading

The Federal Circuit Provides a Tutorial on Patent Venue

By Allen Sokal on Posted in Patent
The Federal Circuit in In re Cray, Inc., Appeal No. 2017-129 (Fed. Cir. Sept. 21, 2017), has provided extensive guidance to district courts on the meaning of an alleged infringer’s “regular and established place of business” under the second prong of the patent venue statute, 28 U.S.C. § 1400(b). It granted a petition for a writ … Continue Reading

Federal Circuit Suggests Solution to Patent Owner’s Dilemma When Applicant for Biosimilar Product Refuses Discovery

By Allen Sokal on Posted in Uncategorized
In Amgen, Inc. v. Hospira, Inc., Appeal No. 2016-2179 (Fed. Cir. Aug. 10, 2017), the Federal Circuit suggested what an owner of a reference product suing an applicant for a biosimilar under the Biologics Price Competition and Innovation Act of 2009 (BPCIA) must do when the applicant refuses discovery that the patent owner needs to … Continue Reading

The Federal Circuit Reverses a Hindsight Reconstruction of An Important Pharmaceutical Invention

Photo of Stephanie Lodise, Ph.D.Photo of Laura GordonBy Allen Sokal, Stephanie Lodise, Ph.D. and Laura Gordon on Posted in Patent
In Millennium Pharmaceuticals v. Sandoz,[1] the Federal Circuit reversed the district court’s holding of obviousness of certain claims of Millennium-owned U.S. Patent No. 6,713,446 (the ‘446 patent), finding that the district court improperly applied the lead compound analysis and the inherency doctrine and clearly erred by rejecting objective indicia of non-obviousness. The disputed claims of … Continue Reading

The Federal Circuit Invalidates a Patent for Failure to Describe the Accused Product

By Allen Sokal on Posted in Patent
In Rivera v. International Trade Commission, Appeal No. 2016-1841 (Fed. Cir. May 23, 2017), the Federal Circuit affirmed the ITC’s decision invalidating Rivera’s patent under the written description requirement of 35 U.S.C. § 112. The opinion provides important lessons for those who draft and prosecute patent applications and also those who attempt to enforce them. Indeed, … Continue Reading

The Supreme Court, Reversing the Federal Circuit, Holds that “Residence” in the Patent Venue Statute Refers to Only a Domestic Corporation’s State of Incorporation

By Allen Sokal on Posted in Patent
In a brief, well-reasoned opinion, a unanimous eight-member Supreme Court held that 28 U.S.C. § 1400(b) is a stand-alone provision governing venue in patent infringement suits, unaffected by the broad definition of “residence” in the general venue statute, 28 U.S.C. § 1391.Rather, a domestic corporation “resides” in only its state of incorporation. TC Heartland LLC v. Kraft … Continue Reading

In Case of First Impression, Federal Circuit Rules that a Patent Owner’s Statements in an IPR Proceeding Can Create Prosecution Disclaimer

By Allen Sokal on Posted in Patent
  In Aylus Networks, Inc. v. Apple Inc., Appeal No. 2016-1599 (Fed. Cir. May 11, 2017), the Federal Circuit ruled that a patent owner’s statements during an inter partes review (IPR), even if before an institution decision, can create prosecution disclaimer. After the patent owner filed suit, the defendant filed two petitions for IPR. In … Continue Reading

Federal Circuit Remands Novel Issue on Patent Marking Requirement

By Suzanne Alton de Eraso and Allen Sokal on Posted in Patent
On April 17, 2017, the United States Court of Appeals for the Federal Circuit vacated an award of more than $15 million in damages because a plaintiff’s licensee failed to mark patented articles. Rembrandt Wireless Technologies, LP v. Samsung Electronics Co., No. 2016-1729 (Fed. Cir. Apr. 17, 2017). The decision underscores the importance of not … Continue Reading

Federal Circuit Appears to Narrow the Exceptions to 35 U.S.C. § 101

By Allen Sokal on Posted in Patent
Unquestionably, the narrower a patent’s claims, the more likely they are to pass muster under 35 U.S.C. § 101. But if you have an invention with broad applicability, how broadly can you claim it without running into eligibility problems? The answer, both literally and figuratively: the sky’s the limit. In Thales Visionix Inc. v. United States, … Continue Reading

The Federal Circuit Considers a New Issue on Appeal, Lectures the PTO on its Burden to Establish Obviousness, and Reveals an Internal Split on What to do When the PTO Fails to Carry That Burden

By Allen Sokal on Posted in Patent
The Federal Circuit in Icon Health & Fitness, Inc. v. Strava, Inc., Appeal No. 2016-1475 (Feb. 27, 2017), made several interesting points and revealed a disagreement among four of its judges about the proper disposition when the PTO fails to carry its burden in “examination appeals.” More specifically, the court explained when an appellant might … Continue Reading

Licensees Stymied by Sovereign Immunity Both in Federal Court and at PTAB

By Allen Sokal on Posted in Patent
  Licensees Covidien LP, Medtronic PLC, and Medtronic, Inc., failed to obtain any relief, at least so far, in federal court or at the Patent Trial and Appeal Board (PTAB) because of parallel holdings that patent owner University of Florida Research Foundation, Inc. (UFRF), is entitled to Eleventh Amendment immunity. University of Florida Research Foundation, … Continue Reading

Federal Circuit Provides Guidance on Divided Infringement, Inducement of Infringement, and Indefiniteness

By Allen Sokal on Posted in Patent
Patent owners will applaud the Federal Circuit’s latest pronouncement on divided infringement, inducement of infringement, and claim definiteness under 35 U.S.C. § 112. Eli Lilly & Co. v. Teva Parenteral Medicines, Inc., Appeal No. 2015-2067 (Fed. Cir. Jan. 12, 2017). On all three issues, the opinion, authored by Chief Judge Prost and joined by Circuit Judges … Continue Reading

Biotech Patent Dispute Between Academics That Is Far From Academic

By Allen Sokal on Posted in Patent
On December 6, 2016, the parties to the complex and soon-to-be departed world of patent interferences orally argued their positions on motions in what has been described as the “biotech trial of the century” and as “the biggest biotech patent case in memory.”[1] The parties’ oral arguments mirrored their motions, the most important of which … Continue Reading

Federal Circuit Panel Splits in Important Decision Regarding Its Jurisdiction over Institution of IPRs

By Allen Sokal on Posted in Patent
In Husky Injection Molding Systems Ltd. v. Athena Automation Ltd., Appeal Nos. 2015-1726, 1727 (Sept. 23, 2016), the panel majority, consisting of Judges Lourie (the opinion’s author) and Stoll, differed sharply with dissenting Judge Plager over the court’s jurisdiction to review the PTAB’s institution of an inter partes review. This decision could have broad implications. … Continue Reading

A Split Panel of the Federal Circuit Debates the Standards for Definiteness

By Allen Sokal on Posted in Federal Circuit, Patent
In Cox Communications, Inc. v. Sprint Communications Co. LP, Appeal No. 2016-1013 (Fed. Cir. Sept. 23, 2016), the panel, consisting of Chief Judge Prost (authoring the opinion) and Judges Newman and Bryson, unanimously reversed the district court’s summary judgment of invalidity for indefiniteness under 35 U.S.C. § 112, para. 2. But Judge Newman vigorously rejected the … Continue Reading

Federal Circuit Holds PTAB Unreasonable in Denying Motion to Amend

By Allen Sokal on Posted in Federal Circuit
In Veritas Technologies LLC v. Veeam Software Corp., Appeal No. 2015-1894 (Fed. Cir. Aug. 30, 2016), the Federal Circuit affirmed the PTAB’s conclusion of obviousness but vacated its denial of a conditional motion to amend and remanded for the PTAB to address the patentability of the substitute claims. The patent owner, Veritas, argued for a … Continue Reading

Federal Circuit Provides Additional Guidance in Reversing Holding of Patent-Ineligibility of Biotech Invention

By Allen Sokal on Posted in Patent
Although it is not yet a bright line, the Federal Circuit has considerably decreased the fuzziness of the distinction between patent-eligible and patent-ineligible inventions, at least where the exception to 35 U.S.C. § 101 is a law of nature. In Rapid Litigation Management Ltd. v. Cellzdirect, Inc., Appeal No. 2015-1570 (Fed. Cir. July 5, 2016), the … Continue Reading

Court Decides that ANDA Approved Before Patent Issued Cannot Infringe 35 U.S.C. § 271(e)(2)(A)

By Allen Sokal on Posted in Patent
Although the Hatch-Waxman Act was passed by Congress decades ago, it still produces new questions. Despite vigorous argument by the patent owner, a district court dismissed a count alleging that the ANDA-filer infringed under 35 U.S.C. § 271(e)(2)(A), leaving in place the unchallenged count for infringement under § 271(a). Ferring B.V. v. Actavis, Inc., Civil Action No. … Continue Reading

Supreme Court to Consider Patent Laches in Wake of Copyright Laches Decision

By Allen Sokal and Joshua Branson on Posted in Patent
When we last discussed patent laches here, the Federal Circuit had voted to rehear, en banc, SCA Hygiene Products’ patent infringement claim, which invoked a laches defense. At that time, the Supreme Court had recently decided in Petrella v. Metro-Goldwyn-Mayer, Inc.[1] that laches was not a defense to a copyright infringement claim brought within the … Continue Reading

Federal Circuit Denies Rehearing on Whether Section 337 Includes Digital Imports

By Allen Sokal on Posted in Copyright, Patent
The Federal Circuit debate begun in Suprema, Inc. v. International Trade Commission, 796 F.3d 1338 (Fed. Cir. 2015) (en banc), continued with the court’s denial of rehearing en banc in ClearCorrect Operating, LLC v. International Trade Commission, No. 2014-1527(Fed. Cir. Mar. 31, 2016) (Prost, C.J., concurring, and Newman, J., dissenting). In Suprema, the en banc … Continue Reading
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