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The Federal Circuit Deals Another Blow to Diagnostic Method Patents

In another setback for diagnostic method patents, the Federal Circuit rejected efforts by patent owner/appellant Cleveland Clinic[1] to avoid 35 U.S.C. § 101 by restyling diagnostic method claims as “techniques” for detecting a correlation between protein levels and a disease state. Cleveland Clinic Found. v. True Health Diagnostics LLC, No. 2018-1218, 2019 WL 1452697, at … Continue Reading

Federal Circuit Holds That Claims Directed to Methods of Treating Pain in a Renally Impaired Patient Are Patent-Eligible Under Section 101

For the second time in as many weeks, the Federal Circuit has reversed a district court’s finding of patent ineligibility under Section 101 in the life science space, this time concluding that claims directed to methods of treating pain in renally impaired patients are patent-eligible. In Endo Pharmaceuticals Inc. v. Teva Pharmaceuticals USA, Inc., the … Continue Reading

The Federal Circuit Opens the Door Wider for the Subject Matter Eligibility of Methods of Treatment, Compositions and Methods of Manufacturing

“We live in a natural world, and all inventions are constrained by the laws of nature . . . we must be careful not to overly abstract claims when performing the Alice analysis.”[1] These are the promising words from the Federal Circuit in its recent decision in Natural Alternatives v. Creative Compounds, in which the … Continue Reading

Federal Circuit holds that claims directed to diagnosing neurotransmission or developmental disorders are invalid for failing to recite patent eligible subject matter

In Athena Diagnostics, Inc. v. Mayo Collaborative Servs., LLC,[1] the Federal Circuit affirmed the district court’s ruling that claims covering methods for diagnosing neurological disorders by detecting autoantibodies are directed to a natural law together with conventional steps, and are therefore invalid under 35 U.S.C. § 101. Although the claims at issue were said to … Continue Reading

PTAB Denies Institution Despite Petitioner Demonstrating Reasonable Likelihood of Prevailing With Respect to at Least One Claim

In SAS Institute v. Iancu, 138 S. Ct. 1348, 1351 (2018), the Supreme Court held that when the Patent Trial and Appeal Board (the Board) institutes an inter partes review, it must decide the patentability of all the claims the petitioner challenged.  The Court found that 35 U.S.C. §314(a)’s requirement that the Board find “a … Continue Reading

Additional Discovery of Clinical Trial Data in Inter Partes Review

In Apotex, Inc. et al. v. Novartis AG (IPR 2017-00854, paper 47 dated Feb. 5, 2018), petitioner Apotex sought, and was granted, discovery of a Phase III clinical trial protocol from patent owner Novartis. The patent at issue in the IPR, U.S. 9,187,405, claims a method for treating relapses in relapsing-remitting multiple sclerosis by orally … Continue Reading

Finjan v. Blue Coat Systems: Attaching Security Profile to a Downloadable Is Patent Eligible

In Finjan v. Blue Coat Systems, the Court of Appeals for the Federal Circuit rendered a decision containing interesting rulings on patentable subject matter (affirming the District Court determination that certain claims were patent eligible) and reasonable royalty damages (vacating part of a jury verdict for failure to adequately apportion the royalty base). This article … Continue Reading

Strategic Use of a Reissue Application in the Context of an Inter Partes Review (IPR) Proceeding

In Legend3D, Inc. (Petitioner) v. Prime Focus Creative Services Canada Inc. (Patent Owner), Case IPR2016-00806, the Patent Trial and Appeal Board (Board) lifted a stay of a pending reissue application following a Final Written Decision, thereby allowing the Patent Owner another opportunity to pursue amended claims. Although the Federal Circuit recently determined that the PTAB … Continue Reading

Federal Circuit Provides Guidance on Joint Infringement Standard

In Travel Sentry, Inc. v. Tropp, Appeal No. 16-2386 (Fed. Cir. Dec. 19, 2017),[1] the Federal Circuit clarified the scope of joint infringement under 35 U.S.C. § 271(a).[2] Specifically, the court provided guidance on performing analysis under Akamai’s two-pronged joint infringement test, which states that joint infringement may arise when an alleged infringer (1) conditions … Continue Reading

Federal Circuit Splits on Approach to Analyzing Graham Factors

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

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

Intellectual Ventures v. Motorola: Use = Benefit for the Purposes of System Claims Infringement

On Sept. 13, 2017, the United States District Court for the Federal Circuit clarified the meaning of the term “use” as it applies to system claims in patent infringement actions. In doing so, the court held that an infringer must benefit from all elements of a system claim in order to infringe, reversing and remanding … Continue Reading

Federal Circuit’s Concern Regarding PTAB ‘Panel-Stacking’ – Back To The Future?

In Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 2017 U.S. App. LEXIS 15923, Circuit Judge Dyk, in a concurring opinion joined by Circuit Judge Wallace, questioned “whether the practice of expanding panels where the PTO is dissatisfied with a panel’s earlier decision is the appropriate mechanism of achieving the PTO’s desire for uniformity.” … Continue Reading

Visual Memory v. NVIDIA: The Importance of a Robust Written Description

Introduction In Visual Memory v. NVIDIA (Fed. Cir. 2017), the Federal Circuit reversed the district court’s holding that Visual Memory’s U.S. Patent No. 5,953,740 is drawn to patent-ineligible subject matter. Instead, the court ruled that the ’740 patent claims an improvement to computer memory systems and is not directed to an abstract idea. The ’740 Patent … Continue Reading

USPTO Report on Patent Eligible Subject Matter

  On July 25, the USPTO published a new report titled “Patent Eligible Subject Matter: Report on Views and Recommendations From the Public.” The report attempts to synthesize public comments on the appropriate boundaries of patent eligible subject matter. The report includes a section reviewing the historical development of patent subject matter eligibility in the … Continue Reading

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

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

“All Expenses Paid” Is No Trip to the E.D. Va. for Patent and Trademark Applicants

Authored by: Kristie Butler, Summer Associate On June 23, 2017, the Federal Circuit confirmed in Nantkwest, Inc. v. Matal (No. 2016-1794) that patent applicants facing rejection from the Patent Trial and Appeal Board (PTAB) may seek relief in the Eastern District of Virginia under 35 U.S.C. §145, but ruled that these litigants must pay the … Continue Reading

PTAB Grants Discovery to Underlying Test Data

Discovery in inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB) is typically quite limited, and the PTAB normally is reluctant to grant motions for additional discovery. It is instructive, therefore, when the PTAB does so. In a recent order in Mylan Pharmaceuticals Inc. v. Allegan, Inc., IPR2016-01127, Paper 28 (PTAB … Continue Reading

Equivalence in Chemical Cases

In Mylan Institutional LLC et al. v. Aurobindo Pharma Ltd. et al., 2017-1645 (May 19, 2017), the Federal Circuit attempted to clarify the application of the doctrine of equivalents in chemical cases. Although affirming a district court grant of a preliminary injunction on a patent directed to isosulfan blue (ISB), a dye used for lymph … Continue Reading

Impression Products, Inc. v. Lexmark International, Inc. – Setting the Common Law’s Limits on the Rights of Patent and Copyright Owners

  Last week, in Impression Products, Inc. v. Lexmark International, Inc., Case No. 15-1189 (May 30, 2017), the Supreme Court ruled that under the “exhaustion doctrine,” patent owners cannot use patent law to impose restrictions on the downstream sales or transfers of lawfully purchased patented goods. The decision took many patent practitioners by surprise. Not … Continue Reading
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