In a move that could drastically change the patent law landscape, the United States Supreme Court recently granted certiorari in Oil States Energy Services LLC v. Greene’s Energy Group LLC, No. 16-712, to answer the question whether the inter partes review (IPR) process violates the U.S. Constitution by “extinguishing private property rights through a non-Article III forum without a jury.”

In 2001, Oil States Energy Services LLC (“Oil States”) was granted U.S. Patent No. 6,179,053 for a lockdown mechanism to ensure a mandrel is locked in an operative position during fracking.  Oil States sued Greene’s Energy Group LLC (“Greene’s Energy”) in the Eastern District of Texas in 2012 for infringing this patent, and in turn, Greene’s Energy petitioned the United States Patent and Trademark Office (USPTO) to institute an IPR on the patent.  This petition was granted. After the proceedings, the Patent Trial and Appeal Board (PTAB), the administrative body of the USPTO that handles IPRs, concluded the challenged patent claims were invalid.  Oil States appealed to the Federal Circuit, which affirmed the decision, and Oil States then petitioned the Supreme Court for certiorari.

Continue Reading Supreme Court to Decide the Constitutionality of Inter Partes Review

A flurry of activity from various courts this past week on “exceptional cases” under Section 285 of the Patent Act provided notable guidance for practitioners and patent owners, with a particular emphasis on the motivation and conduct of the litigants. We provide a short synopsis of these cases.

By way of context, in 2014, the Supreme Court in Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014), instructed courts to apply a totality of the circumstances test when evaluating whether a case is “exceptional” under 35 U.S.C. § 285. If a case is found to be exceptional within the meaning of the statute, monetary sanctions and fee-shifting may be imposed. This totality of the circumstances analysis was a substantial departure from the previous Federal Circuit tests, which were uniformly viewed as more rigid. Some of the factors the Supreme Court suggested district courts could consider included “frivolousness, motivation, objective unreasonableness (both in the factual and legal components of the case) and the need in particular circumstances to advance considerations of compensation and deterrence.” Our previous discussion of exceptional cases under Section 285 can be found here.

Continue Reading Pumping Up Exceptional Cases Under the Octane Fitness Standard

DC_SupremeCourtIn keeping with recent erosion of patent rights, patent owners’ power to control the post-sale use and sale of their patented products was severely limited this week by the U.S. Supreme Court in the highly anticipated case regarding the patent exhaustion doctrine, Lexmark Int’l, Inc. v. Impression Prods., Inc., No. 15-1189.

As we reported earlier here and here, the Federal Circuit previously provided patent owners with some power to control their patented products—even after an authorized sale.  Specifically, the Federal Circuit held, in an en banc decision, that a patent owner’s patent rights are not exhausted if a patented product is sold with a clearly communicated restriction and that an authorized foreign sale of a product does not exhaust the patent owner’s U.S. patent rights to exclude associated with that product.

Continue Reading Supreme Court Overrules and Rewrites 25 Years of Federal Circuit Law on Patent Exhaustion

shutterstock_69589705On May 10, 2017 and following a Patent Trial and Appeal Board (PTAB) reexamination decision upholding certain claims, the United States Court of Appeals for the Federal Circuit ruled in Cisco Systems, Inc. v. Cirrex Systems, LLC that all of the appealed claims of a fiber optic patent held by Cirrex are invalid for lack of a written description support required by 35 U.S.C. § 112.  The panel applied its own construction of a key claim term requiring that a recited functional limitation take place in a specific location which the specification failed to describe.

Continue Reading You Can Not Claim What you Don’t Possess – Federal Circuit Holds Fiber Optic Claims Invalid under Section 112

Last week the Federal Circuit in Helsinn Healthcare v. Teva Pharmaceuticals clarified the scope of the on-sale bar rule under the America Invents Act (AIA).  The on-sale bar in general means that a sale or an offer to sale of an invention more than one year prior to the effective filing date of a patent qualifies as prior art.  The Federal Circuit held that 35 U.S.C. § 102 as revised in the AIA does not change the long-settled rule that a sale can invalidate an invention even if the sale does not disclose the details of the invention.

Continue Reading Federal Circuit Clarifies the On-Sale Bar under AIA

The Federal Circuit has now reversed the Patent Trial and Appeal Board’s decision in Synopsys, Inc. v. ATopTech, Inc.  finding claims 1 and 32 of U.S. Patent No. 6,567,967 (the “‘967 patent”)  as being “not supported by substantial evidence.”

Synopsys sued ATopTech in 2013 for allegedly infringing the ‘967 patent. ATopTech subsequently filed two inter partes review (IPR) petitions (IPR2014-01150 and IPR2014-01159) challenging the validity of all claims of the ‘967 patent. The ‘967 patent aims to improve circuit performance by splitting large components into small subcomponents and optimizing the connections between subcomponents. Claim 1 requires “flattening each of said plurality of hierarchically arranged branches by eliminating superfluous levels of hierarchy above said atomic blocks.”  Claim 32 requires “determining optimal placement of each of the hard blocks, if any, within the predefined area.”  The Board found both claims either obviousness or anticipated in view of the Fields and/or Su references.

Continue Reading Federal Circuit Rejects Board’s Understanding of Prior Art

Pharmaceuticals_LabOn April 6, 2017, the Federal Circuit reversed-in-part and affirmed-in-part the district court’s judgment of infringement and summary judgment for non-infringement of The Medicines Company’s (“MedCo”) patents-in-suit.  See The Medicines Company v. Mylan, Inc., 2015-1113 (Fed. Cir. 2017).  The patents-in-suit were U.S. Patent Nos. 7,582,727 (“the ’727 Patent) and 7,598,343 (“the ’343 Patent”).  MedCo initiated a suit against Mylan, Inc. (“Mylan”) in response to Mylan submitting an Abbreviated New Drug Application (“ANDA”).  Through submitting an ANDA request, Mylan wished to obtain approval from the Food and Drug Administration (“FDA”) for a generic drug that would directly compete against MedCo’s ANGIOMAX® product.  To counter Mylan’s ANDA request, and keep their product exclusive, MedCo filed suit alleging that Mylan’s ANDA drug infringed claims in both the ’727 and ’343 Patents.

The district court held on summary judgment that Mylan’s drug did not satisfy the “efficient mixing” limitation of the ’343 Patent; however, following a 6-day bench trial found that Mylan’s drug did infringe the ’727 Patent because the asserted claims did not include an “efficient mixing” limitation.  Mylan argued on appeal that the district court erred by not including the “efficient mixing” limitation as part of the “batches” limitation in the ’727 Patent.

Continue Reading Federal Circuit Limits Claim to Single Embodiment Because Only Enabling Description Provided in the Patent

IP_SafeU.S. patent law elevates the importance of “the inventor” to an extent unseen in the rest of the world.  Unlike many other countries, ownership of patent applications in the United States initially vests in the inventors listed on the application.  This is true even where a contractual obligation for inventors to assign their ownership rights to others exists, such as the case in many employment or academic settings.  This post summarizes two cases where an incorrect determination of inventorship on a patent application resulted in negative consequences for patent owners and/or licensees of an issued patent.

Continue Reading The Importance of Getting Inventorship Right: A Cautionary Tale in Two Cases

Supreme-Court-seal II. jpgIn a widely anticipated move with implications for patent litigation across the country, the Supreme Court ruled today that the equitable defense of laches is not available to limit damages in patent infringement cases subject to the six-year damages limitation of 35 U.S.C. § 286.

In S.C.A. Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC, the Supreme Court extended to the patent context its reasoning in Petrella v. Metro-Goldwyn-Mayer, Inc. (2014) that laches cannot defeat a claim for copyright infringement damages brought within the rolling three-year limitations period prescribed by the Copyright Act.

Continue Reading Supreme Court Shuts the Door on Patent Laches

Over the course of the past year, there have been two notable decisions issued by the Federal Circuit and the International Trade Commission that impact the scope and nature of the remedies available for the infringement of standard-essential patents (SEPs), and as a result, continue to shape the incentives of technology innovators to contribute their patented inventions to standards-setting bodies.

On December 3, 2015, the Federal Circuit issued its much-awaited decision in Commonwealth Scientific and Industrial Research Organization (CSIRO) v. Cisco Systems, Inc., providing meaningful guidance on a number of open questions pertaining to the calculation of damages for the infringement of SEPs.  In Certain Industrial Control System Software, Systems Using Same, and Components Thereof, Inv. No. 337-TA-1020 (the 1020 Investigation), the Commission was asked to invoke the Early Disposition Pilot Program to direct the presiding Administrative Law Judge to determine whether the asserted patents are standard-essential and therefore subject to mandatory licensing obligations.

To read the additional details about these decisions and their impact, please click here.