Posts in Courts

Life Sciences Patents After American Axle — Grave Danger or Temporary Uncertainty?

The Federal Circuit’s denial of en banc rehearing and the Supreme Court’s denial of certiorari review mean the decision in American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, 967 F.3d 1285 (Fed. Cir. 2020), is the latest word on subject-matter eligibility under 35 U.S.C. § 101. In American Axle, the Federal Circuit applied the Supreme Court’s two-part Alice/Mayo test to hold a method for manufacturing driveline propeller shafts with liners designed to attenuate vibrations invalid as directed to a use of a natural law. The Federal Circuit characterized the claims as simply “[c]laiming a result” without “limiting the claim to particular methods of achieving the result. . . .”  Id. at 1295. The method claims were directed to nonpatentable subject matter because, even though neither the claims nor the specification explicitly referenced a natural law, the method steps required the application of a natural law, “and nothing more.”  Id. at 1297. Although the panel in American Axle stressed its decision was consistent with Supreme Court and Federal Circuit precedent, see 967 F.3d 1295, 1296 (“Our cases as well have consistently rejected such claims as unpatentable.”), its rationale, literally applied, jeopardizes broad categories of patent claims that have traditionally been considered patent-eligible subject matter.

Unsealed Court Documents Reveal Scale of Counterfeit Gilead HIV Drugs Scam

The U.S. District Court for the Eastern District of New York unsealed multiple documents last week that named the kingpins behind an alleged counterfeit HIV medication conspiracy. An unsealed amended complaint filed in late September names the two alleged kingpins as Lazaro Roberto Hernandez and Armando Herrera, both of Florida. The two “kingpin defendants” are accused of being “at the head of the conspiracy” and “career criminals who organized the conspiracy and controlled the flow of the counterfeits, all while operating from the shadows and using extensive measures to conceal their identities.” Hernandez was identified by basic geolocation data associated with burner phones used to communicate details about the conspiracy.

Patent Filings Roundup: Beer Bong Companies Clash; Crypto Company Sues Coinbase; Campaigns Spiral in Otherwise Quiet Week

District court and Patent Trial and Appeal Board (PTAB) filings were both down substantially this week, with 57 and 15, respectively, and 91 district court terminations. The drop-off of patent filings in the Western District of Texas has perhaps not been as pronounced as might be expected, though obviously most of those cases are being assigned to other judges there, or continuations of defendants being added to suits already within the Waco court’s jurisdiction. The Traxcell campaign continued to spiral, with many new defendants added; ditto the Hilco capital-led Bell Semiconductor case, which added an even more diverse list of defendants to the already-long roster. Otherwise most suits this week, with the exception of a few highlighted below, are related to earlier-filed suits.

CAFC Affirms Merck’s Win at PTAB over Mylan Challenge to Diabetes Treatment Claims

In its third precedential patent opinion this week, the U.S. Court of Appeals for the Federal Circuit (CAFC) earlier today upheld a Patent Trial and Appeal Board (PTAB) decision finding that Mylan Pharmaceuticals, Inc. failed to show that certain claims of Merck Sharp & Dohme Corp.’s patent for a Type 2 Diabetes treatment were anticipated or would have been obvious over the cited prior art. Judge Lourie authored the opinion.

Hip-Hop Producer’s SCOTUS Petition Argues Ninth Circuit was Improperly Indifferent to ‘Unique, Paramount Issue’ of Subject Matter Jurisdiction

This week, the U.S. Supreme Court docketed a petition for certiorari filed on September 17 by hip-hop producer Gary Frisby, who performs under the name G-Money, asking the Court to revive his musical composition copyright case that alleged infringement of Frisby’s 2013 beat track “Shawty So Cold.” Frisby’s appeal challenges the U.S. Court of Appeals for the Ninth Circuit’s ruling that the appellate court lacked subject matter jurisdiction over Frisby’s appeal from U.S. district court because he failed to file a notice of appeal, despite the fact that the court failed to inform Frisby that the ruling on summary judgment was filed.

Federal Circuit Clarifies Alice Step Two Analysis in Reversal of District Court’s Rule 12 Dismissal

The U.S. Court of Appeals for the Federal Circuit (CAFC), with Chief Judge Moore writing, today reversed and remanded a district court’s dismissal of an amended complaint in a case where the district court found a patent directed to a method of distributing large video files via a peer-to-peer (P2P) network patent ineligible under Section 101. While the CAFC did not rule on whether the claims are patent eligible, it held that “there are plausible factual allegations that the claims include inventive concepts, and that is enough to preclude dismissal” on a Rule 12(b)(6) motion.

CAFC Says PTAB Got it Wrong in Mixed Ruling on Food Slicer Patent

The U.S. Court of Appeals for the Federal Circuit (CAFC) yesterday issued a precedential decision, in part holding that the Patent Trial and Appeal Board (PTAB) violated the Administrative Procedure Act (APA) by failing to “fully and particularly set out the bases upon which it reached its decision” to render obvious certain claims of Provisur Technologies’ patent. The CAFC also said the Board erred in its analysis finding two of the claims not unpatentable. The opinion was authored by Judge Prost. The case relates to claims 1-14 of Provisur’s U.S. Patent No. 6,997,089 for “a method and system for ‘classifying slices or a portion cut from a food product according to an optical image of the slice,’” according to the CAFC opinion. The PTAB held that Weber, Inc. had proved unpatentable as obvious claims 1–10, 13, and 14 but not claims 11 or 12. Provisur appealed the unpatentability determinations and Weber cross-appealed the finding that claims 11 and 12 were not unpatentable.

Solicitor General Asks SCOTUS to Grant Petition to Reject Tenth Circuit’s Extraterritorial Application of Lanham Act

On September 23, the office of the U.S. Solicitor General filed a brief with the U.S. Supreme Court on the issues at play in Abitron Austria GmbH v. Hetronic International, Inc., a trademark case in which the U.S. Court of Appeals for the Tenth Circuit affirmed a $90 million damages award for trademark infringement based on infringement occurring almost entirely outside of the United States. The Solicitor General’s brief asks the nation’s highest court to grant cert on Abitron Austria’s appeal in order to properly limit the application of the Lanham Act so that damages are only awarded when the alleged infringement has a likelihood of causing confusion among U.S. consumers.

Jump Rope Company Asks High Court to Weigh in on CAFC Approach to Collateral Estoppel for PTAB Invalidations

The inventor of a novel jump rope system (the Revolution Rope), Molly Metz, is petitioning the U.S. Supreme Court through her company, Jump Rope Systems, LLC, to seek clarification of the collateral estoppel doctrine as applied by the U.S. Court of Appeals for the Federal Circuit (CAFC) to bar a patent infringement suit in district court where the CAFC has affirmed a Patent Trial and Appeal Board (PTAB) finding of unpatentability. Jump Rope Systems is arguing that the CAFC’s decision in  XY, LLC v. Trans Ova Genetics, L.C. (2018) conflicts with the Supreme Court decisions in B&B Hardware, Inc. v. Hargis Indus., 575 U.S. 138 (2015); Medtronic, Inc. v. Mirowski Family Ventures, LLC, 571 U.S. 191 (2014); and Grogan v. Garner, 498 U.S. 279 (1991).

Review Not Warranted: SG Tells SCOTUS to Scrap Amgen’s Case on Enablement Test for Biotech Patents

The United States Solicitor General (SG) on Wednesday accepted the U.S. Supreme Court’s invitation to file an amicus brief regarding Amgen’s petition for certiorari in its case against Sanofi. Amgen is seeking review of the U.S. Court of Appeals for the Federal Circuit’s (CAFC’s) decision invalidating antibody patent claims based on a lack of enablement for genus claims. The High Court invited the SG to file a brief in April and, on September 21, the SG recommended that the Court deny the petition and said Amgen’s argument that the CAFC “erred by treating enablement as a question of law and by examining the full scope of the claims in assessing whether they are fully enabled…. lack merit.”

Patent Filings Roundup: Western District Waters Tested; IP Edge Runs from Disclosure in Delaware

Twenty-three inter partes reviews (IPRs) and no post grant reviews were filed this week; plaintiffs filed an average-ish 79 new district court filings, though many were associated with older campaigns. The Daedalus Prime subsidiary asserting Intel patents has filed suits against Samsung and TSMC; Volkswagen filed a number of IPRs against Fortress-backed Neo Wireless. There were, again, no discretionary denials at the Patent Trial and Appeal Board (PTAB), though certainly merits-based denials continue apace; many challenges against Magnetar entity Scramoge have been instituted; and Red Hat filed a declaratory judgment action for non-infringement against litigation-funded Valtrus [Centerbridge Capital, run by Key Patent Innovations] on patents not yet asserted in district court, just as Google began challenging a different set of patents asserted against just them.

Exploring the CAFC’s Ridiculous Written Description Standard for Life Sciences Patents

The written description requirement is really the backbone of the quid pro quo between the public and the patent applicant. In exchange for information about an invention, society is willing to grant the applicant a patent, which conveys exclusive rights for a limited period of time to what is claimed, not described. But the description provided in the specification must demonstration that the applicant really has an invention in the first place and what the boundaries of that invention are—this is the written description requirement in lay terms.

Novartis to Appeal CAFC’s ‘Unprecedented’ U-Turn in Ruling on Multiple Sclerosis Drug Claims to SCOTUS

Novartis Pharmaceuticals announced today that it will appeal the U.S. Court of Appeals for the Federal Circuit’s (CAFC’s) June decision invalidating its patent for a dosing regimen for its multiple sclerosis drug Gilenya to the U.S. Supreme Court, after the CAFC denied its request to rehear the case. The CAFC in June vacated a different three-judge panel’s January opinion upholding Novartis’ U.S. Patent No. 9,187,405. In the original ruling, Chief Judge Moore had dissented from the majority; in the rehearing, Moore authored the opinion vacating the January decision, with Judge Linn dissenting.

Sixth Circuit Rules District Court Didn’t Provide Sufficient Justification in Failing to Apply Safe-Distance Rule in Jeep Trade Dress Case

On September 19, the U.S. Court of Appeals for the Sixth Circuit issued a decision in Mahindra & Mahindra Ltd. v. FCA US, LLC vacating the Eastern District of Michigan’s denial of permanent injunction against a redesigned version of an off-road vehicle manufactured by Mahindra. The Sixth Circuit, in an opinion authored by Senior Circuit Judge Helene E. White, found that the district court abused its discretion in failing to apply the “safe-distance rule” in determining whether to enjoin Mahindra, which had marketed an earlier version of the vehicle that was found to infringe trade dress protections on Jeep off-road vehicles.

District Court Grants Dismissal of Due Process Case Against Former USPTO Officials

A Tennessee district court judge on Monday granted a number of former U.S. Patent and Trademark Office (USPTO) officials’ motion to dismiss a case brought by Martin David Hoyle and B.E. Technology alleging violation of the plaintiffs’ constitutional right to due process under the Fifth Amendment. Hoyle filed the suit in the Western District of Tennessee’s Western Division in August 2021 against former USPTO Director Michelle Lee and a number of other former USPTO officials for allegedly depriving the plaintiffs “of their valuable property rights in quasi-judicial administrative proceedings before the USPTO’s Patent Trial and Appeal Board (‘PTAB’).” The complaint further claimed that PTAB proceedings have been “tainted by various improprieties and underhanded tactics, designed to stack the deck against [plaintiffs] and in favor of their far more powerful opponents.”