Applying the US Supreme Court’s Alice v. CLS framework, the US Court of Appeals for the Federal Circuit upheld a Patent Trial and Appeal Board (PTAB) finding patent claims directed to data management and processing systems for merely storing advertising data were not patent eligible under 35 U.S.C. §101. Customedia Techs., LLC v. Dish Network Corp., Case No.18-2239 (Fed. Cir. Mar. 6, 2020) (Moore, J.)
In an 8–4 decision, the en banc US Court of Appeals for the Federal Circuit issued a per curiam order upholding its earlier panel decision finding a claim using the transitional phrase “consisting essentially of” to be indefinite because of inconsistences in the manner in which the patent specification explained the meaning of “better drying time” in connection with use of the claimed formulation. The Court denied plaintiff’s petition for panel rehearing and for rehearing en banc. HZNP Fin. Ltd. v. Actavis Labs. UT, Inc., Case No. 17-2149 (Fed. Cir. Feb. 25, 2020) (per curiam) (Lourie, J, joined by Newman, O’Malley and Stoll, JJ, dissenting). Judge Newman also dissented in the original panel decision. (more…)
The US Court of Appeals for the Federal Circuit affirmed that patented articles must be marked in order for the patentee to recover pre-notification or pre-complaint damages. Arctic Cat Inc. v. Bombardier Recreational Products Inc., Case No. 19-1080 (Fed. Cir. Feb. 19, 2020) (Lourie, J).
In 2002, Arctic Cat entered into a licensing agreement with Honda for patents related to personal watercraft. The license agreement contained no provisions requiring Honda, as a licensee, to mark all licensed products with the applicable patent numbers. Honda began selling unmarked watercraft, and Arctic Cat made no attempt to ensure that the products were marked. Approximately a decade later, Honda stopped selling the unmarked products.
The US Court of Appeals for the Federal Circuit affirmed a US International Trade Commission (ITC) decision that a respondent qualified as an importer under § 337 despite not being the actual importer of record, based on the respondent’s involvement in the importation. Comcast Corp. et al. v. ITC, Case Nos. 18-1450, -1653, -1667 (Fed. Cir. Mar. 2, 2020) (Newman, J).
In 2016, Rovi filed a complaint with the ITC against Comcast and its suppliers based on infringement allegations of seven patents related to digital video guide technologies. Rovi dropped one asserted patent prior to trial, and the ITC’s administrative law judge ultimately found a § 337 violation based on two of the remaining patents. In late 2017, the ITC commissioners affirmed the administrative law judge’s determination and entered an exclusion order against Comcast.
Digital health companies are producing innovative products at a rapidly accelerating pace and experiencing a boom in investments and demand as the regulatory environment becomes more supportive of digital health services to both improve patient care and stay profitable. Protecting intellectual property (IP) and building a feasible data strategy to support the research and development endeavor are essential steps for companies in their drive toward commercialization and return on their investment.
On this episode of the Of Digital Interest podcast, McDermott partners Bernadette Broccolo (Health) and Ahsan Shaikh (IP) explore key issues for digital health companies, their collaboration partners and investors, and start-ups to consider, including:
The US Court of Appeals for the First Circuit held that pharmaceutical companies that wrongly list patents in FDA’s Orange Book must prove they acted in good faith to avoid antitrust liability. In re Lantus Direct Purchaser Antitrust Litigation, Case No. 18-2086 (1st Cir. Feb. 13, 2020) (Kayatta, J).
In applying for FDA approval to market new drugs, drug manufacturers must list all patents that “claim” the drug or the method of using the drug in FDA’s “Orange Book.” Listing a patent in the “Orange Book” allows the drug manufacture to trigger an automatic 30-month stay of FDA approval of any application for a competing drug product.
Notwithstanding the jurisdictional nature of the time bar under § 315(b), the US Court of Appeals for the Federal Circuit determined that a party may waive a time bar argument if it failed to raise the issue with the Patent Trial and Appeal Board (PTAB) during the inter partes review (IPR) proceeding. Acoustic Tech. Inc. v. Itron Networked Solutions, Inc., Case No. 19-1061 (Fed. Cir. Feb. 13, 2020) (Reyna, J.).
Addressing whether the Patent Trial and Appeal Board (PTAB or Board) too narrowly read its rules limiting reply briefs in an inter partes review (IPR) to preclude a petitioner’s argument as a “new theory of unpatentability,” the US Court of Appeals for the Federal Circuit concluded that the Board abused its discretion by not considering petitioner’s arguments. Apple Inc. v. Andrea Electronics Corp., Case Nos. 18-2382, -2383 (Fed. Cir. Feb. 7, 2020) (Plager, J.).
Addressing a jury verdict of invalidity, the US Court of Appeals for the Federal Circuit found that the district court abused its discretion in allowing trial testimony regarding obviousness from a lay witness, and remanded for a new trial. HVLPO2, LLC v. Oxygen Frog, LLC, Case No. 19-1649 (Fed. Cir. Feb. 5, 2020) (Moore, J).
The US Court of Appeals for the Federal Circuit affirmed a district court dismissal, finding that a patent license implicitly licensed all parents and continuations that disclosed the same invention as the explicitly licensed patent. Cheetah Omni LLC v. AT&T Services, Inc., Case No. 19-1264 (Fed. Cir. Feb. 6, 2020) (Lourie, J).
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