Patent Law Summaries
Novo Nordisk A/S v. Sanofi-Aventis U.S. LLC, et al.
No. 2008-1225,
U.S. Court of Appeals for the Federal Circuit, 07/30/2008
Holding: The U.S. Court of Appeals for the Federal Circuit affirmed in this appeal a district court's denial of Novo Nordisk A/S's application for a preliminary injunction against Sanofi-Aventis in their patent dispute relating to a insulin injection product. The U.S. District Court earlier denied the preliminary injunction because patentee Novo Nordisk failed to show a reasonable likelihood of success on the merits. Specifically, the district court reasoned that Sanofi raised substantial questions regarding whether the specification read as a whole suggests that the very character of the invention requires direct gearing and a non-rotatable piston rod to be part of every embodiment. On appeal, the Federal Circuit found that In light of this apparent conflict between the specification and the claims, the district court appropriately exercised its discretion in concluding that Novo has not established a likelihood of success on the merits. At the preliminary injunction stage, it was irrelevant whether this case presents greater issues of claim construction or validity - the existence of one or both of these issues was sufficient to justify the district court’s decision to deny a preliminary injunction. In the light of the foregoing, the Federal Circuit concluded that the district court did not abuse its discretion in denying Novo's motion for preliminary injunction.
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Board of Regents of the University of Texas System v. BENQ America Corp., et al.
No. 2007-1388,
U.S. Court of Appeals for the Federal Circuit, 07/24/2008
Holding: The U.S. Court of Appeals for the Federal Circuit in this appeal affirmed a district court's summary judgment of non-infringement of a patent relating to non-verbal entry technology that uses “syllabic elements” via a standard touch tone telephone. In particular, the Federal Circuit, citing specification and prosecution history, concluded that the proper construction of "syllabic element" is a one-syllable letter group that either comprises a word or can be combined with other one-syllable letter groups to form a word. Further, the Federal Circuit saw no error in the district court’s claim construction, which clarified that a syllabic element may be as small as a single letter. In the final judgment stipulation, the parties agreed that none of the accused devices relied on a vocabulary of "only syllabic elements," as the term "syllabic elements" was construed” by the district court. Thus, the district court properly entered judgment that the accused devices did not infringe the asserted claims of the patent-at-issue.
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Jang v. Boston Scientific Corp., et al.
No. 2007-1385,
U.S. Court of Appeals for the Federal Circuit, 07/15/2008
Holding: The Federal Circuit in this appeal vacated the district court's consent judgment in a contract dispute over intravascular stent patents, and remanded the case for clarification. Plaintiff-appellant David Jang as the inventor of patents-at-issue had earlier filed contract claims against patent assignees Boston Scientific and Scimed to collect payments. The right to these payments depended on whether the sale of certain devices by Boston Scientific and Scimed were “covered by” (i.e., would have infringed) the patents at issue. The district court issued a consent judgment that included its earlier claim constructions. Aggrieved, Jang timely appealed from the judgment, challenging only the district court’s claim construction with respect to the patents. In this appeal, the Federal Circuit found that the consent judgment suffered from two ambiguities. First, the Federal Circuit found it impossible to discern from the stipulated judgment which of the district court’s claim construction rulings would actually affect the issue of infringement. Second, the stipulated judgment provided no factual context for the claim construction issues presented by the parties. In particular, nothing in the stipulated judgment provided any context with respect to how the disputed claim construction rulings related to the accused products.
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Serdarevic v. Advanced Medical Optics, Inc., et al.
No. 2008-1075,
U.S. Court of Appeals for the Federal Circuit, 07/16/2008
Holding: The U.S. Court of Appeals for the Federal Circuit in this appeal affirmed a district court's dismissal of an inventorship action for patents relating to laser vision correction technology. Plaintiff-appellant Olivia N. Serdarevic (“Serdarevic”) brought suit on September 15, 2006 against Advanced Medical Optics, Inc. (“AMO”) and VISX, Inc. ("VISX") to seek correction of inventorship, claiming she was the co-inventor or inventor of the technology. The patents were issued between 1987 and 1998. The U.S. District Court for the Southern District of New York found that the equitable defense of laches barred the inventorship claim. On appeal, the Federal Circuit affirmed the district court's finding that Serdarevic’s failure to bring her suit within the six year-limit was unreasonable because she was represented by counsel in 1999 and she did not explain why she was prevented from bringing this action while she was trying to license her alleged invention. Neither did the district court abuse its discretion in holding that Serdarevic had failed to meet her burden to rebut the presumption of evidentiary prejudice, because three witnesses with knowledge of Serdarevic’s inventorship claim all died during the period of her delay. For these reasons, the grant of summary judgment to defendant-appellee AMO and VISX was warranted.
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Eisai Co. Ltd., et al v. Dr. Reddy's Laboratories, Ltd., et al.
No. 2007-1397, -1398,
U.S. Court of Appeals for the Federal Circuit, 07/21/2008
Holding: The U.S. Court of Appeals for the Federal Circuit in this appeal ruled that plaintiff-appellee Eisai's patent relating to its blockbuster anti-gastric acid drug Aciphex was valid and enforceable. Defendant-appellant Dr. Reddy's and Teva earlier attempted to manufacture a generics version of this billion-dollar earning drug under the Hatch-Waxman Act, 21 U.S.C. Section 355 and 35 U.S.C. Section 271 (e), and in the process challenged the validity of patent-at-issue. Unfortunately for them, the U.S. District Court for the Southern District of New York ruled in favor of patentee Eisai. On appeal, the Federal Circuit found that the district court properly concluded that the record did not support a case of obviousness of the patent as a matter of law. With regard to defendants-appellants' charge of inequitable conduct, the district court likewise correctly determined that Eisai' alleged acts during prosecution did not rise to the level of inequitable conduct, absent any proof of deceptive intent. For these reasons, the Federal Circuit affirmed the district court's finding that defendants-appellants failed to prove that the patent was invalid for obviousness or unenforceable for inequitable conduct.
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Patent Law Commentaries
Following are Patent Law Commentaries elaborating on the significance of the most important of the Patent Law Summaries.
Page 1 of 2 of Patent Law Commentaries 1 2 >
Posted: 12/11/2008
Commentary: In Cohesive Technologies, Inc. v. Waters Corporation, 543 F.3d 1351 (Fed. Cir. 2008), the U.S. Court of Appeals for the Federal Circuit held that an invention may be anticipated, even though it is proven non-obvious. The Court drew a clear separating line between the novelty analysis of 35 U.S.C. section 102 and the non-obviousness analysis of 35 U.S.C. section 103(a). While the general holding is perhaps well-founded, in a case such as this where the references cited under §102 and §103 were identical, the decision to remand seems wasteful and inappropriate.
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Related summary: Federal Circuit Remands Waters' Drug Testing Patent Dispute with Cohesive Technologies
Quanta Computer v. LG Electronics
Posted: 08/15/2008
Commentary: In the case Quanta Computer v. LG Electronics, ___ U.S. ____, 128 S.Ct. 2109 (2008), the United States Supreme Court clarifies and expands upon its holding in United States v. Univis Lens Co. In Univis, the court held that a patent is exhausted upon the sale of unfinished components that substantially embody the patent and which have no use except to practice the patent. In Quanta, the court clarified that the same analysis applies to process or method patents, not just product patents: When a component substantially embodies the process and cannot be used for any purpose other than to practice the patent, the process patent is exhausted upon sale of that component. The decision makes it more difficult for patentees to extract royalties from multiple parties for the same device. However, it revitalizes the integrity of the exhaustion doctrine and provides more certainty for downstream purchasers.
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Related summary: Supreme Court Reverses Federal Circuit’s Ruling, Finds in Favor of Quanta in LG’s Computer Technology Patent Suit
Acumed, LLC v. Stryker Corp., et al.
Posted: 05/20/2008
Commentary: In the recent case of Acumed, LLC v. Stryker Corp.,et al., (No. 2007-1115) (Fed. Cir., May 13, 2008) (“Acumed II”), the Federal Circuit addressed the meaning and application of language barring re-litigation of claims that “could have been brought” in a prior patent infringement case.
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Related summary: Federal Circuit Reverses District Court’s Ruling in Acumed v. Stryker, Remands Case
Ortho-McNeil Pharmaceutical, Inc. v. Mylan Laboratories, Inc., et al.
Posted: 05/16/2008
Commentary: In KSR v. Teleflex, 550 U.S. ____, 127 S. Ct. 1727 (2007), the U.S. Supreme Court broadened the applicable test in determining whether an invention is “obvious.” As predicted by patent law pundits, the KSR decision was followed by a number of cases in which infringers defended their actions – and won – by having the patent in question declared invalid for obviousness under this new standard.
The Court of Appeals for the Federal Circuit (the CAFC) recently heard and decided two separate cases that addressed the issue of obviousness post-KSR. These cases shed further light on the new standard for determining obviousness. While the results are quite different, the lessons for practitioners are, ultimately, the same.
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Related summary: Federal Circuit Affirms Validity of Ortho-McNeil’s Patent On Epilepsy Drug Topomax
Judkins v. HT Window Fashion Corp.
Posted: 05/13/2008
Commentary: When a patent-holder discovers infringement, it’s not unreasonable for him to want to notify the alleged infringer’s clients of the infringement. Of course the alleged infringer would prefer that this communication with its clients not take place. But, as the Judkins case instructs, it will be nearly impossible for an alleged infringer to stop a patent holder from contacting its clients.
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Related summary: Patent Owners Allowed to Warn Buyers about Competitor's Infringing Products: Judkins v. HT Window Fashion Corp.
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