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Patent Law Summaries
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Federal Circuit Sustains Sanofi-Aventis in Denying Novo's Motion for Preliminary Injunction
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. More...
Federal Circuit Affirms Judgment of Non-infringement of UTS' Touch-Tone Telephone Tech Patent
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. More...
Federal Circuit Remands Intravascular Stent Patent Dispute Between Boston Scientific, Scimed and Dr. Jang
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. More...
Federal Circuit: Laser Vision Correction Tech Inventor Barred by Laches to Bring Suit Against Advanced Medical and VISX
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. More...
Federal Circuit Blocks Generics-Makers, Finds Eisai's Aciphex Drug Patent Valid and Enforceable
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. More...
Patent Law Commentaries
Following are Patent Law Commentaries elaborating on the significance of the most important of the Patent Law Summaries.
McKesson v. Bridge Medical: Inequitable Conduct Due to Lack of Full Disclosure in Patent Prosecutions
McKesson Information Solutions, Inc. v. Bridge Medical, Inc.
Posted: 01/18/2008
Commentary: The decision in McKesson Information Solutions Inc. v. Bridge Medical Inc., 487 F.3d 897 (Fed. Cir. 2007), has been referred to by many as “frightening,” “burdensome,” and “a whopper.” Indeed, the decision places a high burden on patent prosecutors to disclose essentially every action in any related co-pending application. The failure to do so may result in a declaration that the patent is unenforceable due to inequitable conduct. More...
Related summary: Federal Circuit Affirms Inequitable Conduct Ruling in McKesson Information Solutions Suit
Voda v. Cordis Undermines Court's Authority to Take Cognizance of Foreign Patent Infringement Claims
Voda v. Cordis Corp.
Posted: 07/13/2007
Commentary: Despite what it called a "harmonizing trend" among the world's patent courts, the Federal Circuit chose not to create a more unified global system of enforcing patents worldwide. Instead, the court effectively eliminated a district court's ability to assert supplemental jurisdiction over claims of foreign patent infringement, forcing patent holders to seek enforcement in parallel suits in courts all over the world. More...
Related summary: District Court Has No Jurisdiction over Foreign Patent Claims, Federal Circuit Holds in Voda v. Cordis
In KSR v. Teleflex, Supreme Court Emphasizes Flexibility in Determining Obviousness Via TSM Test
KSR Int'l Co. v. Teleflex Inc.
Posted: 05/15/2007
Commentary: The central issue that faced this court is how to determine if an invention is truly innovative or is just the result of linking together prior inventions in a way that was inevitable or an apparent next step. The Supreme Court emphasized flexibility in making that determination, whereas the Federal Circuit had been choosing predictability instead. The Court held that the Federal Circuit had too rigidly applied its “teaching, suggestion, motivation” test, under which a patent claim is only invalidated for obviousness if prior art contains some motivation or suggestion to combine the prior art teaching. This application resulted in erroneously finding that the patent at issue was not invalid for obviousness. More...
Related summary: KSR Int’l Co. v. Teleflex Inc.
