JTEKT v. GKN: Federal Circuit Finds Competitor Lacks Standing to Appeal PTAB's Final Written Decision

September 7, 2018

After determining that its competitor GKN's patent raised a potential risk of infringement for a product under development, JTEKT[1] challenged the patentability of claims 1–7 of U.S. Patent No. 8,215,440 via inter partes review (IPR2016-00046). When claims 2 and 3 were confirmed as patentable in the final written decision—and thus the risk of infringement remained—JTEKT appealed, and GKN moved to dismiss the appeal based on lack of standing.... Read more

WHAT DOES AND/OR MEAN? IT DEPENDS

September 7, 2018

In an interesting, but non-precedential, decision from the Court of Appeals for the Federal Circuit (Supernus Pharmaceuticals, Inc. v TWI Pharmaceuticals, Inc et al (Fed. Cir., September 6, 2018-http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/17-2513.Opinion.9-6-2018.pdf), the Court affirmed a decision from the U.S. District Court of New Jersey.... Read more

Recent Pharmaceutical House and Senate Bills

August 28, 2018

Over the summer, representatives introduced bills and amendments of interest to the pharmaceutical industry. First, Senator Orrin Hatch, co-author of the Hatch-Waxman Act, filed an amendment in the Senate Judiciary Committee that would require a generic manufacturer wishing to challenge a brand-name drug patent to choose between Hatch-Waxman litigation and IPR, removing the option to use both. According to Senator Hatch, this Hatch-Waxman Integrity Act of 2018 would ensure that Hatch-Waxman continues to operate as originally intended by protecting the ability of generic drug companies to develop lower-cost drugs, while at the same time providing innovators a period of exclusivity to recoup investments. Specifically, Senator Hatch commented that the availability of an alternative path to challenge patents through IPRs has threatened to upend the carefully-crafted Hatch-Waxman balance by enabling companies to put added litigation pressure on drug innovators above and beyond what Hatch-Waxman already provides.... Read more

A Different Lesson from Vanda v. West-Ward

August 20, 2018

Last week the Federal Circuit denied West-Ward's petition for rehearing en banc. At the time of the original Federal Circuit decision (Vanda Pharms. Inc. v. West-Ward Pharms. Int'l Ltd., 887 F.3d 1117 (Fed. Cir. 2018), the case generated substantial commentary in regard to its patent eligibility context. West-Ward's petition focused on the question of whether "adjusting a dose of an old drug based on a patient's genetic risk of poorly metabolizing it" is patent eligible subject matter, so the pro-patent crowd will no doubt be pleased. There is another aspect of the case, however, which is worthy of consideration.... Read more

PTAB Removes "Informative" Designation From Ex Parte Jung

August 13, 2018

In July, the U.S. Patent & Trademark Office's Patent Trial and Appeal Board designated its ex parte Jung decision as informative (see here and here). In this decision, the Board held that the phrase "at least one of A and B" was presumed to be conjunctive. That is, the phrase was presumed to mean "at least one of A and at least one of B."... Read more

Boston University v. Everlight: Claim Invalid For Lack Of Enablement Because 17% Was "Physically Impossible"

August 10, 2018

Last week, the Federal Circuit issued its opinion in Boston University (BU) v. Everlight, in which the court found that the only asserted claim (claim 19) was invalid for lack of enablement because 1/6 (17%) of the claimed subject matter was "physically impossible." Claim 19 was the only claim asserted at trial. The claim was directed to a semiconductor device comprising a substrate, a non-single crystalline buffer layer, and a growth layer grown on the buffer layer.... Read more

WesternGeco – Impacts Lost Profits Beyond 35 U.S.C. 271(f) Infringement

August 6, 2018

The Supreme Court found Ion Geophysical Corp. (Ion) responsible for profits WesternGeco LLC. lost as a result of Ion's supplying to foreign buyers the parts necessary to assemble the patented ocean floor surveying equipment. WesternGeco's damages claim included a request for the lost profits of its foreign surveying business caused by Ion's 35 U.S.C. § 271(f) infringement. The Federal Circuit has denied these profits because, in its opinion, it would extend U.S. patent protection to foreign activities. The Supreme Court disagreed not with the concept that U.S. patent laws did not extend to foreign activities but because of the patent damages statute, 35 U.S.C. § 284 which provided:... Read more

Ex Parte Jung Puts the Conjunctive in the Phrase "at least one of A and B"

August 3, 2018

Last month, the U.S. Patent & Trademark Office's Patent Trial and Appeal Board ("PTAB") newly designated five decisions as informative. These five decisions included ex parte Jung, a Board decision regarding the construction of the phrase "at least one of A and B." According to the Board in Jung, the proper construction for this phrase is the conjunctive, i.e., at least one of A AND at least one of B. This presumptive construction now applies during patent examination absent certain exceptions.... Read more

Distribution of Certain Materials to Groups of People Without Restriction May Render Such Materials Printed Publications Under § 102(b)

August 1, 2018

The Federal Circuit affirmed in-part and vacated in-part the PTAB's (the Board) decision that the petitioner, Medtronic, Inc., had not proven that the challenged patent claims were unpatentable. The Court affirmed the Board's determination that challenged claims were not obvious over two prior art references, but vacated and remanded the Board's determination that other references, a video "Thoracic Pedicle Screws for Idiopathic Scoliosis" and slides "Free Hand Thoracic Screw Placement and Clinical Use in Scoliosis and Kyphosis Surgery," were not "publicly accessible" under 35 U.S.C. § 102(b) and therefore were not prior art.... Read more

Enforceability of Medical Procedure Patents Under 35 U.S.C. § 287(c)

July 30, 2018

Unlike many other countries, medical procedures are not per se unpatentable in the United States. This comes with a major caveat, specifically, 35 U.S.C. § 287(c) bars a medical procedure patent owner from enforcing the patent, by obtaining an injunction, monetary damages, and attorney fees, against a medical practitioner and a related health care entity based on the medical practitioner's performance of "a medical activity" (§ 287(c)(1)).... Read more