2019 Patent Law Review

Transcription

1 2019 Patent Law Review April 16, 2019 John F. Murphy Partner Overview Unenforceability Infringement Litigation Patentability & Validity Ownership & Licensing Damages and Injunctions The USPTO 2

2 Overview Unenforceability Infringement Litigation Patentability & Validity Ownership & Licensing Damages and Injunctions The USPTO 3 Prost * Newman * Lourie * Dyk * Moore O Malley Reyna Wallach * Taranto Chen Hughes 2013 Stoll 2015 Senior: Mayer, Plager, Clevenger, Schall, Bryson, Linn *Eligible for senior status Period of stability By 2021: 7 eligible for senior status & new chief judge 4

3 Ex parte prosecution Ex parte reexams Reissues Interferences Inter partes reexams AIA: IPRs and CBMs

4 7 PTAB Appeals ~75% affirmance rates Heavy reliance on Rule 36 (pay attention in oral argument) Aggressive consolidation Scanning for major issues 8

5 Major Decisions Supreme Court en banc CAFC Oil States Energy v. Greene s Energy SAS Institute v. Iancu WesternGeco v. ION Geophysical Helsinn v. Teva Click-to-Call v. Ingenio NantKwest v. Iancu 9 Major Expected 2019 Decisions Supreme Court en banc CAFC Return Mail v. U.S.P.S. NantKwest v. Iancu None 10

6 5 year moving average Supreme Court (green triangles) vs. en banc CAFC (red squares) Possibilities Supreme Court Mentor v. EVE-USA Needs a separate slide! en banc CAFC None? Hot issues continue to be post-grant procedure issues and

7 Supreme Court Possibilities RPX v. Chanbond Ariosa v. Illumina HP v. Berkheimer Texas Advanced v. Renesas Hikma v. Vanda Dex Media v. Click-to-Call Saint Regis Mohawk v. Mylan CVSG CVSG CVSG CVSG CVSG Supreme Court Possibilities Highest number of pending CVSGs in patent cases ever 14

8 Overview Unenforceability Infringement Litigation Patentability & Validity Ownership & Licensing Damages and Injunctions The USPTO 15 Overview Unenforceability Infringement Litigation Patentability & Validity Ownership & Licensing Damages and Injunctions The USPTO 16

9 2014: Maersk v. Transocean (CVSG) Scandinavia U.S. territorial waters (gulf coast) Halo v. Pulse: Cert. denied on inverse question : Halo v. Pulse 18

10 2018: Texas Advanced v. Renesas (CVSG) California Outside U.S. 19 Bard v. Gore overturned by Halo and Stryker Jury verdicts on willfulness carrying weight and receiving deference Objective reasonableness of defenses carrying less weight Willfulness Findings Before Knorr- Bremse ( ) After Knorr- Bremse but Before Seagate ( ) After Seagate but before Bard v. Gore ( ) After Bard v. Gore but before Halo ( ) (Chris Seaman and other reports) After Halo/Stryker (After 2016) 64% 48% 37%? 20

11 SRI v. Cisco Willfulness Timing Through 2012: No evidence of knowledge of patent Vacated After 2012: Remand to decide in the first instance whether the jury s presumed finding of willful infringement after May 8, 2012 is supported by substantial evidence Timing of willful infringement is a question of fact Induced infringement potentially relevant but not dispositive of willful infringement 21 Means plus function nonce words Williamson v. Citrix (en banc)

12 Means plus function nonce words Zeroclick v. Apple: Court s emphasis on burden and evidence Apple argued that the limitations must be construed under 112, 6, but provided no evidentiary support for that position. The [district] court relied on Apple s arguments, contrasting them against Zeroclick s contentions, but pointed to no record evidence that supports its ultimate conclusion regarding whether 112, 6 applies to the asserted claims Apple produces no other evidence, intrinsic or extrinsic to the asserted patents, that casts doubt on that conclusion. 23 Means plus function nonce words Tek Global v. Sealant: conduits connecting the container SSI did not meet its burden 24

13 Overview Unenforceability Infringement Litigation Patentability & Validity Ownership & Licensing Damages and Injunctions The USPTO 25 Overview Unenforceability Infringement Litigation Patentability & Validity Ownership & Licensing Damages and Injunctions The USPTO 26

14 Five Major 101 Stories 1. Bright line in three method of treatment cases, distinguishing Mayo; one draws CVSG 2. Factual underpinnings of 101 established in trio of cases; one draws CVSG 3. CAFC still trying to explain technical solution and preemption concepts for first step 4. Aggressive new USPTO guidelines favorable to patent applicants 5. Legislative proposals gaining traction; options under study by Senate IP subcommittee 27 Vanda v. Aventisub eligible No abstract idea! Powerful followups: Natural Alternatives and Endo 28

15 Hikma v. Vanda - CVSG 29 The Section 101 Fact Trio Berkheimer v. HP Vacated 101 SJ because of fact issue Applied clear & convincing standard Aatrix v. Green Shades Vacated (b)(6) dismissal Amendments not futile because of fact issues Exergen v. Kaz non-precedential Diagnostic claim Affirmed post-trial 101 determination (no clear error in factual determinations) 30

16 Berkheimer v. HP claim 4 triable The question of whether a claim element or combination of elements is well-understood, routine and conventional to a skilled artisan in the relevant field is a question of fact to be proven proven by clear and convincing evidence 4. The method as in claim 1 which includes storing a reconciled object structure in the archive without substantial redundancy. 31 Berkheimer v. HP CVSG 32

17 The Rest of Your Technology 101 Reading List ChargePoint v. SemaConnect Holds electronic charging station claims ineligible Extensive problem-solution-preemption reasoning SRI v. Cisco Holds network surveillance claims eligible Distinguishes Electric Power v. Alstom narrowly Data Engine v. Google Holds GUI (tabs) claims eligible Technical problem technical solution analysis 33 Diehr Pratter / Content slide Benson CCPA Diehr / Alappat / State Street Era Classen D.Ct. Bilski PTO Chakrabarty Level 2 BensonLevel 3 Level 4 Level 5 Level 6 Flook Level 7 Bilski CAFC Comiskey II CyberSource D.Ct. Bilski Mayo Myriad Alice DDR Level 1? Berkheimer and Vanda Ultramercial III 34

18 What Next for 101? Patent owner position has been improving thanks to CAFC rulings and USPTO guidance Supreme Court could reverse that course But Congress could turn everything upside down entirely Imperative to maintain flexibility in your strategies 35 Helsinn v. Teva AIA on-sale bar Panel level briefing Professors looked to continue Metallizing Engineering 36

19 Helsinn v. Teva AIA on-sale bar Followed soft Medicines v. Hospira approach Panel skeptical that AIA changed the law (but no holding) 37 Helsinn v. Teva AIA on-sale bar 38

20 Helsinn v. Teva AIA on-sale bar Affirmed 39 Ariosa v. Illumina 102(e) This takes some unpacking 40

21 Ariosa v. Illumina 102(e) 102(e): the invention was described in (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent 119(e)(1): An application for an invention disclosed in the manner provided by section 112(a) in a provisional application filed under section 111(b) shall have the same effect, as to such invention, as though filed on the date of the provisional application filed under section 111(b) 41 Ariosa v. Illumina 102(e) In re Wertheim, 646 F.2d 527 (C.C.P.A. 1981) Dynamic Drinkware v. National Graphics, 800 F.3d 1375 (Fed. Cir. 2015) Current (difficult) test: does a claim of the issued patent have 112 support from provisional? Tricky textual arguments vs. pre-1952 Act caselaw 42

22 Overview Unenforceability Infringement Litigation Patentability & Validity Ownership & Licensing Damages and Injunctions The USPTO 43 Overview Unenforceability Infringement Litigation Patentability & Validity Ownership & Licensing Damages and Injunctions The USPTO 44

23 Traditional Modern Global distribution 35 U.S.C. 271(a) (1952): Except as otherwise provided in this title, Growing OUS whoever without authority [T]hese acts of Congress do not, and markets were not intended makes, uses, or sells any to, operate beyond the limits of patented invention, within the Foreign United States; and as the patentee s right of property and exclusive use is the United States any manufacturing derived from them, they cannot extend beyond the limits to patented invention during which the law itself is confined. -Supreme Court in 1856 the term of the patent therefor, infringes the patent. Networked computer systems Outsourced workers Presumption against extraterritoriality 45 Lost profits cases Power Integrations ~271(b) $ No $ 271(a) 46

24 Lost profits cases Power Integrations Takeaway Option 1: Direct infringement in the U.S. can never give rise to lost profits from foreign sales. Takeaway Option 2: Direct infringement in the U.S. can give rise to lost profits from foreign sales, but only where a strong causal connection is shown. 47 Lost profits cases WesternGeco 271(f) $ No 48

25 Lost profits cases WesternGeco Majority opinion: Even accepting that contracts would have been made but for infringement, Power Integrations strictly applies to 271(f): no recovery of foreign profits. Dissenting opinion: 271(f) should extend to foreign profits if they are shown to arise from domestic infringement. 49 Lost profits cases WesternGeco 50

26 WesternGeco The Government 51 WesternGeco Supreme Court Reverses 52

27 WesternGeco Supreme Court Reverses How far does this reasoning extend? 53 Overview Unenforceability Infringement Litigation Patentability & Validity Ownership & Licensing Damages and Injunctions The USPTO 54

28 Overview Unenforceability Infringement Litigation Patentability & Validity Ownership & Licensing Damages and Injunctions The USPTO 55 Therasense in action Overall approach on intent in a withheld reference case: the person in question must know of the reference 2. know that the reference was material, and 3. make a deliberate decision to withhold it. Deliberate decision must be the most reasonable inference that can be drawn 56

29 Energy Heating v. Heat On-The-Fly Inequitable Conduct Numerous prior uses of claimed invention argued to be experimental Put state of mind at issue or don t? 57 Overview Unenforceability Infringement Litigation Patentability & Validity Ownership & Licensing Damages and Injunctions The USPTO 58

30 Overview Unenforceability Infringement Litigation Patentability & Validity Ownership & Licensing Damages and Injunctions The USPTO 59 TC Heartland - Venue Resides = State of incorporation What s a regular and established place of business? In re Cray 60

31 TC Heartland - Venue Resides = State of incorporation Judicial district where the defendant resides? 61 In re BigCommerce - Venue Lawsuit Defendant incorporated in Texas HQ 62

32 In re HTC - Venue Foreign defendants not protected by TC Heartland 63 NantKwest v. Iancu 4 th Circuit on TM statute: yes En banc court to create circuit split? Low impact 64

33 NantKwest v. Iancu en banc 65 NantKwest v. Iancu Supreme Court 66

34 Motions to Dismiss Still a healthy area of litigation over a decade since Iqbal / Twombly Abrogation of Form 18 Significant body of caselaw on inducement, contributory infringement, willful infringement, etc. Frequent question: level of detail required for literal infringement 67 Disc Disease v. VGH - adequate This case involves a simple technology enough to provide VGH Solutions fair notice of infringement 68

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36 Saint Regis Mohawk v. Mylan Sovereign immunity tends to extend to agency proceedings that are very similar to civil litigation Calls in Oil States and SAS assessments of IPRs. Dispositive factors: The PTO director has broad discretion to decide whether to institute or not, and is ultimately politically accountable for institutions or non-institutions (as opposed to a proceeding where a private party can unilaterally drag someone in). The PTAB can continue IPRs even when the petitioner drops out (unlike a typical suit where that would end the suit). PTAB rules do not mirror the Federal Rules of Civil Procedure in important ways; amendments, preliminary motions; Markman; discovery options; etc. Although the PTAB has less adjudicatory procedures, that doesn t mean that IPRs aren t also insufficiently adjudicatory 71 Saint Regis Mohawk v. Mylan 72

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38 Oil States v. Greene s Energy Answer: No Lingering retroactivity questions? (Takings and due process) 75 SAS Institute v. Iancu Answer: Yes, and extensive fallout 76

39 SAS Institute v. Iancu Before SAS v. Iancu PTAB could pick and choose claims to institute 20% of IPRs were partial institutions After SAS v. Iancu Institution, if at all, must be on all claims Petitions getting narrower Discretionary denials become more important Stakes for estoppel higher 77 Click-To-Call v. Ingenio 78

40 Dex Media v. Click-To-Call 79 Wi-Fi v. Broadcom en banc 80

41 Wi-Fi on remand: privy/rpii Typical scenario: PO sues defendants Indemnitor files IPR more than 1 year later Cooperative, but not necessarily controlling, relationship No privity/rpii (Reyna dissented) Green light for PTAB to block discovery and time-bar challenges in this area 81 Applications in Internet Time v. RPX (en banc denied) 2-1 decision spanning 55 pages of opinions 82

42 The USPTO Taking the Lead on Procedural Modifications New trial procedures with additional rights for patent owners End of BRI (same claim construction standard as courts) New post-aqua Products amendment rules Increased use of discretionary denials 83 Return Mail v. USPS Very few IPRs brought by agencies 84

43 Phigenix v. Immunogen Standing for petitioner-appellants not automatic 1. the summary judgment burden of production applies in cases where an appellant seeks review of a final agency action and its standing comes into doubt. So, Rule 56(c)(4) applies. 2. unless standing is self-evident (e.g., the patent owner is appellant), the appellant has to submit evidence like affidavits and documents to the extent necessary to explain and substantiate its entitlement to judicial review. If this evidence wasn t already in the PTAB record, then the appellant has to provide it directly to the Circuit court. 3. the appellant has to identify this evidence at the first appropriate time, typically meaning in response to a motion to dismiss or in the opening merits brief. 85 Many decisions later RPX v. Chanbond (CVSG) 86

44 Overview Unenforceability Infringement Litigation Patentability & Validity Ownership & Licensing Damages and Injunctions The USPTO 87 Overview Unenforceability Infringement Litigation Patentability & Validity Ownership & Licensing Damages and Injunctions The USPTO 88

45 Thank you Atlanta Chicago Cincinnati Cleveland Columbus Costa Mesa Denver Houston Los Angeles New York Orlando Philadelphia Seattle Washington, DC These materials have been prepared by Baker & Hostetler LLP for informational purposes only and are not legal advice. The information is not intended to create, and receipt of it does not constitute, a lawyer-client relationship. Readers should not act upon this information without seeking professional counsel. You should consult a lawyer for individual advice regarding your own situation Baker & Hostetler LLP. All Rights Reserved.