PATENT CASE LAW UPDATE

Transcription

1 PATENT CASE LAW UPDATE Intellectual Property Owners Association 40 th Annual Meeting September 9, 2012 Panel Members: Paul Berghoff, McDonnell Boehnen Hulbert & Berghoff LLP Prof. Dennis Crouch, University of Missouri School of Law Suzanne Michel, Google Inc. Roy Waldron, Pfizer

2 Patentable Subject Matter Under 35 USC 101

3 Mayo v. Prometheus Labs 132 S.Ct. 1289, March 20, 2012 Claims to diagnostic method invalidated as encompassing a law of nature the correlation between metabolites and harm/efficacy with no significant post-solution activity (now inventive concept?). Inventive concept needed to satisfy 101 [A] process that focuses upon the use of a natural law [must] also contain other elements or a combination of elements, sometimes referred to as an inventive concept, sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the natural law itself. (Citing Flook and Bilski).

4 AMP v. Myriad Genetics No , Fed. Cir., August 16, 2012 Reconsidered in light of Mayo, but largely follows original decision Upheld claim to an isolated gene sequence as patentable subject matter under 35 USC 101 because the claimed DNA is different than native chromosomal Struck down method claims directed to comparing or analyzing gene sequences Upheld method claim to screening cancer therapeutics

5 CLS Bank v. Alice 103 U.S.P.Q.2d 1297 (Fed. Cir. July 9, 2012) (J. Linn, with J. O Malley in majority; J. Prost in dissent) Mayo, prohibition on abstract ideas applied to software To be abstract, the single most reasonable understanding [must be] that a claim is directed to nothing more than a fundamental truth or disembodied concept, with no limitations in the claim attaching that idea to a specific application. Dissent: [W]e do not write on a blank slate.

6 Bancorp v. Sun Life 2012 WL (Fed. Cir. July 26, 2012) (J. Lourie, with J. Prost and J. Wallach) [T]he use of a computer in an otherwise patent-ineligible process for no more than its most basic function fails [101]. The claims are abstract because they require determining and manipulating financial values - a matter of mere mathematical computation. Finally, our conclusion is not inconsistent with CLS.

7 Litigation & Remedies

8 Smart Phone Wars

9 Apple v. Motorola (J. Posner) N.D. Ill. June 22, 2012, (J. Posner sitting by designation). Claims both parties dismissed on the eve of trial Damages testimony excluded under Daubert Insufficient evidence on cost of alternatives/design around Rejects damages for patent in suit based on portfolio license. Parties cannot prove entitlement to injunctions For Motorola s standard essential patents, a RAND royalty is appropriate remedy Apple cannot show lost market share due to infringement because iphone success nothing to do with the asserted claims

10 Akamai v. Limelight Networks McKesson v. Epic 6-5 en banc opinion issued August 31, 2012 Rejects rule that inducement requires proof of a single direct infringer But accused infringer must knowingly induce infringement Joint infringement not addressed

11 Retractable Tech. v. Becton, Dickinson Panel Opinion (Fed. Cir. July 8, 2011) Split decision on claim construction: look to written description vs. ordinary meaning absent clear disavowal Denial of Petition for Rehearing en banc (Fed. Cir. October 31, 2011) Dissent of C.J. Rader and J. Moore: Retractable illustrates a fundamental split within the court Dissent of J. O Malley: Claim construction should not be treated as a pure question of law with no deference granted to the district court Supreme Court has requested views of the SG

12 The Aftermath of Therasense Therasense v. Becton Dickinson (Fed. Cir. 2011) (en banc) For inequitable conduct must prove specific intent to deceive PTO, and that but-for deception, PTO would not have allowed the claim District Courts have actively dismissed inequitable conduct claims after Therasense But, on remand, the district court again found inequitable conduct in Therasense (N.D. Cal, Mar. 27, 2012) And the Federal Circuit upheld a finding of inequitable conduct where applicant failed to notify the PTO of a known, material reference in Aventis Pharma v. Hospira (April 9, 2012)

13 More Cases

14 Momenta v. Amphastar Federal Circuit, Aug. 3, 2012 Claim covered method of analyzing drug enoxaparin Amphastar conducted tests and submitted results requested by FDA after approval of generic drug. Court held there was no infringement under 35 USC 271(e)(1) because testing was solely for uses reasonably related to the development and submission of information under a Federal law which regulates the manufacture, use or sale of drugs. Conflict with Classen v. Biogen? With Merck v. Integra? In Classen, Supreme Court has requested SG s views on cert.

15 Bard v. C.R. Gore Vacated portions of the original panel opinion related to willful infringement (Fed. Cir. June 14, 2012) Seagate requires clear and convincing evidence that an infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent; and the risk was known or should have been known The objective determination of recklessness, even though predicated on underlying mixed questions of law and fact, is best decided by the judge as a question of law subject to de novo review.

16 Marine Polymer v. Hemcon En banc decision overruling panel decision (Fed. Cir. March 14, 2012) Panel opinion held that arguments concerning claim scope made during reexamination should be considered amendments that create an intervening right defense. By a 6-4 vote, en banc opinion reversed and held that statutory intervening rights arise only when the text of claims are amended or new claims are added under the plain language of 35 USC 252, 307.

17 Antitrust: Reverse Payment Split FTC v. Watson (11 th Cir. April 25, 2012) [A] reverse payment settlement is immune from antitrust attack so long as its anticompetitive effects fall within the scope of the exclusionary potential of the patent. Court refuses to consider validity and infringement issues in evaluating scope of the patent as too perilous an enterprise to service as a basis for antitrust liability. In re K-Dur Antitrust Lit., (3 rd Cir. July 16, 2012) [A]ny payment from a patent holder to a generic patent challenger who agrees to delay entry into the market [is] prima facie evidence of an unreasonable restraint of trade...