Patently-O https://patentlyo.com America's leading patent law blog Mon, 20 May 2019 16:15:57 +0000 en-US hourly 1 https://wordpress.org/?v=4.9.10 McDonnell Boehnen Hulbert & Berghoff LLP https://patentlyo.com/media/2014/01/mbhb-3b.gif https://www.mbhb.com/ 480 150 Intellectual Property Law A “Conveyed” Trademark License Cannot be Rescinded in Bankruptcy https://patentlyo.com/patent/2019/05/trademark-rescinded-bankruptcy.html https://patentlyo.com/patent/2019/05/trademark-rescinded-bankruptcy.html#comments Mon, 20 May 2019 16:15:57 +0000 https://patentlyo.com/?p=26960 by Dennis Crouch

Today’s Supreme Court trademark case has several important nuggets for intellectual property owners.  Here are two: First, TM licensing is somewhat clarified with the holding that a bankrupt mark-holder cannot simply cancel prior licenses as part of the bankruptcy. Second, the court’s holding here treats a  TM license effectively as a property right that has been transferred rather than a contract with ongoing mutual obligations.  In bankruptcy proceedings, ongoing contracts can ordinarily be rejected by the bankruptcy trustee while prior property transfers are only rarely rolled-back.

Mission Product Holdings Inc. v. Tempnology, LLC (Supreme Court 2019)

The details of this case are fairly obscure bankruptcy issues, but basically begin with the most interesting rule of bankruptcy law that allows the trustee to reject prior executory contracts and leases.

Here, the trademark owner has filed for bankruptcy and rejected a prior trademark license. The question in the case is whether “rejection” under the statute also rescinds the already-granted license. Here, the court holds no – if the rights would survive a contract breach by the licensor then they also survive rejection under the bankruptcy code. Writing for an 8-1 majority, Justice Kagen explains:

The question is whether the debtor-licensor’s rejection of that contract deprives the licensee of its rights to use the trademark.

Continue reading A “Conveyed” Trademark License Cannot be Rescinded in Bankruptcy at Patently-O.

]]>
by Dennis Crouch

Today’s Supreme Court trademark case has several important nuggets for intellectual property owners.  Here are two: First, TM licensing is somewhat clarified with the holding that a bankrupt mark-holder cannot simply cancel prior licenses as part of the bankruptcy. Second, the court’s holding here treats a  TM license effectively as a property right that has been transferred rather than a contract with ongoing mutual obligations.  In bankruptcy proceedings, ongoing contracts can ordinarily be rejected by the bankruptcy trustee while prior property transfers are only rarely rolled-back.

Mission Product Holdings Inc. v. Tempnology, LLC (Supreme Court 2019)

The details of this case are fairly obscure bankruptcy issues, but basically begin with the most interesting rule of bankruptcy law that allows the trustee to reject prior executory contracts and leases.

Here, the trademark owner has filed for bankruptcy and rejected a prior trademark license. The question in the case is whether “rejection” under the statute also rescinds the already-granted license. Here, the court holds no – if the rights would survive a contract breach by the licensor then they also survive rejection under the bankruptcy code. Writing for an 8-1 majority, Justice Kagen explains:

The question is whether the debtor-licensor’s rejection of that contract deprives the licensee of its rights to use the trademark. We hold it does not. A rejection breaches a contract but does not rescind it. And that means all the rights that would ordinarily survive a contract breach, including those conveyed here, remain in place.

Entering into property-like language, the court explains the holding as based upon “the general bankruptcy rule that the estate cannot possess anything more than the debtor did outside bankruptcy.”

I’ll note here that the court alludes to the possibility of drafting trademark licenses in ways that they could be rescinded in bankruptcy. So, be cautious about that language.

Justice Gorsuch wrote in dissent – arguing that the case should be dismissed because there is no longer any live controversy since. The license expired during litigation.

]]>
https://patentlyo.com/patent/2019/05/trademark-rescinded-bankruptcy.html/feed 3
Patently-O Bits and Bytes by Juvan Bonni https://patentlyo.com/patent/2019/05/patently-bits-and-bytes-by-juvan-bonni-23.html https://patentlyo.com/patent/2019/05/patently-bits-and-bytes-by-juvan-bonni-23.html#comments Mon, 20 May 2019 16:13:19 +0000 https://patentlyo.com/?p=26958 Patently-O Bits and Bytes by Juvan Bonni

Recent Headlines in the IP World:

  • Zoë LaRock: Apple has Patented an In-Bed Health Tracking System (Source Business Insider)
  • Alfred Wong: Micron Waste Secures US Design Patent for Waste Treatment Technology (Source: Yahoo! Finance)
  • Amelia Tudo: Theralase Granted Notice of Acceptance for PhotoDynamic Compounds by Chinese Patent Office (Source: Associated Press)
  • Jacob Kastrenakes: Samsung and Huawei End Years-Long Patent Battle (Source: The Verge)
  • Mark Gurman: First Patents Surface for Dyson Electric Car Planned for 2021 (Source: Bloomberg)

Commentary and Journal Articles:

  • Atty. Stephen McBride and Atty. Michael D. West: The Intersection Of Octane Fitness And Alice (Source: Mondaq)
  • Prof. Robert Fellmeth: Cartel Control of Attorney Licensure and the Public Interest (Source: SSRN)
  • Prof. Robert Burrell and Prof. Michael Handler: Trademark Transactions in Common Law Countries: Liberalisation and Its Limits (Source: SSRN)

New Job Postings on Patently-O:

  • Ballard Spahr LLP–Part-Time Patent Associate or Agent
  • MH2 Technology Law Group, LLP
  • DiBerardino McGovern IP Group
  • Ballard Spahr LLP–IP Attorney or Agent
  • Saint Gobain North America
  • Intellectual Property Owners Association
  • The Kudelski Group
  • Bejin Bieneman, PLC
  • Caldwell Intellectual Property Law
  • Dority & Manning
  • AstraZeneca
  • Shay Glenn LLP
  • Klarquist Sparkman, LLP–Patent Attorney
  • Klarquist Sparkman, LLP–Patent Attorney
  • Klarquist Sparkman, LLP–Litigation Associate
  • Klarquist Sparkman, LLP–Patent Attorney
  • Jones Robb, PLLC
  • Cabinet Beau de Loménie
  • Daly, Crowley, Mofford & Durkee, LLP
  • Harrity & Harrity, LLP
  • Leydig, Voit & Mayer
  • Roberts Mlotkowski Safran Cole & Calderon, P.C.

Continue reading Patently-O Bits and Bytes by Juvan Bonni at Patently-O.

]]>
Patently-O Bits and Bytes by Juvan Bonni

Recent Headlines in the IP World:

Commentary and Journal Articles:

New Job Postings on Patently-O:

]]>
https://patentlyo.com/patent/2019/05/patently-bits-and-bytes-by-juvan-bonni-23.html/feed 19
More Monkey Business in IP Law https://patentlyo.com/patent/2019/05/more-monkey-business.html https://patentlyo.com/patent/2019/05/more-monkey-business.html#comments Fri, 17 May 2019 15:43:49 +0000 https://patentlyo.com/?p=26943 More Monkey Business in IP Law

by Dennis Crouch

In re: Infinity Headwear & Apparel, Docket No. 18-01998 (Fed. Cir. 2019).

This case is fairly silly – The claims at issue cover a hooded blanket and stuffed toy combination — found invalid reexamination. On appeal, the patentee argued that the PTAB had conducted an improper claim construction that “equated a monkey with the claimed hood.”

Unlike the present invention, however, Katz’s hooded jacket includes a stuffed monkey attached to, or forming, the back portion of the hood. . . .

[U]nlike the present invention where the hood itself forms the stuffed toy, Katz’s hood is stuffed into monkey to form the stuffed toy. Also, in Katz, a stuffed toy always exists because monkey, which includes separately stuffed arms and legs, is sewn to the back portion of hood. In contrast, in the present invention, no stuffed toy exists until blanket is stuffed into hood.

Invalidity affirmed on appeal (R.36).  Images from the invalidated patent and the key prior art (Katz) are shown below.

 

Yes, I am aware that this case – especially as whimsically presented here – pushes against my call for the Federal Circuit to actually write opinions.

Continue reading More Monkey Business in IP Law at Patently-O.

]]>
More Monkey Business in IP Law

by Dennis Crouch

In re: Infinity Headwear & Apparel, Docket No. 18-01998 (Fed. Cir. 2019).

This case is fairly silly – The claims at issue cover a hooded blanket and stuffed toy combination — found invalid reexamination. On appeal, the patentee argued that the PTAB had conducted an improper claim construction that “equated a monkey with the claimed hood.”

Unlike the present invention, however, Katz’s hooded jacket includes a stuffed monkey attached to, or forming, the back portion of the hood. . . .

[U]nlike the present invention where the hood itself forms the stuffed toy, Katz’s hood is stuffed into monkey to form the stuffed toy. Also, in Katz, a stuffed toy always exists because monkey, which includes separately stuffed arms and legs, is sewn to the back portion of hood. In contrast, in the present invention, no stuffed toy exists until blanket is stuffed into hood.

Invalidity affirmed on appeal (R.36).  Images from the invalidated patent and the key prior art (Katz) are shown below.

 

Yes, I am aware that this case – especially as whimsically presented here – pushes against my call for the Federal Circuit to actually write opinions. The PTAB decision is based upon anticipation, and the patentee provided a series of explanations regarding the distinction between its claims and the single prior art reference. I suspect that the Federal Circuit would actually have a difficult time penning the anticipation case even here.

]]>
https://patentlyo.com/patent/2019/05/more-monkey-business.html/feed 22
Federal Circuit has No Opinion; Senju Asks the Supreme Court for Its https://patentlyo.com/patent/2019/05/federal-circuit-opinion-supreme.html https://patentlyo.com/patent/2019/05/federal-circuit-opinion-supreme.html#comments Wed, 15 May 2019 16:24:51 +0000 https://patentlyo.com/?p=26929 Federal Circuit has No Opinion; Senju Asks the Supreme Court for Its

by Dennis Crouch

Back in 2017, I published an article condemning Federal Circuit’s ramped-up practice of issuing R. 36 judgments in cases on appeal from the USPTO.  Rather than simply arguing about policy, I looked at the statute and concluded that Section 144 of the Patent Act requires the Federal Circuit to issue its opinion, not just judgmentsDennis Crouch, Wrongly Affirmed Without Opinion, 52 Wake Forest L. Rev. 561 (2017). Over the past two years many petitioners have raised this argument to both the Federal Circuit and the U.S. Supreme Court.  However, neither court has responded (denying those petitions without opinion).

Now comes Senju Pharmaceutical Co., Ltd., et al. v. Akorn, Inc., No. 18-1418 (Supreme Court 2019) with the following two questions:

  1. Whether 35 U.S.C. § 144’s directive that the Federal Circuit “shall issue … its mandate and opinion” in all appeals from the Patent and Trademark Office precludes the Federal Circuit from resolving such appeals through a Rule 36 judgment of affirmance without opinion.
  2. Whether, under this Court’s decisions in Graham v.

Continue reading Federal Circuit has No Opinion; Senju Asks the Supreme Court for Its at Patently-O.

]]>
Federal Circuit has No Opinion; Senju Asks the Supreme Court for Its

by Dennis Crouch

Back in 2017, I published an article condemning Federal Circuit’s ramped-up practice of issuing R. 36 judgments in cases on appeal from the USPTO.  Rather than simply arguing about policy, I looked at the statute and concluded that Section 144 of the Patent Act requires the Federal Circuit to issue its opinion, not just judgmentsDennis Crouch, Wrongly Affirmed Without Opinion, 52 Wake Forest L. Rev. 561 (2017). Over the past two years many petitioners have raised this argument to both the Federal Circuit and the U.S. Supreme Court.  However, neither court has responded (denying those petitions without opinion).

Now comes Senju Pharmaceutical Co., Ltd., et al. v. Akorn, Inc., No. 18-1418 (Supreme Court 2019) with the following two questions:

  1. Whether 35 U.S.C. § 144’s directive that the Federal Circuit “shall issue … its mandate and opinion” in all appeals from the Patent and Trademark Office precludes the Federal Circuit from resolving such appeals through a Rule 36 judgment of affirmance without opinion.
  2. Whether, under this Court’s decisions in Graham v. John Deere Co., 383 U.S. 1 (1966), and KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Patent Trial and Appeal Board must consider all relevant evidence, including any objective indicia of non-obviousness, when assessing whether a patent is invalid under 35 U.S.C. § 103.

[Read the Petition].

= = = = =

Senju’s U.S. Patent 6,114,319 claims an emulsified difluprednate (DUREZOL) used in a eye dropper to treat inflammatory eye disorders.  The claimed composition includes castor oil, and polyoxyethylene (20) sorbitan monooleat.

DUREZOL (difluprednate ophthalmic emulsion) Structural Formula Illustration

At the time of the invention (2000), difluprednate was known for the treatment of eye ailments; and the prior art also taught how to formulate steroids in emulsions in ways recited by the patent document.  However, Senju argued against any motivation to combine the prior art by migrating known steroidal suspensions into an emulsion. In addition, Senju presented objective evidence of non-obviousness: including unexpected results and industry praise.  Senju also asked the court to draw an inference from the fact that no other steroid emulsion has been approved by the FDA:

If [Akorn’s] argument that the teachings of Ding made emulsions an obvious choice were correct (which it is not), then one would expect to see several other FDA-approved emulsions after Ding was published—but we do not. . . .

[I]f a steroid eye drop emulsion were obvious in light of the prior art, then some industry player—including the assignees of the scientists whose inventions supposedly rendered petitioners’ invention obvious—would have chosen that formulation. The fact that none did is strong objective evidence of non-obviousness.

These secondary consideration arguments were ignored by the PTAB (although others were considered).  On appeal, the Federal Circuit affirmed without opinion and denied Senju’s petition for rehearing en banc.

= = = = =

 

]]>
https://patentlyo.com/patent/2019/05/federal-circuit-opinion-supreme.html/feed 45
Peter v. NantKwest: Attorney Fees for Challenging PTO Decisions https://patentlyo.com/patent/2019/05/nantkwest-challenging-decisions.html https://patentlyo.com/patent/2019/05/nantkwest-challenging-decisions.html#comments Tue, 14 May 2019 19:12:50 +0000 https://patentlyo.com/?p=26927 Peter v. NantKwest, Inc., No. 18-801 (Supreme Court 2019)

I believe there are many situations where it makes sense to award reasonable costs and attorney fees to the prevailing party.  It goes further to ensure that the injured party is ‘made whole’ and it also discourages folks to push forward with weak arguments.

That said, I don’t like 35 U.S.C. 145. That provision awards the USPTO “all the expenses of the proceedings” regardless of whether the agency wins or loses.  The provision works to discourage the filing of Civil Actions to obtain a patent.  In NantKwest, the USPTO is asking that “all the expenses” be interpreted to include its personnel expenses, including attorney fees, win-or-lose.  The Federal Circuit ruled against the PTO and denied such fees, but the Supreme Court has agreed to hear the case:

Whether the phrase “[a]ll the expenses of the proceedings” in 35 U.S.C. 145 encompasses the personnel expenses the USPTO incurs when its employees, including attorneys, defend the agency in Section 145 litigation.

USPTO’s opening merits brief is due later this week, with amicus filings shortly thereafter.

Until recently, the case was known as Iancu v.

Continue reading Peter v. NantKwest: Attorney Fees for Challenging PTO Decisions at Patently-O.

]]>
Peter v. NantKwest, Inc., No. 18-801 (Supreme Court 2019)

I believe there are many situations where it makes sense to award reasonable costs and attorney fees to the prevailing party.  It goes further to ensure that the injured party is ‘made whole’ and it also discourages folks to push forward with weak arguments.

That said, I don’t like 35 U.S.C. 145. That provision awards the USPTO “all the expenses of the proceedings” regardless of whether the agency wins or loses.  The provision works to discourage the filing of Civil Actions to obtain a patent.  In NantKwest, the USPTO is asking that “all the expenses” be interpreted to include its personnel expenses, including attorney fees, win-or-lose.  The Federal Circuit ruled against the PTO and denied such fees, but the Supreme Court has agreed to hear the case:

Whether the phrase “[a]ll the expenses of the proceedings” in 35 U.S.C. 145 encompasses the personnel expenses the USPTO incurs when its employees, including attorneys, defend the agency in Section 145 litigation.

USPTO’s opening merits brief is due later this week, with amicus filings shortly thereafter.

Until recently, the case was known as Iancu v. NantKwest.  However, in a recent letter to the Supreme Court, Solicitor Noel Francisco indicated that Iancu “is recused in this matter.” Solicitor Francisco suggested that Laura Peter be substituted as petitioner in her official capacity as the Deputy Director of the United States
Patent and Trademark Office.  Thus, the case has become Peter v. NantKwest.

The letter does not indicate the reason for Iancu’s recusal. However, NantKwest is represented by top advocate Morgan Chu from Irell & Manella.  Iancu was managing partner at Irell when the representation began.

]]>
https://patentlyo.com/patent/2019/05/nantkwest-challenging-decisions.html/feed 14
If you want it, Claim it https://patentlyo.com/patent/2019/05/you-want-claim.html https://patentlyo.com/patent/2019/05/you-want-claim.html#comments Tue, 14 May 2019 15:01:22 +0000 https://patentlyo.com/?p=26918 by Dennis Crouch

Two prosecutions lessons from this case: (1) if you are concerned about obviousness, be careful of broadening statements in the specification; (2) if you want to claim a particular action, particularly claim it.  

BTG Int’l. Ltd. v. Amneal Pharms. LLC (Fed. Cir. 2019) [BTG_Decision]

This is a consolidated appeal from four different district court cases and five different inter partes review cases.  All the cases focus on BTG’s U.S. Patent No. 8,822,438 (hormone based chemotherapy).  For once, the PTAB and District Court decisions meshed – all finding the claims invalid as obvious.  On appeal, the Federal Circuit focused on one of the PTAB decisions and affirmed — with result of mooting the remaining appeals.

The ‘438 patent claims a method of “treatment” by providing a patient with (1) “a therapeutically effective amount of abiraterone acetate” and (2) “a therapeutically effective amount of prednisone.”

The patentee’s primary argument on appeal is that the “treatment” limitation in the preamble should be focused on anti-cancer treatment — and particularly that the “therapeutically effective amount of prednisone” should have an anti-cancer effect rather than ‘merely’ a palliative effect. 

Continue reading If you want it, Claim it at Patently-O.

]]>
by Dennis Crouch

Two prosecutions lessons from this case: (1) if you are concerned about obviousness, be careful of broadening statements in the specification; (2) if you want to claim a particular action, particularly claim it.  

BTG Int’l. Ltd. v. Amneal Pharms. LLC (Fed. Cir. 2019) [BTG_Decision]

This is a consolidated appeal from four different district court cases and five different inter partes review cases.  All the cases focus on BTG’s U.S. Patent No. 8,822,438 (hormone based chemotherapy).  For once, the PTAB and District Court decisions meshed – all finding the claims invalid as obvious.  On appeal, the Federal Circuit focused on one of the PTAB decisions and affirmed — with result of mooting the remaining appeals.

The ‘438 patent claims a method of “treatment” by providing a patient with (1) “a therapeutically effective amount of abiraterone acetate” and (2) “a therapeutically effective amount of prednisone.”

The patentee’s primary argument on appeal is that the “treatment” limitation in the preamble should be focused on anti-cancer treatment — and particularly that the “therapeutically effective amount of prednisone” should have an anti-cancer effect rather than ‘merely’ a palliative effect.  The prior art apparently indicated a combination of chemo + prednisone, but did not specifically indicate that the prednisone had anti-cancer impact.

On appeal, the Federal Circuit agreed with the PTO that the “treatment” element should be broadly construed.  This was seemingly a simple case because the patentee used traditional broad language in the specification:

The specification states that a “therapeutic agent” may be either “an anti-cancer agent or a steroid.”

What this means is that the prior art’s use of prednisone as a steroid (for palliative care) directly reads on the claims.

To be fair to the patentee, the patent focuses substantially on the reality that prednisone was found by the patentee to have anti-cancer effects itself.  On appeal, the court effectively says – ‘if you wanted to claim that prednisone as an anti-cancer treatment, write it in the claims.’

 

]]>
https://patentlyo.com/patent/2019/05/you-want-claim.html/feed 7
Although Motivated to Try; No Reasonable Expectation of Success https://patentlyo.com/patent/2019/05/motivated-reasonable-expectation.html https://patentlyo.com/patent/2019/05/motivated-reasonable-expectation.html#comments Mon, 13 May 2019 16:21:00 +0000 https://patentlyo.com/?p=26908 Although Motivated to Try; No Reasonable Expectation of Success

by Dennis Crouch

Novartis Pharm. v. West-Ward Pharm. (Fed. Cir. 2019)

West-Ward (now known as Hikma) is seeking to make and sell a generic version of the Novartis chemotherapy drug everolimus (Afinitor).  After filing its Abbreviated New Drug Application (ANDA), Novartis sued, alleging infringement of its U.S. Patent 8,410,131.

Following a bench trial, the district court sided with the patentee – finding the claims enforceable – not obvious. Novartis Pharm. Corp. v. West-Ward Pharm. Int’l Ltd., 287 F. Supp. 3d 505 (D. Del. 2017).  On appeal, the Federal Circuit has affirmed.

The claims at issue are method-of-treatment claims with one step — “administering … a therapeutically effective amount” of everolimus.  The preamble of claim 1 indicates that the treatment is for “inhibiting growth of solid excretory system tumors.”  Dependent claims 2 and 3 add limitations that the treatment is for a kidney tumor or “advanced solid excretory tumor.”

At the time of the patent filing, the compound (everolimus) was already known as an mTOR inhibitor; and mTOR inhibiors were known to inhibit tumor growth. Everolimus a derivative of rapamycin and structurally similar to temsirolimus — both of which were already identified as chemotherapy treatments for similar cancer types.

Continue reading Although Motivated to Try; No Reasonable Expectation of Success at Patently-O.

]]>
Although Motivated to Try; No Reasonable Expectation of Success

by Dennis Crouch

Novartis Pharm. v. West-Ward Pharm. (Fed. Cir. 2019)

West-Ward (now known as Hikma) is seeking to make and sell a generic version of the Novartis chemotherapy drug everolimus (Afinitor).  After filing its Abbreviated New Drug Application (ANDA), Novartis sued, alleging infringement of its U.S. Patent 8,410,131.

Following a bench trial, the district court sided with the patentee – finding the claims enforceable – not obvious. Novartis Pharm. Corp. v. West-Ward Pharm. Int’l Ltd., 287 F. Supp. 3d 505 (D. Del. 2017).  On appeal, the Federal Circuit has affirmed.

The claims at issue are method-of-treatment claims with one step — “administering … a therapeutically effective amount” of everolimus.  The preamble of claim 1 indicates that the treatment is for “inhibiting growth of solid excretory system tumors.”  Dependent claims 2 and 3 add limitations that the treatment is for a kidney tumor or “advanced solid excretory tumor.”

At the time of the patent filing, the compound (everolimus) was already known as an mTOR inhibitor; and mTOR inhibiors were known to inhibit tumor growth. Everolimus a derivative of rapamycin and structurally similar to temsirolimus — both of which were already identified as chemotherapy treatments for similar cancer types.

The district court took this evidence and agreed that a person of skill in the art would have been motivated to pursue everolimus as a potential treatment for advanced solid tumors. However, the court’s opinion then seemed to contradict itself by saying that there was no motivation to combine the prior art.   The district court also found that everolimus was one of many different research paths and that the prior art was not sufficient to create “a reasonable expectation of success in using everolimus” to treat advanced kidney tumors.

On appeal, the Federal Circuit rejected the district court’s confusing motivation-to-combine analysis, but agreed ultimately that the claims were not proven invalid (with clear and convincing evidence).  In particular, the appellate panel agreed with the lack of reasonable expectation of success.

Truthfully, this doctrine confuses me.  The claims simply call for administering an effective amount of everolimus to treat a solid tumor; and the courts held that a person of skill in the art would have been motivated to pursue administration of everolimus as a potential treatment. In addition to this motivation, the courts also require clear and convincing evidence of a “reasonable expectation of success.”  You might divide these into “a reason to try” and “reason to believe that the attempt would be successful.”

A party seeking to invalidate a patent based on obviousness must prove “by clear and convincing evidence that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” Procter & Gamble Co. v. Teva Pharm. USA, Inc., 566 F.3d 989 (Fed. Cir. 2009) (quoting Pfizer, Inc. v. Apotex, Inc., 480
F.3d 1348 (Fed. Cir. 2007)).

Another way to think about the doctrine here is that a creation that is “obvious to try” would still be patentable if the attempt was unlikely to succeed.  This situation comes up most often in situations involving many different potential solutions and it would be “obvious” to try each one until the solution is found.

Motivation to Combine: Regarding motivation to combine, the Federal Circuit particularly held that the district court had improperly required the patentee to prove that PHOSITA “would have selected everolimus over other prior art treatment methods.”  That heightened standard does not comport with the law and thus is not required.

I’ll note here that the district court’s approach was appropriate in the setup involving modification of a lead compound.  Precedent asks for an indication that the lead compound would have been selected over other potential lead compounds.  Here, however, the compound was already known and the only “new” element is giving an effective amount to a patient for the purpose of treating a particular illness.

The district court … appeared to apply or conflate the standard for these types of cases by requiring clear and convincing evidence that a person of ordinary skill “would have been motivated to select everolimus.” To the extent the district court required a showing that a person of ordinary skill would have selected everolimus over other prior art compounds, it erred. The proper inquiry is whether a person of ordinary skill would have been motivated to modify the prior art disclosing use of temsirolimus to treat advanced RCC with the prior art disclosing everolimus. This question was answered affirmatively when the district court found that a person of ordinary skill “would have been motivated to pursue everolimus as one of several potential treatment options for advanced solid tumors, including advanced RCC.”

Reasonable Expectation of Success: Despite a motivation to pursue treatment, the district and appellate court found that the claimed treatment would not have been obvious because the prior art did not show a sufficiently high “expectation of success.”

Note here that the requirement is an “expectation” of success — would PHOSITA have expected that the drug would work?  In this case, at the time of the invention, there was no clinical data on everolimus (as an anti cancer agent) and no completed trials for the other similar compounds (only phase I safety-focused data).  And, the district court noted that there had been many many past attempts to find a compound that works — most of them starting with some promise.   On appeal, the Federal Circuit found that the rebuttal evidence and arguments made by the patentee were sufficient to defeat an obviousness finding — giving deference to the district court factual findings.

The district court reviewed the [presented] evidence, determined that the molecular biology of advanced RCC was not fully understood, recognized the limitations in the temsirolimus phase I data, and found that such data did not provide a person of ordinary skill with a reasonable expectation of success. We hold that the district court did not err in its determination and affirm its conclusion that claims 1–3 of the ’131 patent would not have been obvious in view of the asserted prior art.

Non-Obviousness affirmed.

]]>
https://patentlyo.com/patent/2019/05/motivated-reasonable-expectation.html/feed 58
What happens when Patents Are Later Invalidated? https://patentlyo.com/patent/2019/05/happens-patents-invalidated.html https://patentlyo.com/patent/2019/05/happens-patents-invalidated.html#comments Fri, 10 May 2019 15:53:56 +0000 https://patentlyo.com/?p=26897 by Dennis Crouch

Prism Technologies LLC, v.  Sprint Spectrum L.P., dba Sprint PCS, SCT Docket No. 18-1397 (Supreme Court 2019)

The Supreme Court has received a new eligibility challenge from Prism Tech — although this one is in the form of a civil procedure question:

  1. Whether the Federal Circuit Court of Appeals may retroactively expand the scope of its appellate jurisdiction to invalidate patent claims under 35 U.S.C.
    § 101 when those claims were not raised in the petitioner’s appeal or necessary for its judgment?
  2. Whether a district court may disregard a mandate from the Federal Circuit for entry of judgment, and ignore this Court’s precedent, by retroactively applying
    the collateral estoppel doctrine based on a ruling in a subsequent action where there is no mutuality of claims or defenses?

Prism has parallel infringement lawsuits against Sprint and T-Mobile.

  • In the case against Sprint, the jury found infringement and awarded $30 million in damages.  Sprint did not challenge the patent’s validity at trial or on appeal — damages affirmed in a 2016 appellate decision.
  • In the case against T-Mobile, the jury sided with the defendant and found no-infringement. 

Continue reading What happens when Patents Are Later Invalidated? at Patently-O.

]]>
by Dennis Crouch

Prism Technologies LLC, v.  Sprint Spectrum L.P., dba Sprint PCS, SCT Docket No. 18-1397 (Supreme Court 2019)

The Supreme Court has received a new eligibility challenge from Prism Tech — although this one is in the form of a civil procedure question:

  1. Whether the Federal Circuit Court of Appeals may retroactively expand the scope of its appellate jurisdiction to invalidate patent claims under 35 U.S.C.
    § 101 when those claims were not raised in the petitioner’s appeal or necessary for its judgment?
  2. Whether a district court may disregard a mandate from the Federal Circuit for entry of judgment, and ignore this Court’s precedent, by retroactively applying
    the collateral estoppel doctrine based on a ruling in a subsequent action where there is no mutuality of claims or defenses?

Prism has parallel infringement lawsuits against Sprint and T-Mobile.

  • In the case against Sprint, the jury found infringement and awarded $30 million in damages.  Sprint did not challenge the patent’s validity at trial or on appeal — damages affirmed in a 2016 appellate decision.
  • In the case against T-Mobile, the jury sided with the defendant and found no-infringement.  Prism appealed, but ended up in a worse situation — with a 2017 holding from the Federal Circuit that the asserted claims are ineligible under 35 U.S.C. 101.

The basic question here is whether the late-stage invalidity in T-Mobile can be used to cancel Sprint’s adjudged liability.  So far, the courts have sided with Sprint, although it was important for Sprint’s case that it took pains to slow-walk its post-appeal activity (request for rehearing and petition for certiorari) so that the case still had some life by the time the T-Mobile decision was released.

June 23, 2017 – the Federal Circuit invalidated the patents in the T-Mobile decision. June 27, 2017 (two business days later) – Sprint filed a R.60(b) motion for Relief from Judgment based upon the Federal Circuit’s binding authority “that the patent claims underlying that judgment are invalid as unpatentable under 35 U.S.C. § 101.”  The district court complied and set-aside its prior verdict and the Federal Circuit affirmed — finding no abuse of discretion.

As part of the Sprint timeline, it is notable that the Federal Circuit issued its mandate in May 2017 (before the T-Mobile invalidity decision).  After the T-Mobile decision, Sprint unsuccessfully requested that the Federal Circuit recall the mandate.  However, the court did issue a statement that recall was “unnecessary” because the “mandate does not alter how the district court should decide the preclusive effect of the T-Mobile ruling, which did not exist in May 2017.”

Another important element here a big question about whether the T-Mobile invalidity applied to all of the claims at issue in Sprint (the Federal Circuit retrospectively said yes).

The new petition thus argues that “the Federal Circuit’s interpretation of the T-Mobile Invalidity Decision as covering the Sprint Only Claims is flawed [as a] retroactive expansion of appellate jurisdiction.”

]]>
https://patentlyo.com/patent/2019/05/happens-patents-invalidated.html/feed 38
Who needs Proof of Actual Confusion? Not a TM Plaintiff https://patentlyo.com/patent/2019/05/actual-confusion-plaintiff.html https://patentlyo.com/patent/2019/05/actual-confusion-plaintiff.html#comments Thu, 09 May 2019 17:49:57 +0000 https://patentlyo.com/?p=26891 Who needs Proof of Actual Confusion? Not a TM Plaintiff

by Dennis Crouch

Swagway v Segway and ITC (Fed. Cir. 2019)

The case caption suggests the cause of action – trademark infringement.  Segway complained to the ITC, and the ITC agreed that Swagway’s self-balancing hoverboard products infringe — although it found no infringement for Swagway’s use of SwagTron.  On appeal, the Federal Circuit has affirmed.

The fundamental question in trademark infringement cases is whether “consumers would likely confuse the alleged infringer’s mark with the asserted mark.”  Likelihood of confusion is typically proven based upon a set of factors known as the DuPont factors. In re E.I. DuPont DeNemours & Co., 476 F.2d 1357 (C.C.P.A. 1973).  Although the DuPont case focused on TM registration, courts are now applying the same factors in infringement cases.  See, In re Guild Mortg. Co., 912 F.3d 1376 (Fed. Cir. 2019).

Swagway argued on appeal that the most critical factor in this case should be whether anyone is actually confused.  The products have been sold concurrently for several years any “likely” confusion should be apparent in proof of actual confusion. 

Continue reading Who needs Proof of Actual Confusion? Not a TM Plaintiff at Patently-O.

]]>
Who needs Proof of Actual Confusion? Not a TM Plaintiff

by Dennis Crouch

Swagway v Segway and ITC (Fed. Cir. 2019)

The case caption suggests the cause of action – trademark infringement.  Segway complained to the ITC, and the ITC agreed that Swagway’s self-balancing hoverboard products infringe — although it found no infringement for Swagway’s use of SwagTron.  On appeal, the Federal Circuit has affirmed.

The fundamental question in trademark infringement cases is whether “consumers would likely confuse the alleged infringer’s mark with the asserted mark.”  Likelihood of confusion is typically proven based upon a set of factors known as the DuPont factors. In re E.I. DuPont DeNemours & Co., 476 F.2d 1357 (C.C.P.A. 1973).  Although the DuPont case focused on TM registration, courts are now applying the same factors in infringement cases.  See, In re Guild Mortg. Co., 912 F.3d 1376 (Fed. Cir. 2019).

Swagway argued on appeal that the most critical factor in this case should be whether anyone is actually confused.  The products have been sold concurrently for several years any “likely” confusion should be apparent in proof of actual confusion.  No substantial actual confusion was proven – and Swagway suggests that should end the conversation with a no-infringement verdict.

The problem for Swagway here is that the Federal Circuit has substantial precedent on lack of actual confusion during concurrent use — requiring that the accused infringer show “long-term, concurrent use in the same channels of trade.”  And, Swagway did not provide evidence to meet that requirement.

As I was writing this post in a coffee shop, I asked one person whether she would be confused that Swagways were actually Segways — she told me “no.” It turns out that Segway presented no survey evidence of likelihood of confusion.  No matter, Federal Circuit precedent holds that a lack of survey evidence does not lead to an inference that no confusion exists. “The Commission therefore did not err in according no weight to Segway’s lack of survey evidence.”

= = = =

In a separate part of the decision, the Federal Circuit also issued an interesting civil procedure squb:”[W]e hold that the Commission’s trademark decisions, like its patent decisions, do not have preclusive effect.”

 

]]>
https://patentlyo.com/patent/2019/05/actual-confusion-plaintiff.html/feed 10
Federal Circuit: “The Doctrine of Equivalents Applies ONLY in Exceptional Cases” https://patentlyo.com/patent/2019/05/doctrine-equivalents-exceptional.html https://patentlyo.com/patent/2019/05/doctrine-equivalents-exceptional.html#comments Thu, 09 May 2019 02:36:06 +0000 https://patentlyo.com/?p=26885 Amgen Inc. v. Sandoz Inc. (Fed. Cir. 2019)

Amgen sued Sandoz for infringing its U.S. Patents 6,162,427 and 8,940,878. Both patents relate to Amgen’s biologic products (filgrastim and pefilgrastim) used as treatments for neutropenia. The lawsuit here is unique because it was filed under Biologics Price Competition and Innovation Act (“BPCIA”).  As an add-on to Hatch-Waxman, the BPCIA defines submission of an FDA biosimilar application (aBLA) as a form of patent infringement.  See 35 U.S.C. § 271(e)(2)(C) (defining submission of an aBLA as an act of patent infringement).

The ‘472 patent claims a “method of treating a disease” by giving a patient Filgrastim/Pegfilgrastim prior to chemotherapy in order to stimulate stem-cell growth.   After treatment with Filgrastim, the claims require “administering to the patient a disease treating-effective amount of at least one chemotherapeutic agent.”  The idea here appears to be that the Filgrastim will stimulate stem-cell growth so that stem cells will survive harsh cancer treatment.

In this case, Amgen argued that its “disease treating-effective amount of … chemotherapeutic agent” would not necessary require that the chemotherapy drug treat the underlying disease — rather, Amgen argues that the drug could be used to further mobilize stem cells. 

Continue reading Federal Circuit: “The Doctrine of Equivalents Applies ONLY in Exceptional Cases” at Patently-O.

]]>
Amgen Inc. v. Sandoz Inc. (Fed. Cir. 2019)

Amgen sued Sandoz for infringing its U.S. Patents 6,162,427 and 8,940,878. Both patents relate to Amgen’s biologic products (filgrastim and pefilgrastim) used as treatments for neutropenia. The lawsuit here is unique because it was filed under Biologics Price Competition and Innovation Act (“BPCIA”).  As an add-on to Hatch-Waxman, the BPCIA defines submission of an FDA biosimilar application (aBLA) as a form of patent infringement.  See 35 U.S.C. § 271(e)(2)(C) (defining submission of an aBLA as an act of patent infringement).

The ‘472 patent claims a “method of treating a disease” by giving a patient Filgrastim/Pegfilgrastim prior to chemotherapy in order to stimulate stem-cell growth.   After treatment with Filgrastim, the claims require “administering to the patient a disease treating-effective amount of at least one chemotherapeutic agent.”  The idea here appears to be that the Filgrastim will stimulate stem-cell growth so that stem cells will survive harsh cancer treatment.

In this case, Amgen argued that its “disease treating-effective amount of … chemotherapeutic agent” would not necessary require that the chemotherapy drug treat the underlying disease — rather, Amgen argues that the drug could be used to further mobilize stem cells.  Both the district and appellate courts rejected this claim construction proposal — noting that the focus of the claims is “treating a disease” and construing the claim otherwise does not make sense:

As an initial matter, the preamble of claim 1, as construed, arguably precludes Amgen’s construction. The district court construed the preamble, “[a] method of treating a disease requiring peripheral stem cell transplantation,” as requiring that the stem cell transplant be incorporated as a component of a method of treating an underlying disease, such as cancer, Claim Construction Order, 2016 WL 4137563, at *5–6, and Amgen does not dispute that construction on appeal. The claimed method therefore must be performed to treat an underlying disease. As the claim itself states, the “disease treating-effective amount” of a chemotherapeutic agent does precisely that.

The court suggests here that if Amgen had not wanted to claim treatment of an underlying disease, it should have drafted different claims. “Had Amgen simply wanted to claim a method of mobilizing stem cells, in any context, it could have done so.”

The ‘878 patent is not a method of treatment but instead directed to a multi-step method of preparing purified biologic products.  This begins with growing cells that express the protein of interest and ends with eluting the protein from a separation matrix such as ion exchange resin.

In its claim construction, the district court held that the claims required separate steps of “applying a refold solution”; washing the solution; and eulting the protein.  That construction eliminated infringement since Sandoz process only requires one step — applying the refold solution without washing or eluting.  On appeal, the Federal Circuit argued that Sandoz’ approach is effectively the same — and that its claims should be read as functional requirements rather than actual process steps.

The Federal Circuit sided with the accused infringer — holding that each step in the method is a separate process step that must be done in a particular order.  Most notably, the court noted (1) the fact that the patentee had sequentially listed its steps a-g; and (2) the washing and eluting steps are “consistently described in the specification as separate steps performed by different solutions.”

Doctrine of Equivalents: The claim construction here naturally raises a doctrine of equivalents question, which the Federal Circuit also rejected:

Amgen argues that Sandoz’s one-step, one-solution process is insubstantially different from the claimed three-step, three-solution process because it “achieves the same functions (washing and eluting), in substantially the same way (binding protein preferentially compared to contaminants, and then raising salt concentration to reverse protein binding) to achieve the same result (protein purification).”

The Federal Circuit found, however, that the one-step approach offered by Sandoz, “does not function in the same way as the claimed process.”  In particular, the court focused-in on the notion that doctrine of equivalents is handled on an element-by-element level. Here, since each claim step is a separate step occurring in sequence – it would be improper to say that that a single-step approach is the equivalent. The court explains:

The doctrine of equivalents applies only in exceptional cases and is not “simply the second prong of every infringement charge, regularly available to extend protection beyond the scope of the claims.” Duncan Parking Techs., Inc. v. IPS Grp., Inc., 914 F.3d 1347, 1362 (Fed. Cir. 2019) (“[T]he doctrine of equivalents cannot be used to effectively read out a claim limitation . . . because the public has a right to rely on the language of patent claims.” )

Although I follow the court’s line of thinking on claim construction, but the court’s limit of the DOE to “exceptional cases” seems to be a major step without precedential backing. 

]]>
https://patentlyo.com/patent/2019/05/doctrine-equivalents-exceptional.html/feed 35