• Federal Circuit says non-profit EFF has standing in IPR appeal

    In an IPR brought by Electronic Frontier Foundation (EFF), Personal Audio appealed a Board determination that invalidated its patent for storing and distributing episodic media files. Personal Audio challenged the Board’s claim construction, but the Court affirmed the Board. Before reaching the merits, the Court addressed whether EFF had standing to participate in the appeal in view of Consumer Watchdog v. Wisconsin Alumni Research Foundation. In that case, a non-profit organization…

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  • Amgen loses appeal at CAFC in Hospira / Epogen case

    The issue was appeal of a denial of a motion to compel:

    Amgen Inc. (“Amgen”) appeals an order of the United
    States District Court for the District of Delaware denying
    Amgen’s motion to compel discovery from Hospira, Inc.
    (“Hospira”) in a patent infringement case governed by the
    Biologics Price Competition and Innovation Act of 2009

    The material in question was Epogen:

    Hospira filed a subsection (k) application with the
    FDA in December 2014 seeking approval of a biosimilar of
    EPOGEN®, a biological product developed by Amgen and
    approved by the FDA under section 262(a) in 1989. In
    accordance with paragraph (l)(2)(A), Hospira provided a
    copy of its application to Amgen. Hospira did not separately
    provide information concerning “the process . . .
    used to manufacture the biological product”—again, as
    required by the statute—but contends that such information
    was disclosed in its application.

    The motion to compel was denied by D. Delaware for lack of

    Hospira refused Amgen’s discovery requests, and
    Amgen ultimately filed a motion to compel discovery. The
    district court denied Amgen’s motion, stating that the
    cell-culture information sought by Amgen had “essentially,
    no relevance to the patents that are asserted,” J.A. 37,
    a conclusion that Amgen does not now dispute.
    Amgen appealed the district court’s interlocutory order.
    Hospira then moved this court to dismiss Amgen’s
    appeal for lack of jurisdiction. We denied Hospira’s motion,
    but asked the parties to brief “whether this court has
    jurisdiction pursuant to the collateral order doctrine or
    under the All Writs Act.” Order, Amgen, Inc. v. Hospira,
    Inc., No. 16-2179 (Fed. Cir. Aug. 12, 2016), ECF No. 16

    Of note in the case:

    Nothing in Sandoz suggests that the BPCIA somehow
    supplants the preexisting rules of civil procedure. Our
    opinion in Amgen merely acknowledged that a sponsor
    “can access the required information through discovery,”
    794 F.3d at 1356, but our statement did not purport to
    hold that the usual rules governing discovery do not apply
    in the BPCIA context. Nor does anything in Sandoz
    suggest otherwise


    Under Amgen’s reading of the statute,
    an applicant could effectively control the scope of litigation
    under the BPCIA by withholding information under
    paragraph (l)(2)(A), thereby preventing the sponsor from
    identifying and bringing suit on patents related to the
    biological product that the sponsor “believes a claim of
    patent infringement could reasonably be asserted” under
    paragraph (l)(3)(A). We note that the statute penalizes
    sponsors that decline to participate in the BPCIA’s information
    exchanges because under 35 U.S.C. § 271(e)(6)(C),
    a sponsor that fails to list a patent that “should have been
    included in the list described in [paragraph (l)(3)(A)] . . .
    may not bring an action under this section for infringement
    of the patent with respect to the biological product.”
    In contending that a sponsor would be unable to list a
    patent under paragraph (l)(3)(A), Amgen emphasizes that
    the sponsor must form a good-faith belief that a patent
    listed under paragraph (l)(3)(A) “could reasonably be
    asserted.” Amgen asserts that a sponsor listing a patent
    without the benefit of the applicant’s paragraph (l)(2)(A)
    disclosures would later be subject to sanctions under
    Federal Rule of Civil Procedure 11 or antitrust liability
    for asserting baseless claims of patent infringement.


    Amgen’s argument misunderstands the statute. Paragraph
    (l)(3)(A) merely requires the sponsor to list patents
    that it “believes . . . could reasonably be asserted.” (emphasis
    added). The statute provides no sanction for holding
    or asserting a mistaken belief in good faith. Moreover,
    once a patent is listed by the sponsor, the BPCIA’s information
    exchange further requires the applicant to “provide
    to the . . . sponsor, with respect to each patent listed
    . . . a detailed statement that describes, on a claim by
    claim basis, the factual and legal basis of the opinion of
    the subsection (k) applicant that such patent is invalid,
    unenforceable, or will not be infringed.” 42 U.S.C.
    § 262(l)(3)(B)(ii) (emphases added). In other words, once a
    sponsor lists a patent under paragraph (l)(3)(A), the
    applicant must once again come forward with additional
    disclosures under paragraph (l)(3)(B) that inform whether
    “a claim of patent infringement . . . could” or could not
    “reasonably be asserted.” If the applicant fails to comply
    with its obligation to respond under paragraph (l)(3)(B),
    the sponsor would have a reasonable basis for asserting a
    claim of patent infringement.
    Furthermore, under Rule 11, one submits a filing “to
    the best of the person’s knowledge, information, and
    belief, formed after an inquiry reasonable under the
    circumstances.” Fed. R. Civ. P. 11(b). The rule also expressly
    permits factual allegations that “will likely have
    evidentiary support after a reasonable opportunity for
    further investigation or discovery.” Fed. R. Civ. P.
    11(b)(3). Thus, if a sponsor forms a belief based on an
    inquiry limited by an applicant’s withholding of information,
    the sponsor has still satisfied Rule 11. See, e.g.,
    Hoffman-La Roche Inc. v. Invamed Inc., 213 F.3d 1359,
    1363–64 (Fed. Cir. 2000) (affirming denial of Rule 11
    sanctions where patentees unsuccessfully sought manufacturing
    information from defendants before suit and
    “attempted to ascertain whether the processes so used
    were infringing, but were unable to do so”); Morda v.
    Klein, 865 F.2d 782, 785–86 (6th Cir. 1989) (affirming
    denial of Rule 11 sanctions because “[i]t would be particularly
    difficult to fault plaintiffs for a lack of prefiling
    inquiry when, as here, defendants have refused plaintiffs
    access to material information that would bear on certain
    allegations made in the complaint”). The Supreme Court
    appears to have contemplated the filing of suit after an
    applicant fails to disclose information under paragraph
    (l)(2)(A). See Sandoz, 137 S. Ct. at 1676 (“If the applicant
    failed to provide that information, then the sponsor but
    not the applicant, could bring an immediate declaratory
    judgment action pursuant to § 262(l)(9)(C).”).

    There was reference to a Supreme Court decision on finality.

    A final decision of a district court means, with limited exceptions, an order that ends the litigation on the merits and leaves nothing for the district court to do but execute the judgment. Coopers & Lybrand v. Livesay, 437 U.S. 463, 467, 98 S. Ct. 2454, 2457, 57 L. Ed. 2d 351 (1978).

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  • Where parties dispute proper scope of claims, Board must provide an explicit claim construction

    The Board declined to provide a construction of “settling speed” and determined that the claims were not invalid as anticipated. Homeland appealed… When parties dispute the proper scope of claims, the Board must provide an explicit claim construction. The Court may construe the claims de novo. When comparing prior art evidence to properly construed claims, the Court may disregard expert testimony if it is plainly inconsistent with the written record, even if the testimony was unrebutted.


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  • Board’s analysis internally inconsistent, Federal Circuit vacates inter partes reexam

    At the Federal Circuit, Honeywell argued that the Board erred in (1) finding a motivation to combine the references with a reasonable expectation of success, (2) rejecting Honeywell’s objective evidence of patentability, and (3) relying on a new ground of rejection (Omure), without giving Honeywell notice and opportunity to respond. The Court found that the Board improperly relied on inherency to find the claims obvious and in its analysis of motivation to combine. First, the Board’s analysis…

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  • DETAIL (動詞)


    DETAIL (動詞)

    $$ Table 7 details the physical parameters of the cigarettes. / 表7にこれら紙巻タバコの物理的パラメータの詳細を示…

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  • USPTO denies permit to US Inventor for PTAB protest

    US Inventor had planned on staging an event at which the organization would stage a peaceful protest of the Patent Trial and Appeal Board (PTAB). However, a decision by the U.S. Patent and Trademark Office to not approve the event is leaving protesters in jeopardy and may result in patent owners being put in jail. In an appeal letter dated August 10th sent to the USPTO, US Inventor argues that the USPTO’s denial of US Inventor’s use permit application is not permissible under the First…

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  • Appeal of Discovery Order in BPCIA Patent Infringement Case Dismissed for Lack of Jurisdiction and Writ of Mandamus for Compelling Discovery Denied

    AMGEN v. HOSPIRA:  August 10, 2017.  Before Dyk, Bryson and Chen.   Takeaway: The lack of immediate appeal over orders denying discovery of paragraph (l)(2)(A) information under BPCIA does not render such orders “effectively unreviewable” on appeal from a final judgment to qualify for interlocutory review. The reasonableness requirement of paragraph …

    The post Appeal of Discovery Order in BPCIA Patent Infringement Case Dismissed for Lack of Jurisdiction and Writ of Mandamus for Compelling Discovery Denied appeared first on CAFC Blog.

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  • The Seventh Amendment Right to a Jury Trial Does Not Apply to Requests for Attorney’s Fees Under § 285 of the Patent Act

    AIA AMERICA v. AVID RADIOPHARMACEUTICALS:  August 10, 2017.  Before Newman, Lourie, and Hughes.   Takeaway: The Seventh Amendment right to a jury trial does not apply to requests for attorney’s fees under § 285 of the Patent Act. The district court did not err by making factual findings not foreclosed by …

    The post The Seventh Amendment Right to a Jury Trial Does Not Apply to Requests for Attorney’s Fees Under § 285 of the Patent Act appeared first on CAFC Blog.

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  • CAFC Upheld TTAB’s Decision to Deny Registration of a Mark Merely Descriptive of a Feature of Goods and Services

    IN RE:  NORTH CAROLINA LOTTERY:  August 10, 2017.  Before Prost, Chen and Hughes.   Takeaway: As a legal matter, the TTAB did not err by considering the explanatory text of the specimens in the inquiry of whether the mark was descriptive. A mark that merely describes a feature of goods and …

    The post CAFC Upheld TTAB’s Decision to Deny Registration of a Mark Merely Descriptive of a Feature of Goods and Services appeared first on CAFC Blog.

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  • Federal Circuit: No Right to a Jury Trial on Awards of Attorneys’ Fees Under § 285

    This morning the Federal Circuit handed down an opinion, AIA America, Inc. v. Avid Radiopharmaceuticals, holding that there is no right to a jury trial on awards of attorneys’ fees under § 285 of the Patent Act.  The underlying case was an action for infringement relating to two patents “directed to research technologies stemming from the discovery of the ‘Swedish mutation,’ a genetic mutation that is associated with early-onset familial Alzheimer’s disease” (p.2).  The district court held a jury trial on the issue of whether AIA had standing to assert its claims, which resulted in a judgment that it did not.  The Federal Circuit summarily affirmed this judgment in 2014, and the litigation then moved to the issue of whether the defendants were entitled to an award of fees under § 285 (“The court in exceptional cases may award reasonable attorney fees to the prevailing party”).  The district court awarded fees in the amount of almost $4 million, and AIA appealed, arguing that it was entitled to a jury determination.  Not surprisingly, in my view, the Federal Circuit thinks not:
    We first address AIA’s argument that the Seventh Amendment requires a jury trial to decide the facts forming the basis to award attorney’s fees under § 285 of the Patent Act. Specifically, AIA argues that when an award of attorney’s fees is based in part or in whole on a party’s state of mind, intent, or culpability, only a jury may decide those issues. . . .  

    A litigant has a right to a jury trial if provided by statute, or if required by the Seventh Amendment. . . . 

    The Seventh Amendment preserves the right to a jury trial for “[s]uits at common law.” U.S. Const. amend. VII. The phrase “suits at common law” refers to suits in which only legal rights and remedies were at issue, as opposed to equitable rights and remedies. . . . A legal remedy requires a jury trial on demand, while an equitable remedy does not implicate the right to a jury trial. . . .  A two-step inquiry determines whether a modern statutory cause of action involves only legal rights and remedies. Tull v. United States, 481 U.S. 412, 417–18 (1987). First, we must “compare the statutory action to 18th-century actions brought in the courts of England prior to the merger of the courts of law and equity.” Id. at 417. “Second, we examine the remedy sought and determine whether it is legal or equitable in nature.” Id. at 417–18. The Supreme Court has stressed the second step of this test is the more important of the two. . . .

    Turning to the first step, the nature of the claim, English courts for centuries have allowed claims for attorney’s fees in both the courts of law and equity. . . . 

    As to the second step, the nature of the remedy, the fact that the relief sought is monetary does not necessarily make the remedy “legal.” . . . In the context of attorney’s fees, when attorney’s fees are themselves part of the merits of an action, they are regarded as a “legal” remedy. For example, a lawyer’s fee claim against a client is a question for the jury, Simler v. Conner, 372 U.S. 221, 223 (1963) (per curiam), and a claim for attorney’s fees under a contractual indemnification provision is a contractual “legal right” that is also a question for the jury, McGuire v. Russell Miller, Inc., 1 F.3d 1306, 1315–16 (2d Cir. 1993). By contrast, when attorney’s fees are awarded pursuant to a statutory prevailing party provision, they are regarded as an “equitable” remedy because they raise “issues collateral to and separate from the decision on the merits.” . . . 

    Despite the foregoing, AIA argues that if a decision on attorney’s fees involves considerations of a party’s state of mind, intent, and culpability, then those questions must be presented to a jury under the Seventh Amendment. AIA, however, has pointed to no cases finding that once an issue is deemed equitable, a Seventh Amendment right to a jury trial may still attach to certain underlying determinations. . . .

    The court also rejects AIA’s arguments that the district judge was precluded from “making factual findings on issues that were not considered by the jury,” and that AIA was denied its right to due process of law.  Opinion by Judge Hughes, joined by Judges Newman and Lourie.
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  • Linking Patent and Trademark Attorney Fees

    Romag Fasteners v. Fossil is a rare infringement case that involves allegations of both patent and trademark infringement.  The important aspect of the Federal Circuit’s decision here harmonizes the attorney fee requirements for trademark and patent cases. A jury sided with Romag – finding that Fossil’s magnetic snaps infringed both the asserted patent and trademark […]

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  • PPAC meeting comes and goes with no discussion of PTAB conflicts of interest

    At the May PPAC meeting Ruschke deferred questions on issues relating to possible conflicts of interest and specifically indicated the topic of conflicts would be discussed at PPAC’s next quarterly meeting.The PPAC recently convened once again, this time on Thursday, August 3, 2017. No issues of possible conflicts of interest were raised and there was no mention of the conflicts of interest questions that have raised very serious questions about the appearance of impropriety at the PTAB… The…

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