Fish & Richardson Litigation Blog

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Federal Circuit Reverses Denial of Stay Pending CBM Review, Focusing on Simplification and Reduction of Burdens Instead of Categorical Rules.

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Versata Software, Inc. v. Callidus Software, Inc., __ F.3d ___ (Fed. Cir. Nov. 20, 2014) (CHEN, Linn, Mayer) (D. Del.: Robinson) (3 of 5 stars)

Federal Circuit reverses denial of stay under an abuse of discretion standard after finding that all four factors supported granting a stay.

Background:  Versata sued Callidus on three patents (the ’326, ’304, and ’024 patents) covering the management and tracking of sales information by a financial services company. Callidus counterclaimed and asserted its own patents against Versata. Callidus also petitioned for CBM review of all claims in the ‘’325 patent and every independent claim in the ‘’304 and ‘’024 patents. After the PTAB granted the first CBM review, Callidus sought to stay the litigation. Callidus also filed a second CBM petition challenging the remaining claims in the ‘’304 and ‘’024 patents. Continue Reading »

Paragraph IVs and IPRs — Never the Twain Shall Meet? A case challenges ANDA applicants’ ability to file IPRs

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3-Rx-bottles-for-HW-blog-post-Nov-2014Last week I spoke at the Europe Life Sciences IP Summit in Amsterdam. While there were many topics discussed — I presented on the continuing controversy over 35 USC 101 and life science inventions — IPR (inter partes review) continues to be the number one topic on everyone’s minds in relation to the United States. Given this focus, interested practitioners should pay attention to a case I learned about while attending the Summit. The case is challenging whether generic drug companies that rely on paragraph IV certifications in pursuing ANDAs (abbreviated new drug applications) may also challenge a patent under the IPR provisions. The case is pending in the District of New Jersey and is captioned as Senju Pharm. Co., Ltd., et al v. Metrics Inc., et al, No. 1:14-cv-03962-JBS-KMW (D.N.J.). Continue Reading »

Patent “Troll” Reform: Take Two

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On Tuesday, House Judiciary Chairman Bob Goodlatter (R-Va.) made official what was widely assumed: patent “troll” reform legislation is back on the menu.

With the midterm election in the rearview mirror, and the Senate back in Republican hands, legislators will renew their efforts to enact patent reform in early 2015.

“Fortunately voters earlier this month made it clear they’re more interested in results than the latest filibuster,” Goodlatte told the U.S. Chamber of Commerce’s 2014 IP Summit.

Last year, lawmakers’ attempts to rein in the excesses of “trolls” came up short in the Senate. The Innovation Act, Goodlatte’s own far-reaching bill, passed the House of Representatives by a 325-91 margin but stalled in the upper chamber, where various senators proposed alternatives. Continue Reading »

Federal Circuit Affirms Willful Infringement Judgment and Determines Patentee is the “Prevailing Party” Where It Won on One of Two Asserted Patents

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SSL Servs., LLC v. Citrix Sys., Inc., __ F.3d ___ (Fed. Cir. Oct. 14, 2014) (Lourie, Linn, O’MALLEY) (E.D. Tex.: Gilstrap) (2 of 5 stars)

Fed Cir affirms a non-infringement judgment on one patent, affirms a judgment of willful infringement on a second patent, affirms other damages and evidentiary rulings, and determines the patentee is a “prevailing party.”

Claim Construction/Non-infringement:  Addressing the first patent, the Fed Cir held the term “destination address” was properly limited to a “network address” based on the surrounding claim language and the specification’s reference to protocols involving a network address format.  Given this construction, the non-infringement verdict was proper because there was no evidence the accused products met it, and the patentee waived any contrary argument by not raising it until the reply brief.  Moreover, the patentee was not entitled to a new trial because of alleged claim construction errors on other terms.  Although “the general verdict rule applies with the same force in patent cases as it does in all other cases,” it was inapplicable here because “even if the district court erred in its construction of the other challenged limitations, the result the jury reached—the finding of non-infringement—would not change.”  Slip op. at 16.  The patentee thus failed to show prejudice from any other errors, and it was not entitled to any presumption of prejudice. Continue Reading »

Federal Circuit Reverses Prior Opinions To Hold That, Under Alice, Patent Does Not Claim Eligible Subject Matter

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Group of Diverse People Discussing About Online MessagingUltramercial, Inc. v. Hulu, LLC, __ F.3d __ (Fed. Cir. Nov. 14, 2014) (LOURIE, Mayer (concur), O’Malley) (C.D. Cal.: Klausner) (3 of 5 Stars)

Fed Cir affirms Rule 12(b)(6) dismissal because the patent was invalid under section 101.  The claims covered an 11-step method for Internet distribution of copyrighted media in which advertisers pay for the media and users receive the content for free if they agree to view an advertisement.  Although the panel had twice determined the claims were patent-eligible, it now reached the opposite result after the Supreme Court vacated and remanded in light of Alice. Continue Reading »

The Patent Use Code Conundrum – or Why FDA Can’t Read (Patents)

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Recently, FDA permitted generic manufacturers to carve out language from the labeling of generic versions of Hospira’s Precedex even though the generic labeling would infringe Hospira’s method of use patent.  Under the Hatch-Waxman Act, ANDA applicants may “carve out” protected uses from a product’s labeling to prevent a brand manufacturer from precluding generic entry by adding protected indications to a brand drug’s label in a practice called “evergreening.”  As long as the so-called “skinny labeled” generic is as safe and effective as the brand for all of the uses remaining on its label, the generic may receive an AB-rating and thereby considered a therapeutic equivalent to the brand drug for the labeled uses.  The “carve out” uses are considered off-label uses.  FDA determines the carve-out language based on the NDA holder’s use code in its Orange Book listing, which describes the approved use claimed by the patent; however, if the use code and label language are not identical, as is typical with a therapeutic use patent, the carve out analysis becomes a challenge because FDA does not read or construe patent claims.  In these situations, deficient label construction in AB-rated skinny labeled generics may induce infringement of a brand patent listed in the Orange Book, leaving brand drugs protected by use patents in a potentially risky position.  Continue Reading »

Rights to Your Genomic Information

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DNA-molecule-on-background---blog-post-Nov-11-2014---royalty-free-istockWhat rights do you have to your genomic information? In a recent panel discussion of this topic, and perhaps not surprisingly, the answer of the lawyers was, “It depends.”

It is now clear that isolated DNA having a naturally occurring sequence, such as might occur in your body, is not patentable.  The U.S. Supreme Court decided as much over a year ago in the case of Association for Molecular Pathology v. Myriad Genetics, 133 S.Ct. 2107 (June 13, 2013).  The decision sent shock waves through the industry and was widely acclaimed as a victory for patients – who celebrated the idea that their genetic information was not “owned” by the testing companies. Continue Reading »

Patent Owner Lacks Standing to Join Infringement Suit Where it has Licensed all Substantial and Exclusionary Rights to Another

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Azure Networks, LLC v. CSR, PLC, __F.3d__ (Fed. Cir. Nov. 6, 2014) (CHEN, Reyna, Mayer (dissenting-in-part))

Fed Cir holds that a patent owner with less than all substantial rights to the patent and no exclusionary rights under the patent statute lacks standing to join an infringement suit as a co-plaintiff. Continue Reading »

Law requiring a private party to perform quasi-governmental function that results in infringement satisfies the “for the United States” prong of 28 U.S.C. 1498(a)

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IRIS Corp. v. Japan Airlines Corp., ___F.3d___ (Fed. Cir. Oct. 21, 2014) (Prost, Newman, HUGHES) (E.D. N.Y.: Amon)

Airplane-AirportFed. Cir. affirms dismissal of claims against infringing party and finds that patentee’s exclusive remedy is a suit against the United States. IRIS’s patents cover a method for making an improved security identification document with an embedded chip to store data. IRIS sued Japan Airlines (JAL) alleging that it used the technology in processing and boarding passengers at check-in points throughout the country. JAL must examine passports according to federal law, including those made using the patented method. Continue Reading »

Government Heeds Fish’s Admonition

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In an article entitled “Avoid Inducement Liability with an Early Opinion of Counsel,” published in IP360 on March 21, 2014, it was recommended that potential defendants obtain an early opinion of counsel challenging, if possible, the validity of any patents that could be asserted against them under § 271(b). This suggestion was based on the Federal Circuit’s decision in Commil USA, LLC. V. Cisco Systems, Inc., 720 F.3d 1361 (Fed. Cir. 2013), in which the court held that a good faith belief that an asserted patent is invalid could negate the intent requirement for induced infringement. The plaintiff in this controversial decision filed for certiorari. On October 16, 2014, the U.S. government filed an amicus curiae brief urging the Supreme Court to grant cert. In its brief, the government, citing the advice in the article, states: Continue Reading »