IP UPDATE
Exploring the latest in intellectual property law
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Exploring the latest in intellectual property law
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Fee Shifting Under § 285 Does Not Apply to Conduct Solely Arising in IPR

by | Jun 10, 2020 | ,

Considering for the first time whether fee shifting of § 285 applies to exceptional conduct arising solely from an inter partes review (IPR) proceeding, the US Court of Appeals for the Federal Circuit held that § 285 does not authorize an award of fees based on conduct at the United States Patent and Trademark Office (USPTO) during the course of an IPR proceeding. Amneal Pharma. LLC v. Almirall, LLC, Case No. 2020-1106 (Fed. Cir. June 4, 2020) (Dyk, J.).

Almirall owns certain Orange Book-listed patent rights to medication used to treat acne. Its competitor, Amneal, planned to market a generic version of the acne medication. Before seeking approval to do so, Amneal filed an IPR petition challenging the validity of certain claims of Almirall’s patents. Amneal then filed an Abbreviated New Drug Application (ANDA), identifying Almirall’s patents in the Paragraph IV certification. Almirall subsequently filed a district court action against Amneal for infringement. Shortly after the district court action was filed, the parties entered into settlement negotiations, during which Almirall offered Amneal a covenant-not-to-sue, provided that Almirall drop its pending IPR. The parties were unable to reach agreement at that time, and the IPR culminated in the Patent Trial and Appeal Board (PTAB)’s final written decision, finding the challenged claims not unpatentable. Amneal appealed the PTAB’s final determination. Shortly after the appeal was filed, the parties reached an agreement and jointly moved to dismiss the appeal. Almirall also moved for fees under § 285 for Amneal’s allegedly unreasonable conduct in maintaining its IPR, even after Amneal offered it a covenant-not-to-sue.

Comparing IPRs to interference proceedings, the Federal Circuit looked to a decision of its predecessor, the Court of Customs and Patent Appeals, which determined that § 285 did not extend to appeals of administrative proceedings at the USPTO, and IPRs were no different. Stopping short of proclaiming a categorical rule that § 285 applies only to conduct in district court proceedings, the Court explained that at most, § 285 speaks to awarding fees that were incurred during, in close relation to, or as a direct result of district court proceedings. In the circumstance here, where the alleged exceptional conduct was solely before the USPTO and an appeal of the USPTO decision—not a district court’s decision—an award under § 285 was not appropriate. In addition, the Court noted that the USPTO has its own procedures for sanctioning exceptional conduct under 37 C.F.R. § 42.12, where the PTAB may award “compensatory expenses, including attorney’s fees,” among other sanctions.



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USPTO Proposes New Rules for Post-Grant Proceedings

by | Jun 5, 2020 |

The United States Patent and Trademark Office (USPTO) proposed changes to the rules of practice for instituting review on all challenged claims or none in inter partes review (IPR), post-grant review (PGR) and the transitional program for covered business method patents (CBM) proceedings before the Patent Trial and Appeal Board (PTAB) in accordance with the 2018 Supreme Court decision in SAS Institute Inc. v. Iancu, IP Update, Vol. 21, No. 5 (SAS). Additionally, the USPTO proposed changes to the rules to conform to the current standard practice of providing sur-replies to principal briefs and providing that a Patent Owner response and reply may respond to a decision on institution. The USPTO further proposed a change to eliminate the presumption that a genuine issue of material fact created by the Patent Owner’s testimonial evidence filed with a preliminary response will be viewed in the light most favorable to the petitioner for purposes of deciding whether to institute a review.

In SAS, the Supreme Court held that a decision to institute an IPR under 35 U.S.C. § 314 may not institute on fewer than all claims challenged in a petition. The Court held that the PTAB only has the discretion to institute on all of the claims challenged in the petition or to deny the petition. Previously, the PTAB exercised discretion to institute an IPR, PGR or CBM on all or some of the challenged claims and on all or some of the grounds of unpatentability asserted in a petition.

In light of SAS, the USPTO now proposes to amend the rules pertaining to instituting any post-grant proceeding (IPR, PGR or CBM) to require institution on all challenged claims (and all of the grounds) presented in a petition or on none. In addition, in all pending proceedings, the PTAB would either institute review on all of the challenged claims and grounds of unpatentability presented in the petition or deny the petition.

The second proposed change would amend the rules pertaining to briefing regarding sur-replies to principal briefs and to provide that a reply may respond to a decision on institution. The amended rules would permit (1) replies and Patent Owner responses to address issues discussed in the institution decision and (2) sur-replies to principal briefs (i.e., to a reply to a Patent Owner response or to a reply to an opposition to a motion to amend). However, the sur-reply may not be accompanied by new evidence other than deposition transcripts of the cross-examination of any reply witness. Sur-replies may only respond to arguments made in reply briefs, comment on reply declaration testimony or point to cross-examination testimony. A sur-reply also may address the institution decision if necessary to respond to the petitioner’s reply.

Finally, the USPTO proposes to amend the rules to eliminate the presumption in favor of the petitioner for a genuine issue of material fact created by testimonial evidence submitted with a

Patent Owner’s preliminary response when deciding whether to institute an IPR, PGR or CBM review. As with all other evidentiary questions at the institution phase, the [...]

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Verdict Delivered: Shipment Notification Claims are Patent Ineligible—Even with Security Flair

by | May 28, 2020 |

The US Court of Appeals for the Federal Circuit affirmed a district court’s pleadings-stage determination that a patent claim directed to a delivery notification system was subject matter ineligible under 35 U.S.C. § 101. Elec. Commc’n Techs., LLC v. ShoppersChoice.com, LLC, Case No. 19-1587 (Fed. Cir. May 14, 2020) (Prost, C.J.).

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Chalk One Up to the Knock-Off

by | May 27, 2020 | ,

Addressing issues of design patent infringement, copyright infringement, trade dress infringement and unfair competition, the US Court of Appeals for the Federal Circuit affirmed a district court’s grant of summary judgment on all claims. Lanard Toys Limited v. Dolgencorp LLC, Ja-Ru, Inc., Toys “R” Us-Delaware, Inc., Case No. 2019-1781 (Fed. Cir. May 14, 2020) (Lourie, J.).

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Prior Art-Based Invalidity Analysis May Be Possible for Indefinite Claim

by | May 27, 2020 |

Addressing a decision by the US Patent and Trademark Office’s Patent Trial and Appeal Board (Board) declining to find certain claims unpatentable because they contained means-plus-function elements without any corresponding disclosed structure, the US Court of Appeals for the Federal Circuit affirmed the Board’s decision except as to one challenged claim where the means-plus-function element was recited as an alternative to a non-means-plus-function element. Cochlear Bone Anchored Solutions AB v. Oticon Medical, AB, Case Nos. 19-1105, -1106 (Fed. Cir. May 15, 2020) (Taranto, J.).

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Arthrex Extended to Inter Partes Re-examination

by | May 27, 2020 | ,

The US Court of Appeals for the Federal Circuit denied a petition for panel rehearing regarding the constitutionality of decisions issued by the United States Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB), holding that its decision in Arthrex, Inc. v. Smith & Nephew, Inc. (IP Update, Vol. 22, No. 11) also applies to final decisions issued by administrative patent judges (APJs) in inter partes re-examinations. Virnetx v. Cisco Systems, Inc., Case No. 19-1671 (Fed. Cir. May 13, 2020) (O’Malley, J.). The Court also denied (per curiam) a concurrently filed petition for rehearing en banc.

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A Party May Have Standing Even with Incorrect Patent Assignment

by | May 27, 2020 |

The US Court of Appeals for the Federal Circuit affirmed a district court’s decision that a reformation of an incorrect assignment supports Article III standing and affirmed the court’s prejudgment interest award. Schwendimann v. Arkwright Advanced Coating, Inc., Case Nos. 18-2416, 19-1012 (Fed. Cir. May 13, 2020) (Wallach, J.) (Reyna, J. dissenting).

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Where Should This Case Go? Appeals Court Tosses Venue Motion to Dismiss

by | May 19, 2020 |

Addressing for the first time whether a court must consider the adequacy of an alternative forum in its forum non conveniens analysis, the US Court of Appeals for the Federal Circuit affirmed the denial of a defendant’s motion to dismiss under forum non conveniens. In re Fortinet, Inc., Case No. 20-120 (Fed. Cir. May 1, 2020) (Dyk, J.).

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Court’s Drug Patent Prescription: Unclaimed Disclosure is Dedicated

by | May 19, 2020 |

Addressing the disclosure-dedication doctrine, the US Court of Appeals for the Federal Circuit concluded that the disclosure-dedication doctrine barred a patent owner’s claim of infringement under the doctrine of equivalents because the asserted patents disclose, but do not claim, the alleged equivalent. Eagle Pharmaceuticals Inc. v. Slayback Pharma LLC, Case No. 19-1924 (Fed. Cir. May 8, 2020) (Reyna, J.).

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The “Plotting” Thickens: Claims that Solve Known Problem with Known Methods Are Obvious

by | May 14, 2020 | ,

The US Court of Appeals for the Federal Circuit applied KSR and its obviousness progeny, finding that patent claims directed to location plotting were obvious under 35 USC § 103. Uber Techs., Inc. v. X One, Inc., Case No. 19-1164 (Fed. Cir. May 5, 2020) (Prost, CJ).

X One sued Uber Technologies asserting a patent directed to exchanging location information between mobile devices, such that a user could add other mobile device users to a “Buddy List,” share her location with listed buddies or temporary “instant buddies,” and see the locations of her buddies on a map. The patent’s purported novelty lay in “two way position information sharing,” creation of location sharing “groups,” and “temporary location sharing” that “automatically expires.”

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