Addressing a panel decision that affirmed a Patent Trial and Appeal Board (PTAB) holding denying institution of an inter partes review (IPR) after an earlier partial institution decision, the US Court of Appeals for the Federal Circuit denied both a panel rehearing and a rehearing en banc over a dissent from Judge Newman. BioDelivery Sciences International, Inc. v. Aquestive Therapeutics, Inc., Case Nos. 19-1643, -1644, -1645 (Fed. Cir. January 13, 2020) (Newman, J, dissenting).

Continue Reading No En Banc Review of Non-Institution Decision After Remand of Partial Institution

On an issue of first impression in a copyright infringement dispute out of the Southern District of Texas, the US Court of Appeals for the Fifth Circuit confirmed that failure to mitigate is not a complete defense to copyright or Digital Millennium Copyright Act (DMCA) claims for statutory damages. Energy Intelligence Grp., Inc. et. al., v. Kayne Anderson Capital Advisors, LP, et. al., Case No. 18-20350 (5th Cir., January 15, 2020) (Higginson, J.).

In 2014, energy industry publisher Energy Intelligence Group, Inc. and its affiliated entity in the United Kingdom (together, EIG) filed suit against energy securities investment firm Kayne Anderson Capital Advisers (KA), alleging copyright infringement and abuses of the DMCA based on a KA partner’s violation of US copyright law and violation of his subscription agreement for EIG’s Oil Daily newsletter, which provides news and analysis about the North America petroleum industry. The jury in the district court proceeding found that EIG could have reasonably avoided almost all of the alleged copyright and DMCA violations through real-time investigations and enforcement efforts, and thus awarded EIG just over $500,000 in statutory damages for the infringement of 39 works of authorship. The district court, however, still applied the Copyright Act’s fee shifting provisions and awarded EIG over $2.6 million in attorney’s fees and costs. The parties’ consolidated appeals to the Fifth Circuit thus presented an issue of first impression: namely, whether the failure to mitigate copyright infringement is a complete defense to liability for statutory damages under the Copyright Act and the DMCA.

Continue Reading Failure to Mitigate Not a Complete Defense to Statutory Damages Under Copyright or DMCA

The US Court of Appeals for the Fifth Circuit has reversed a district court ruling awarding statutory copyright damages for pre-registration infringements, explaining that the statute bars such an award even when the post-registration infringement of exclusive rights of the copyright holder is different from the pre-registration act(s). Southern Credentialing Support Services, LLC v. Hammond Surgical Hospital, LLC, Case No. 18-31160 (5th Cir. Jan. 9, 2020) (Costa, J.). This case analyzes § 412 of the US Copyright Act, which bars an award of statutory damages for infringements commenced prior to registration of a copyright.

Credentialing is a process doctors must complete to practice at hospitals, and credentialing service providers verify the information doctors provide. Southern Credentialing Support Services (SCSS) began providing credentialing services to Hammond in 2010, and designed two packets of custom forms for credentialing uses by Hammond. After SCSS stopped providing services to Hammond in 2013, Hammond contracted with another provider for credentialing services and continued to use some of the forms developed by SCSS. By 2017, the new provider for Hammond had also made the SCSS forms available online. SCSS did not obtain copyright registration for its forms until 2014, after learning that Hammond was still using some of the SCSS forms. After the parties failed to resolve the dispute amicably, SCSS sued Hammond for copyright infringement.

Continue Reading No Statutory Damages Even When Post-Registration Acts Violate a Different Exclusive Right from Pre-Registration Acts

Addressing the issue of obviousness, the US Court of Appeals for the Federal Circuit affirmed the district court’s finding that a patent was invalid based on inherency because the claim limitation was necessarily present in the prior art. Hospira, Inc. v. Fresenius Kabi USA, LLC, Case Nos. 19-1329, -1367 (Fed. Cir. Jan. 9, 2020) (Lourie, J).

The patent at-issue is directed to premixed pharmaceutical compositions of dexmedetomidine that do not require reconstitution or dilution prior to administration and remains stable and active after prolonged storage. Hospira makes and sells dexmedetomidine products, including a ready-to-use product called Precedex Premix covered by the patent at-issue. Fresenius filed an Abbreviated New Drug Application (ANDA) seeking approval by the Food and Drug Administration (FDA) to market a generic ready-to-use dexmedetomidine product. Hospira brought suit alleging infringement under the Hatch-Waxman Act.

Continue Reading Inherent Claim Limitation Necessarily Present in the Prior Art Invalidates Patent

Addressing the propriety of the trial court’s jury instruction regarding willful infringement, the US Court of Appeals for the Federal Circuit found that descriptors such as “egregious behavior” and whether an infringer is “worthy of punishment” are inappropriate for a jury instruction on willful patent infringement, but ultimately found that the instruction was not legally erroneous. Eko Brands, LLC v. Adrian Rivera Maynez Enterprises, Inc., Case Nos. 2018-2215, 2018-2254 (Fed. Cir. Jan. 13, 2020) (Dyk, J.) (Reyna, J. concurring-in-part, dissenting-in-part).

Eko Brands asserted a claim of patent infringement against Adrian Rivera Maynez Enterprises (ARM). Based on the district court’s claim construction, ARM stipulated to infringement, and the case went to trial on the issue of damages.

Continue Reading ‘Egregious Behavior’ Language Does Not Render Jury Instruction on Willfulness Legally Erroneous

In a divided panel decision, the US Court of Appeals for the Federal Circuit concluded that a merger clause in the parties’ settlement agreement did not extinguish a prior covenant not to sue. Molon Motor & Coil Corp. v. Nidec Motor Corp., Case No. 19-1071 (Fed. Cir. Jan. 10, 2020) (Lourie, J) (Reyna, J, dissenting).

In 2004, Molon sued Nidec’s predecessor, Merkle-Korff, for infringement of Molon’s patent. In response, Merkle-Korff filed declaratory judgment counterclaims against two other Molon patents, seeking declarations of invalidity and non-infringement. Molon subsequently offered Merkle-Korff a covenant not to sue (2006 covenant) on the counterclaim patents. The covenant provided a unilateral non-exclusive license covering products existing at the time with no limits to specific markets.

Continue Reading Prior Covenant Insulates Party from Suit Despite Later Agreement

The US Court of Appeals for the Federal Circuit expanded the Markush doctrine, determining that the claim language “comprising . . . [at least] . . . a group consisting of . . .” absent some basis or extrinsic evidence for limiting the group, such a group could capture an alleged infringement  having an additional component  present, as long as the additional component is “functionally similar” to the component identified in the Markush group limitation. ,Amgen Inc. v. Amneal Pharm. LLC, Case No. 18-2414 (Fed. Cir. Jan. 7, 2020) (Lourie, J).

Continue Reading Making the Most of Markush

The US Court of Appeals for the Federal Circuit affirmed a district court judgment that the owner of a patent with claims declared unpatentable by the Patent Trial and Appeal Board (PTAB) in an inter partes review (IPR) may not challenge ir collaterally attack the decision in district court. The Federal Circuit concluded that the district court lacked jurisdiction to hear a collateral challenge attacking the validity of a PTAB final written decision. Personal Audio, LLC v. CBS Corporation, Case No. 18-2256 (Fed. Cir. Jan. 10, 2020) (Taranto, J).

Continue Reading PTAB Final Written Decisions Are, After Appeal, Actually Final

In a case involving a patented method for purifying antibodies, the US Court of Appeals for the Federal Circuit determined that the process of chilling a composition to below room temperature could be found both obvious and anticipated by a process that purified that composition at room temperature. Genentech, Inc. v. Hospira, Inc., Case No. 18-1933 (Fed. Cir. Jan. 10, 2020) (Chen, J) (Newman, J, dissenting).

Continue Reading Room Temp Prior Art Has Chilling Effect on Broadening Claim Language

In a precedential opinion, the Patent Trial and Appeal Board (PTAB) held that, for institution of an inter partes review (IPR) based on a printed publication, the petitioner must establish a reasonable likelihood that the reference is a printed publication. Hulu, LLC v. Sound View Innovations, LLC, Case No. IPR2018-01039 (PTAB Dec. 20, 2019) (Boalick, CAPJ).

Hulu petitioned for IPR, challenging a Sound View patent and asserting obviousness over a prior art reference textbook by Dougherty. Sound View filed a preliminary response challenging Hulu’s showing that Dougherty was publicly available before the filing date of the challenged patent. The PTAB denied institution, finding insufficient evidence that Dougherty was publicly accessible.

Continue Reading IPR Institution Requires Reasonable Likelihood that Reference Is Printed Publication