Federal Circuit Patent Updates - July 2016 #2

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WBIP, LLC v. Kohler Co. (No. 2015-1038, -1044, 7/19/16) (Moore, O'Malley, Chen)

July 19, 2016 4:22 PM

Moore, J. Affirming denial of JMOL that patent was invalid as obvious and lacked an adequate written description, affirming finding of willful infringement and vacating denial of permanent injunction. The non-obviousness holding includes a substantial discussion of secondary considerations. With respect to willfulness, “[w]e do not interpret Halo as changing the established law that the factual components of the willfulness question should be resolved by the jury.” With respect to a permanent injunction, the district court erred in denying an injunction based solely on public interest grounds without considering and weighing the other Ebay factors.  

A full version of the text is available in PDF form.

Skyhawke Technologies, LLC v. Deca Int. Corp. (No. 2016-1325, -1326, 7/51/16) (Taranto, Chen, Hughes)

July 15, 2016 10:19 AM

Hughes, J. No appellate jurisdiction to consider claim construction in appeal by patent owner that won IPR. “While administrative decisions by the US Patent and Trademark Office can ground issue preclusion in district court when the ordinary elements of issue preclusion are met, . . .  we cannot foresee how the claim construction reached by the Board in this case could satisfy those ordinary elements.”  

A full version of the text is available in PDF form.

The Medicines Company v. Hospira, Inc. (No. 2014-1469, -1504, 7/11/16) (Prost, Newman, Lourie, Dyk, Moore, O'Malley, Reyna, Wallach, Taranto, Chen, Hughes and Stoll)

July 11, 2016 3:40 PM

O'Malley, J. Before the critical date, the patentee paid a third party for “manufacturing services” to make substantial amount of the patented product. These transactions did not constitute an on-sale bar because “(1) only manufacturing services were sold to the inventor—the invention was not; (2) the inventor maintained control of the invention, as shown by the retention of title to the embodiments and the absence of any authorization to Ben Venue to sell the product to others; and (3) “stockpiling,” standing alone, does not trigger the on-sale bar.”  

A full version of the text is available in PDF form.

Amgen Inc. v. Apotex Inc. (No. 2016-1308, 7/5/16) (Wallach, Bryson, Taranto)

July 5, 2016 12:05 PM

Taranto, J. In a suit under the Biologics Price Competition and Innovation Act, affirming the grant of a preliminary injunction against the biologics license applicant entering the market unless it has given the patentee notice after receiving the requested FDA license and then waiting 180 days. “We hold that the commercial marketing provision is mandatory and enforceable by injunction even for an applicant” who “did launch the statutory process for exchanging patent information and channeling patent litigation.” “We conclude that an applicant must provide a reference product sponsor with 180 days' post-licensure notice before commercial marketing begins, regardless of whether the applicant provided the (2)(A) notice of FDA review.”  

A full version of the text is available in PDF form.

Rapid Litigation Management v. Cellzdirect, Inc. (No. 2015-1570, 7/5/16) (Prost, Moore, Stoll)

July 5, 2016 10:40 AM

Prost, C. J. Vacating summary judgment of invalidity under 35 U.S.C. § 101 because the claims were not directed to a patent-ineligible law of nature as the district court held. “The district court identified in these claims what it called a “natural law”—the [hepatocytes] cells' capability of surviving multiple freeze-thaw cycles. We need not decide in this case whether the court's labeling is correct. It is enough in this case to recognize that the claims are simply not directed to the ability of hepatocytes to survive multiple freeze-thaw cycles. Rather, the claims of the '929 patent are directed to a new and useful laboratory technique for preserving hepatocytes. This type of constructive process, carried out by an artisan to achieve “a new and useful end,” is precisely the type of claim that is eligible for patenting.” “The inventors certainly discovered the cells' ability to survive multiple freeze-thaw cycles, but that is not where they stopped, nor is it what they patented. … They employed their natural discovery to create a new and improved way of preserving hepatocyte cells for later use.” “Repeating a step that the art taught should be performed only once can hardly be considered routine or conventional. This is true even though it was the inventor's discovery of something natural that led them to do so.” 

A full version of the text is available in PDF form.

 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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