SCOTUS Narrows Opportunity For ITC Section 337 Jurisdiction Over Imported Biosimilars Based On 180-Day Notice Provision

In Amgen Inc. v. Sandoz Inc., 794 F.3d 1347, 1357-58 (Fed. Cir. 2015), the Federal Circuit held that an Applicant’s biosimilar must already be “licensed” or approved by the FDA at the time Applicant gives its 180-day notice of intent to begin commercial marketing.  Under this interpretation of the statute, the Federal Circuit noted that notice is not provided until “the marketing of the proposed biosimilar product is imminent.” MORE>

SCOTUS Holds Patent Exhaustion Applies To Foreign Sales

On May 30, 2017, the Supreme Court issued its decision in Impression Products, Inc. v. Lexmark International, Inc., 137 S. Ct. 1523 (2017), expanding the scope of patent exhaustion to cover sales involving post-sale restrictions and international sales. The Court held that the sale of a patented item exhausts the patentee’s exclusionary right over that item, regardless of whether the sale is within the U.S. or outside the U.S.  Location is irrelevant for patent exhaustion; what matters is the patentee’s decision to make a sale.  MORE>

SCOTUS Limits “Residence” In Patent Venue Statute, 28 U.S.C. §1400(b), To State Of Incorporation

On May 22, 2017, the Supreme Court issued its decision in TC Heartland LLC v. Kraft Foods Group Brands LLC, 137 S. Ct. 1514 (2017), holding that as applied to domestic corporations, “residence” in patent venue statute 28 U.S.C. §1400(b) refers only to the state of incorporation.  The Supreme Court reversed 27 years of Federal Circuit precedent, that 28 U.S.C. §1391(c) supplies the definition of “residence” in §1400(b), i.e., any judicial district in which a defendant is subject to the court’s personal jurisdiction. MORE>

ID Issues In Personal Transporter 1000 Investigation Followed By Petitions For Review To Commission

Chief Judge Bullock issued an ID in ITC Investigation No. 337-TA-1000 on May 26, 2017, finding no violation of section 337 of the Tariff Act of 1930 except as to defaulting respondents. The accused products are self-balancing scooters popularly known as “hoverboards.”  The ID found the asserted patent valid and not infringed by those respondents, and that the technical prong of domestic industry had not been met. MORE>

Commission Issues Tailored Exclusion Order In Automated Teller Machines 972 Investigation

On June 12, 2017, the Commission issued an Opinion upholding the ALJ’s final ID finding a violation of Section 337 with respect to the infringement of asserted claims of the ‘616 and ‘631 patents, and issuing a limited exclusion order and cease and desist order with respect to the Respondents’ accused automated teller machines, ATM modules, components thereof, and products containing the same.   MORE>

Federal Circuit Clarifies Prosecution History Disclaimer Standard

A patent applicant’s statement during prosecution may constitute prosecution history disclaimer if it is a clear and unambiguous disavowal of claim scope.  Avid Tech. Inc. v. Harmonic, Inc., 812 F.3d 1040, 1045 (Fed. Cir. 2016).  Furthermore, Federal Circuit precedent has held that when “remarks made to distinguish claims from the prior art are broader than necessary to distinguish the prior art, the full breadth of the remark is not a clear and unambiguous disavowal of claim scope as required to depart from the meaning of the term provided in the written description.”    MORE>