Ten Most Viewed Posts of 2017

1. Warsaw Orthopedic, Inc. / Medtronic Sofamor Danek USA, Inc. (“MSD”) et al. v. NuVasive, Inc.
Docket No. 2013-1576, -1577
June 3, 2016

On remand from SCOTUS, this decision affirmed DC/jury finding of induced infringement. The original March 2, 2015 decision was vacated by SCOTUS at MSD’s request in light of the Commil decision (US, May 2015; and Global-Tech, US 2011). MSD successfully argued to SCOTUS that the test for induced infringement under 35 USC § 271(b) was not correctly applied. Commil and Global-Tech were summarized as holding “that proof of induced infringement requires not ‘only knowledge of the patent’ but also ‘proof the defendant knew the [induced] acts were infringing”, “that willful blindness can satisfy the knowledge requirement for active inducement under § 271(b) (and for contributory infringement under § 271(c)), even in the absence of actual knowledge”, and “that knowledge of infringement can be inferred from circumstantial evidence” (“requisite intent to induce infringement may be inferred from all of the circumstances” (Broadcom, FC 2008)).

2. Intellectual Ventures I LLC, et al. v. Erie Indemnity Company et al.
Docket No. 2016-1128, -1132
March 7, 2017

DC finding the IV lacked standing affirmed because assigning rights “‘in and to’ a particular patent” does not “automatically include[s] its child applications” (must explicitly refer to continuations and/or “invention” vs. “patents”). DC invalidity findings regarding ‘434 and ‘002 patents under § 101 affirmed (“[t]he claimed mobile interface is so lacking in implementation details that it amounts to merely a generic component (software, hardware, or firmware) that permits the performance of the abstract idea, i.e., to retrieved the user-specific resources” and “provides no more than similar user interfaces recited in claims that we have previously held ineligible” (Intell. Vent. I, FC 2015; Enfish, FC 2016)).

3. The Cleveland Clinic Foundation et al. v. True Health Diagnostics LLC
Docket No. 2016-1766
June 16, 2017

Patent directed at detecting myeloperoxidase release as a sign of cardiovascular disease ineligible under § 101 (Alice step one: claims directed to natural phenomena in that “testing patents purport to detect MPO and other MPO-related products, which are naturally occurring in bodily samples…the method starts and ends with naturally occurring phenomena with no meaningful non-routine steps in between” (as in Ariosa, “[t]he inventors…did not create or alter any of the genetic information”, and unlike CellzDirect (FC 2016) in which “the claims…were…directed to a new and useful laboratory technique”); Alice step two: “[t]he claims…were found not to “sufficiently transform the natural existence of MPO in a bodily sample into a patentable invention” (“merely tell[ing] those ‘interested in the subject about the correlations that the researchers discovered” (Mayo)). DC decision of no contributory or induced infringement affirmed since CCF fell “short of showing specific intent and action’ on behalf of True Health”.

4. Mylan Insitutional LLC and Apicore US LLC v. Aurobindo Pharma Ltd., et al.
Docket No. 2017-1645
May 19, 2017

DC grant of preliminary injunction and finding of infringement Apicore’s “process patents” under the DOE reversed (DC erred in its Function-Way-Result equivalents analysis (“there is room for sufficient doubt as to whether silver oxide and manganese dioxide oxidize isoleuco acid in the same way so as to satisfy the ‘way’ prong”) and suggested that “the court may wish to consider whether the substantially of the differences test may be more applicable in this case”). The FC panel also found no error with the DC’s finding that Aurobindo did not raise a substantial question regarding motivation to combine the references or a reasonable expectation of success” because, e.g., “a purified compound is not always prima facie obvious over the [prior art] mixture’ if the process to arrive at the purified compound is itself of patentable weight”. And the DC’s grant of a permanent injunction for infringement of the compound patent was affirmed.

5. Trading Technologies Int., Inc. v. CQG, Inc. et al.
Docket No. 2016-1616 (Non-precedential)
January 18, 2017

DC finding that claims to trading technology software is patentable subject matter affirmed since the claims are not “drawn to the idea itself” (Affinity Labs, FC 2016; Apple, Inc. v. Ameranth, Inc., FC 2016; Electric Power, FC 2016)), noting that “at some level, all inventions…embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas” (Alice, US 2014; BASCOM, FC 2016). Further, “precedent does not consider the substantive criteria of patentability” and “the claimed graphical user interface method imparts a specific functionality to a trading system ‘directed to a specific implementation of a solution to a problem in the software arts”.

6. John D’Agostino v. MasterCard International Inc.
Docket No. 2016-1592, -1593 (IPR2014-00543, IPR2014-00544)
December 22, 2016

PTAB claim construction of “single merchant” vacated, the FC panel, finding it “departed from or misapplied the…clear meaning” under the broadest reasonable interpretation (citing Cuozzo, US 2016; In re Skvorecz (FC 2009) (BRI “does not include giving claims a legally incorrect interpretation”)); In re Suitco Surface (FC 2010) (“claims should always be read in light of the specification and teachings in the underlying patent”)); and Microsoft (FC 2015) (“the Board ‘should also consult the patent’s prosecution history’”)). PTAB conclusions regarding disclosure of prior art found to be supported by substantial evidence (In re Jolley, FC 2002 (“If the evidence in record will support several reasonable but contradictory conclusions, we will not find the Board’s decision unsupported by substantial evidence simply because the Board chose one conclusion over another plausible alternative.”))

7. Nanoco Technologies, Ltd. v. Massachusetts Institute of Technology (MIT)
IPR2015-00528 (U.S. Pat. No. 6,322,901 C1)
PTAB Final Written Decision
July 5, 2016

Petition found to show by preponderance of the evidence that certain claims of MIT’s quantum dot ‘901 patent were anticipated under § 102(a) by first reference (MIT argued that the prior art had to describe “the entire spectral range” of independent claims 32 and 44 (“not a Markush group, but, rather, ‘a recitation of species that have to be available for selection’”) but the Board disagreed under its BRI of the claims (“a particular nanocrystal is a particular size and, thus, emits only one of these alternative colors” and “we are not persuaded that the claims are product-by-process claims”)); other claims found not anticipated under § 102(b) by second reference.

8. Genetic Technologies Ltd. v. Merial LLC, Bristol-Myers Squibb Company
Docket No. 2015-1202, -1203
April 8, 2016

DC decision finding claims to method for amplifying and analyzing DNA sequences invalid under § 101 affirmed under the two-step Alice/Mayo test. Under the first Alice step, the FC panel concluded “[c]laim 1 broadly covers essentially all applications, via standard experimental techniques, of the law of linkage disqequilibrium to the problem of detecting coding sequences of DNA” (“[l]inkage disequilibrium is indisputably a universal, inherent feature of human DNA”; Mayo (US 2012 (“the claims were necessarily directed to an underlying law of nature or natural phenomenon, even if implementation of the method involves substantial human labor and ingenuity”); Ariosa (FC 2015) (“the invention there did not purport to ‘create[] or alter][] any of the genetic information encoded in the cffDNA”)). Under Alice step two, the FC panel concluded neither the “amplifying” or “analyzing” steps were anything other than “routine and conventional” and do not “provide sufficient inventive concept to render claim 1 patent eligible” (step of detecting the allele a “mental process step, one that provides claim 1 with a purpose but does not create the requisite inventive concept, because it merely sets forth a routine comparison that can be performed by the human mind” (Cybersource, FC 2011).

9. In re: Stepan Company
Docket No. 2016-1811
August 25, 2017

Board affirmance of examiner’s rejection of Stepan’s claims as obvious vacated and remanded because, e.g., “[t]he Board failed to explain why it would have been ‘routine optimization’” ( it “must provide some rational underpinning explaining why a person of ordinary skill in the art would have arrived at the claimed invention through routine optimization” (In re Lee, FC 2002; Van Os (“Absent some articulated rationale, a finding that combination of prior art would have been ‘common sense’ or ‘intuitive’ is no different than merely stating the combination ‘would have been obvious”)), and “erred when it shifted the burden of proving patentability to Stepan” (“it was the PTO’s-not Stepan’s-burden to show achieving” the claimed cloud point would have been obvious (In re Deuel, FC 1995)).

10. Phigenix, Inc. v. ImmunoGen, Inc.
Docket No. 2016-1544
January 9, 2017

Phigenix found not to have Article III standing for its appeal of PTAB final written decision after IPR. The question was whether Phigenix “offered sufficient proof establishing that it has suffered an injury in fact” and had “standing to bring suit in federal court.” Footnote 2 explains that “[a]n appellant’s obligation to establish an injury in fact remains firm even though it need not ‘meet[] all the normal standards for redressability and immediacy’ when, as here, a statute provides the appellant with a right to appeal” (35 U.S.C. § 141(c), “dissatisfied” party “may appeal the [PTAB]’s decision only to the…Federal Circuit”). And the Cuozzo (US 2016) decision recognized “that not every party will have Article III standing in an appeal from a PTAB final written decision” if, e.g., it does “not have a concrete stake in the outcome” even if it initiated the IPR. Encumbering “Phigenix’s licensing efforts”, for instance, was found to be “insufficient to demonstrate injury in fact”.

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