Recent Patent Cases
July 2015
SCOTUS – October 2014 Term
• Teva Pharmaceuticals v. Sandoz
– 574 U.S. ___ (2015)
• Kimble et al. v. Marvel Entertainment
– 576 U.S. ___ (2015)
• Commil v. Cisco
– 575 U.S. ___ (2015)
Teva Pharmaceuticals v. Sandoz
• Teva, et al. owns a patent covering a
manufacturing method for Copaxone, a drug
used to treat MS.
• Claim limitation that the API had “a molecular
weight of 5 to 9 kilodaltons”
– Weight of most prevalent molecule (Mp)?
– Average weight of all molecules (Mn)?
– Average where larger molecules count for more
(Mw)?
• Is the claim limitation indefinite?
District Court
• The claim limitation was sufficiently definite
and the patent was valid.
• In the context of the specification, one of
ordinary skill in the art would have understood
the term to refer to the weight of the most
prevalent molecule.
Federal Circuit
• The Fed. Cir. Reviewed de novo all aspects of
the District Court’s claim construction,
including subsidiary facts.
• Held the claims invalid.
SCOTUS
• When the district court reviews only evidence
intrinsic to the patent, the judge’s
determination is solely a determination of law,
and the court of appeals will review that
construction de novo.
• The ultimate construction of the claim is a
legal conclusion that the appellate court can
review de novo. But, to overturn the judge’s
resolution of an underlying factual dispute, the
appellate court must find that the judge, in
respect to those factual findings, has made a
clear error.
Kimble v. Marvel
• In Brulotte, the Court held a post-patent
royalty provision unlawful per se. Such a
provision continued the patent monopoly
beyond the patent period and, in doing so,
conflicted with patent law’s policy of
establishing a post-expiration public domain.
• The Court refused to overturn Brulotte.
• However, Brulotte leaves parties free to enter
alternative arrangements that may suffice to
accomplish parties’ payment deferral and riskspreading goals.
Commil v. Cisco
• Direct infringement under §271(a) is a strict
liability offense in which a defendant’s mental
state is irrelevant.
• Inducement liability under §271(b) attaches
only if the defendant knew of the patent and
that the induced acts constitute patent
infringement.
• Contributory infringement under §271(c), like
inducement liability, requires knowledge of the
patent in suit and knowledge of patent
infringement.
Commil v. Cisco (cont.)
• Induced infringement and validity are separate
issues and have separate defenses under the
Patent Act--belief regarding validity cannot
negate §271(b)‘s scienter requirement of
“actively induce[d] infringement.”
• When infringement is the issue, the patent’s
validity is not the question to be contronged.
• If a parte believes that a patent is invalid, they
have proper ways to obtain a ruling to that
effect, e.g., ex parte reexamination.
• There is no defense of belief of invalidity for
induced infringement.
Fed. Cir.
• In re Cuzzo Speed Technologies
• TomTom v. Michael Adolph
• Teva v. Sandoz (on remand from SCOTUS)
• Internet Patents v. Active Network
• Microsoft v. Proxyconn
• Williamson v. Citrix
• EPLUS v. Lawson
• Ariosa Diagnostics Center v. Sequenom
• Alps South v. Ohio Willow Wood Co.
• ArcelorMittal v. AK Steel
• Sukumar v. Nautilus
In re Cuzzo Speed Technologies
• The Fed. Cir. Lacks jurisdiction to review the
PTO’s decision to institute IPR.
• IPR’s have two phases
– PTO determine whether to institute IPR
 Petitioner files document requesting
 Patent owner can file a response, with some limits
on doing so.
– Board Conducts the IPR and issues a final
decision.
 This final decision in then appealable, and is the
point where estoppel attaches.
TomTom v. Adolph
• A preamble is not limiting where a patentee
defines a structurally complete invention in the
claim body and uses the preamble only to
state a purpose or intended use for the
invention.
Teva v. Sandoz
• Claims are still indefinite.
• “We may now steer by the bright star of
‘reasonable certainty,’ rather than the
unreliable compass of ‘insoluble ambiguity.’”
• “A party cannot transform into a factual matter
the internal coherence and context
assessment of the patent simply by having an
expert offer an opinion on it. The internal
coherence and context assessment of the
patent, and whether it conveys claim meaning
with reasonable certainty, are questions of
law.”
Teva v. Sandoz (cont.)
• “Determining the meaning or significance to
ascribe to the legal writings which constitute
the intrinsic record is legal analysis. . . . Teva
cannot transform legal analysis about the
meaning or significance of the intrinsic
evidence into a factual question simply by
having an expert testify on it.”
Internet Patents v. Active Network
• The “back” button on your web browser is an
abstract idea.
• The district court held that “retaining
information lost in the navigation of online
forms as an ineligible abstract idea.”
(quotations omitted.)
Microsoft v. Proxyconn
• “[t]he protocol of giving claims their broadest
reasonable interpretation . . . does not include
giving claims a legally incorrect interpretation.”
In re Skvorecz, 580 F.3d 1262,1267 (Fed. Cir.
2009).
• “A construction that is “unreasonably broad”
and which does not ‘reasonably reflect the
plain language and disclosure’ will not pass
muster.”
• “[t]he protocol of giving claims their broadest
reasonable interpretation . . . does not include
giving claims a legally incorrect interpretation.”
Williamson v. Citrix Online
• “Our consideration of this case has led us to
conclude that such a heightened burden is
unjustified and that we should abandon
characterizing as ‘strong’ the presumption that
a limitation lacking the word ‘means’ is not
subject to 112, para 6.”
• “We also overrule the strict requirement of ‘a
showing that the limitation essentially is
devoid of anything that can be construed as
structure.”
Williamson v. Citrix Online
• “The standard is whether the words of the
claim are understood by persons of ordinary
skill in the art to have a sufficiently definite
meaning as the name for structure.”
• “When a claim term lacks the word ‘means,’
the presumption can be over come and 112,
para 6 will apply if the challenger
demonstrates that the claim term fails to
‘recite sufficiently definite structure’ or else
recites ‘function without reciting sufficient
structure for performing that function.’”
EPLUS v. Lawson Software
• An injunction cannot continue after the PTO
has cancelled the only claim upon which the
injunction was based.
• “[c]ivil contempt sanctions must be set aside
when the resolution of the case requires
overturning the injunction on which those
sanctions are based.”
Ariosa Diagnostics v. Sequenom
• For process claims that encompass natural
phenomenon, the process steps are the
additional features that must be new and
useful.
• Once claims are determined to disclose only
ineligible subject matter under the Mayo test,
“preemption concerns are fully addressed and
made moot.”
• “[w]hile preemption may signal ineligible
subject matter, the absence of complete
preemption does not demonstrate patent
eligibility.”
Alps South v. Ohio Willow Wood
• “[N]unc pro tunc assignments are not sufficient
to confer retroactive standing.”
ArcelorMittal v. AK Steel
• The Court stated that although an inventor’s
subjective understanding of patent
terminology is irrelevant to claim construction,
“when an inventor’s understanding of a claim
term is expressed in the prior art, it can be
evidence of how those skilled in the art would
have understood that term at the time of the
invention.”
Arcelormittal v. AK Steel
• The commercial success of an embodiment
with an additional unrecited feature may be
considered when evaluating the obviousness
of the claim, provided that there is a nexus
between the embodiment’s success and the
claimed and novel features of the invention.
Sukumar v. Nautilus
• Case deals with “competitive injury” and
standing.
• “We hold that a potential competitor may
suffer competitive injury if it has attempted to
enter the market. An attempt is made up of
two components: (1) intent to enter the market
with a reasonable possibility of success, and
(2) an action to enter the market.”
Par Pharm. v. TWI (Dec. 2014)
• Use of inherency in obviousness rejections.
• "[T]he use of inherency, a doctrine originally
• rooted in anticipation, must be carefully
circumscribed in the context of obviousness."
• "A party must, therefore, meet a high standard
in order to rely on inherency to establish the
existence of a claim limitation in the prior art in
an obviousness analysis—the limitation at
issue necessarily must be present, or the
natural result of the combination of elements
explicitly disclosed by the prior art."