When Legitimate Advocacy Crosses the Line to Inequitable Conduct
| August 27, 2014
Apotex Inc. and Apotex Corp. v. UCB, Inc., and Kremers Urban Pharmaceuticals, Inc., andSchwarz Pharma, Inc., Paddock Laboratories, LLLC, andPerrigo Company
August 15, 2014
Panel: Reyna, Wallach, and Hughes. Opinion by Reyna.
There is a line separating strong advocacy for your patent application and violating your duty of candor before the U.S. Patent & Trademark Office. This precedential decision illustrates when the line is crossed to result in a finding of inequitable conduct, leading to a patent becoming unenforceable.
Written Description
| August 20, 2014
ScriptPro, LLC v. Innovation Associates, Inc.
August 6, 2014
Panel: Taranto, Bryson and Hughes. Opinion by Taranto
Summary:
ScriptPro sued Innovation Associates, Inc, alleging infringement of claims 1, 2, 4, and 8 of U.S. Patent No. 6,910,601. Innovation Associates counterclaimed on various grounds, including invalidity under 35 U.S.C. § 112.
Shortly after suit filed, Innovation Associates initiated an inter partes reexamination of the ’601 patent at the PTO, and the district court stayed proceedings in this case to await the PTO’s determination.
The PTO completed its reexamination of the ’601 patent. It confirmed amended claims 1 and 2 (amended in ways not relevant to this appeal). It confirmed claim 4, formerly a dependent claim, as rewritten to be an independent claim, but not otherwise amended. And it confirmed claim 8 without amendment. The amendments are not relevant to the issues on appeal.
Proceedings in the infringement suit resumed.
The district court granted summary judgment for Innovation Associates, holding that the asserted claims were invalid under 35 U.S.C. § 112.
The district court rested its holding on a single conclusion—that the specification describes a machine containing “sensors,” whereas the claims at issue do not claim a machine having “sensors.”
ScriptPro appealed.
The district court granted summary judgment of invalidity on the ground that the patent’s specification does not describe the subject matter of the asserted claims, which do not require sensors. This is the only issue on appeal.
The district court agreed with Innovation Associates that the specification indisputably limits the invention to a collating unit that uses sensors to determine whether a particular holding area is full when selecting a holding area for storage of a prescription container.
The district court concluded “no reasonable jury could find that the inventors were in possession of a collating unit that operated without sensors.”
The district court decision is reversed.
Tags: abstract > claims as originally filed > specification > written description
In the wake of Alice Corp. v. CLS Bank Int’l, the Federal Circuit strikes down another patentee’s claims for reciting patent ineligible abstract idea
| August 18, 2014
Digitech Image Technologies v. Electronics For Imaging, Inc.
July 11, 2014
Panel: Moore, Reyna, Hughes. Opinion by Reyna.
Summary
Digitech is the assignee of U.S. Patent No. 6,128,415 (the ‘415 patent) directed to a device profile for a digital image reproduction system and a method of generating a device profile in a digital image reproduction system. Digitech sued 32 defendants for infringement in the U.S. District Court for the Central District of California. Several defendants filed summary judgment motions seeking to invalidate the asserted claims of the ‘415 patent under 35 U.S.C. §101. The district court granted the defendants’ motions and found all of the asserted claims to be subject matter ineligible. On appeal, the Court of Appeals for the Federal Circuit (CAFC) affirmed.
Somewhat unexpected results yield to strong evidence of obviousness to try
| August 8, 2014
Roche and Genentech v. Apotex Inc; Roche and Genentech v. Dr. Reddy’s laboratories; Roche and Genentech v. Watson etc.; Roche and Genentech v. Orchid chemicals & pharmaceuticals etc; and Genentech v. Mylan etc.
April 11, 2014
Before Newman, Lourie, and Bryson. Opinion by Bryson. Dissent by Newman
Summary
Plaintiff Roche appeals from the decision of the U.S. District Court for the District of New Jersey granting the defendant generic drug companies summary judgment of invalidity of Roche’s two patents related to Boniva®, a commercial drug for the treatment of osteoporosis. CAFC affirms.
