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HRFM IP Law Bulletin - Special Edition

Key Appellate-Level Patent Cases of 2011

 

This special edition of the HRFM IP Law Bulletin provides a summary of key appellate-level patent decisions of 2011 from the U.S. Supreme Court and U.S. Court of Appeals for the Federal Circuit. 

 

Several themes have emerged over the past year, receiving particular attention by the courts, and which are highlighted in this bulletin.For further details on all the top cases and themes, we invite you review our paper: Patent Law - The Year in Review 2011.  

Notable Decisions of 2011 

 

Our coverage of the top patent law cases of 2011 begins with a review of the following notable decisions:

 

Microsoft Corp. v. i4i Ltd. P'ship (June 9, 2011): the Supreme Court confirmed that succeeding on a defense of patent invalidity requires clear and convincing evidence, even when the assertion of invalidity rests on prior art that was not considered by the USPTO during examination.

 

Bd. of Trustees of Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc. (June 6, 2011): holding that the Bayh-Dole Act does not automatically vest title to federally funded inventions in federal contractors or alter the patent ownership interest of employee-inventors under the Patent Act where a written assignment of patent rights has not yet been effected. 

 

Robert Bosch LLC v. Pylon Mfg. Corp. (Fed. Cir. Oct. 13, 2011): the Federal Circuit officially confirmed that "Ebay jettisoned the presumption of irreparable harm as it applies to determining the appropriateness of injunctive relief." 

 

Monsanto Co. v. Bowman, (Fed. Cir. Sept. 21, 2011): in this case relating to a patent directed to herbicide-resistant, genetically modified seeds, the Federal Circuit held that "[a]pplying the first sale doctrine to subsequent generations of self-replicating technology would eviscerate the rights of the patent holder."

 

Genetics Inst., LLC v. Novartis Vaccines & Diagnostics, Inc.(Fed. Cir. Aug. 23, 2011): the Federal Circuit held that nonobviousness of an invention can be supported by evidence of unexpected results even if such results were not obtained until after an application claiming the invention was filed.

 

Boston Scientific Corp. v. Johnson & Johnson (Fed. Cir. June 7, 2011):  the court reiterated that  112 is not satisfied where a potentially extensive genus of compounds is claimed but only functional characteristics of its members are described.

 

Tivo, Inc. v. Echostar Corp. (Fed. Cir. April 20, 2011): Federal Circuit stated that the proper test for "colorable differences" consists substantially of three steps.

 

Uniloc USA, Inc., v. Microsoft Corp. (Fed. Cir. Jan. 4, 2011): addressing the issue of damages, the Federal Circuit struck down as fundamentally flawed the "25 percent rule" of determining a reasonable royalty and stated that evidence relying on the "25 percent rule" is inadmissible under Daubert and the Federal Rules of Evidence.  

 

Read:  Patent Law - The Year in Review 2011 >>

Theme #1:  Patent Eligible Subject Matter after Bilski

 

Following the U.S. Supreme Court's 2010 decision in Bilski v. Kappos, numerous high-profile decisions were handed down in 2011 pertaining to patent-eligibility under 35 U.S.C.  101. 

 

Ass'n for Molecular Pathology v. U.S. Patent & Trademark Office (Fed. Cir. July 29, 2011) (en banc): holding that isolated DNA sequences were patent-eligible subject matter under  101 because they differed sufficiently from native DNA so as not to be classified as products of nature. 

 

Classen Immunotherapies, Inc. v. Biogen IDEC (Fed. Cir. Aug. 31, 2011): holding that claims to methods for evaluating and improving medical treatments were patent-eligible notwithstanding that they claimed "mental steps," provided they also contain non-abstract steps of physically manipulating things in the environment.

 

CyberSource Corp. v. Retail Decisions, Inc. (Fed. Cir. Aug. 16, 2011): affirming that the invention failed the machine-or-transformation test and concluding that the claims were all "drawn to a mental process - i.e., an abstract idea" and thus did not recite patent-eligible subject matter.

 

Ultramercial, LLC v. Hulu, LLC (Fed. Cir. Sept. 15, 2011): stating that for an invention to be considered an abstract idea, "[the] disqualifying characteristic should exhibit itself so manifestly as to override the broad statutory categories of eligible subject matter and the statutory context that directs primary attention on the patentability criteria of the rest of the Patent Act."

 

Theme #2: Cabining the Defense of

Patent Unenforceability

 

For the first time in decades, the Federal Circuit issued an en banc decision for the purpose of curtailing the rampant popularity among patent infringement defendants of asserting the doctrine of inequitable conduct.

 

Therasense, Inc. v. Becton, Dickinson & Co. (Fed. Cir. May 25, 2011): asserting a new, heightened standard for showing that a patentee's allegedly misleading conduct during examination of an application amounted to a material misrepresentation. 

 

Am. Calcar, Inc. v. Am. Honda Motor Co., Inc. (Fed. Cir. June 27, 2011): applying the new standard to vacate and remand a pre-Therasense finding of inequitable conduct, where the "sliding scale" test had been used.

 

Cordis Corp. v. Boston Scientific Corp. (Fed. Cir. Sept. 28, 2011): applying the new standard to affirm a district court's conclusion that sufficient evidence of the specific intent to deceive was lacking.

 

Cancer Research Tech. Ltd. v. Barr Laboratories, Inc. (Fed. Cir. Feb. 28, 2011): an evenly divided Federal Circuit denied a petition for en banc rehearing of a panel's 2010 decision holding that succeeding on a claim of prosecution laches requires that intervening rights of the proponent arose during a patentee's unreasonable delay during prosecution, such that enforcing the patent would be prejudicial.

  

Read:   Patent Law - The Year in Review 2011 >>

Theme #3:  Ascribing Liability to Joint and Indirect Infringers

 

Another trend was the development of the appropriate analyses for attributing patent liability where multiple parties shouldered aspects of culpability.

 

Global-Tech Appliances, Inc. v. SEB S.A. (May 31, 2011): the U.S. Supreme Court answered lingering questions about indirect liability for inducing patent infringement under 35 U.S.C.  271(b).

 

Centillion Data Sys., LLC v. Qwest Commc'n. Int'l, Inc. (Fed. Cir. Jan. 20, 2011): the Federal Circuit examined when it is appropriate to attribute liability for joint infringement where the conduct of multiple parties considered together would constitute an act of direct infringement. 

 

Akamai Technologies, Inc. v. Limelight Networks, Inc. (Fed. Cir. April 20, 2011): the  Federal Circuit has agreed to consider the following question en banc: "[i]f separate entities each perform separate steps of a method claim, under what circumstances would that claim be directly infringed and to what extent would each of the parties be liable?" This will likely be decided in 2012.

 

McKesson Technologies, Inc. v. Epic Systems Corp. (Fed. Cir. May 26, 2011): in light of the Federal Circuit's order in Akamai Technologies, the Federal Circuit has ordered a rehearing en banc to address questions regarding direct and indirectinfringement liability. This will likely be decided in 2012.

 

Read: Patent Law - The Year in Review 2011 >>

Theme #4: Refinement of the Written Description Requirement

  

Another theme is the Federal Circuit's continuing struggle with applying the written description requirement of 35 U.S.C.  112 to different technologies.

 

Star Scientific, Inc. v. R.J. Reynolds Tobacco Co. (Fed. Cir. Aug. 26, 2011): the Federal Circuit found the requirement to have been satisfied despite possible difficulty in identifying the parameters of a claimed limitation, because a skilled worker in the field of endeavor (curing tobacco) would have appreciated how the relevant conditions could vary depending on the circumstances and the consequent need for empiricism.

 

Crown Packaging Tech., Inc. v. Ball Metal Beverage Container Corp(Fed. Cir. April 1, 2011): where the written description requirement was applied in a mechanical arts case, the Federal Circuit held that the requirement can be met by a claim to a solution but one problem, even though the specification may be addressed to several related problems.

 

Centocor Ortho Biotech, Inc. v. Abbott Laboratories (Fed. Cir. Feb. 23, 2011): the Federal Circuit invalidated claims to antibodies on written description grounds, distinguishing the circumstances from those addressed in USPTO guidelines, where the specification lacked sufficient characterization of the particular features of the antibodies as claimed.

 

Read:  Patent Law - The Year in Review 2011>>

Links to More Articles 

 

This Special Edition of the IP Law Bulletin is brought to you by the

HRFM team of:

 

Susan E. Farley, Esq.

Annette I. Kahler, Esq.

Teige P. Sheehan, Esq.

Caroline B. Ahn, Esq.

Kathryn K. Frederick

Naresh K. Kannan

 

 

Featured Patent Law

Cases of 2011 

alphabetical by court

 

 

 

U.S. Supreme Court

 

Bd. of Trustees of Leland Stanford Junior Univ. v. Roche Molecular Sys, Inc.

 

Global Tech Appliances, Inc. v. SEB, S.A.

 

Microsoft Corp. v. i4i Ltd. Partnership 

 

 

 

 U.S. Court of Appeals

for the Federal Circuit

 

Akamai Technologies, Inc. v. Limelight Networks

 

Am. Calcar, Inc. v.Am. Honda Motor Co., Inc.

  

Ass'n for Molecular Pathology v. U.S. Patent & Trademark Office 

 

Bettcher Indus., Inc. v. Bunzl USA, Inc.

 

Boston Scientific Corp. v. Johnson & Johnson 

 

Cancer Research Tech. Ltd. v. Barr Laboratories, Inc. 

 

Centillion Data Sys., LLC v. Qwest Commcn's Int'l, Inc.

  

Centocor Ortho Biotech, Inc. v. Abbott Laboratories

  

Classen Immunotherapies, Inc. v. Biogen IDEC 

 

Cordis Corp. v. Boston Scientific Corp.   

 

Crown Packaging Tech., Inc. v. Ball Metal Beverage Container Corp.

  

CyberSource Corp. v.Retail Decisions, Inc. 

 

Eon-Net LP v. Flagstar Bancorp

  

Genetics Inst., LLC v. Novartis Vaccines & Diagnostics, Inc 

 

iLOR, LLC v. Google, Inc

 

In re Katz Interactive Call Processing Patent Litigation

 

In re Mostafazadeh

 

In re Microsoft Corp.

 

In re NTP, Inc.

 

In re Tanaka 

 

In re Verizon Bus. Network Services Inc. 

 

 

McKesson Technologies, Inc. v. Epic Systems Corp.

   

Monsanto Co. v. Bowman  

 

Radio Sys. Corp. v. Accession, Inc.

 

Robert Bosch LLC v. Pylon Mfg. Corp.

   

Siemens Med. Solutions USA, Inc. v. Saint-Gobain Ceramics & Plastics, Inc. 

  

Star Scientific, Inc. v. R.J. Reynolds Tobacco Co.

   

Therasense, Inc. v. Becton, Dickinson & Co.  

 

TianRui Group Co. Ltd. v. Int'l Trade Comm'n

   

Tivo, Inc. v. Echostar Corp.  

 

Ultramercial, LLC v. Hulu, LLC

   

Uniloc USA, Inc., v. Microsoft Corp

 

 Wellman, Inc. v. Eastman Chem. Co.

 

 
HRFM IP Law Bulletin
Editorial Team
 
 
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Heslin Rothenberg Farley & Mesiti P.C. is the largest law firm in New York's Tech Valley

devoted  exclusively to intellectual property law. Since 1970, we have been helping clients

advance their business and protect new ideas, from concept to commercialization.

 

The Heslin Rothenberg Farley & Mesiti IP Law Bulletin summarizes recent IP law news

and noteworthy developments at our firm. Its contents do not constitute legal advice. 

 

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