HRFM IP Law Bulletin - Special Edition

Key Appellate-Level Patent Cases of 2011

Notable Decisions of 2011 

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

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