Throughout 2018 and 2019, Panitch Schwarze has carefully watched key intellectual property disputes at the U.S. Supreme Court and the Court of Appeals for the Federal Circuit (CAFC). The following cases will impact the protection of intellectual property in the United States.
Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA Inc.
The 2011 America Invents Act (AIA) left a lingering question whether secret sales qualify as prior art. The AIA added wording to 35 U.S.C. 102 that suggested a sale must make the invention available to the public to qualify as prior art. This implied that secret sales would not qualify as prior art. The U.S. Supreme Court addressed this ambiguity by saying that the AIA’s additional wording in 35 U.S.C. 102 did not change the existing definition of “on sale” for prior art purposes. Therefore, secret sales qualify as prior art, as they did before the AIA.
Applications in Internet Time, LLC v. RPX Corp.
An inter partes review (IPR) must be filed within one year of the petitioner, real party in interest, or privy of the petitioner being served with a complaint. Applications in Internet Time (AIT) served Salesforce with a patent infringement complaint, but Salesforce did not file an IPR within the requisite one-year period. More than a year after Salesforce was served with the complaint, RPX Corp., a patent defense group that Salesforce was a member of, filed an IPR against AIT. The Patent Trial and Appeal Board decided that Salesforce was not a real party in interest for the IPR, which allowed the IPR to continue. However, the CAFC reversed and remanded, saying that “real party in interest” has its expansive common-law meaning. Therefore, the PTAB will need to consider equitable and practical consideration to determine if Salesforce is a clear beneficiary and real party in interest for the IPR.
Natural Alternatives Int’l, Inc. v. Iancu
Natural Alternatives International (NAI) filed a chain of eight patent applications, where each subsequent application was a continuation application that claimed priority to the first application. The fifth application was later amended to eliminate its priority claim to the first application. This was an effort to extend the lifespan of the fifth patent while preserving the priority claims of the subsequent applications. The CAFC said that priority is a single chain, growing with each additional continuation and amending a parent application’s priority can destroy a child application’s priority. In this case, amending the fifth application’s priority claim caused the eighth application to lose its priority claim.
GoPro, Inc. v Contour IP Holding LLC
GoPro initiated IPRs against Contour based on catalogs that GoPro had handed out at a trade show for off-road vehicles. The trade show was not advertised or open to the public. The PTAB decided that the catalogue was not a prior art bar, because the catalog was not distributed or reasonably accessible to one of ordinary skill in the art. However, the CAFC reversed and remanded, saying that direct availability to one ordinarily skilled in the art is not dispositive. The CAFC determined that the catalog was a printed publication, because the catalog was distributed without restriction and intended to reach the general public.
Acceleration Bay, LLC v. Activision Blizzard Inc.
Six large video game companies challenged Acceleration Bay’s network broadcasting patents. Some of Acceleration Bay’s claims did not have transition words. The CAFC decided that there was no benefit for failing to include a transition word. Therefore, the claim terms in question were held to be in the preamble instead of the body, and these terms were not considered claim limitations. The relevant claims were then held unpatentable based on the prior art. The videogame companies also tried to argue that a reference was publicly accessible because that reference was indexed and searchable by author name and year. The CAFC held that a technically accessible source is not necessarily publicly accessible. The reference was only searchable by author name and year, and the authors were not well known. The reference was not publicly accessible, because, at best, an artisan would need to skim through potentially hundreds of titles to find this reference.
JTEKT Corp. v. GKN Automotive Ltd.
Anyone can petition for an IPR. No infringing activity is required to file an IPR. However, appealing from an IPR decision requires an “injury-in-fact.” An “injury-in-fact” can be demonstrated by infringing activity or activity that is likely to give rise to an infringement suit. JTEKT was developing a product that would likely infringe upon GKN’s patent. JTEKT instituted an IPR, but JKETK was unsuccessful at invalidating GKN’s patent. The CAFC denied JTEKT’s appeal from the IPR decision, because JTEKT’s product was still in development and there was uncertainty whether the final product would be infringing. Therefore, an unfinalized product does not qualify as an “injury-in-fact” that allows for appeal from an IPR decision.
E.I. DuPont de Nemours v. Synvina C.V.
In another “injury-in-fact” case, DuPont had announced plans to build a demonstration chemical plant. The plant would be non-commercial, but the announced chemical process read on Synvina’s patent claims. DuPont instituted an IPR against Synvina’s patent, but DuPont was unsuccessful at invaliding Synvina’s patent. The CAFC accepted DuPont’s appeal from the IPR decision, because DuPont continued with the plans to build the demonstration plant and DuPont was operating the demonstration plant by the time that the appeal reached oral argument. Therefore, even non-commercial activity qualifies as an “injury-in-fact” when steps are taken that demonstrate present and future infringing activities. The CAFC found that DuPont’s risk of liability was not “conjectural” or “hypothetical” in this situation.
Momenta Pharmaceuticals, Inc. v. Bristol-Myers Squibb Co.
Bristol-Myers’s patent covered a drug marketed as Orencia. Momenta, in partnership with Mylan, was developing a biosimilar to Orencia. Momenta instituted an IPR against Bristol-Myer’s patent, but Momenta was unsuccessful at invaliding Bristol-Myers’s patent. The CAFC denied DuPont’s appeal from the IPR decision, because Momenta ceased development of the biosimilar after the appeal was initiated. Momenta argued that they had an interest in the appeal because their partner, Mylan, could later develop the drug and Momenta would then be entitled to royalties. The CAFC rejected this argument and said that potential future royalties do not qualify as a concrete and particularized interest in the appeal. Further, the CAFC said that potential infringing activity must persist throughout an appeal to support the “injury-in-fact” requirement. Momenta ceasing development of the biosimilar was a loss of the “injury-in-fact” necessary for appeal.