Ideas

Intellectual Property Report: April 2017

IP Reports
Personal Web Technologies v. Apple: A Split of Authority On the Horizon at the Federal Circuit?
Keith Jurek
In Personal Web Technologies, LLC v. Apple, Inc., the Court of Appeals for the Federal Circuit was asked to review a Final Written Decision in an Inter Partes Review issued by the Patent Trial and Appeal Board (“the Board”) that found an invention obvious over a combination of prior art.1 In a precedential opinion vacating the obviousness determination, the panel of Circuit Judges held that the Board did not properly support its findings that the prior art “disclosed all elements of the challenged claims” and that a person of ordinary skill in the relevant art would have had the adequate motivation to combine the references.2 The apparent requirement that the prior art disclose all elements of the challenged claims is in tension with previous Federal Circuit decisions that have allowed obviousness challenges even when all elements were not disclosed in the prior art, so long as an adequate motivation to modify a prior art reference exists.3

To read the full article, click here.

"Shall" We Save the Last Patent Dance? Supreme Court to Lend Clarity on Mandatory Disclosure and Timing of Notice Under the BPCIA
Yan-Xin Li*, Sandra Lee
On January 13, 2017, the U.S. Supreme Court consolidated a petition and a cross-petition between pharmaceutical companies Sandoz and Amgen, and granted certiorari to resolve questions of statutory interpretation surrounding specific provisions of the Biologics Price Competition and Innovation Act of 2009 (BPCIA).1 The litigation centers around Sandoz’s biosimilar, Zarxio® (filgrastim-sndz)—the first biosimilar approved by the United States Food and Drug Administration (FDA).2 Filgrastim-sdnz is a biosimilar of Amgen’s Neupogen® (filgrastim),3 which is a granulocyte colony-stimulating factor (CSF) agent that stimulates bone marrow to produce white blood cells. With oral arguments scheduled for April 26, 2017, the Supreme Court will weigh in on the language in two sections of the BPCIA—one discussing the requirement for disclosure, the other regarding the timing of notice.

To read the full article, click here.

*Yan-Xin Li, a Baker Botts law clerk, assisted in the preparation of this article.

Intellectual Property Update: Supreme Court Strikes Down Equitable Defense of Laches in Patent Law
Brandon Chen
On March 21, 2017, the Supreme Court issued its opinion in SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, No. 15-927, 580 U.S. ___ (2017). In a 7-1 decision authored by Justice Alito, the Court reversed an en banc panel of the Federal Circuit and held that laches, the equitable doctrine that can limit the recovery of damages after an unreasonable delay, cannot be invoked as a defense against a claim for patent infringement damages brought within the 6-year limitations period prescribed by 35 U.S.C. § 286. This decision was highly anticipated in the wake of the Supreme Court’s decision in Petrella v. Metro-Goldwyn-Mayer, Inc., 572 U.S. ___ (2014), where the high court held that laches no longer applied in a copyright context.

To read the full article, click here.

Supreme Court Decision in Life Technologies v. Promega Does Not Relieve Manufacturers From the Risk*
Wayne Stacy, Elise Edlin
On February 22, 2017, the Supreme Court addressed whether “a party that supplies a single component of a multicomponent invention for manufacture abroad can be held liable for infringement under § 271(f)(1).” Life Technologies Corp. v. Promega Corp. 580 U.S. ___, slip op. at 1 (2017). Writing for the 7-0 majority, Justice Sotomayor held that a single component cannot constitute “a substantial portion of the components of a patented invention,” as required by § 271(f)(1), and therefore can never trigger liability for infringement abroad. Id. at 8. But the facts of the underlying case were incredibly simplistic and not representative of a typical patent infringement case involving complex technologies. The parties agreed that the exported product consisted of one of five total “components of the patented invention,” so the Court did not address “how identify the ‘components’ of a patent or whether and how that inquiry relates to the elements of a patent claim.” Id. at FN2. Addressing the issue in a case with minimal real-world applicability does little to help the finder of fact determine whether a product contains one or multiple components of a patented invention. The decision in Promega does not relieve manufacturers from the risk that their single-part product could be used inadvertently to infringe a U.S. Patent overseas. When disputes arise under § 271(f), defendants will need to build strong evidence showing that their product only contains one component to avoid infringement, while plaintiffs will be crafting arguments that the total number of patented components is low and the exported product contains multiple components.

To read the full article, click here.

*This article first appeared in IPWatchdog, March 9, 2017.