Spotlight on Upcoming Oral Arguments – February 2019

Wednesday, February 6, 2019

Intra-Cellular Therapies, Inc. v. Iancu, No. 18-1849, Courtroom 201

During prosecution of U.S. Patent No. 8,648,077, the Examiner issued a final rejection, to which Intra-Cellular made a first response that amended the claims. The USPTO deemed that Intra-Cellular’s response did not fully respond to the rejections and issued an advisory action recommending certain amendments.  Intra-Cellular made the recommended amendments in its second response.  When calculating patent term adjustment, the USPTO concluded that the first response was not valid and extended the period of applicant delay through the filing of the second response.  Intra-Cellular filed an action in the Eastern District of Virginia challenging the USPTO’s determination.  The district court granted summary judgment in favor of the USPTO finding that the USPTO’s interpretation of “failure to engage in reasonable efforts to conclude prosecution” under 35 U.S.C. § 154(b)(2)(C) was reasonable.

Intra-Cellular argues that the USPTO’s determination is inconsistent with and contrary to the plain language of the statute and regulations.  Intra-Cellular argues that its first response was a bona fide response and was an objectively reasonable effort to conclude prosecution.  Intra-Cellular further argues that it did not engage in any conduct to prevent or interfere with examination.  The USPTO argues that Intra-Cellular’s first response to the final rejection was an improper reply because it failed to place the application in condition for allowance as required by 37 C.F.R. § 1.113(c).  The USPTO contends that an improper reply to a final rejection necessarily affects the ability to conclude prosecution, and therefore, the period of applicant delay was properly extended through the filing of a proper response by Intra-Cellular.

INO Therapeutics LLC v. Praxair Distribution Inc., No. 18-1019, Courtroom 203

INO appeals from a District of Delaware decision finding its method of treatment claims ineligible under 35 U.S.C. § 101.  At the district court, INO’s method of treatment patents were found patent ineligible under 35 U.S.C. § 101.  The district court found that the asserted claims were directed natural phenomenon and require only the routine and conventional administration steps.

INO contends that the claims apply a discovery as part of a new therapeutic treatment protocol.  INO argues that it discovered that neonatal patients with pre-existing left ventricular dysfunction experience severe adverse events when administered inhaled nitric oxide.  In light of this discovery, the claims require the selective administration of inhaled nitric oxide to neonatal patients based on prior determination of whether they have left ventricular dysfunction.  INO argues that this targeted treatment results in concrete, real-world benefits.  Praxair argues that the claims are directed to the natural relationship between administering inhaled nitric oxide and the occurrence of adverse events in infants left ventricular dysfunction.  Praxair further argues that the claimed method does not add an inventive concept because they require only the application of known, conventional steps in the practice of medicine.

Friday, February 8, 2019

Blackbird Tech LLC v. CloudFlare, Inc., No. 18-1644, Courtroom 201

In this appeal, the Federal Circuit has been asked to consider whether the District of Delaware abused its discretion by granting Defendant’s motion to transfer the action to the Northern District of California under 28 U.S.C. § 1404(a).  Under § 1404(a) “a district court may transfer any civil action to any other district or division where it might have been brought.”  Blackbird argues that venue would not have been proper in the Northern District of California because neither Defendant is incorporated in the Northern District of California and no infringing acts occurred in the Northern District of California.  Blackbird further argues that the interest of convenience weighed against transfer because all parties were incorporated in Delaware.  The Defendants argue that Blackbird waived its arguments about venue by failing to move to have the case transferred back to Delaware.  The Defendants further argue that the interest of convenience weighed in favor of transfer because the relevant evidence and witnesses were located in California.

Syngenta Crop Protection, LLC v. Willowood, LLC, No. 18-1614, Courtroom 402

Syngenta appeals from a Middle District of North Carolina decision finding that Willowood did not infringe U.S. Patent No. 5,847,138 (“the ’138 patent”) under 35 U.S.C. § 271(g).  The district court held that a product imported into the United States that is manufactured using a patented process only infringes under § 271(g) if a single entity performs all the steps of the patented process.  The district court found that Willowood’s product was made by the patented process but the single-entity requirement was not met.  On appeal, Syngenta argues that the district court’s interpretation is inconsistent with the plain language, legislative history, and previous interpretations of § 271(g).  Syngenta argues that the district court’s interpretation of § 271(g) eviscerates Congress’s intent to prevent infringers from circumventing U.S. patent rights.  Willowood argues that § 271(g) provides protection against direct infringement by foreign infringers and should therefore be interpreted in a manner consistent with §§ 271(a) and (b).  Willowood argues that Syngenta’s proposed interpretation would expand patent owner’s rights against foreign infringers, which is not what Congress intended.