Spotlight on Upcoming Oral Arguments – May, 2016

Tuesday May 3, 2016

FairWarning IP v. Iatric Systems, No. 15-1985, Courtroom 203

This decision arises from a M.D. Fla. case in which the court held that  FairWarning’s claims directed to detecting improper access of a patient’s health information were ineligible under 35 U.S.C. § 101.  FairWarning argues that the claims are rooted in computer technology and that the steps are not well-known, conventional, or routine steps that can be performed by a human.

Husky Injection Molding System v. Athena Automation, No. 15-1726, Courtroom 203

In this appeal, the Federal Circuit will address the question of whether assignor estoppel prohibits Athena Automation from challenging the validity of a patent in an inter partes review proceeding.  Husky argues that the same principles of fairness that support the application of assignor estoppel in litigation support the application of the doctrine in IPRs.

Wednesday May 4, 2016

Becton, Dickinson & Co. v. Baxter International, No. 15-1918, Courtroom 203

In this appeal, the Federal Circuit will consider whether certain claimed methods of remotely supervising and verifying sterile compounded pharmaceuticals are patent eligible under 35 U.S.C. § 101.  Becton, Dickinson argues that the particular claims at issue are patent eligible because the methods utilize specific hardware and software and contains limitations that transform these particular claims into something more than just abstract ideas.

Thursday May 5, 2016

Medicines v. Hospira, No. 14-1469, Courtroom 201 (en banc)

In this en banc appeal, the Federal Circuit will address whether the circumstances of the case triggered the on-sale bar of 35 U.S.C. § 102. The Medicines Company joined by amici Gilead Sciences and the Houston Intellectual Property Law Association, argue that the on-sale bar was not triggered because the patented product was produced only for experimental purposes and was not sold prior to the critical date.

The court may also address whether there should be a “supplier” exception to the § 102 on-sale bar.  Amici, including the American Intellectual Property Law Association, the Biotechnology Innovation Organization, the Intellectual Property Owners Association, and the Pharmaceutical Research and Manufacturers of America, argue that the Federal Circuit should overrule the current rule, and instead allow a “supplier” exception to the § 102 on-sale bar.

Friday May 6, 2016

Joseph Phelps Vineyards v. Fairmont Holdings, No. 16-1089, Courtroom 201

This appeal arises from a TTAB finding that there was no likelihood of confusion between the marks “ALEC BRADLEY STAR INSIGNIA” for cigars and “INSIGNIA” for wine.  Joseph Phelps Vineyards argues that the DuPont test should be clarified to include a measure of trademark strength when “fame” is being evaluated.  Fairmont Holdings argues that under DuPont, “fame” either does or does not exist, it is not intended to be evaluated upon a spectrum.