November 3, 2017
Authored and Edited by Caitlin E. O'Connell; Lillian R. Phares; Elizabeth D. Ferrill
Arthrex, Inc. v. Smith & Nephew, Inc., No. 17-1239, Courtroom 402
In this appeal, the Federal Circuit will consider whether it has jurisdiction to review a PTAB decision to terminate an IPR and enter an adverse judgment against the patent owner. Arthrex argues that the Court has jurisdiction because the PTAB’s decision to enter an adverse judgment and terminate the IPR constituted a “decision” that is appealable under 28 U.S.C. § 1295(a)(4). Alternatively, Arthrex argues that the PTAB’s decision constitutes a “final agency action” that is reviewable under the Administrative Procedure Act. Smith & Nephew argues that the APA does not permit judicial review of final agency actions when another statute bars judicial review. Thus, Smith & Nephew argues that the Court does not have jurisdiction to hear Arthrex’s appeal because its jurisdiction is limited to review of final written decisions under the AIA.
Intellectual Ventures I LLC v. FTD Companies, Inc., Nos. 17-1376, 17-1377, Courtroom 40
This appeal arises from an E.D. of Texas decision holding that Intellectual Ventures’ ’715 patent was directed to patent ineligible subject matter under § 101. Intellectual Ventures argues that the district court erred in holding the patent ineligible because it failed to consider the PTAB’s decision not to institute CBM review in light of its conclusion that the ’715 patent is a “technological-invention.” FTD argues that the PTAB’s decision that the ’715 patent was not a covered business method patent has no bearing on whether the claims are directed to patent eligible subject matter. Additionally, FTD argues that the district court adequately considered the PTAB’s decision when it denied Intellectual Ventures’ motion for reconsideration, finding that the PTAB’s ruling had no impact on its § 101 ruling.
Kahr v. Cole, No. 17-1391, Courtroom 202
Patent owner Kahr appeals from an E.D. of Wisconsin decision finding that the ensnarement defense precluded a finding of infringement under the doctrine of equivalents. Kahr argues that the district court erred by focusing only on the patentability of the equivalent element, not the equivalent of the hypothetical claim as a whole. Kahr argues that when the claim as a whole is considered, it is patentable, as it is neither obvious nor anticipated in view of the references asserted by Cole. Cole argues that the district court correctly construed the scope of the hypothetical equivalent claim and determined that the claim was obvious in light of the prior art.
Merck Sharp & Dohme Corp. v. Amneal Pharmaceuticals LLC, No. 17-1560, Courtroom 201
In this appeal, the Federal Circuit has been asked to consider whether under the Hatch-Waxman Act, the infringement analysis in this particular case must be based on Amneal’s final commercial ANDA product. During the course of litigation, it was discovered that Amneal’s ANDA product did not meet the specification of Amneal’s amended ANDA. In light of this discovery, Amneal amended its manufacturing process. Amneal provided Merck with samples drawn from the bulk formulation before final manufacturing and packaging, but Amneal did not provide samples of the final product. Merck argues that Amneal should have been required to produce samples of the final product and that the district court erred in focusing its infringement analysis on the intermediate samples Amneal provided. Amneal argues that the district court properly considered Merck’s testing on its intermediate product as well as the effects of additional processing in reaching its non-infringement decision.
Yongjiang Yin & Shenzhen El v. Sure-Fire Electrical Corporation, No. 16-2686, Courtroom 402
Yongjiang appeals from a PTAB Final Written Decision finding the claims of the ’279 patent invalid as obvious. Yongjian argues that the PTAB improperly construed the claims when it adopted a dictionary definition that was not advanced by the Petitioner, was not relied upon by the Petitioner’s expert, was not part of the record, and is inconsistent with the specification and prosecution history. Sure-Fire argues that the PTAB permissibly consulted dictionary definitions of the constituent words after it adopted Sure-Fire’s argument that the phrase should be given its plain and ordinary meaning.
Copyright © 2017 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.
DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. One of our lawyers will be happy to discuss the possibility of representation with you. Additional disclaimer information.
Conference
4th Annual Passport to Proficiency on the Essentials of Hatch-Waxman and BPCIA
October 8-24, 2024
Virtual
Federal Circuit IP Blog
August 16, 2024
Federal Circuit IP Blog
No Rule 45 Geographic Restrictions on District Court Orders to Appear
August 5, 2024
Due to international data regulations, we’ve updated our privacy policy. Click here to read our privacy policy in full.
We use cookies on this website to provide you with the best user experience. By accepting cookies, you agree to our use of cookies. Please note that if you opt not to accept or if you disable cookies, the “Your Finnegan” feature on this website will be disabled as well. For more information on how we use cookies, please see our Privacy Policy.
Finnegan is thrilled to announce the launch of our new blog, Ad Law Buzz, devoted solely to breaking news, developments, trends, and analysis in advertising law.