Category: Intellectual Property News

by Dennis Crouch

In re: Janke, Docket No. 22-1274 (Fed. Cir. 2022) (R.36 Judgment)

Mr. Garth Janke is a former HP engineer and now a patent attorney at Garth Janke LLC.  Janke is also an inventor. Most recently, he has been pursuing patent protection on his clog-free leaf rake.  His Dulcinea. I live in a forest and have a basic rule against raking or blowing leaves–otherwise my grass would grow and then I would need to mow. But, to each his own.

Janke’s invention can be seen in the two drawings above. The Fig. 1 is a traditional prior art rake. Janke’s improvement is shown in Fig. 3. The improvement is to put a hole toward the end of each rake-tine.  A user can thread a string-trimmer line through the holes to help prevent leaf-clog.  Janke’s claim 1 is directed at a rake with holes through the tines. And he did a nice job of making clear to everyone “the holes through the tines are the only thing about the product of Claim 1 that is new.”

But, Claim 1 isn’t at issue in this appeal.

Continue reading Has Eligibility become Quixotic? at Patently-O.

by Dennis Crouch

This post is about using U.S. Courts to obtain discovery in order to facilitate foreign litigation; with the pending global litigation between Eli Lilly and Novartis serving as our key example.

In 1938, the Federal Rules of Civil Procedure were adopted in the U.S., including powerful and expansive procedures for automatic disclosures and forced discovery.  The standard today is that prior to trial the litigating parties will share “mutual knowledge of all relevant facts.”  Hickman v. Taylor, 329 U.S. 495 (1947).  We do this through various required disclosures as well as requests for documents & admissions, depositions & interrogatories.  But, the U.S. is an outlier.  Although most international civil courts offer some access to discovery, no other country has as extensive or powerful of a process.   Italian law, for instance, has no obligation of discovery absent a specific court order.

Eli Lilly and Novartis are in the midst of complex European patent and competition (antitrust) litigation regarding their competing monoclonal antibody drugs used to treat autoimmune symptoms such as psoriasis and arthritis.  The cases are pending in Ireland, Italy, and Austria; with a German action already settled. 

Continue reading Where’s Waldo: Global Discovery and Finding a Corporation at Patently-O.

by Dennis Crouch

OpenSky Indus v. VLSI, IPR 2021-1064 (Before Dir. Vidal)

Stepping-in like a court of equity, Dir. Vidal today issued a Precedential Order finding that OpenSky had abused the IPR process.  OpenSky filed its IPR petition soon after VLSI won a $2 billion judgment against Intel.  At that point though, OpenSky offered to work on behalf of either VLSI or Intel. Essentially, asking for some pay-off to either continue its challenger or to bow-out. Dir. Vidal writes:

I determine that OpenSky, through its counsel, abused the IPR process by filing this IPR in an attempt to extract payment from VLSI and … Intel, and expressed a willingness to abuse the process in order to extract the payment. OpenSky’s behavior in this proceeding is entirely distinguishable from conventional settlement negotiations that take place in an adversarial proceeding. I also find that OpenSky engaged in abuse of process and unethical conduct by offering to undermine and/or not vigorously pursue this matter in exchange for a monetary payment. Taken together, the behavior warrants sanctions to the fullest extent of my power.  . . . The conduct of the individual attorneys in this case might also rise to the level of an ethical violation under the rules of their respective bars

Vidal Precedential Order. 

Continue reading Litigation Blackmail: Sanctions for Gaming IPR System at Patently-O.

by Chris Holman

Mylan Pharms. Inc. v. Merck Sharp & Dohme Corp., 2022 WL 4541687 (Fed. Cir. Sept. 29, 2022)

As a general rule of thumb, the prior art disclosure of a chemical species anticipates (and thus renders unpatentable) a chemical genus encompassing that species. The prior art disclosure of a chemical genus, on the other hand, generally does not anticipate a species falling within the scope of the genus – except when it does.  In re Petering, 301 F.2d 681 (C.C.P.A. 1962), decided by the Court of Customs and Patent Appeals (the predecessor of the Federal Circuit) in 1962, provides an example in which the court holds that prior art disclosing a genus of 20 chemical compounds anticipated a species falling within that genus. The Petering court explained that the prior art may be deemed to disclose each member of a genus when, reading the reference, a person of ordinary skill can “at once envisage each member of this limited class.”

Mylan v. Merck provides an example going the other way, with the Federal Circuit affirming a Patent Trial and Appeal Board decision finding that the prior art disclosure of a genus comprising 957 predicted salts did not anticipate the following claim, which recites one of those salts.

Continue reading When Does Disclosure of a Chemical Genus Anticipate a Species? at Patently-O.

by Chris Holman

Mylan Pharms. Inc. v. Merck Sharp & Dohme Corp., 2022 WL 4541687 (Fed. Cir. Sept. 29, 2022)

As a general rule of thumb, the prior art disclosure of a chemical species anticipates (and thus renders unpatentable) a chemical genus encompassing that species. The prior art disclosure of a chemical genus, on the other hand, generally does not anticipate a species falling within the scope of the genus – except when it does.  In re Petering, 301 F.2d 681 (C.C.P.A. 1962), decided by the Court of Customs and Patent Appeals (the predecessor of the Federal Circuit) in 1962, provides an example in which the court holds that prior art disclosing a genus of 20 chemical compounds anticipated a species falling within that genus. The Petering court explained that the prior art may be deemed to disclose each member of a genus when, reading the reference, a person of ordinary skill can “at once envisage each member of this limited class.”

Mylan v. Merck provides an example going the other way, with the Federal Circuit affirming a Patent Trial and Appeal Board decision finding that the prior art disclosure of a genus comprising 957 predicted salts did not anticipate the following claim, which recites one of those salts.

Continue reading When Does Disclosure of a Chemical Genus Anticipate a Species? at Patently-O.

At the “long conference” last week, the Supreme Court considered the fate of 13 pending petitions for writ of certiorari.  Three cases have survived. In two, the Court invited the Solicitor General to file an amicus brief “expressing the views of the United States.”

• Teva v. GSK, 22-37 (Skinny Label)
• Interactive Wearables v. Polar Electro, 21-1281 (Eligibility)

CVSG.  The SG’s brief typically takes several months to draft and so we’ll likely not see further action in these cases until 2023.

The court took no action in Juno v. Kite, 21-1566 (full scope written description), meaning that the case will be reconsidered at a later conference. The remaining 10 petitions were denied certiorari.

1. CustomPlay, LLC v. Amazon.com, Inc., No. 21-1527
2. Gilbert P. Hyatt v. United States Patent and Trademark Office, No. 21-1526
3. Worlds Inc. v. Activision Blizzard Inc., No. 21-1554
4. SawStop Holding LLC v. United States Patent and Trademark Office, No. 22-11
5. Larry G. Junker v. Medical Components, Inc., No. 22-26
6. CPC Patent Technologies PTY Ltd. v. Apple Inc., No.

Continue reading SCOTUS: Three Potential Patent Cases at Patently-O.

by Dennis Crouch

In re Monolithic Power Systems, Inc., — F.4th — (Fed. Cir. 2022)

In a 2-1 decision, the Federal Circuit has denied Monolithic’s petition for writ of mandamus seeking to escape from Judge Albright W.D. Tex. courtroom for improper venue.  Since MPS is a Delaware Corp., the only way venue is proper in W.D. Tex. is if it “has committed acts of infringement and has a regular and established place of business.”  28 U.S.C. § 1400(b).  The company has employees, and various sales-channels within the district, but argues that it lacks a “regular and established place of business.”  As an alternative to its improper venue argument, MPS also argued that venue is inconvenient under 28 U.S.C. § 1404(a) and that the case should instead be transferred to N.D. Cal.

Judge Albright denied the motions to dismiss/transfer — holding that the “regular and established place of business” prong of the 1400(b) test was satisfied by three key findings:

1. MPS employed local engineers and sales managers in WDTX to serve local customers;
2. MPS stored property in WDTX (in the homes of its employees) and that equipment was used to service MPS’s WDTX customers, and
3. MPS continually maintain a physical presence within WDTX, including by advertising for replacement employees should any of MPS’s existing WDTX employees leave the company or move to a new location.

Continue reading Remote Work and Patent Venue at Patently-O.