Sonos v. Google: Late Claiming Estoppel

by Dennis Crouch

Sonos has filed its notice appealing Judge Alsup’s recent decision in Sonos v. Google that rendered two Sonos patents unenforceable due to prosecution laches. After being awarded $32 million by a jury, Sonos saw its verdict flipped by Judge Alsup in a harsh ruling accusing the company of “wringing fresh claims to read on a competitor’s products from an ancient application.” To mount its appeal, Sonos has enlisted Supreme Court heavyweight Josh Rosenkranz, head of Orrick’s Supreme Court and Appellate practice alongside the trial team led by George Lee.  Dan Bagatell, Perkins Coie’s head of Federal Circuit Patent Appeals Practice has filed an appearance in the case for Google.

The appeal will likely focus on several key issues from Judge Alsup’s ruling:

Priority Date: A core finding by Judge Alsup was that new claim language added by Sonos in 2019 constituted improper “new matter” that undermined the priority date for the asserted claims. However, the addition of new language does not necessarily destroy an earlier priority date. Sonos will argue on appeal that the claims were still adequately supported under enablement and written description standards.

Prosecution Laches: While agreeing Sonos diligently prosecuted its patents over 13 years, Judge Alsup still found unreasonable delay and prejudice to Google.

Continue reading Sonos v. Google: Late Claiming Estoppel at Patently-O.

Sonos v. Google: Late Claiming Estoppel

by Dennis Crouch

Sonos has filed its notice appealing Judge Alsup’s recent decision in Sonos v. Google that rendered two Sonos patents unenforceable due to prosecution laches. After being awarded $32 million by a jury, Sonos saw its verdict flipped by Judge Alsup in a harsh ruling accusing the company of “wringing fresh claims to read on a competitor’s products from an ancient application.” To mount its appeal, Sonos has enlisted Supreme Court heavyweight Josh Rosenkranz, head of Orrick’s Supreme Court and Appellate practice alongside the trial team led by George Lee.  Dan Bagatell, Perkins Coie’s head of Federal Circuit Patent Appeals Practice has filed an appearance in the case for Google.

The appeal will likely focus on several key issues from Judge Alsup’s ruling:

Priority Date: A core finding by Judge Alsup was that new claim language added by Sonos in 2019 constituted improper “new matter” that undermined the priority date for the asserted claims. However, the addition of new language does not necessarily destroy an earlier priority date. Sonos will argue on appeal that the claims were still adequately supported under enablement and written description standards.

Prosecution Laches: While agreeing Sonos diligently prosecuted its patents over 13 years, Judge Alsup still found unreasonable delay and prejudice to Google.

Continue reading Sonos v. Google: Late Claiming Estoppel at Patently-O.

Skinny Label Avoids Infringement

Skinny Label Avoids Infringement

by Dennis Crouch

H. Lundbeck A/S v. Lupin Ltd., Nos. 2022-1194, 2022-1208, 2022-1246 (Fed. Cir. Dec. 7, 2023) (Opinion by Judge Dyk, joined by Judges Prost and Hughes).

The Federal Circuit recently affirmed a district court judgment finding that Abbreviated New Drug Applications (“ANDAs”) submitted by generic drug manufacturers did not infringe patents rights held by H. Lundbeck A/S and its licensee Takeda relating to the antidepressant drug Trintellix (vortioxetine). The court also affirmed the lower court’s finding that one of the generic manufacturer’s processes for making the drug would infringe a Lundbeck patent directed to methods of manufacture.

Lundbeck’s patents on vortioxetine as well as methods of using the drug to treat major depressive disorder (“MDD”) have expired. However, Lundbeck holds newer patents claiming additional methods of use, including U.S. Patent No. 9,278,096 (“the ‘096 patent”), which claims using Trintellix to treat patients who previously took other antidepressants but ceased use due to sexual side effects, and U.S. Patent No. 9,125,910 (“the ‘910 patent”), which claims treating MDD patients’ cognitive impairment with Trintellix.

When the generic manufacturers filed ANDAs seeking approval for only the initial approved use of Trintellix to treat MDD, Lundbeck sued for infringement, arguing that approval should be blocked because Trintellix would likely later be prescribed for the uses claimed in the ‘096 and ‘910 patents.

Continue reading Skinny Label Avoids Infringement at Patently-O.

Skinny Label Avoids Infringement

Skinny Label Avoids Infringement

by Dennis Crouch

H. Lundbeck A/S v. Lupin Ltd., Nos. 2022-1194, 2022-1208, 2022-1246 (Fed. Cir. Dec. 7, 2023) (Opinion by Judge Dyk, joined by Judges Prost and Hughes).

The Federal Circuit recently affirmed a district court judgment finding that Abbreviated New Drug Applications (“ANDAs”) submitted by generic drug manufacturers did not infringe patents rights held by H. Lundbeck A/S and its licensee Takeda relating to the antidepressant drug Trintellix (vortioxetine). The court also affirmed the lower court’s finding that one of the generic manufacturer’s processes for making the drug would infringe a Lundbeck patent directed to methods of manufacture.

Lundbeck’s patents on vortioxetine as well as methods of using the drug to treat major depressive disorder (“MDD”) have expired. However, Lundbeck holds newer patents claiming additional methods of use, including U.S. Patent No. 9,278,096 (“the ‘096 patent”), which claims using Trintellix to treat patients who previously took other antidepressants but ceased use due to sexual side effects, and U.S. Patent No. 9,125,910 (“the ‘910 patent”), which claims treating MDD patients’ cognitive impairment with Trintellix.

When the generic manufacturers filed ANDAs seeking approval for only the initial approved use of Trintellix to treat MDD, Lundbeck sued for infringement, arguing that approval should be blocked because Trintellix would likely later be prescribed for the uses claimed in the ‘096 and ‘910 patents.

Continue reading Skinny Label Avoids Infringement at Patently-O.

USPTO again Asks for Remand in Xencor to reconsider its Decisions.

by Dennis Crouch

Since I have been writing about the pending appeal in In re Xencor, I thought I would keep readers updated on the briefing.  I am interested in the case because of its focus on the written description requirements for Jepson and means-plus-function claims. As covered in previous posts (here and here), the patent applicant has appealed PTAB rulings that its biotech antibody claims lack sufficient written description support.  The patent applicant and amici have filed merits briefs, but most recently the USPTO asked for remand so that it could reconsider its approach just days before its merits brief deadline. The basic issues:

  1. The Patent Act requires means-plus-function claims to be interpreted to cover corresponding structure disclosed in the specification and “equivalents thereof.”  In its decision, the PTAB held that any equivalents must have written description support in the specification — or at least that the specification must provide guidance on what counts as an equivalent.  Specifically, the PTAB stated “the inquiry for compliance with section 112(a) does not end” at one disclosed structure, and that equivalents under §112(f) require adequate written description support.  Compliance “with the written description requirement of section 112(a) are not coincident nor fully satisfied by complying with section 112(f) for a claim in means-plus-function format.”
  2. Although the preamble of a Jepson claim is normally not given patentable weight for novelty/obviousness grounds, the PTAB held that the preamble still must be supported by sufficient written description in the original specification.

Continue reading USPTO again Asks for Remand in Xencor to reconsider its Decisions. at Patently-O.

Inferring Secondary Meaning from Product Design Copying

Inferring Secondary Meaning from Product Design Copying

by Dennis Crouch

In patent law, product copying can serve as indirect evidence of non-obviousness.  A pending petition before the Supreme Court asks a similar question in the trademark realm – to what extent does copying of a product serve as evidence of secondary meaning of the product associated trade dress.  Trendily Furniture, LLC v. Jason Scott Collection, Inc., 21-16978 (Supreme Court 2023).  This is particularly important in the product design arena because evidence of secondary meaning must be proven before it is protectable as trade dress.

JSC designs and manufactures high-end furniture, primarily large, heavy-set pieces made of reclaimed teak and embellished with detailed wood carvings and metal designs.  JSC sued Trendily Furniture for copying three of its furniture designs that featured this style. The trade dress dispute here is over the is over the overall look and design of these three ornate furniture pieces from JSC.

All of the circuit courts agree that copying can serve as evidence of secondary meaning. The circuits are split, however, on whether the copying must be accompanied by some intent to free-ride on customer goodwill or otherwise confuse customers via passing-off.

The petition for certiorari outlines 5 distinct approaches to the copying-intent issue taken by the various circuit courts of appeal:

  • The 7th, 1st and 10th Circuits hold copying alone is legally irrelevant, unless the defendant also specifically “intended to confuse consumers and pass off its product as the plaintiff’s.” Mere intentional copying alone has no bearing.

Continue reading Inferring Secondary Meaning from Product Design Copying at Patently-O.

Brushed Aside? Dafni Tries to Keep its PTAB Win against Ontel

Brushed Aside? Dafni Tries to Keep its PTAB Win against Ontel

by Dennis Crouch

Ontel Products Corp. v. Guy A. Shaked Investments Ltd., No. 22-1938 (Fed. Cir.)

This pending case raises key issues of (1) mootness in the IPR/Court interplay and (2) the role of secondary indicia in obviousness determinations.

Gary Shaked (Dafni) holds several patents on hair straightening brushes, and the business took off as a video of the time-saving tool went viral. Dafni sued Ontel and others for patent infringement based upon several utility and design patents.  Dafni responded with an IPR of one of the patents. U.S. Patent No. 9,877,562.  Although the IPR was instituted, the patentee eventually won a judgment confirming that the claims were not proven invalid.  The PTAB’s non-obviousness decision was largely based upon a indirect indicia of non-obviousness, including evidence of industry praise and industry adoption.

Meanwhile, back in the district court, the patentee wanted to move forward with the litigation and offered to dismiss the ‘562 patent from the litigation (with prejudice) in order to lift the stay.  The defendant agreed and the parties jointly filed a stipulated dismissal of that claim.

Of course, the IPR was not automatically dismissed just because the litigation over the patent was dismissed.

Continue reading Brushed Aside? Dafni Tries to Keep its PTAB Win against Ontel at Patently-O.

Join Me for the Ski CLE in Snowmass!

Join Me for the Ski CLE in Snowmass!

by Dennis Crouch

I’m excited that my next patent-law event will be the IP CLE Conference, January 7-10, 2024 at the Viewline in Snowmass, Colorado. This is one of my favorite events of the year because it mixes intellectual property law discussion with three days of skiing. Program co-chairs Scott Alter (Michael Best) and David Bernstein (Debevoise) have once again assembled an impressive roster of speakers including prominent attorneys, government officials, judges, and in-house counsel. Some highlights of the agenda include:

  • Roundtable discussions with Federal Circuit Judges Kara Stoll and Leonard Stark along with D.Del Judge Maryellen Noreika, former SG Seth Waxman (Wilmer), and Deanne Maynard (MoFo). Judge Stoll will separately join Erika Arner (Finnegan) for what looks to be an interesting discussion on IPR/Infringement litigation interplay.
  • Featured talks from both David Gooder, Commissioner for Trademarks and Mollybeth Kocialski, Director of the Rocky Mountain USPTO.
  • Several talks that delve into AI issues, including mine and one from Megan Bannigan (Debevoise).
  • As I prepare to teach patent prosecution in the spring, I’m looking forward to  hearing prosecution hot topics from George Lewis (Merchant & Gould).

Lots more here – check out the agenda.

Continue reading Join Me for the Ski CLE in Snowmass! at Patently-O.