Patent Law Practice Center

Top 5 Patent Law Blog Posts of the Week

Today we continue our weekly installment highlighting the best of the patent blogosphere from the past week. If there are any patent blogs you think should be highlighted by our Top 5, please comment on this post and we’ll check them out.

1) IP Watchdog: The Smart Phone Patent Wars: What the FRAND is Going On? – Written by guest blogger, Raymond Millien, this post discusses the “Fair, Reasonable and Non-Discriminatory” (FRAND) licensing terms that various standard setting organizations require of their participants.

2) Patently-O: Gene Patents: AMP v. Myriad Genetics – This post reports on the Supreme Court vacating the Federal Circuit’s decision in AMP v. Myriad Genetics and ordering the appellate court to reconsider the case in light of the recent Supreme Court decision in Mayo v. Prometheus.

(more…)

Fenwick & West: Federal Circuit Issues En Banc Decision in Marine Polymer

Rajiv P. Patel, Partner at Fenwick & West, LLP, and Practice Center contributor, recently sent in a Fenwick & West Patent Litigation Alert entitled, Federal Circuit Issues En Banc Decision in Marine Polymer: No Reexamination Intervening Rights Absent Textual Amendment to Claim Language.  The article, co-written with Heather N. Mewes and Betsy White, discusses the en banc Federal Circuit ruling in Marine Polymer Technologies, Inc. v. Hemcon, Inc. and the impact it has on intervening rights in the reexamination process.

Here is a brief excerpt from the Fenwick & West Patent Litigation Alert:

Should intervening rights apply to claims that were not textually amended during a reexamination proceeding but were effectively narrowed by the patentee’s arguments? Following a controversial panel decision last September in Marine Polymer Technologies, Inc. v. Hemcon, Inc. that expanded intervening rights for reexamination, an en banc Federal Circuit on March 15 ruled that intervening rights only apply if claim language is substantively amended or new claims are added. In a closely divided 6-4 ruling, the court specifically rejected the original panel’s determination that intervening rights can arise as a result of the patentee’s statements to the U.S. Patent and Trademark Office (“PTO”) during reexamination that effectively limit the claim but do not result in an amendment to the claim language.

Marine Polymer sued HemCon, alleging that HemCon infringed certain claims of U.S. Patent No. 6,864,245 (the ‘245 patent), which claims a biocompatible polymer p-GlcNAc that accelerates hemostasis and is useful in trauma units for treating serious wounds. A central issue during the district court’s claim construction proceedings, which would ultimately be the focus of the appeal, was the interpretation of the term “biocompatible” in an asserted independent claim of the ‘245 patent. The district court construed the term to mean “polymers . . . with low variability, high purity, and no detectable biological reactivity as determined by biocompatibility tests” (emphasis added). Applying this construction, the district court granted summary judgment of literal infringement of all seven asserted claims, relying on expert evidence that biocompatibility tests of HemCon’s accused products had shown “no detectable biological reactivity.” At trial, the jury upheld the validity of the ‘245 patent and found that Marine Polymer was entitled to a reasonable royalty of approximately 88% of HemCon’s profits. The district court entered final judgment in September 2010, granting reasonable royalty damages for the past infringement in the amount of $29,410,246 and issuing a permanent injunction barring future infringement of the asserted claims of the ‘245 patent.

To read the Fenwick & West Patent Litigation Alert in its entirety, click here.

Top 5 PLI Patent Law Posts of the Year

Every Friday, the Patent Law Practice Center likes to provide our readers with highlights from the week’s best patent law blog posts and articles. As 2011 reaches its end, and as the new year causes people to look back on the year that was, we thought it was a great opportunity to present to you the Patent Law Practice Center’s top 5 posts of the year:

1) America Invents Act: How the New Law Impacts Your Clients and Your Patent Practice, Parts 1 & 2: Explanations provided by Robert A. Armitage of Eli Lilly and Company, and Janet Gongola, Patent Reform Coordinator at the USPTO, helped in breaking down the AIA for the masses.

2) A New Doctrine of Equivalents? CAFC Defines “Use” Under §271 – Written by Gene Quinn, of IPWatchdog and Practice Center Contributor, this post discusses Centillion Data Systems, LLC v. Qwest Communications International, Inc., and questions whether it will “breathe new life into the doctrine of equivalents” given the Court’s determination of the meaning of “use” of a system as a matter of law under 35 U.S.C. 271 (a). (more…)

CAFC Moving Cases On Up Out of Delaware

A motion to transfer a patent case out of Delaware was granted by the U.S. Court of Appeals for the Federal Circuit, thus setting a potential precedent for patent litigation that is often brought in Delaware. Patent litigation frequently begins in Delaware as the majority of U.S. corporations are incorporated there. Because corporations go out of their way to be registered in Delaware, it has been a long settled principle that cases cannot be transferred out of the Circuit of Delaware as the corporations freely chose to incorporate there in the first place.

On December 2, 2011, the CAFC granted a writ petition on behalf of the defendants to transfer the case to the Northern District of California, focusing on the fact that although the corporation was incorporated, there are others issues a court will look at in considering changing the venue, such as convenience of witness location as well as the location of the corporation/moving party’s business records and documents. The Circuit of Delaware’s rationale that the choice to incorporate in Delaware implies the choice to try cases in Delaware courts is not all that unreasonable. However, as reasonable as the court’s rationale is, the reasoning does not outright prohibit the right to move for a venue change when such a change would facilitate convenience and court efficiency.

Time will tell if the CAFC’s ruling will impact the Circuit of Delaware’s future decisions regarding transferring cases out of Connecticut. If anything, the ruling could just be setting up a precedent for litigants to simply attempt a venue change where they would not have done so before.

Scott McKeown on Which Comes 1st: The USPTO or the Court?

The hierarchy of the U.S. court system is well established, but recent patent law cases have challenged this hierarchy with the power of government agency – the USPTO to be exact. Scott McKeown, Partner at Oblon, Spivak, Practice Center Contributor and author of Patents Post Grant Blog, recently wrote two articles concerning the USPTO’s reexamination process and how its parallel nature to patent infringement cases resulted in conflict that’s occurred with the U.S. Court of Appeals of the Federal Circuit (CAFC) as well as with the U.S. District Court in the District of Connecticut. Scott explains the patent law issue:

Patent reexamination is often initiated in parallel with an ongoing infringement litigation. In the case of a parallel inter partes proceeding (IPX), the first of the proceedings to conclude (litigation or IPX) controls the outcome of the other by operation of statutory estoppel. As such, a final holding in the parallel court proceeding will end an ongoing IPX. Moreover, the losing party would be precluded from seeking IPX at a later date.

On the other hand, ex parte patent reexamination (EXP) has no such statutory “shut off valve.” Thus, even a party that was bound by IPX estoppel could file a request for ex parte patent reexamination. In this way, the infringer could attempt to “undo” the effect of the earlier, final, court judgement by invalidating the patent via the EXP filing. (more…)