Patent Law Practice Center

Federal Circuit Reverses Course On Classen

Our friends at Foley & Lardner sent in this article discussing the Federal Circuit’s decision in Classen Immunotherapies, Inc. v. Biogen Idec.

On August 31, 2011, the Federal Circuit issued its second decision in Classen Immunotherapies, Inc. v. Biogen Idec (App. 2006-1643, -1649), on remand from the Supreme Court after Bilski v. Kappos (U.S. 2010). The Federal Circuit first decided Classen’s appeal in 2008, when a panel comprised of Circuit Judges Newman and Moore and District Judge Farnan (sitting by designation) held in a one-paragraph, non-precedential decision authored by Judge Moore that Classen’s claims do not satisfy 35 USC § 101. The second time around, the Federal Circuit (by a panel that included Chief Judge Rader in place of Judge Farnan) took a closer look at Classen’s claims, and determined that two of the three Classen patents at issue indeed are directed to subject matter that is patent-eligible under 35 USC § 101. In this decision, the Federal Circuit has provided useful guidance for method claims that involve some type of information gathering. It appears that if the claims recite a step of “putting this knowledge to practical use,” such as an active treatment step based on the information, they are likely to be patent-eligible under 35 USC § 101. On the other hand, if the claimed methods culminate in obtaining information, and nothing more, they may be vulnerable to challenge under 35 USC § 101.

Judge Newman wrote the opinion for the court, which was joined by Chief Judge Rader. Chief Judge Rader wrote a separate opinion to express “additional views,” which was joined by Judge Newman. Judge Moore wrote a dissenting opinion. (more…)

Patentees Rejoice — But Will Therasense Stand?

 

The following post comes courtesy of Brandon Baum, of Baum Legal and Practice Center Contributor.

The Federal Circuit’s split decision in Therasense is being hailed by some as the end to the “absolute plague” of inequitable conduct claims in patent cases. After all, the decision raises the bar for proving inequitable conduct. But before the champagne goes flat and the confetti is swept away, the Therasense case may prove to have been exactly the wrong horse for patentees to ride.

The problem with the majority decision in Therasense is that it is long on policy, short on the facts. In the ivory towers of the Federal Circuit (which does not have the usual diet of criminal cases, fraud cases, and other bad conduct), the fact that patent prosecutors are frequently accused of acting inequitably to obtain patents is unseemly. To the rest of the world, of course, the news that lawyers and/or inventors might try to “game the system” for financial advantage is purely “dog bites man.” (more…)

Therasense Decision “Tightens The Standards” For Proving Inequitable Conduct

Jeanne Gills, Partner at Foley & Lardner and Practice Center Contributor, sent in this article she wrote with colleague Courtenay C. Brinckerhoff, discussing yesterday’s much anticipated Therasense, Inc. v. Becton, Dickinson & Co. decision.

On May 25, 2011, in a split decision, the U.S. Court of Appeals for the Federal Circuit decided Therasense, Inc. et al. v. Becton, Dickinson & Co. et al, Case No. 08-1511 et al., which it heard en banc to address the law of inequitable conduct, and to consider in particular whether the materiality-intent balancing framework should be modified and, if so, how.  The court’s decision “tightens the standards” for proving inequitable conduct, holding that evidence of intent should be considered independently from materiality, and that materiality generally must be proven by a “but-for” test, except in cases of “egregious misconduct, such as the filing of an unmistakably false affidavit.”

The court issued three decisions: (1) the opinion of the court, filed by Chief Judge Rader and joined by Judges Newman, Lourie, Linn, Moore, and Reyna in full, and O’Malley in Part V; (2) an opinion by Judge O’Malley, concurring-in-part and dissenting-in-part; and (3) a dissenting opinion by Judge Bryson, joined by Judges Gajarsa, Dyk, and Prost. (more…)

Oral Argument In Key False Marking Case: Stauffer V. Brooks Brothers, Inc.

Jeanne Gills (partner at Foley & Lardner and Practice Center Contributor) and Mary M. Calkins (senior counsel at Foley & Lardner) passed along this news alert discussing the August 3rd oral argument heard by the Federal Circuit in the Stauffer v. Brooks Brothers, Inc. false marking litigation….

On August 3, 2010, a three-judge panel of the U.S. Court of Appeals for the Federal Circuit (C.J. Rader, J. Lourie, and J. Moore) heard oral argument in Stauffer v. Brooks Brothers, Inc., Nos. 09-1428 et al (Stauffer). Stauffer is the latest in a line of appeals from district court decisions in false marking suits brought under 35 U.S.C. § 292. The panel mostly focused on two standing issues: (1) the requirements for an individual plaintiff, who is not a competitor of the defendant allegedly committing false marking, to have standing to sue for damages under Section 292; and (2) whether the United States may intervene during the initial phase of a Section 292 action dealing with standing on the pleadings, rather than later during the merits phase of the action. Given the several hundred false marking cases that have been filed during the past year, including those that have been stayed pending a decision in Stauffer, the Federal Circuit’s ruling could impact whether these cases survive on jurisdictional grounds or will proceed on the merits.

Background

Section 292 prohibits marking an “unpatented article” with words indicating that the article is patented “for the purpose of deceiving the public,” and establishes a monetary fine of up to $500 per falsely marked article. The statute further provides that “[a]ny person may sue for the penalty, in which event one-half shall go to the person suing and the other to the use of the United States.” (more…)