CAFC OKs Transfer Despite Forum Selection Clause
In a non-precedential opinion issued October 18, 2013, the Federal Circuit issued a decision that calls into question the overall utility of forum selection clauses in contractual relationships. In fact, Eli Lilly lost its bid to have its dispute with Genentech and City of Hope heard in the Northern District of California despite a forum selection clause in the governing contract that stated the parties would litigate any dispute in the Northern District of California. See In re Eli Lilly and Co.
Eli Lilly petitioned for a writ of mandamus directing the United States District Court for the Northern District of California to vacate its order transferring this case to the United States District Court for the Central District of California. In its order granting Genentech’s motion to transfer, the district court noted that the trial judge in the Central District of California had presided over four cases involving the same family of patents at issue. The district court further noted that another trial judge in the Northern District of California had recently transferred a case brought by one of Eli Lilly’s business partners that involves the same patent and product to the Central District of California, citing the expertise the trial judge had gained through these prior lawsuits.
Prior Art Admission Burns Patentee in Reexam at CAFC
Recently, the Federal Circuit issued a non-precedential per curiam decision in an appeal from an inter partes reexamination. Chief Judge Rader, Judge Newman and Judge Dyk were on the panel.
Victor Manuel Celorio Garrido appealed from a decision of the Patent Trial and Appeal Board relative to the inter partes reexamination of U.S. Patent No. 6,213,703. The Board affirmed the Patent and Trademark Office (“PTO”) examiner’s rejection of all but six claims as anticipated or obvious over the prior art. Garrido appealed to the Federal Circuit, arguing that the Board erred by relying on prior art references that were not published or publicly accessible prior to the filing date and by failing to address alleged misconduct by the requestor. The Federal Circuit panel concluded that the Board did not err and that the claims of misconduct were unsupported.
The ’703 patent, which claims priority to a predecessor application filed on October 3, 1997, is directed to an “Electronic Bookstore Vending Machine” for printing and binding books on demand. The ’703 patent’s specification explains that the invention is a step-by-step method and a system for formatting, printing, and binding books, magazines, or other printed material.
10.30.13 | CAFC, Patent Issues, posts, Reissue and Reexamination | Gene Quinn
Contempt Proceeding Fails on Colorable Difference Prong
Last week, the United States Court of Appeals for the Federal Circuit issued a decision in ncCUBE Corporation v. SeaChange International, dealing with the failure of the district court to find SeaChange in contempt for violating a permanent injunction.
ARRIS (formerly nCUBE) commenced the present litigation on January 8, 2001, alleging the infringement of certain claims of U.S. Patent No. 5,805,804 (“’804 patent”), which discloses and claims a media server capable of transmitting multimedia information over any network configuration in real time to a client that has requested the information. The patented technology allows a user to purchase videos that are then streamed to a device such as a television.
On May 28, 2002, the jury returned a verdict in ARRIS’s favor, finding that SeaChange willfully infringed the asserted claims in the ’804 patent. The Federal Circuit later affirmed the jury verdict and the district court’s subsequent decision to enhance the damages award. Subsequent to the Federal Circuit affirmance, the district court entered a permanent injunction enjoining SeaChange from “making, using, selling, or offering to sell… the SeaChange Interactive Television System… as well as any devices not more than colorably different therefrom that clearly infringe the Adjudicated Claims of the ’804 patent.”
10.20.13 | CAFC, Patent Issues, Patent Litigation, posts | Gene Quinn
Markman Orders and Federal Circuit Deference
TransData, Inc., a manufacturer of advanced solid-state power and energy metering products, recently announced that an Oklahoma federal judge issued a significant and favorable ruling in its ongoing patent infringement litigation against a group of the nation’s largest electric utilities over wireless smart electric meter technology developed by the company.
The exceptionally brief Order, issued October 1, 2013, by Judge Robin Cauthron of the U.S. District Court for the Western District of Oklahoma, construed the disputed claim terms of TransData’s U.S. Patent Nos. 6,181,294; 6,462,713; and 6,903,699 in a manner consistent with the constructions offered by TransData. More specifically, the court rejected all of the defendants’ proposed constructions in an Order that was only a few lines longer than three double-spaced pages. The relevant claim constructions were as follows:
The Court finds that the term “electric meter chassis” will be construed to mean the base or supporting structure of the electric meter, including any circuit board rack.
[T]he Court finds that “unbalanced output port” is defined as “output port with unbalanced impedance.” “Balance Circuit” means: “a circuit that balances impedance.”
10.10.13 | posts | Gene Quinn
CAFC Finds Promise Not to Infringe Insufficient in ANDA Litigation
On September 26, 2013, the United States Court of Appeals for the Federal Circuit issued a panel decision in Sunovion Pharmaceuticals v. Teva Pharmaceuticals USA et al.
Sunovion appealed from the decision of the United States District Court for the District of New Jersey granting summary judgment that Dr. Reddy’s Laboratories, Ltd. and Dr. Reddy’s Laboratories, Inc. (collectively “Reddy”) do not infringe claims 1, 2, and 8 of Sunovion’s U.S. Patent 6,444,673 (the “’673 patent”). The Federal Circuit panel, per Judge Lourie, with Judges Schall and Reyna joining in the decision, concluded that, although the district court did not err in construing the asserted claims, Sunovion was entitled to a judgment of infringement as a matter of law under 35 U.S.C. § 271(e)(2)(A).
Sunovion owns the rights to the ’673 patent, which is directed to pharmaceutical compositions of the single-enantiomer drug eszopiclone, the active ingredient in the chiral drug marketed as a sleep medication under the brand name LUNESTA®. Pursuant to 21 U.S.C. § 355(b)(1), the ’673 patent is listed as referenced to LUNESTA® in the FDA’s Approved Drug Products with Therapeutic Equivalence Evaluations publication (commonly known as the “Orange Book”). During the second quarter of 2013 alone, LUNESTA® had sales of nearly $200 million.
The dispute started when Reddy submitted an Abbreviated New Drug Application (“ANDA”) to the FDA, which included a so-called paragraph IV certification with respect to the ’673 patent under the Hatch-Waxman Act, 21 U.S.C. § 355(j)(2)(A)(vii)(IV), seeking approval to manufacture, use, and sell 1 mg, 2 mg, and 3 mg eszopiclone tablets as generic versions of Lunesta® prior to the expiration of the ’673 patent. As the Hatch-Waxman Act allows Sunovion to do, they then initiated a patent infringement lawsuit, asserting that Reddy’s ANDA submission constituted an act of infringement of claims 1, 2, and 8 of the ’673 patent according to 35 U.S.C. § 271(e)(2)(A).
10.2.13 | Federal Circuit Cases, Patent Issues, posts | Gene Quinn
No Comments
11.6.13 | CAFC, Patent Issues, Patent Litigation | Gene Quinn