Secondary Considerations to the Rescue

Last week, the United States Court of Appeals for the Federal Circuit once again had the opportunity to address the matter of Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc. This second appeal by Transocean challenged the decision of the district court to grant judgment as a  matter of law (JMOL). Specifically, Transocean challenged the district court ruling that (1) the asserted claims of U.S. Patent Nos. 6,047,781 (’781 patent), 6,085,851 (’851  patent), and 6,068,069 (’069 patent) are invalid for obviousness and lack of enablement; (2) Maersk Drilling USA,  Inc. (Maersk) did not infringe the asserted claims; and (3)  Transocean was not entitled to damages. Transocean also appealed from the district court’s conditional grant of a  new trial. The Federal Circuit ultimately agreed with Transocean and reversed the district court. See Federal Circuit decision in Transocean II.

Previously,  the Federal Circuit vacated the district court’s grant of  summary judgment of noninfringement and reversed its grant of summary judgment of invalidity for obviousness  and lack of enablement. See  Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc., 617 F.3d 1296, 1301 (Fed. Cir. 2010) (Transocean I). On remand, a jury found that Maersk failed to prove that the asserted claims would have been obvious or that they were not enabled. The jury made specific findings that the prior art failed to disclose every element of the asserted claims and that each of seven objective factors indicated nonobviousness. The jury also found that Maersk infringed and awarded $15 million in compensatory damages.


Rule 11 Sanctions for Failure to Investigate?

Recently, the United States Court of Appeals for the Federal Circuit addressed an issue that I can only characterize as bizarre.  Among the issues addressed in a somewhat typical patent litigation was whether the district court should have awarded sanctions against the plaintiff for failure to reasonably and adequately investigate the issue of whether the defendant’s product infringed prior to bringing a lawsuit.  This type of Rule 11 failure to investigate issue is one that piqued my interest because failure to investigate infringement is a tell-tale sign of bad actors — the worst actors — in the patent litigation space.

Those who simply don’t care about whether there is infringement engage in what the Federal Circuit has at times referred to as “extortion like” practices, which shakedown those who aren’t infringing for a few thousand dollars, much like the old protection rackets.  It was this mindset that I dove into the Federal Circuit decision in Woods v. DeAngelo Marine Exhaust, Inc. (Fed. Cir., August 28, 2012).


CAFC Upholds Validity of Lilly’s Alimta Compound Patent

Earlier today, the United States Court of Appeals for the Federal Circuit affirmed an earlier District Court decision regarding the validity of Eli Lilly’s compound patent for Alimta® (pemetrexed). The compound patent provides protection for Alimta in the U.S. through January of 2017 and, as the result of this Federal Circuit decision, the relevant claims have had their validity confirmed.  See Eli Lilly Co. v. Teva Parenteral Medicines, Inc. et al (August 24, 2012).

“We are pleased with today’s ruling from the Court of Appeals affirming the validity of the compound patent for Alimta,” said Robert A. Armitage, senior vice president and general counsel for Lilly. “By affirming the district court ruling, we believe that the Court fairly applied long-standing patent law principles. Protection of intellectual property rights is extremely important to the biopharmaceutical industry and the physicians and patients we serve, as these rights help support the development of the next generation of innovative medicines to treat unmet medical needs.”


Top 5 Patent 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: Federal Circuit on Software Patents: Show Me the Algorithms – This post discusses the decision by the United States Court of Appeals for the Federal Circuit in Noah Systems, Inc. v. Intuit, Inc. and how the CAFC explained  the disclosure requirements for software patents that utilize means-plus-function claim language.

2) Patents Post-Grant: Different Thresholds for New Post Grant Proceedings – This post questions whether or not there is a significant enough difference between Inter Partes Review and Post Grant Review to make an impact between grant rates. But the post does discuss the differentiating thresholds necessary for initiating the process of Inter Partes Review and Post Grant Review.

3) Patently-O: The Impact of Mayo v. Prometheus: Three Weeks In – The decisions that have been released that rely on the Supreme Court opinion in Mayo v. Prometheus are highlighted and summarized in this post.

4) Patents4life: Aventis v. Hospira – How to Meet the Therasense Standards – This post discusses the Federal Circuit’s decision in Aventis v. Hospira, and how the inventors were found to have intentionally decided not to submit two material pieces of prior art to the PTO.

5) IP Kat: Patents and jurisdiction 2: Innovia v Frito-Lay – This post analyzes the question of which court Europeans can bring their patent related claims. The reason for this is, “because the same patents get litigated in jurisdictions outside the European Union too, and the effort of fighting to sue before the court of one’s choice often determines the outcome of the substantive proceedings too.”