In Praxair Distribution, Inc. v. Mallinckrodt Hospital Products IP Ltd., 890 F.3d 1024 (Fed. Cir. 2018), the Federal Circuit affirmed the PTAB’s application of the rarely relied on “printed matter doctrine” to conclude that claims directed to a method for providing to a medical provider nitric oxide gas (“NO”) along with “information” concerning i) a recommended dose of inhaled NO for treatment of neonates with hypoxic respiratory failure, and ii) that a certain patient class was at risk of pulmonary edema if treated with NO, were unpatentable as obvious.
Most Section 337 investigations allege violations of intellectual property (“IP”) based rights involving patent, registered trademark, or registered copyright infringement (“statutory IP claims”). In such cases, the complainant must establish that a valid and enforceable U.S. patent, trademark, or copyright is being infringed by the importation into the U.S., the sale for importation, or the sale within the U.S. after importation of an accused article, and that a domestic industry exists or is in the process of being established.
In recent years, however, the ITC has seen a sharp increase in the number of Section 337 investigations alleging other types of claims. For example, in 2011, only three investigations alleged non-patent claims, but in 2016 and 2017 the numbers reached twenty and fifteen, respectively. The statutory language for Section 337 claims is broad and applies to any “unfair methods of competition and unfair acts in the importation of articles.” 19 USC 1337(a)(1)(A). Based on this language, complainants have asserted claims of trade secret misappropriation, antitrust violations, false advertising, breach of contract, and tortious interference with contractual relations. Indeed, the language is broad enough to support other types claims that are as yet un-tested at the ITC, such as foreign bribery, use of forced labor, and other violations of international or U.S. law by competitors. For non-statutory IP claims, complainants must establish that the accused unfair methods or acts have the threat or effect of which is “to destroy or substantially injure an industry in the United States,” “to prevent the establishment of such an industry,” or “to restrain or monopolize trade and commerce in the United States.” 19 USC 1337(a)(1)(A).
This article discusses recent investigations with noteworthy non-statutory IP claims.
In many instances, trademark and trade dress cases are directed to injunctive relief, with damages being almost an afterthought. Not sharply focusing in damages from the outset of a case may be a mistake, particularly given what may be recovered as legal and equitable damages and the ability to disgorge an infringer’s profits as a proxy for the trademark owner’s lost sales.
On June 7, 2018, the USPTO issued new guidance in the form of a memorandum regarding the patentability of methods of treatment. This memorandum, issued in response to the Federal Circuit’s holding in Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals, 887 F.3d 1117 (Fed. Circ. 2018), emphasizes that patent claims directed towards methods of treatment may be found to satisfy 35 U.S.C. § 101 without requiring a showing of “nonroutine or unconventional steps” under the analysis prescribed by Alice and Mayo.
Today, in WesternGeco LLC v. ION Geophysical Corp., 585 U.S. __ (June 22, 2018), the Supreme Court ruled that recovering foreign lost profits attributable to domestic acts of infringement under 35 U.S.C. § 271(f)(2) does not violate the presumption against extraterritorial application of U.S. statutes. In reaching its conclusion, the Court determined that the “focus” of the patent damages statute (35 U.S.C. § 284) was “infringement,” and that the infringement at issue was domestic.