Federal Circuit: Rare Guidance on Subject Matter Eligibility of Software Claims

In Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc. et al., the Federal Circuit offered rare guidance on the contours of patent eligible subject matter under § 101.

The two related asserted patents, both entitled “Computing device with improved user interface for applications,” are directed to an improved user interface which has a “specific application to mobile telephones” with small screens. The improved interface allows users to more quickly access functions and data on devices with a small screen that “tend to need data and functionality divided into many layers or views.” The patents’ solution is an “application summary window” that displays “a limited list of common functions and commonly accessed stored data which itself can be reached directly from the main menu listing some or all applications.” Continue reading this entry

Federal Circuit: Pre-IPR Institution Disclaimer of Claims Insufficient to Avoid Adverse Judgment

At this point, several cases have examined the appealability of the Board’s institution decisions in inter partes review (“IPR”) proceedings. See, e.g., Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2015) (holding that 35 U.S.C. §314 barred judicial review of the Board’s determinations . . . to initiate an inter partes review under this section.”); Husky Injection Molding v. Athena Automation Ltd., 838 F. 3d 1236 (Fed. Cir. 2016) (identifying a two-part test for determining whether the Federal Circuit could review an intuition decision, and holding that the Board’s decision that assignor estoppel did not apply to IPR proceedings, thereby allowing institution, was not reviewable.); see also Credit Acceptance Corp. v. Westlake Services, 859 F. 3d 1044 (Fed. Cir. 2017) (in a covered business method review proceeding, holding that the Board’s application of Section 325(e)(1) estoppel – which prevents institution on ground that the petitioner raised or, reasonably could have raised in an earlier review – was not reviewable).

These institution-focused decisions have also touched on the Board’s pre-institution rulings. See, e.g., Achates Reference Publishing, Inc. v. Apple Inc., 803 F. 3d 652 (Fed. Cir. 2015) (holding that 35 U.S.C. § 314 prevented appellate review of the Board’s decision declining to authorize pre-institution discovery, regarding whether the IPR petition was time barred under § 315). However, there are fewer instances where the Federal Circuit has directly addressed the appealibility of the Board’s pre-institution administration of IPRs.

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Conflict Between Granting a Preliminary Injunction and Staying the Case Pending Appeal of the Injunction

In Fresenius Kabi USA, LLC v. Fera Pharmaceuticals, LLC, et al., Case No. 15-3654 (D.N.J.) the district court recently denied Fresenius’s motion to dismiss Fera’s antitrust counterclaims, but simultaneously decided to sever and stay those claims pending resolution of the patent infringement claims. Additionally, the court denied Fresenius’s motion to stay the patent infringement claims pending resolution of Fera’s appeal of the district court’s earlier grant of a preliminary injunction.

The case is premised on three patents directed to formulations of levothyroxine, which is a hormone generated by the thyroid. Fresenius alleges that Fera will infringe the patents and Fera alleges, inter alia, inequitable conduct and raises two antitrust counterclaims. Meanwhile, Fresenius also moved for a preliminary injunction preventing Fera from launching its generic products at-risk. Of particular interest in this decision is the district court’s discussion and reasons for denying Fresenius’s motion to stay the litigation pending resolution of Fera’s interlocutory appeal of the preliminary injunction. Continue reading this entry

Recent Guidance from the Federal Circuit on the Doctrine of Equivalents in Cases Involving Chemical Compositions

In Mylan Institutional LLC, et al. v. Aurobindo Pharma Ltd., et al., Case No. 2017-1645, the Federal Circuit affirmed the district court’s grant of a preliminary injunction as to one of three patents-in-suit, while finding that there was error in granting the injunction with respect to the other two patents.

The patents-in-suit related to ISB, a dye used to map lymph nodes, with two of the patents (the ’992 and ’616 patents) directed to the process for preparing ISB, and one of the patents (the ’050 patent) directed to an ISB compound “having a purity of at least 99.0% by [high performance liquid chromatography].” Apicore is the owner of, and Mylan is the exclusive licensee of, the patents-in-suit. Continue reading this entry

Supreme Court Complicates Design Patent Damage Calculation – Apple v. Samsung

On December 6, 2016, the Supreme Court issued a rare unanimous decision on the issue of damages for design patent infringement that continues the Apple v. Samsung smartphone legal odyssey. It also marks only the second time in over 100 years that the court has issued a substantive decision in a design patent case. But the result could mean significant challenges in the calculation of damages for design patents and the need for additional factual and expert input, similar to the damage calculation for a utility patent.

In a decision written by Justice Sotomayor, the court reversed the Federal Circuit holding that in the case of a multicomponent product, the relevant “article of manufacture” for arriving at a § 289 damages award need not be the end product sold to the consumer, but may be only a component of that product. The court also remanded the case back to the Federal Circuit for additional briefing on what constitutes an “article of manufacture” in the context of the relevant Apple design patents at issue. Continue reading this entry