Gibbons Law Alert

Gibbons Law Alert

Category: Patent

UK Will Ratify UPC Despite Brexit

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Posted in Patent

On January 3, 2017

Recently, the UK Minister of State for Intellectual Property, Baroness Neville-Rolfe, announced that the UK will implement the Unitary Patent (UP) and Unified Patent Court (UPC). In the announcement, Neville-Rolfe both praised the UP/UPC system as “provid[ing] an option for businesses that need to protect their inventions across Europe” and cautioned that the UK’s decision to implement the UP/UPC system “should not be seen as preempting the UK’s objectives or position in the forthcoming negotiations with the EU.”

The Supreme Court Weighs in on PTAB’s Claim Construction Standard for IPR Proceedings

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Posted in Patent

On August 12, 2016

In a recent decision, the Supreme Court affirmed the Federal Circuit’s ruling that the Patent Trial and Appeal Board (PTAB) was within its authority to give a patent claim “its broadest reasonable construction” during an inter partes review (IPR) proceeding. The Court found that the PTAB was authorized to apply this standard because 35 U. S. C. §316(a)(4) granted the Patent Office authority to issue “regulations . . . establishing and governing inter partes review under this chapter.”

U.S. District Court Limits So-Called “Piggyback” Discovery

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Posted in Patent

On August 11, 2016

The United States District Court for the District of Nevada recently issued an Order casting doubt on a litigant’s ability to obtain blanket discovery from an adversary’s prior patent litigation without a specific showing of relevance. Anyone opposing overbroad discovery requests seeking “all documents” from a prior patent litigation should read a series of decisions in the case captioned Racing Optics v. Aevoe Corporation (“Racing Optics”).

Brexit Raises Questions About the Future of the Unitary Patent and Unified Patent Court

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Posted in Patent / Pharmaceuticals

On August 8, 2016

Recently, the UK voted to leave the EU. However, that has not happened yet for several reasons. The first reason is that the referendum actually needs to be voted on by Parliament, adopting the results of the referendum vote. A second reason is that withdrawal from the EU occurs when Article 50 of the Lisbon Treaty is enacted. Neither one of these two items has occurred. If Parliament agrees to follow the referendum outcome and votes to leave the EU, and if the UK gives notice under Article 50, then many trade agreements and treaties will need to be negotiated in a two-year period from date of notification.

Federal Circuit Overturns Supplemental Jurisdiction Over Claims of Breach of Fiduciary Duty

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Posted in Patent / Pharmaceuticals

On August 5, 2016

In a recent decision from the Federal Circuit in AngioScore, Inc. v. TriREME Medical LLC et al. the court found that a plaintiff’s claim for patent infringement and breach of fiduciary duty did not have the requisite “common nucleus of operative fact” for the district court to maintain supplemental jurisdiction over breach of fiduciary duty claims. In particular, this decision provided the Federal Circuit a rare opportunity to review the jurisdiction limits of a district court in a case involving federal patent infringement claims and state law claims for breach of fiduciary duty aiding and abetting and unfair competition by an independent director and companies he co-founded which developed a competitive product to a product marketed by the plaintiff corporation AngioScore, Inc.

Federal Circuit Finds Internet-Based Claims Directed to an Abstract Idea Still Patent-Eligible

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Posted in Patent

On July 1, 2016

In the aftermath of the Supreme Court’s 2014 decision in Alice Corp. Pty. Ltd. v. CLS Bank International, the U.S. Court of Appeals for the Federal Circuit (CAFC) has rarely found Internet-based patent claims challenged under 35 U.S.C. § 101 and Alice to be patent-eligible. The Court’s recent decision in BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC marks just the third such occurrence.

Supreme Court Review Sought on Federal Circuit’s Standard for Appellate Review of Damages Awards

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Posted in Patent

On June 27, 2016

Recently, the Commonwealth Scientific and Industrial Research Organization (CSIRO) filed a petition requesting the Supreme Court to review a Federal Circuit decision that vacated a $16 million award against Cisco Systems Inc. Supreme Court Docket No. 15-1440 CSIRO states that the case really revolves around a set of “rigid rules about damages awards in patent infringement cases.” The consequences of these rigid rules, according to CSIRO, is that trial judges in effect are stripped of their ability to determine damages.

IRS’ Aggressive Position Challenging the Treatment of a License Agreement as a Sale of a Capital Asset Rejected on Summary Judgment

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Posted in Patent

On May 4, 2016

We previously reported that the Internal Revenue Service (the “IRS”) took an aggressive position in challenging the treatment of a license agreement as a sale of a capital asset in the Tax Court case Mylan Inc. & Subsidiaries v. Commissioner of Internal Revenue (Docket Nos. 16145-14 and 27086-14). Recently, Tax Court Judge Laro denied the IRS’s Motion for Summary Judgment in Mylan’s challenge of the IRS’s determination that Mylan’s 2008 amendment to the contract with Forest Labs was not a sale of its interest in rights to a certain drug product but merely an extension of the parties’ 2006 license agreement, giving rise to ordinary income to Mylan.

New Jersey Follows Federal Circuit in Finding Jurisdiction Over Hatch-Waxman Defendants

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Posted in Patent / Pharmaceuticals

On May 2, 2016

We recently reported on the Federal Circuit’s holdings in Acorda Therapeutics, Inc. v. Mylan Pharm. Inc. and AstraZeneca AB v. Mylan Pharm., Inc., where it held that Mylan was subject to jurisdiction in Delaware because “Mylan’s ANDA filings constitute formal acts that reliably indicate plans to engage in marketing of the proposed generic drugs.” Earlier this month, the first decision from the District of New Jersey District applying the Federal Circuits ruling was rendered. In Helsinn Healthcare S.A., et al. v. Hospira, Inc., No. 15-2077 (MLC), 2016 U.S. Dist. LEXIS 45826 (D.N.J. April 5, 2016), Judge Mary L. Cooper held that sufficient minimum contacts is to find specific jurisdiction is established by the fact that Hospira filed an ANDA seeking to market a generic version of Helsinn’s Aloxi® product that if approved, the marketing of will take place in New Jersey.

Interesting Trends in Establishing Personal Jurisdiction in Hatch-Waxman/ANDA Litigations

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Posted in Patent / Pharmaceuticals

On April 5, 2016

Last week the Federal Circuit handed down one of its more anticipated decisions regarding jurisdiction in cases brought under 35 U.S.C. § 271(e)(2) (aka Hatch-Waxman or ANDA litigation). In its holding, the Federal Circuit stated that a “[defendant’s] ANDA filings and its distribution channels” are enough to “establish that [the defendant’s] plans to market its proposed [ANDA product in the forum state]” are enough to meet the minimum-contacts requirement to establish jurisdiction. It further held “there is no substantial argument that considerations of unfairness override the minimum-contacts basis for [the forum state’s] exercise of specific personal jurisdiction over” the defendants. This holding is much broader than the underlying district court rulings and limited the analysis to specific jurisdiction without addressing the underlying general jurisdictional questions.

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