By IP Section Student Reporter Aaron James Shaw
On May 20, 2020 the IP Section presented a webinar on recent patent cases. The speaker, Jordan Becker, a partner in the patent group of Perkins Coie LLP recapped 27 significant patent cases in 2019 and the first quarter of 2020. The cases were grouped by topic: patent-eligible subject matter, patentability, infringement, PTAB practice, licensing, and venue. Below are some of the highlighted cases.
Starting with patent-eligible subject matter, Becker first addressed Athena Diagnostics v. Mayo Collaborative Services. Athena licensed a method for diagnosis by detecting antibodies to a particular protein indicative of a disorder. The claim involved immunoprecipitating and monitoring an antibody to determine if the mammal has the disorder. Mayo developed tests that competed with this and Athena sued for infringement. Mayo moved to dismiss due to patent-ineligibility. The district court granted the motion stating the claims were directed to a natural law and lacked a transformative invention. Citing Cleveland Clinic v. True Health, the federal circuit held the claim was in fact a correlation without an improvement to technology. The dissent emphasized that this was a novel multi-step process; a rehearing en banc was denied in July 2019 with over 5 dissents. Presumably, part of the reason for these dissents is that Athena’s claim closely tracked an example of an eligible claim from PTO guidance.
The following cases were also reviewed. In Chargepoint v. SemaConnect Chargepoint had a network of electric vehicle charging stations allowing drivers to locate available stations. The claims effectively assert control over all networked charging stations and thus lacked specificity and conceptualization. In American Axle v. Neapco three vibration-reducing modes for drive-shafts in vehicles were claimed. The patent stated these modes are known, but no prior art could combine two modes at once. However, the claim lacked instruction on how to apply these modes; it claimed all modes without connecting their use. The dissent pointed out this is really an enablement issue. SRI v. Cisco, KPN v. Gemalto, and Cellspin v. Fitbit were also reviewed.
Moving to patentability issues, in Enzo v. Roche the patent claimed a probe using a hybridization technique to detect nucleic acid sequences; the prior art used a radioactivity technique. Non-enablement was affirmed however because the claim included too broad a range of probes. It could not be demonstrated that all detectable polynucleotides by hybridization (which are numerous and diverse) could be detected.
HZNP Medicines v. Actavis, an indefiniteness and inducement of infringement case, was covered twice in the webinar. There, a patent describing how to apply topical treatments for osteoarthritis, with a novelty of increased drying time, contained a claim stating it consisted “essentially of” a certain proportion of ingredients. The court held use of the term “essentially of” is fine if the novel properties of the invention are unaffected. However, separate tests revealed inconsistent drying times, and thus the term “essentially of” was indefinite. Other patentability cases covered were Idenix v. Gilead, Nevro v. Boston Scientific, and Samsung v. Infobridge.
Next were infringement cases. Hologic v. Minerva Surgical dealt with assignor estoppel. Inventor assigned his patents to a company and Hologic acquired those patents. The inventor went on to found Minerva and developed the same products. The issue was whether assignor estoppel barred assignor from asserting collateral estoppel against a patent owner based on a prior decision of invalidity. Following Diamond Scientific, the circuit court held assignor estoppel only bars assignor from directly challenging validity of claims, not from defending in other ways. Other cases covered were Eli Lilly v. Hospira, and HZNP Medicines v. Actavis.
Moving to PTAB cases, in Return Mail v. U.S. Postal Service the Supreme Court answered whether federal agencies are “persons” who may petition for CBM, IPR, or PGR. The Supreme Court held no because “persons” does not include sovereigns and there was no congressional intent to suggest otherwise. Next, Jordan pointed out the importance of the Thryv v. Click-to-Call case. There, dealing with appealability of an IPR decision, the Supreme Court reversed the Wifi-One decision.
Peter v. NantKwest (another Supreme Court case), Regents of Univ. of Minnesota v. LSI, Celgene v. Peter, Arthrex v. Smith & Nephew, Facebook v. Windy City, Samsung v. Prisua, Philips v. Google, Nike v. Adidas, and GE v. UTC were also covered. Most of these cases also dealt with IPR.
Finally, Cheetah Omni v. AT&T, a licensing case, and In Re Google LLC, No. 19-126, a venue case, were reviewed.
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