Patent Litigation

Some respondents at the ITC have taken advantage of using infringement contentions as a procedural tool to deny patent owners from getting their day in court.  In some investigations, respondents have gone so far as to delay their own production of discovery until after the infringement contention deadline, then claim lack of fair notice when the patent owner uses the late discovery in its expert report.

The Federal Circuit affirmed a district court award of over $360,000 in costs and attorneys’ fees against a non-practicing entity, citing the need “to deter future abusive litigation.”

Mintz is recognized as among the top ten firms in ITC Section 337 litigation by Patexia in its inaugural "ITC Intelligence Report". We are pleased to be among the firms included in this publication and thrilled that it has come on the heels of a great year at the ITC for the Mintz team.

On December 18, 2019, the United States Court of Appeals for the Federal Circuit, in Fox Factory v. SRAM, Nos. 2018-2024 and 2018-2025, reversed the Board’s Final Written Decision in a pair of inter partes reviews (“IPRs”) that the challenged claims of U.S. Patent No. 9,182,027 (“the ’027 patent”) were not invalid as obvious, and remanded for further proceedings.

When licensing discussions with an intransigent implementer break down, SEP owners face a difficult question: what remedies are available (injunctive relief or damages) in each U.S. court (International Trade Commission and U.S. district courts) as redress against infringement?

On December 16, 2019, the Court of Appeals for the Federal Circuit issued an opinion that fully upheld the District of Delaware’s denial of Hospira, Inc.’s motion for judgment as a matter of law (JMOL), or alternative motion for new trial, in Amgen Inc. v. Hospira, Inc., Nos. 2019-1067, 2019-1102.  

On December 5, 2019, Judge David C. Godbey of the Northern District of Texas denied the defendant Diebold Nixdorf, Inc.’s (“Diebold”) motion to dismiss under Rule 12(b)(6), in Nautilus Hyosung Inc. v. Diebold, Inc. et al., 3-16-cv-00364 (N.D. Tex.).  Diebold filed the motion after the Federal Circuit reversed the International Trade Commission’s (“ITC”) finding of infringement in a parallel Section 337 investigation.  Instead, the Federal Circuit held that the one patent in the suit was invalid due to indefiniteness. 

In its recent decision, Fiber, LLC. v. Ciena Corp., No. 2019-1005 (Fed. Cir. Nov. 21, 2019), the Court of Appeals for the Federal Circuit (Federal Circuit) issued a reminder that the structure necessary to satisfy the definiteness requirement for a means-plus-function in a claim cannot normally be found in material incorporated by reference.

On December 11, 2019, the U.S. Supreme Court struck down the U.S. Patent and Trademark Office’s (USPTO) controversial policy of shifting attorneys’ fees in Peter v. NantKwest, Case No. 18-801. The Court ruled that the USPTO policy ran counter to the long-accepted “American Rule,” which says “[e]ach litigant pays his own attorney’s fees, win or lose, unless a statute or contract provides otherwise.”

To amend challenged claims during an Inter Partes Review (IPR), the patent owner must show that the proposed amendment responds to a ground of unpatentability at issue in the IPR trial. 

The Court of Appeals for the Federal Circuit (CAFC) has recently reminded the Patent Trial and Appeal Board (the Board) that it may not rely on evidence and arguments that fall outside the scope of the instituted grounds during Inter Partes Review (IPR) proceedings. In re IPR Licensing, Inc., No. 2018-1805 (Fed. Cir. Nov. 22, 2019). 

On November 6, 2019, the bonds between the U.S. government and pharmaceutical companies were stretched when the U.S. Department of Health and Human Services (“HHS”) filed a patent infringement lawsuit against Gilead Sciences in Delaware federal court regarding Gilead’s popular HIV drugs, Truvada® and Descovy®.

Nearly six years ago, the Supreme Court in Octane Fitness v. ICON Health & Fitness promulgated a “totality of the circumstances test” for awarding reasonable attorney fees to the prevailing party in exceptional cases under 35 U.S.C. §285.  As lower courts have applied this standard, it has become clear that the motivation and conduct of the losing party is a focal point of the exceptionality analysis.  However, two recent decisions emphasize that bad faith arguments and litigation tactics—by both parties and in all stages of litigation—are critical to the exceptionality analysis in Section 285 attorney fee awards. 

Judge Gilliam of the Northern District of California recently answered this question and provided helpful guidance on the interplay of IPRs, reexaminations and district court litigation. In IXI Mobile (R&D) Ltd., et al., v. Samsung Elec. Co. Ltd. and IXI Mobile (R&D) Ltd., et al. v. Apple Inc., Judge Gilliam denied plaintiffs’ (“IXI”) motion for leave to amend their infringement contentions and asserted claims because IXI was not diligent in identifying new contentions or new accused products.

The adoption of multiple, standardized technologies looms on the horizon.  This presents the challenge of balancing innovator’s intellectual property rights with implementer’s desire for fair access to technology. As more implementers adopt efficient infringement to circumvent this equilibrium altogether, standard-essential patent (“SEP”) licensing disputes have increased. 

In a recent decision clarifying the legal standards of the International Trade Commission’s domestic industry requirement, the Commission has upheld, with modified reasoning, Chief Administrative Law Judge Bullock’s initial determination (“ID”), finding no domestic industry in Certain Carburetors and Products Containing Such Carburetors, Inv. No. 337-TA-1123, Comm’n Op. (Oct. 28, 2019). 

Litigation involving standard-essential patents (“SEPs”) is on the rise.  The now longstanding and disturbing impact of efficient infringement by recalcitrant implementers is the predominant cause of the increase. 

In a precedential opinion on October 4, 2019, the United States Court of Appeals for the Federal Circuit, in OSI Pharmaceuticals v. Apotex, No. 2018-1925, reversed the Board’s Final Written Decision in an inter partes review (“IPR”) finding that claims of United States Patent No. 6,900,221 (the “‘221 patent”) were invalid as obvious.

Recently, in Sanofi-Aventis v. Mylan, 2:17-cv-09105-SRC-CLW, Judge Stanley Chesler of the United States District Court, District of New Jersey, denied a motion by defendant Mylan for summary judgment of invalidity of asserted patent claims that were found to be obvious by the Patent Trial and Appeal Board (“PTAB”).

Recently, Chief Administrative Law Judge (“CALJ”) Bullock of the U.S. International Trade Commission (“ITC”), in Certain Carburetors and Products Containing Such Carburetors, Inv. No. 337-TA-1123, Order No. 77, suggested that “significant” or “substantial” domestic industry investments must amount to greater than 5% of domestic industry product sales in the United States.