Last month, the U.S. Supreme Court granted certiorari in Cuzzo Speed Techs., LLC v. Lee, in which it will review the first Inter Partes Review (IPR) decision from the Patent Trial and Appeal Board (PTAB) created under the America Invents Act. Last month, the U.S. Supreme Court granted certiorari in Cuzzo Speed Techs., LLC v. Lee, in which it will review the first Inter Partes Review (IPR) decision from the Patent Trial and Appeal Board (PTAB) created under the America Invents Act. The Court will specifically review: Whether the Federal Circuit erred in holding that, in an IPR proceeding, the PTAB may construe claims in an issued patent according to their “broadest reasonable interpretation” (“BRI”) rather than their “plain and ordinary meaning;” and Even if the Board exceeded its statutory authority in instituting an IPR proceeding, whether the Federal Circuit erred in holding that the PTAB’s decision to institute an IPR proceeding is judicially non-reviewable.
Author: Estelle J. Tsevdos, Ph.D.
On March 16, 2013, with the enactment of certain provisions of the America Invents Act (AIA), the United States’ patent system moved from being a first to invent patent system (first-to-invent) to a first inventor to file patent system (first-to-file) and retired the use of interference proceedings to determine priority of invention. Prior to and after the initiation of first-to-file system, there has been much debate as to the virtues of both systems. One aspect of this debate was that inventors with less resources and universities benefited more from the first-to-invent patent system rather than the first-to-file where resources can impact the ability to file quickly. It was in this atmosphere and as forecasted, that there was a surge in pre-March 16 application by inventors who sought to have their application reviewed under the first-to-invent system.
On April 29, 2015, Senators Grassley, Leahy, Corny, Schumer, Lee, Hatch, and Klobuchar introduced another patent reform bill known as the Protecting Talent and Entrepreneurship Act of 2015 (“PATENT Act”). This bill includes many provisions similar to the previously introduced Innovation Act of 2015, but takes a slightly different approach on some key issues.
On August 15, the Federal Circuit, in a nonprecedential opinion, reversed a lower court ruling, denying I/P Engine, Inc., a subsidiary of Vringo, Inc., a $30 million patent infringement jury verdict by invalidating two of its internet search engine patents. I/P Engine brought suit against AOL Inc., Google, Inc., and others in the Eastern District of Virginia for allegedly infringing its patents, U.S. Patent Nos. 6,314,420 and 6,775,664, which relate to systems and methods for filtering internet search results, using both content-based and collaborative filtering. In November 2012, the district court found I/P Engine’s patents valid and that defendants infringed those patents. The jury awarded I/P Engine over $30 million in damages and a 3.5% running royalty.
On May 15, 2014, The United States Patent and Trademark Office (USPTO) published a Federal Register notice regarding the final changes to the rules of practice that relate to the patent term adjustment (PTA) provisions of section 1(h) of the Leahy-Smith America Invents Act (AIA) Technical Corrections Act. The previously published information was in guideline form only and did not encompass issues addressed by the presently provided rules.
Recently, in an effort to expedite patent prosecution internationally, thirteen countries, including the United States, have established a Global Patent Prosecution Highway (“GPPH”): Australia (IP), Canada (CIPO), Denmark (DKPTO), Finland (NBPR), Japan (JPO), Korea (KIPO), Nordic Patent Institute (NPI), Norwegian Patent Office (NIPO), Portugal (INPI), Russia (ROSPATENT), Spain (SPTO), United Kingdom (IPO), and USA (USPTO). Unfortunately, the European Patent Office has not signed on to the GPPH yet.
In a decision of first impression, Judge Maxine M. Chesney of the Northern District of California dismissed Sandoz’s declaratory judgment action against Amgen for lack of jurisdiction. Sandoz had brought its suit on June 24, 2013 seeking a ruling that its biosimilar version of Amgen’s patented arthritis drug Enbrel (etanercept) would not infringe and that the patents are invalid. Amgen moved to dismiss the case for lack of subject-matter jurisdiction or, alternatively, to decline to exercise Declaratory Judgment jurisdiction.
California Senate Bill 598, which would prohibit pharmacists from substituting biosimilars for a prescribed biologic, unless the biosimilar is an interchangeable product which would not need physician consent or if the biosimilar exceeds the cost of the brand-name drug, recently passed the California State Assembly by a vote of 58-4. The bill which has since passed the Ca. State Senate by a vote of 30-2 has yet to be signed into law by Governor Jerry Brown and has prompted extensive lobbying efforts both in support of and against its passage.
Over thirty years ago, the USPTO awarded the first gene patent (US 4,447,538) and the Supreme Court held that biological inventions were subject to patent protection. Since then, tens of thousands of U.S. “gene” or DNA related patents have issued. However, there has been much uncertainty over the patentability of such inventions as of late.
Last month, we reported on seed giant, Monsanto’s Supreme Court victory involving the question of patent exhaustion with regard to its sale of seed incorporating its patented seed technologies. On Monday, June 10, Monsanto appeared to emerge victorious from another litigation related to its seed technology and business when the Federal Circuit affirmed a lower court ruling that a coalition of organic farmers and seed sellers had no standing to seek declaratory judgments of non-infringement and invalidity with respect to Monsanto’s patented seed technologies.