IP Newsflash

To narrow issues and promote settlement in “oversized patent cases,” on July 31, 2017, Chief Judge Leonard Stark of the District of Delaware issued an order that indicates a preference for bellwether trials on all issues for a subset of representative patents, instead of “reverse bifurcation,” wherein the issue of damages is addressed first. Intel Corp. v. Future Link Sys., LLC, Case No. 1:14-cv-377 (D. Del. July 31, 2017) (J. Stark).

The Patent Trial and Appeal Board designated as precedential its October 25, 2013, decision to institute inter partes review and declined to apply the doctrine of assignor estoppel as an exception to 35 U.S.C.§311(a). Section 311(a) provides that “a person who is not the owner of a patent may file with the Office a petition to institute an inter partes review of the patent.”

On July 17, 2017, the Patent and Trial Appeal Board (the “Board”) granted in-part, Patent Owner’s conditional motion to amend on remand from an appeal to the Federal Circuit. In a final written decision issued in April 2015, the Board found that all of the challenged claims were obvious under 35 U.S.C. § 103. In doing so, the Board also denied Patent Owner’s conditional motion to amend (with proposed substitute claims 26 and 27). The Federal Circuit upheld the Board’s decision on obvious and underlying claim construction. But it vacated the Board’s denial of the motion to amend as arbitrary and capricious because it failed to consider the patentability of the proposed substitute claims. Instead, the Board denied the motion on an apparent technicality because “the patent owner [did not] discuss whether each newly added feature was separately known in the prior art.”

On July 6, 2017, the Patent Trial and Appeal Board (the “Board”) denied Petitioner Ford Motor Company’s (“Petitioner”) request for rehearing of the Board’s decision denying institution of multiple inter partes reviews (IPR) based on its finding that, under 35 U.S.C. § 315(b), the petitions were filed more than one year after the date on which the Petitioner was served with a complaint alleging patent infringement.

The Patent Trial and Appeal Board (the “Board”) issued a final written decision in an inter partes review determining Claims 1-5 of U.S. Patent No. 8,889,135 owned by Abbvie Biotechnology Ltd. unpatentable as obvious. Those claims cover methods of treating rheumatoid arthritis by administering—once every 13-15 days (i.e., biweekly) for a time period sufficient to treat the rheumatoid arthritis—40 mg of an antibody having certain sequences. The antibody D2E7, the active ingredient in Humira, is an antibody used in such a dosing regimen. The Board concluded that the challenged claims would have been obvious in light of two prior art references – van de Putte 2000 and Rau 2000 – which each described the results of clinical trials using D2E7.

On June 19, 2017, Northern District of California Judge William Alsup granted-in-part and denied-in-part plaintiff Comcast Cable Communications, LLC’s (“Comcast”) motion to strike defendants OpenTV, Inc. and Nagravision SA’s (collectively “OpenTV”) infringement contentions. The court, however, did not strike with prejudice but instead treated Comcast’s motion as a motion to compel amendment of OpenTV’s infringement contentions so that OpenTV could cure deficiencies.

The Supreme Court’s recent holding in TC Heartland settled several points of law: first, 28 U.S.C. § 1400(b) is the “sole and exclusive provision controlling venue in patent infringement actions; second, the broader venue provisions in 28 U.S.C. § 1391(c) are not applicable to patent infringement cases; and third, TC Heartland reversed the Federal Circuit’s decision that reaffirmed VE Holding and held that “the current version of § 1391 does not contain any indication that Congress intended to alter the meaning of § 1400(b) as interpreted in Fourco.” In the aftermath of TC Heartland, there have been inconsistent approaches to the question of waiver and whether the recent Supreme Court decision constitutes new law. Two such decisions are detailed, below.

In Valeo North America, Inc. v. Schaeffler Tech. AG & CO. KG, after finding that all original claims of the patent were unpatentable during an inter partes review (IPR) proceeding, the Patent Trial and Appeal Board granted, in part, the patent owner’s motion to amend. The Board allowed substitution of two new claims based on unexpected results of the claimed inventions, despite patent owner’s concession that each element in the substitute claims is taught by the prior art of record.