Patent Infringement

October 20, 2017

Patentability of Amended Claims in IPR the Burden of the Petitioner’s Issue, Not the Patentee

A 7-4 of the en banc decision of the Federal Circuit concludes that the Patent Trial and Appeal Board improperly requires a patent owner in an inter partes review (IPR) to show that proposed amended patent claims are patentable before a motion to amend those claims will be granted,

In an unusually opinion, the deeply divided the Court produced five opinions, none of which had enough backers to constitute the opinion of the Court. The most thoughtful opinion was 68 pages opinion, but only agreed upon by five of the judges. It concluded 5-6 that the statute unambiguously prohibited imposing on the patentee a burden of showing patentability, requiring no deference to the PTAB rule under Chevron, U.S.A., Inc. v. Nat. Res. Def. Council, Inc., 467 U.S. 837 (1984). However, the opinion picked up two additional votes of Judges Dyk and Reyna, who concurred in the result based on an alternative rationale conceding the ambiguity of the statute but nonetheless denying deference to the PTAB rule.

May 31, 2017

Supreme Court Provides Relief to “Exhausted” Buyers of Printer Cartridges

By Overhauser Law Offices, LLC

The US Supreme Court has good news for people that are tired of paying high prices for printer cartridges – the fine print of the “license agreement” in the boxes that prohibits you from refilling the cartridges is no longer effective.

In Impression Products Inc. v. Lexmark International, Inc., U.S., No. 15-1189, 5/30/2017, the Court decided that when a patentee decides to sell—whether on its own or through a licensee—that sale exhausts its patent rights, regardless of any post-sale restrictions the patentee purports to impose, either directly or through a license, Chief Justice Roberts wrote for a unanimous Court. As for international exhaustion, he observed that “nothing in the text or history of the Patent Act shows that Congress intended to confine that borderless common law principle to domestic sales.” Justice Ginsburg concurred in the general exhaustion decision as to domestic sales, but dissented as to international exhaustion.

Background

Lexmark makes and sells patented ink cartridges for its printers. It sell cartridges under one plan that permits buyers to use them as they wish, and under a “Return Program” plan that provides a discounted price. The Return Program plan limits buyers to a single use of the cartridge and requires the cartridges to be returned to Lexmark for recycling.

Lexmark filed infringement suits against many makers of after-market ink cartridges for Lexmark printers, most of which settled. In the action against Impressions, the district court entered a stipulated judgment, holding that Lexmark’s patent rights in cartridges first sold in the United States were exhausted, but the rights were retained for cartridges first sold abroad.

In a 10-2 en banc decision, the Federal Circuit held that, where the patentee’s sale is subject to a single-use/no-resale restriction that is lawful and clearly communicated, the sale does not confer resale or reuse authority to a buyer or downstream buyers. It also held that the patentee’s sale or authorization to sell a U.S. patented article abroad does not authorize the buyer to import the article and sell and use it in the United States.

The Federal Circuit decision was taken for review by the Supreme Court.

U.S. Sales

The Supreme Court concluded that Lexmark exhausted its patent rights the moment it sold its patented cartridges in the United States under the Return Program. While they may be clear and enforceable under contract law, the single-use/no-resale restrictions in Lexmark’s contracts with customers do not entitle Lexmark to retain patent rights in an item that it has elected to sell, according to the Court.

May 23, 2017

Indiana’s TC Heartland Wins Patent Case in US Supreme Court

By Overhauser Law Offices, LLC

TC Heartland LLC of Carmel, Indiana won a precedent-setting victory in the US Supreme Court in its patent infringement suit with Kraft Foods. The US Supreme Court held that the term “resides” in 28 U.S.C. § 1400(b) for determining venue patent suits refers only to the State of incorporation.

Overruling the Federal Circuit’s decision in VE Holding Corp. v. Johnson Gas Appliance Co., 917 F.2d 1574 (Fed. Cir. 1990), the Court concluded that 2008 and 2011 revisions to the general venue statute at 28 U.S.C. §1391 did not modify the meaning of “resides” in Section 1400(b) to include personal jurisdiction for corporate defendants. This issue was resolved by a 1957 Supreme Court decision, and nothing in the later legislation indicates that Congress intended to overturn that decision, the Court concluded.

Background

April 12, 2017

Indiana Patent Litigation: Lilly Again in Federal Court to Defend Alimta Patent

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Eli Lilly and Company of Indianapolis, Indiana filed a federal lawsuit in the Southern District of Indiana alleging patent infringement. Defendants are Actavis LLC of Parsippany, New Jersey; Teva Pharmaceuticals USA, Inc. of North Wales, Pennsylvania; and Teva Pharmaceutical Industries, Ltd. of Petach Tikva, Israel.

At issue is a patent for Antifolate Combination Therapies, Patent No. 7,772,209 (“the ‘209 patent”) which has been issued by the U.S. Patent and Trademark Office. This patent covers intellectual property embodied in Alimta®, a drug therapy used for the treatment of various types of cancer.

In a complaint filed by an Indiana patent litigator, Lilly states that Defendants filed an Abbreviated New Drug Application with the U.S. Food and Drug Administration seeking approval to manufacture and sell generic equivalents of ALIMTA® prior to the expiration of the ‘209 patent. It asserts that this filing constitutes and/or will constitute infringement of the ‘209 patent, active inducement of infringement of the ‘209 patent, and contribution to the infringement by others of the ‘209 patent.

Lilly seeks, inter alia, injunctive relief, costs and attorneys’ fees.

April 7, 2017

Indiana Patent Litigation: Infringement of Patents for Rotating Curling Iron Alleged in New Lawsuit

By Overhauser Law Offices, LLC

South Bend, Indiana – The Beachwaver Co. of Libertyville, Illinois filed a new lawsuit in the Northern District of Indiana alleging infringement of patents covering its rotating curling iron. Beachwaver seeks damages as well as injunctive and other relief under 35 U.S.C. 281, et seq.

Defendants in this newest lawsuit are Xtava, LLC of Wilmington, Delaware, C&A IP Holdings, LLC of Dover, Delaware, and C+A Global of Edison, New Jersey. They are accused of infringing two patents: U.S. Patent Nos. 9,398,796 (“the ‘796 patent”) and 9,504,301 (“the ‘301 patent”). These patents, both titled “Hair Styling Device,” have been issued by the U.S. Patent and Trademark Office.

Plaintiff has filed two similar Indiana lawsuits asserting infringement in recent months, one in October and another in December. This most recent litigation, filed by Indiana patent lawyers for Beachwaver, lists two counts:

Count 1: Infringement of the ‘796 Patent
Count 2: Direct Infringement of the ‘301 Patent

Plaintiff seeks injunctive relief, costs, attorneys’ fees and damages, including treble damages.

April 3, 2017

Indiana Patent Litigation: Lilly Alleges Patent Infringement, Sues Generic Manufacturer

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Eli Lilly and Company of Indianapolis, Indiana filed a patent infringement lawsuit in the Southern District of Indiana asserting infringement of U.S. Patent No. 7,772,209 (‘209 Patent). Defendant is Amneal Pharmaceuticals LLC of Bridgewater, New Jersey.

Lilly states that Amneal filed an Abbreviated New Drug Application with the U.S. Food and Drug Administration seeking approval to manufacture and sell two “Pemetrexed for Injection” products prior to the expiration of the ‘209 patent. Lilly contends that the ‘209 patent, which was issued by the U.S. Patent and Trademark Office, protects the Pemetrexed products.

In this patent litigation, filed by attorneys for Lilly, a single count is listed, “Infringement of U.S. Patent No. 7,772,209.” Lilly seeks relief from the Indiana court including a judgment of infringement, injunctive relief, costs and attorneys’ fees.

Practice Tip: Lilly has had some success protecting its ‘209 patent, which relates to the cancer drug Alimta®, against generic manufacturers. See, e.g., U.S. Court of Appeals Rules In Lilly’s Favor on Alimta Vitamin Regimen Patent.

March 31, 2017

Indiana Patent Litigation: Indiana Plaintiff Seeks Judgment of Noninfringement

By Overhauser Law Offices, LLC

South Bend, Indiana – Stump Printing Co., Inc., also known as Shindigz, of South Whitley, Indiana filed a patent lawsuit in the Northern District of Indiana seeking declaratory judgment of noninfringement.

Defendant in the litigation is Electronic Communication Technologies, LLC (“ECT”) of Boynton Beach, Florida, which claims to be the owner by assignment of U.S. Patent Nos. 9,373,261; 7,876,239 and 7,319,414. These patents were issued by the U.S. Patent and Trademark Office.

In February 2017, ECT sent a letter to Shindigz claiming that Shindigz’s “order confirmation” and “shipping confirmation” systems “infringe claims of the ECT Patents.” The letter demanded that Shindigz pay a fee of $30,000 to license the use of those systems.

In response, Indiana patent lawyers for plaintiff filed this lawsuit asking the court to find the ECT patents ineligible for patenting, not infringed, and invalid. The complaint accuses ECT of being a “patent troll,” stating that the company makes a practice of “calibrating the amount of [its] settlement demands to be lower than the perceived cost of litigation, to try to ensure that practicing entities settle rather than pursue challenges to the eligibility of validity of the patents through dispositive motions or trial.” The complaint also asserts that ECT and predecessor in interest Eclipse IP have filed approximately 250 patent lawsuits since 2011.

The lawsuit seeks injunctive relief, costs and attorneys’ fees as well as two counts of declaratory judgment:

Count I: Declaratory Judgment of Noninfringement

Count II: Declaratory Judgment of Invalidity

March 27, 2017

Indiana Patent Litigation: Parties Return to Court Over Allegations of Ongoing Infringement of Patent for Foldable Tricycle

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Newton Enterprises Ltd. of Kowloon, Hong Kong filed a lawsuit in the Southern District of Indiana against Defendant Singleton Trading Inc. d/b/a Elama d/b/a Blue Spotlight of Brooklyn, New York asserting patent infringement and breach of contract.

These claims follow earlier litigation against Singleton initiated by Newton in June 2016. That lawsuit, also filed in Indiana, alleged that Singleton Trading had infringed and/or induced others to infringe U.S. Patent No. 7,568,720 (the “‘720 patent”) for a “Wheeled Vehicle” with its “Zoom Bike” product.

Newton states that the 2016 action was dismissed without prejudice pursuant to a settlement agreement under which Singleton agreed to compensate Newton for its claims of past infringement and “permanently cease making, using, offering to sell, or selling the Zoom Bike” or any other product that infringed the ‘720 patent. Under the agreement, Singleton was granted a limited license to sell its remaining inventory.

Newton now returns to the court alleging that Singleton has breached the settlement agreement by selling units of the Zoom Bike exceeding the scope of the limited license. Newton further contends that this conduct constitutes willful infringement of the ‘720 patent.

This second complaint, filed by an Indiana patent lawyer, lists two counts:

Count I: Infringement of ‘720 Patent
Count II: Breach of Settlement Agreement

Newton asks the court for a declaration of willful patent infringement; damages, including a trebling of those damages; costs and attorneys’ fees; and injunctive relief.

March 22, 2017

Patent Law: Federal Circuit Rules on Two Eli Lilly Patent Cases

By Overhauser Law Offices, LLC

Washington, D.C. — The Federal Circuit ruled on two patent infringement decisions, Los Angeles Biomedical Research Institute v. Eli Lilly & Co. and Eli Lilly & Co. v. Los Angeles Biomedical Research Institute, that involve Indianapolis-based Eli Lilly and Company.

These companion cases pertain to a pharmaceutical patent, U.S. Patent No. 8,133,903 (“the ’903 patent”), owned by Los Angeles Biomedical. Also at issue is one prior art reference, International Patent Application No. WO 01/80860, published Nov. 1, 2001, common to both lawsuits.

Los Angeles Biomedical Research Institute v. Eli Lilly & Co. arose as an inter partes review of a decision by the Patent Trial and Appeal Board holding all claims of the ‘903 patent to be obvious. The Federal Circuit reviewed claims in a provisional application relating to a study involving rats in combination with a method in an uncited reference to convert those results to apply to humans. It held that the rat study and uncited conversion method did not support the claimed dosage for humans. It further concluded that claims directed to an underlying condition should not be construed broadly to treat symptoms of that condition, holding that the Board had not adopted the broadest reasonable interpretation of the claims but instead had adopted an overbroad interpretation. The panel remanding, stating:

The question remains whether a person of skill in the art would have had a reason to combine [the three cited references relating to the medical condition] and would have had a reasonable expectation of success from doing so. Because the Board’s obviousness analysis was based on an erroneous construction of the claim language and an overly broad interpretation of [one of the references], and because the Board did not address the record evidence summarized above, we remand for the Board to make new findings as to whether there was an apparent reason to combine the prior art references and whether that combination would have rendered [the treatment] obvious.

February 24, 2017

Indiana Patent Litigation: Trial Court Grants Stay in Axiron Lawsuit

By Overhauser Law Offices, LLC

Indianapolis, Indiana – The matter of Eli Lilly and Company, et al. v. Apotex Inc., et al. has been stayed pending a ruling by the U.S. Court of Appeals for the Federal Circuit.

This Indiana lawsuit was initiated by Lilly, an Indianapolis pharmaceutical company, in conjunction with other Plaintiffs. Patent attorneys for Plaintiffs filed a lawsuit asserting patent infringement after Defendants filed an Abbreviated New Drug Application seeking approval to market a generic version of the drug Axiron® before various patents related to the drug expired. Among Plaintiffs’ contentions were claims of patent infringement of seven patents pertaining to Axiron.

In this motion, patent lawyers for Plaintiffs have asked the court to stay its proceedings pending a ruling in a similar case, Eli Lilly and Company, et al. v. Perrigo Company, et al. The Perrigo case was filed in the Southern District of Indiana in 2013. After a trial, the court issued findings including that one claim in one of the Axiron patents was invalid, while two claims pertaining to another Axiron patent were valid. That ruling was appealed to the Federal Circuit; that appeal remains pending.