The following arguments will be available to the public live, both in-person and through online audio streaming. Access information will be available by 9 AM ET each day of argument at: https://cafc.uscourts.gov/home/oral-argument/listen-to-oral-arguments/.
Tuesday, September 5, 2023
Purdue Pharma L.P. v. Collegium Pharmaceuticals, Inc., No. 22-1482, Courtroom 402
Collegium Pharmaceutical ("Collegium") petitioned for post-grant review ("PGR") of Purdue Pharmaceutical's ("Purdue") U.S. Patent No. 9,693,961 ("the '961 patent") concerning a "Pharmaceutical Formulation Containing Gelling Agent" directed to preventing or deterring opioid abuse. The application for the '961 patent was filed in 2016, claiming priority to a 2001 provisional application. Collegium petitioned alleging that the claims in the specification lacked written description under 35 U.S.C. § 112 and were anticipated under 35 U.S.C. § 102 in view of its own patent application, U.S. Pat. App. 2011/0142943 ("the '943 Publication"). Upon PGR, the Patent Trial and Appeal Board ("the Board") instituted trial, finding that Purdue was only entitled to the 2016 priority date, and that the challenged claims were more likely than not unpatentable under § 112 for lack of written description and under § 102 as anticipated. Prior to the Board's Final Written Decision ("FWD"), Purdue filed a Notice of Bankruptcy and Imposition of Automatic Stay in September 2019. The Chief Administrative Patent Judge determined that good cause existed for a six-month extension for the Board to issue a FWD, allowing time for the Bankruptcy Court to provide judgement on the automatic stay. In August 2020, the Bankruptcy Court ordered the stay lifted. Purdue filed a motion to terminate the PGR proceeding due to the passing of the statutory date to issue FWD under 35 U.S.C. § 326(a)(11). The Board determined that despite the passing of the deadline, the PGR could still proceed due to the "unique" or "unusual" circumstances of the case. The Board issued its FWD, finding the claims unpatentable for lack of written description and anticipation. Purdue appealed.
On appeal, Purdue argues that the Board erred in issuing a FWD outside of § 326(a)(11)'s time limit. Purdue emphasizes that § 326(a) required the Board to issue a FWD "not later than 1 year after" institution, with only one exception—that this period may be extended for "not more than 6 months" due to "good cause shown." Purdue states that while the Bankruptcy Court proceedings were good cause for the FWD extension, the decision still did not issue by its adjusted 18-month deadline. Purdue argues that the AIA prescribes and supports the plain reading of § 326(a)(11), and that the PGR should strictly occur during the allotted window. Purdue points to actions taken by Congress to accelerate PGR and IPR proceedings as basis for this window to be binding. Purdue also argues that Collegium's failure to seek relief from the Bankruptcy Court was further reason for termination of the proceedings. Furthermore, Purdue argues that even if the Court were to review the Board's final decision on the merits, the priority date of the '961 patent should be the 2001 provisional application date because it reasonably conveys to a person of ordinary skill in the art ("POSA") that the inventors had possession of the methods claimed in the '961 patent. Therefore, the Board's priority-date determination should be reversed, which would also compel reversal of any written description and derivative anticipation determinations based on the '943 Publication.
Collegium argues that the Board correctly found the '961 patent claims unpatentable due to lack of written description and anticipation, and that Purdue's bankruptcy filing was timely because it was days before the anticipated deadline for the Board to issue a FWD. Upon the six-month extension for the Board's deadline to issue a FWD, Collegium argues that the Bankruptcy Court did not err when it rejected Purdue's statement that the PTAB action "no longer exist[ed]," and correctly lifted stays of both district court proceedings and the PGR—allowing the Board to make a final determination on how § 326(a)(11) affected the proceeding. Collegium further urges that the Board correctly determined, based on its authority under the AIA and in accordance with Supreme Court decisions, that it is not divested of the authority to issue a FWD. Finally, Collegium argues that the Board correctly issued its FWD based on lack of written description because even in the 2001 provisional application to which Purdue claims priority, a POSA would not have been able to select an appropriate gelling agent from "laundry list[s]" of disclosed agents.
Friday, September 8, 2023
Ameranth, Inc. v. Domino's Pizza, LLC, No. 22-1200, Courtroom 201
Ameranth sued Domino's Pizza ("Domino's") alleging infringement of U.S. Patent No. 8,146,077 ("the '077 patent") related to an information management system for configuring and synchronizing hospitality menus. This suit came as part of multiple enforcement actions by Ameranth. The district court found the '077 patent ineligible under § 101. Domino's then sought an "exceptional case" declaration and an award of attorney's fees under 35 U.S.C. § 285. The district court found the case "exceptional," and awarded $2.7M in attorney's fees. The district court denied Ameranth's motion for reconsideration. Ameranth appealed.
On appeal, Ameranth argues that Domino's has not satisfied its burden of proving exceptionality, emphasizing the weakness in Domino's argument that a vacated jury verdict in an earlier 2012 infringement case, Ameranth, Inc. v. Menusoft Sys. Corp., 463 Fed. Appx. 920 (Fed. Cir. 2012) ("Menusoft"), as well as the Patent Trial and Appeal Board ("the Board") decisions on patents related to the '077 patent, should have convinced Ameranth to cease its enforcement of the '077 patent. Ameranth states that the district court failed to consider the "totality of the circumstances" in its exceptional case analysis as set forth in Octane Fitness, LLC v. Icon Health & Fitness, Inc., 572 U.S. 545 (2014) ("Octane"). The correct inquiry, according to Ameranth, should have been whether, under the totality of circumstances, its belief of the right to enforce its patents was reasonable, as opposed to "hopeless" or "baseless." Ameranth argues that its continued enforcement of the '077 patent was objectively reasonable after Menusoft, as the Menusoft decision only pertained to three other Ameranth patents, but did not involve any of the '077 patent claims asserted against Domino's. Ameranth further notes that none of the Menusoft claims involved §101 issues, and thus the vacated verdict could not impact the current proceedings. Additionally, Ameranth emphasizes that the Board expressly distinguished the '077 patent claims from the other Ameranth patents, and that Domino's delay in seeking a ruling based on §101 should also weigh against an exceptional case finding. Finally, Ameranth argues that even if the Court found an "exceptional case," the request for fees should be reduced to exclude any fees covering the Board review proceedings in which challenges of the '077 patent were repeatedly unsuccessful.
Domino's asserts that the district court judge correctly followed the Supreme Court's directive in Octane and made detailed findings on the strength of Ameranth's litigation as well as the manner in which the case was litigated. Domino's states that Ameranth's litigation was correctly found to be weak, as demonstrated in the invalidity findings of the other Ameranth patents at issue and as the Board reinforces in determining that all claims of those patents were unpatentable. Finally, Domino's argues that the awarded attorney's fees were justified because Ameranth's "scattershot" approach in litigating forty-three patent infringement cases covering four patents "stands out from other" cases. Domino's alleges that the pattern of conduct by which Ameranth litigated, especially continuing enforcement after the Board decisions, supports the district court's calculation of total fees awarded.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
