United States: Federal Circuit Patent Update - January 29, 2019

Supreme Court Opinion

Helsinn Healthcare S. A. v. Teva Pharmaceuticals USA, Inc. (No. 17-1229, 1/22/19)

Thomas, J. Affirming judgement of invalidity of patent related to drug that treats chemotherapy-induced nausea and vomiting. Sale of an invention to a third party, who is obligated to keep the invention confidential, can qualify as prior art under the America Invents Act. "We granted certiorari to determine whether, under the AIA, an inventor's sale of an invention to a third party who is obligated to keep the invention confidential qualifies as prior art for purposes of determining the patentability of the invention. [citation omitted]. We conclude that such a sale can qualify as prior art." The language "or otherwise available to the public," which was added to §102 by the AIA, did not change this result. "Because we determine that Congress did not alter the meaning of "on sale" when it enacted the AIA, we hold that an inventor's sale of an invention to a third party who is obligated to keep the invention confidential can qualify as prior art under §102(a)."

Precedential Federal Circuit Opinions

PRINCETON DIGITAL IMAGE CORP. v. OFFICE DEPOT INC. [OPINION - PRECEDENTIAL] (2017-2597, 2017-2598, 2017-2600, 2017-2602, 2017-2605, 2017-2606, 2017-2609, 2017-2611, 2017-2612, 2017-2627, 2017-2628, 2017-2629, 2017-2630, 2017-2631, 2017-2632, 2017-2633, 2017-2634, 2018-1006, 1/22/19) (Dyk, Taranto, Stoll)

Dyk, J. Dismissing appeal for lack of subject jurisdiction. Following adverse pretrial rulings, the patentee attempted to obtain an appealable decision by requesting the district court to enter judgment in favor of the defendant. The district court entered the requested judgment and the Court subsequently determined that the judgement was not final and therefore not appealable. "[We] conclude that [patentee] could still have proceeded to trial on its breach claim, and was required to do so to obtain a final decision on the merits that could be appealed. To be sure, the prospect of only a small damages recovery may have discouraged [patentee] from going to trial, but ... the fact that continuing litigation could be economically imprudent does not create a 'final decision.' ... Because the purported final judgment is ineffective, the district court must treat the case as though final judgment had never been entered. There are thus further steps remaining for the district court to take: it must determine whether [defendant] breached its license agreement with [patentee], and if so, it must determine the damages (actual or nominal) to which [patentee] is entitled. In short, the case must continue until there is a final disposition of the breach claim, at which point there can be an appeal.

SUPERNUS PHARMACEUTICALS, INC. v. IANCU [OPINION - PRECEDENTIAL] (2017-1357, 1/23/19) (Dyk, Schall, Reyna)

Reyna, J. Reversing summary judgment regarding patent term extension. "On the basis of the plain language of the statute, we hold that the USPTO may not count as applicant delay a period of time during which there was no action that the applicant could take to conclude prosecution of the patent... A plain reading of the statute shows that Congress imposed two limitations on the amount of time that the USPTO can use as applicant delay for purposes of reducing PTA. First, the statute expressly requires that any reduction to PTA be equal to the period of time during which an applicant fails to engage in reasonable efforts. Second, the statute expressly ties reduction of the PTA to the specific time period during which the applicant failed to engage in reasonable efforts... Thus, the statutory period of PTA reduction must be the same number of days as the period from the beginning to the end of the applicant's failure to engage in reasonable efforts to conclude prosecution. PTA cannot be reduced by a period of time during which there is no identifiable effort in which the applicant could have engaged to conclude prosecution because such time would not be "equal to" and would instead exceed the time during which an applicant failed to engage in reasonable efforts."

BARRY v. MEDTRONIC, INC. [OPINION - PRECEDENTIAL] (2017-2463, 1/24/19) (Prost, Moore, Taranto)

Taranto, J. Affirming judgement of no invalidating public use of patents related to methods for correcting spinal column anomalies. Also affirming findings of induced infringement and no inequitable conduct. It was reasonable for the jury to find no invalidating public use when three surgeries using the invention were performed more than a year before the critical date but a follow-up appointment for the last of those surgeries was not held until after the critical date. It was reasonable under such circumstances to find that the inventor did not conclude that the invention would work for its intended purpose until after the post-critical date appointment. "To the extent that [patentee] contends, and the dissent concludes, that the patent claims compel narrowing the 'intended purpose' determination to a single surgery, or even two surgeries, assessed for success immediately upon its completion, we disagree... [The claims do not] indicate that the intended purpose is limited to observing a straightening at the completion of surgery, without regard to the correction lasting so as to improve the patient's health." It was also reasonable for the jury to find that the pre-critical date surgeries did not make the invention available to the public because people in the operating room were under "an implied duty of confidentiality covering at least the tools and techniques used." That the inventor was paid for performing the pre-critical date surgeries, and that the patients did not know that the inventor was testing a particular technique, did not render the pre-critical date surgeries a public use. The Court found it significant that the claims were directed to methods. While implantation of a device in a patient may surrender control of the device, use of the claimed method in the pre-critical date surgeries did not surrender control of the claimed method. Prost, C.J. dissented in part.

WilmerHale represented the defendant-appellant, Medtronic, Inc.

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