Here is this month’s update on activity in cases pending before panels of the Federal Circuit where the cases involve at least one amicus brief. We keep track of these patent cases in the “Other Cases” section of our blog. Today, with respect to these cases we highlight two dispositions, one new case, three recent oral arguments, and two upcoming oral arguments.
Opinions
This past month the Federal Circuit issued two opinions in patent cases that attracted amicus briefs.
Dragon Intellectual Property v. DISH Network LLC
In this case, Dish Network and Sirius XM Radio presented a question to the court about the appropriate way to determine a prevailing party for purposes of awarding attorney’s fees under the patent statute. As we noted in our argument recap, the district court found that Dish Network and Sirius XM Radio were not prevailing parties and therefore not entitled to attorneys’ fees because the district court litigation became moot due to Dish Network and Sirius XM Radio’s success invalidating the relevant patent at the Patent Trial and Appeal Board. The Electronic Frontier Foundation submitted an amicus brief supporting Dish Network and Sirius XM Radio on appeal.
As we predicted in our argument recap, the Federal Circuit held that the district court erred in holding that Dish Network and Sirius XM Radio are not prevailing parties under 35 U.S.C. § 285 and vacated and remanded the district court’s order denying appellants’ motions for attorneys’ fees. The Federal Circuit, however, did not reach the subsidiary question of whether a prevailing party may use § 285 to obtain an award covering attorneys’ fees it incurred in prosecuting an IPR proceeding. The panel left that question for the district court to determine, if necessary, on remand.
Check out the case page to see all of our coverage of this case, including our argument preview and argument recap.
Cardionet, LLC v. InfoBionic, Inc.
As we explained in our argument recap, this case addressed the issue of whether an improved cardiac monitoring device is ineligible for patenting under 35 U.S.C. § 101. The Federal Circuit held that the claims at issue were not patent ineligible under § 101.
Judge Stoll explained that “the asserted claims of the ’207 patent are directed to a patent-eligible improvement to cardiac monitoring technology and are not directed to an abstract idea.” And, she further explained, “[a]t the heart of the district court’s erroneous step one analysis is the incorrect assumption that the claims are directed to automating known techniques.” The district court, she said, also “erred by disregarding the written description’s recitation of the advantages of the claimed invention.” Furthermore, the panel “conclude[d] that a remand is unnecessary” because “Alice step one presents a legal question that can be answered
based on the intrinsic evidence.”
Notably, Judge Dyk concurred in the result but not in the majority’s opinion. He agreed with the majority that the patent claims are eligible because “the record does not support the defendant’s contentions.” But he disagreed with the majority’s position that “step one of the Alice framework does not require an evaluation of the prior art or facts outside of the intrinsic record regarding the state of the art at the time of the invention.” In Judge Dyk’s view, “limiting the use of extrinsic evidence to establish that a practice is longstanding would be inconsistent with authority.”
Check out the case page to see all of our coverage of this case, including our argument preview and argument recap.
New Cases
Since our last update, we highlight one new patent case that has attracted an amicus brief.
Takeda Pharmaceuticals U.S.A. v. Alkem Laboratories Limited
In this case, Takeda Pharmaceuticals U.S.A. appeals “the district court’s denial of a preliminary injunction, and [requests a] remand with instructions that a preliminary injunction be issued.” This case is related to Takeda Pharmaceuticals U.S.A. v. Mylan Pharmaceuticals Inc., which is also currently on appeal at the Federal Circuit and presents similar issues. Hikma Pharmaceuticals USA, Inc. and Hikma Pharmaceuticals International Limited filed a brief supporting Takeda.
New Supplemental Briefing
There is new supplemental briefing to report in the following cases:
- National Veterans Legal Services Program v. United States: National Veterans Legal Services Program cited and the United States responded to the Supreme Court’s April 27, 2020 decision in Maine Community Health Options v. United States.
- Sellers v. Wilkie: Seller’s counsel provided supplemental authority.
- Takeda Pharmaceuticals U.S.A. v. Mylan Pharmaceuticals Inc.: The parties provided supplemental briefs directing the court to its recent decision in O.F. Mossberg & Sons, Inc. v. Timney Triggers, LLC.
- Uniloc 2017 LLC v. Hulu, LLC: The parties provided supplemental briefing addressing “whether this appeal and the underlying IPR are rendered moot by the final judgment of invalidity of all claims of the ’960 patent.”
Argument Recaps
Since our last report, the Federal Circuit has heard oral arguments in three cases that attracted amicus briefs.
- In Hardy v. United States, a taking case, the court heard arguments about whether several deeds at issue granted an interest in fee simple or an easement in the disputed parcels of land. See our argument recap for more details.
- In Sellers v. Wilkie, a veterans case, the court considered “[w]hether a claimant’s general statement requesting benefits on a formal claim form that identifies specific disabilities constitutes a claim for all ‘reasonably identifiable’ diagnoses within the claimant’s records.” See our argument recap for more details.
- In Uniloc 2017 LLC v. Hulu, LLC, a patent case, the court heard arguments about whether the Patent Trial and Appeal Board may reject a motion to amend a patent in an inter partes review because the Board concludes that a proposed substitute claim does not comply with the eligibility requirement. See our argument recap for the details.
Upcoming Oral Arguments
Next month, two related cases that attracted amicus briefs will be argued.
Takeda Pharmaceuticals U.S.A. v. Alkem Laboratories Limited
In this case, Takeda Pharmaceuticals U.S.A. presents the following issues:
- “Section 1.2(d) of the License Agreement at issue in this case permits Alkem to launch its generic Colcrys® product a specified time period ‘after the date of a Final Court Decision . . . holding that all unexpired claims of the Patents-in-Suit that were asserted and adjudicated against a Third Party are either (i) not infringed, or (ii) any combination of not infringed and/or invalid, unpatentable, or unenforceable[.]’ The district court held that Takeda is unlikely to succeed in its argument that Alkem was not entitled to launch its generic product. Did the district court err in concluding that Section 1.2(d) was likely triggered by a court decision that: (A) held only three out of the eight asserted patents to be not infringed; and (B) reached no determination regarding noninfringement, invalidity, unpatentability, or unenforceability with respect to the remaining five patents?”
- “Based on the correct interpretation of the License Agreement, did the district court abuse its discretion in denying Takeda’s motion for a preliminary injunction?”
- “Based on the correct interpretation of the License Agreement, did the district court abuse its discretion in finding that there was no irreparable harm based on Section 1.10 of the License Agreement which provides that Takeda ‘shall be entitled to immediate injunctive relief’ in the event of a breach, and that a breach by Alkem of the License Agreement, ‘would cause Takeda irreparable harm’”?
Takeda Pharmaceuticals U.S.A. v. Mylan Pharmaceuticals Inc.
In this case, Takeda Pharmaceuticals U.S.A. presents virtually identical issues:
- “Section 1.2(d) of the License Agreement at issue in this case permits Mylan to launch its generic colchicine product a specified time period ‘after the date of a Final Court Decision . . . holding that all unexpired claims of the Patents-in-Suit that were asserted and adjudicated against a Third Party are either (i) not infringed, or (ii) any combination of not infringed and invalid or unenforceable[.]’ The district court held that Takeda is unlikely to succeed in its argument that Mylan was not entitled to launch its generic product. Did the district court err in concluding that Section 1.2(d) was likely triggered by a court decision that: (A) held only three out of the eight asserted patents to be not infringed; and (B) reached no determination regarding noninfringement, invalidity, or unenforceability with respect to the remaining five patents?”
- “Based on the correct interpretation of the License Agreement, did the district court abuse its discretion in denying Takeda’s motion for a preliminary injunction?”
- “Based on the correct interpretation of the License Agreement, did the district court abuse its discretion in finding that there was no irreparable harm based on Section 1.10 of the License Agreement which provides that Takeda ‘shall be entitled to immediate injunctive relief’ in the event of a breach, and that a breach by Mylan of the License Agreement, ‘would cause Takeda irreparable harm?’”