In this article, we highlight two scholarly articles related to the Federal Circuit.

Here are the details.

Eli Lilly v. Teva: Generic Companies Infringe under Akamai IV in Case of Divided Infringement

In his article, Christopher Holman argues that the value of method claims relating to pharmaceuticals, diagnostics, and other biotechnology innovations have been undermined by “U.S. Supreme Court’s 2014 decision in Limelight Networks v. Akamai Technologies decision (Akamai III), in conjunction with the Federal Circuit’s stance on divided infringement claims.”

Holman contends those cases limited “the ability of patentees to establish liability in cases where steps of the claimed method are performed by multiple parties.” However, in 2017 “the Federal Circuit issued a decision in Eli Lilly & Co. v. Teva Parenteral Medicines (Eli Lilly) wherein the court applied Akamai IV to uphold a district court’s determination that sale of a generic version of pemetrexed would induce infringement of method of treatment claims even though two of the recited steps are performed by a physician while the third step is performed by the patient. “

While Holman finds the Eli Lilly case encouraging, his article discusses “potential alternate scenarios involving divided infringement where it is still unclear whether the Federal Circuit would find liability.”

Design Patent Law’s Identity Crisis

In their article, Peter Menell and Ella Corren discuss the profound identity crisis in the current design patent regime. Menell and Corren argue that the Federal Circuit has overlooked congressional legislation and “the key regional circuit decisions interpreting [the congressional legislation], cementing design patent law’s identity crisis into place.”

The authors describe the “remarkable story of how the effort to transplant England’s design copyright regime to the United States spawned a confusingly labeled “design patent” regime and examines the confusion wrought by this mislabeled law during the mid to late 19th century.” Further, they examine the 1902 legislative amendments, trace “the emergence and distortion of the ornamentality/non-functionality doctrine,” and outline the “Federal Circuit’s tilting of the ornamentality/non-functionality doctrine toward over-broad protection of functionality within the design patent regime.”

Menell and Corren conclude by proposing “ways of rectifying design patent law’s wayward drift to restore fidelity to the statutory language and the overarching logic of the intellectual property system.”