Here is a report on recent news and commentary related to the Federal Circuit and its cases. Today’s report highlights an article discussing a Federal Circuit decision upholding three patents concerning antibody treatment for migraines, another article highlighting a summary affirmance of a district court’s invalidation of a patent for ineligibility, an article about a Federal Circuit determination that the Patent Office cannot recoup expert witness fees in lawsuits filed in district court by unsuccessful patent applicants, and commentary on a recent ruling about the applicability of the Administrative Procedure Act in the context of inter partes review proceedings.
Blake Brittain filed an article with Reuters commenting on arguments heard by the Federal Circuit in Teva Pharmaceuticals International GmbH v. Eli Lilly and Co. and Eli Lilly and Co v. Teva Pharmaceuticals International GmbH. As explained by Brittain, “Lilly failed to prove that parts of all of the patents were invalid based on prior art that allegedly disclosed the antibody treatment.” Brittain further notes that Judge Lourie, in upholding the three patents concerning antibody treatment for migraines, “agreed with the board that the relevant parts of Teva’s patents weren’t obvious because a reasonable artisan wouldn’t have expected the treatment to be effective.”
Tiffany Hu reported for Law 360 that “the Federal Circuit on Tuesday upheld a Delaware federal judge’s decision to strike down a SmileDirectClub patent on teledentistry technology for being too abstract under the U.S. Supreme Court’s Alice ruling.” Per Hu, “a three-judge panel summarily affirmed U.S. District Judge Connolly’s judgment on the pleadings that SmileDirectClub LLC’s patent on a way to make dental aligners without a dentist or orthodontist physically seeing the user was invalid.”
In a post on Bloomberg Law, Perry Cooper reports that the Federal Circuit ruled “the U.S. Patent and Trademark Office can’t recoup expert witness fees incurred in lawsuits filed by disgruntled patent applicants.” As explained by Cooper, the Patent Office “sought to recover over half a million dollars it spent on expert witnesses to defend its rejection of four patent applications,” but the Federal Circuit held that “NantKwest bars fee recovery.”
Sasha Vujcic and George E. Quillin commented on Qualcomm Inc. v. Intel Corp., in which “the Federal Circuit held that Qualcomm was not afforded notice of, or an adequate opportunity to respond to, the Patent Trial and Appeal Board’s (PTAB’s) novel construction of an undisputed claim limitation” in an inter partes review proceeding. Vujcic and Quillin explain the impact of the ruling, stating that the “Qualcomm ruling sheds some light on how the court handles the [Administrative Procedure Act]’s guarantee of notice and an opportunity to respond in IPRs.”