Fresh From the Bench: Latest Federal Circuit Court Cases

CASE OF THE WEEK

Data Engine Technologies, LLC v. Google LLC, Appeal No. 2017-1135 (Fed. Cir. Oct. 9, 2018)

In one of two Section 101 cases this week, the Federal Circuit affirmed-in-part, reversed-in-part, and remanded the district court’s judgment on the pleadings that all asserted claims of four patents were directed to patent-ineligible subject matter under 35 U.S.C. § 101.

The Court found that with the exception of one independent claim, a number of patents directed to a specific improved method for navigating through complex three-dimensional electronic spreadsheets (i.e., electronic spreadsheets with multiple “pages”) were eligible for patenting under § 101. The Court agreed, however, that all asserted claims of a separate patent reciting methods for tracking changes to data in spreadsheets—are directed to the abstract idea of collecting, recognizing, and storing changed information, and do not provide an inventive concept sufficient to render the claims patent eligible.

ALSO THIS WEEK

Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., Appeal No. 2017-1575 (Fed. Cir. Oct. 12, 2018)

In an appeal from a district court decision, the Federal Circuit affirmed a finding that patents relating to the pharmaceutical COPAXONE® 40mg/mL were invalid as obvious. The opinion addressed the extent to which claim terms are non-limiting and have no patentable weight where they are “statements of intended effect” as opposed to terms that do not “change the claimed method or require any additional required structure or condition.” The Court also provided a lengthy discussion on when it is proper to use “obvious to try” in an obviousness analysis, ultimately finding that it was obvious to try the 40mg/mL dosing regimen claimed in the patents.

Opinion can be found here.

Yeda Research and Development Co. v. Mylan Pharmaceuticals Inc., Appeal Nos. 2017-1594, -1595, -1596 (Fed. Cir. Oct. 12, 2018)

In a companion case to the Teva case discussed above, the Federal Circuit affirmed PTAB findings in inter partes review that the COPAXONE® 40mg/mL patents were invalid as obvious. At issue was whether a particular reference raised for the first time in a reply brief violated the patent owner’s due process rights. The Federal Circuit held that it did not, because the Patent Owner had the opportunity to develop discovery based on it and to seek to respond to it and chose not to. The Court also affirmed that a particular study was admissible even though it postdated the priority date for the patents. The paper, which detailed a two-year study, was relevant to motivations to try certain dosing regimens during the relevant time period.

Opinion can be found here.

Roche Molecular Systems, Inc. v. Cepheid, Appeal No. 2017-1690 (Fed. Cir. Oct. 9, 2018)

In an appeal from the district court’s summary judgment of invalidity, the Federal Circuit affirmed. The appellate court reviewed patent claims directed to methods for detecting the pathogenic bacterium Mycobacterium tuberculosis (“MTB”), finding that the claims were directed to patent-ineligible subject matter and therefore invalid under 35 U.S.C. § 101.

The Court found that both the composition-of-matter claims for the primers and the process claims for methods for detecting MTB were directed to natural phenomena, analogizing the claims to those found patent ineligible in In re BRCA1- & BRCA2-Based Hereditary Cancer Test Patent Litig., 774 f .3d 755, 760 (Fed. Cir. 2014).

In concurrence, Judge O’Malley cautioned that the Court’s holding in BRCA1 was unduly broad and should be revisited en banc.

Opinion can be found here.

Written by: Scott D. Eads and Nika F. Aldrich, Schwabe Williamson & Wyatt

Contributors: Jason Wrubleski and Angela Addae