Fresh From the Bench: Latest Federal Circuit Court Cases
CASE OF THE WEEK
Athena Diagnostics, Inc. v. Mayo Collaborative Services, LLC, Appeal No. 2017-2508 (Fed. Cir. Feb. 6, 2019)
In an appeal from an order of the United States District Court for the District of Massachusetts, the Federal Circuit affirmed that certain claims of a patent directed to methods for diagnosing neurological disorders were ineligible for patenting under 35 U.S.C. § 101. Specifically, the Court found that the “district court correctly concluded that the claims at issue are directed to a natural law and lack an inventive concept...” The patent covers a method for diagnosing disorders “by detecting antibodies to a protein called muscle specific tyrosine kinase (‘MuSK’).” This is yet another case in which methods for diagnosing diseases have been found patent ineligible, with Mayo as the challenger, following the Supreme Court in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012).
Also this Week
Continental Circuits LLC v. Intel Corporation, Appeal No. 2018-1076 (Fed. Cir. Feb. 8, 2019)
In an appeal from a district court decision, the Federal Circuit reversed on an issue of claim construction. At issue was a process for making electronic devices, and whether or not the process required a “repeated desmear” or only a single desmear. The district court had found that the defendants “had ‘met the exacting standard required’ to read a limitation into the claims,” and held that the claims required a repeated desmear process. The Federal Circuit reversed, finding insufficient evidence of disavowal or disparagement of a single desmear process. The Court found that the “preferred embodiment” was not necessarily limited to a repeated desmear process. The Court also addressed the extent to which process limitations can be read into product claims, citing Andersen Corp. v. Fiber Composites, LLC, 474 f . 3d 1361, 1375 (Fed. Cir. 2007).
The opinion can be found here.
Momenta Pharmaceuticals Inc. v. Bristol-Myers Squibb Company, Appeal No. 2017-1694 (Fed. Cir. Feb. 7, 2019)
The Federal Circuit dismissed an appeal from an inter partes review decision for lack of Article III standing and for mootness. The IPR had upheld all claims of a pharmaceutical patent covering a commercial immunosuppressant, to which Appellant/Petitioner Momenta had been attempting to develop a biosimilar counterpart. During the course of the appeal, Momenta informed the SEC of its termination of an agreement to co-develop the counterpart drug following its failure in Phase I clinical trials. The Court acknowledged a relaxed standing requirement for statutory appeals from administrative decisions, but reiterated that some particularized interest or injury-in-fact is “a hard floor of Article III jurisdiction that cannot be removed by statute.” The Court rejected as speculative Momenta’s argument that it may someday receive royalties if its former partner should resume development activities, and found that Momenta lacked standing to invoke federal appellant jurisdiction. While warning that “[s]tanding and mootness may not be coextensive in all cases,” the Court also found the appeal to be mooted by Momenta’s discontinuance of any potentially infringing activity.
The opinion can be found here.
In re: Google LLC, Appeal No. 2018-152 (Fed. Cir. Feb. 5, 2019)
The Federal Circuit denied Google’s combined petition for panel rehearing and rehearing en banc of the Court’s earlier denial of Google’s petition for writ of mandamus concerning whether venue was appropriate in the Eastern District of Texas. The district court originally held that venue was proper based on the fact that Google owns servers that operate in the district, despite the fact that no Google employee physically interacts with the servers, and the servers were installed by third parties. In its previous denial of Google’s petition for mandamus, the Court noted that it denied the petition in part based on the “many specific details” of Google’s contracts with internet service providers and its “strong control” over the servers. While the panel denying Google’s petition for rehearing here made no comment on the merits, Judge Reyna, in dissent, explained that the implications of this denial could be far-reaching due to the tension between the statute and the “realities of the continued change in the nature of the marketplace and how goods and services are traded.” The dissent also notes that the district court’s holding could be read as yet another expansive reading of § 1400(b), essentially re-establishing nationwide venue in direct conflict with TC Heartland, by standing for the proposition that owning and controlling computer hardware involved in some aspect of company business (e.g., transmitting data) alone is sufficient to establish venue.
The opinion can be found here.
Written by: Scott Eads and Nika Aldrich, Schwabe, Williamson & Wyatt, P.C.
Contributors: Cristin Wagner , Jason Wrubleski , Erin Forbes