Fresh From the Bench: Latest Precedential Patent Cases
CASE OF THE WEEK
Allergan USA, Inc. v. MSN Laboratories Private Ltd., Appeal No. 2024-1061 (Fed. Cir. August 13, 2024)
In this week’s Case of the Week, the Federal Circuit clarifies rules relating to when an applicant’s patent can be used for an obviousness-type double patenting (ODP) rejection for another of the applicant’s patent applications. Ultimately, the Federal Circuit held that a first-filed, first-issued, later-expiring claim cannot be invalidated under ODP by a later-filed, later-issued, but earlier-expiring patent with a shared priority date. Here, the Federal Circuit reversed the District Court’s holding that claim 40 of plaintiffs-appellant Allergan’s US Patent 7,741,356 was invalid under ODP, and that four other of Allergan’s patents were invalid for lack of written description.
The patents at issue cover the drug Viberzi®, used for treating irritable bowel syndrome, and marketed and sold by Allergan. Defendants-appellees Sun contended that the claims of the ’356 patent covering the drug were invalid or would not be infringed by Sun’s generic product when Sun submitted an Abbreviated New Drug Application (ANDA) for a generic version of the drug. Allergan sued Sun for infringing a claim of the ’356 patent and, eventually added complaints for Sun’s infringement of claims of other Allergan patents.
ALSO THIS WEEK
Platinum Optics Technology Inc. v. Viavi Solutions Inc., Appeal No. 2023-1227 (Fed. Cir. Aug. 16, 2024)
In an appeal from the Patent Trial and Appeal Board, the Federal Circuit addressed the issue of a patent challenger’s standing to appeal an adverse inter partes review ruling where the challenger’s potential infringement liability is in doubt. The case concerned a patent owned by appellee Viavi directed to optical filters comprised of hydrogenated silicon that the Board had upheld as patentable following a challenge by appellant Platinum Optics. Read more
Celanese International Corporation v. ITC, Appeal No. 2022-1827 (Fed. Cir. Aug. 12, 2024)
The Federal Circuit affirmed a decision of the International Trade Commission holding that patents on methods of manufacturing acesulfame potassium or “Ace-K”—an artificial sweetener used in products such as Equal and Coke Zero—were invalid under the “on-sale” bar of 35 U.S.C. § 102(a)(1).
It was undisputed that the claimed process had been in secret use in Europe to manufacture Ace-K sold in the United States since before the patents’ critical date, which under longstanding Federal Circuit and Supreme Court case law would operate as a bar to patentability for either the process or the product. However, patentee Celanese argued that enactment of the American Invents Act (AIA) in 2011 had changed the scope of the “on sale” bar such that non-public use of a method could not operate as invalidating prior art.
Editors:
Nika Aldrich, IP Litigation Group Leader, Schwabe
Jason A. Wrubleski, Shareholder
Contributors:
Ann Bernert, Associate
Brittani Gambrell, Associate