IP Newsflash

The Central District of California ruled that the heightened pleading standard of Federal Rule of Civil Procedure 9(b) applies to all three prongs of a false patent marking claim, including the third prong, competitive injury. In doing so, took a clear stand on an issue with a nationwide split among district courts.

In Kyocera Senco Industrial Tools Inc. v. International Trade Commission, the Federal Circuit held that an expert must meet the definition of a “person of ordinary skill in the art” of the asserted patents in order to opine on infringement, among other issues. This new bright-line test and the underlying rationale, however, raised several new questions regarding expert admissibility. See “Federal Circuit: Narrow Definition of Skill in the Art Dooms Expert’s Testimony” and “Grappling With A Bright-Line Patent Expert Admissibility Test.” The Federal Circuit recently addressed one of those questions, namely whether an expert must have acquired the requisite level of skill as of the time of the invention or whether it is sufficient for an expert to acquire that knowledge at a later date.

The Federal Circuit reversed a decision from the District of Delaware dismissing a case for failing to plead induced infringement because the totality of the evidence raised fact questions that could not be resolved on a motion to dismiss. The Federal Circuit expressed doubts about whether appellee’s FDA-approved label alone, which carved out the claimed indication, was sufficient to actively induce. But the court held appellee’s label combined with its public statements that broadly refer to its drug as a generic version and provide usage and sales data for carved out indications, created a plausible basis for pleading induced infringement.

The Federal Circuit recently vacated a PTAB decision that claims of an “e-cigarette” patent were unpatentable for lack of written description under 35 U.S.C. § 112. The question on appeal was whether a claimed range was adequately supported by the disclosure of broader ranges. In this case, the answer was “yes.”

The Federal Circuit held that a subcontractor’s receipt of retroactive payment from a government grant brought the subcontractor’s work under Bayh-Dole even though the work was performed before the contract was entered into. In so doing, the Federal Circuit determined that the government had a license to the patent at issue because the invention was actually reduced to practice by individuals who were later paid for the work under a subcontract of an NIH grant.

Southern District of New York Judge Colleen McMahon recently denied a plaintiff’s request to apply post-grant review (PGR) estoppel to two prior art references asserted by the defendant. In doing so, Judge McMahon explained that presenting search strings that identify the prior art is insufficient on its own to establish that the prior art “reasonably could have [been] raised” in the PGR.

The Federal Circuit recently affirmed a Rule 12(b)(6) dismissal of patent claims directed to changing the position of components in an image to create the appearance of movement, i.e., animation. The court agreed that the claims are patent ineligible under 35 U.S.C. § 101 because they perform digital animation, an abstract idea, without including any technological improvement to computer functionality.

The Federal Circuit recently affirmed a Rule 12(b)(6) dismissal of patent claims directed to a graphical user interface that seeks to enhance how search results are displayed to a user. The court agreed that the claims are patent ineligible under 35 U.S.C. § 101 because they do nothing more than identify, analyze and present certain data to a user, without disclosing any technical improvement as to how computer applications are used.