IP Newsflash

In a case it described as “‘a prime example’ of when ODP does not apply,” the Federal Circuit recently reversed a decision from the District of Delaware that invalidated a claim for obviousness-type double patenting (ODP), holding that a first-filed, first-issued, later-expiring claim cannot be invalidated for ODP based on a later-filed, later-issued, but earlier-expiring claim from the same family. In so doing, the court answered the question of whether a later-filed, later-issued patent in the same family can be an ODP reference against the first application in the family—it cannot. The court also clarified the scope of its prior ruling in In re Cellect, explaining that case answered a different question—the question of what expiration date should be used for an ODP analysis.

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.

In keeping with precedent, a judge in the District of Delaware issued an oral order restricting the extent of permissible activities for litigation counsel before the Patent Trial and Appeal Board. The order resolved a protective order dispute over the proper scope of a patent prosecution bar, concluding that litigation counsel that had access to confidential information is restricted from participating in the motion to amend process in an IPR.

Federal Circuit Judge William Bryson, sitting by designation in the District of Delaware, ruled on summary judgment that inter partes review (IPR) estoppel does not apply to device art, even if the device is cumulative of patents or printed publications that were, or could have been, asserted in an IPR.

The District of Delaware recently held that evidence addressing a lack of non-infringing alternatives from the perspective of the market as a whole, as opposed to customer-by-customer, may suffice when the market includes only two players—the patentee and the accused infringer.

Judge Williams in the District of Delaware recently granted a motion to dismiss the complaint because the patents-in-suit claim ineligible subject matter under 35 U.S.C. § 101. The patents are directed to using and training machine learning models for generating network maps (or television schedules) and optimizing event schedules. The court found the claims invalid because they recite the abstract ideas of producing network maps and event schedules using generic mathematical techniques.

On remand from the Federal Circuit following an appeal and petition for cert to the Supreme Court, the District of Delaware considered whether the claims remaining in dispute in American Axle v. Neapco were invalid for failing to claim patent eligible subject matter. In this latest iteration, the district court found, as a matter of law, that the claims were not directed to an abstract idea and granted summary judgment in American Axle’s favor.

In an ANDA case in the District of Delaware, the court has rejected an obviousness challenge to a patented method of increasing survival in patients having prostate cancer. The court found that early clinical trial results and an ongoing Phase III study provided “hope” that the method would work, but not a reasonable expectation of success.