IP Newsflash

A court in the Western District of Oklahoma dismissed a complaint as to one of the asserted patents where the patent included a terminal disclaimer stating that the patent would be enforceable only as long as it was co-owned with a reference patent that the PTO had misidentified. The court relied on the public notice function of the patent system to hold the plaintiff to the exact language in its terminal disclaimer, and held that the asserted patent was unenforceable from the moment it issued because it and the reference patent were never co-owned.

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 District of Delaware granted-in-part Shopify’s motion for judgment as a matter of law, or alternatively a new trial, citing gaps in the evidentiary record resulting in an insufficient basis for the jury verdict of infringement. 

In a patent infringement case, the district court granted plaintiff’s motion to strike portions of defendant’s technical expert’s rebuttal report on the basis that defendant failed to timely disclose non-infringing alternatives earlier in the case. In reaching this decision, the court found that a theory of non-infringing alternatives is akin to an affirmative defense, and therefore a defendant cannot wait until rebuttal to disclose that theory.

A divided panel of the Federal Circuit affirmed a district court’s grant of summary judgment of noninfringement, holding that importation of two product samples into the U.S. was reasonably related to obtaining FDA approval based on the particular facts of this case. In dissent, Judge Lourie disagreed, suggesting that summary judgment was not appropriate where factual disputes existed as to whether the importation was “solely” for purposes related to FDA approval.

In a Hatch-Waxman case, the District Court for the District of New Jersey recently found that a generic label that included an allegedly infringing permissive use did not induce infringement where the label cautioned against that use and provided non-infringing alternatives. The district court additionally found no direct infringement where the patentee failed to present evidence that the claimed methods had ever been practiced or that infringement is likely to occur in the future.

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.