Patent Law Year in Review | A Look Back at 2017 and Ahead to 2018

204 Pages·2017·4.17 MB·English

Patent Law Year in Review
A Look Back at 2017 and Ahead to 2018
January 17, 2018
Patent Law Year in Review
Agenda

7:55 a.m. – 8:00 a.m. Introduction
8:00 a.m. – 8:50 a.m. Federal Circuit Decisions
8:50 a.m. – 9:30 a.m. Supreme Court – A Look Back and a Look Ahead
9:30 a.m. – 9:40 a.m. Break
9:40 a.m. – 10:10 a.m. Patent Venue
10:10 a.m. – 10:50 a.m. Patentable Subject Matter
10:50 a.m. – 11:00 a.m. Break
11:00 a.m. – 11:50 a.m. Developments from PTAB Practice
11:50 a.m. – 12:05 p.m. Lunch is served
12:05 p.m. – 1:05 p.m. A Synopsis of the Year in Ethics
Patent Law Year in Review
Table of Contents

Presentation Slides
Developments at the Federal Circuit ...................................................................... Tab 1A
Ewa Davison, Phil Haack
Supreme Court Review ........................................................................................... Tab 1B
Michael Sacksteder
Patent Venue .......................................................................................................... Tab 1C
Bryan Kohm, Melanie Mayer
Patentable Subject Matter ...................................................................................... Tab 1D
Greg Hopewell, Ravi Ranganath
Developments from PTAB Practice .......................................................................... Tab 1E
Darren Donnelly, Jennifer R. Bush
A Review of Ethics-Related Decisions ...................................................................... Tab 1F
Virginia DeMarchi, Jessica Kaempf

Table of Cases ........................................................................................................................ Tab 2

Related Articles ..................................................................................................................... Tab 3

Speaker Biographies .............................................................................................................. Tab 4

Your Seminar Notes ............................................................................................................... Tab 5
1/16/2018
Developments at
the Federal Circuit
Phillip Haack and Ewa Davison, Ph.D.
Obviousness: Are secondary
indicia … secondary?
Phil Haack
1
1/16/2018
Merck Sharp & Dohme Corp. v. Hospira, Inc.
874 F.3d 724 (Fed. Cir. 2017)
• Merck sued Hospirafor infringement.
• After a bench trial, the district court found one of the patents invalid
as obvious because the claimed steps could have been discovered
by routine experimentation.
• Merck appealed the obviousness determination.
FENWICK & WEST | PATENT LAW YEAR IN REVIEW JANUARY 17, 2018 2
Merck Sharp & Dohme Corp. v. Hospira, Inc.
874 F.3d 724 (Fed. Cir. 2017)
• The panel majority (Judges Lourie and Hughes) affirmed.
• The claimed process recited “experimental details that one of ordinary
skill would have utilized via routine experimentation, armed with the
principles disclosed in the prior art.”
• The claimed “solution” was “nothing more than conventional
manufacturing steps that implement principles disclosed in the prior
art.”
FENWICK & WEST | PATENT LAW YEAR IN REVIEW JANUARY 17, 2018 3
2
1/16/2018
Merck Sharp & Dohme Corp. v. Hospira, Inc.
874 F.3d 724 (Fed. Cir. 2017)
Secondary considerations?
• Majority faulted the district court for not considering commercial
success evidence
• BUT found no clear error.
• The majority agreed that Merck’s evidence of commercial success
and copying did not overcome the competing evidence of
obviousness.
FENWICK & WEST | PATENT LAW YEAR IN REVIEW JANUARY 17, 2018 4
Merck Sharp & Dohme Corp. v. Hospira, Inc.
874 F.3d 724 (Fed. Cir. 2017)
• Judge Newman dissented, arguing the majority and district court
improperly “converted three of the four Grahamfactors into a self-
standing ‘prima facie’ case, whereby the objective considerations
must achieve rebuttal weight.”
• “It is time to restore [the] salutary rigor” of Graham v. John Deere
Co., 383 U.S. 1 (1966).
FENWICK & WEST | PATENT LAW YEAR IN REVIEW JANUARY 17, 2018 5
3
1/16/2018
J. Newman: objective indicia of nonobviousness
are not “secondary”
• Judge Newman’s view of “secondary considerations”:
• Allof the Graham factors* should be considered and should be
particularly considered with regard to their effect on the analysis of the
other factors.
• And the Supreme Court reiterated this support in KSR International Co.
v. Teleflex Inc., 550 U.S. 398(2007), where it listed the four Graham
factors and stated “[w]hilethe sequence of these questions might be
reordered in any particular case, the factors define the controlling
inquiry.”
* (1) the scope and content of the prior art;
(2) the differences between the claimed invention and the prior art;
(3) the level of ordinary skill in the field of the invention; and
(4) objective (“secondary”) considerations such as commercial success, failure of others, and long-felt need.
FENWICK & WEST | PATENT LAW YEAR IN REVIEW JANUARY 17, 2018 6
J. Newman: objective indicia of nonobviousness
are not “secondary”
• Many cases consign the fourth factor to a secondary role:
• “[T]he secondary consideration evidence did not overcome the showing of
obviousness…”Cubist Pharm., Inc. v. Hospira, Inc., 805 F.3d 1112, 1130 (Fed. Cir.
2015).
• “[T]he district court properly discounted the evidence of commercial success as a
secondary consideration rebutting Cadbury’s showing that the claimed invention
would have been obvious.” Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683
F.3d 1356, 1364 (Fed. Cir. 2012).
• “Because … the Defendants failed to prove [the claim] would have been prima
facie obvious over the asserted prior art compounds, we need not address the
court’s findings regarding objective evidence of nonobviousness.” Otsuka Pharm.
Co. v. Sandoz, Inc., 678 F.3d 1280, 1296 (Fed. Cir. 2012).
• “A nonmovantmay rebut a prima facie showing of obviousness with objective
indicia of nonobviousness.” OrmcoCorp. v. Align Tech., Inc., 463 F.3d 1299, 1311
(Fed. Cir. 2006).
FENWICK & WEST | PATENT LAW YEAR IN REVIEW JANUARY 17, 2018 7
4
1/16/2018
J. Newman: objective indicia of nonobviousness
are not “secondary”
• Many cases consign the fourth factor to a secondary role:
• “[T]he secondary consideration evidence did not overcome the showing of
obviousness…”Cubist Pharm., Inc. v. Hospira, Inc., 805 F.3d 1112, 1130 (Fed. Cir.
2015). (Bryson with Wallach, Hughes)
• “[T]he district court properly discounted the evidence of commercial success as a
secondary consideration rebutting Cadbury’s showing that the claimed invention
would have been obvious.” Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683
F.3d 1356, 1364 (Fed. Cir. 2012). (Bryson with Newman (dissenting-in-part))
• “Because … the Defendants failed to prove [the claim] would have been prima
facie obvious over the asserted prior art compounds, we need not address the
court’s findings regarding objective evidence of nonobviousness.” Otsuka Pharm.
Co. v. Sandoz, Inc., 678 F.3d 1280, 1296 (Fed. Cir. 2012) (Lourie, with Moore,
Reyna)
• “A nonmovantmay rebut a prima facie showing of obviousness with objective
indicia of nonobviousness.” OrmcoCorp. v. Align Tech., Inc., 463 F.3d 1299, 1311
(Fed. Cir. 2006) (Dykwith Schall, Gajarsa)
FENWICK & WEST | PATENT LAW YEAR IN REVIEW JANUARY 17, 2018 8
J. Newman: objective indicia of nonobviousness
are not “secondary”
“It is time to restore conformity to precedent, in the interest of stability
of practice and procedure, and predictability and fairness of result. I
would reestablish the proper analytic criteria under the four Graham
factors, and would remand to the district court to apply the correct
law.”
“[I]t is incorrect to consign the objective evidence to rebuttal against
the other three Graham factors.”
FENWICK & WEST | PATENT LAW YEAR IN REVIEW JANUARY 17, 2018 9
5
1/16/2018
An Ally in Judge Reyna?
• In Intercontinental Great Brands LLC v. Kellogg North America Co.,
869 F.3d 1336 (Fed. Cir. 2017), a panel majority of Judges Prost and
Taranto upheld a finding of obviousness.
• “In sum, the primary considerations lead to a conclusion that the
invention was obvious in light of the prior art, and [Intercontinental’s]
strong showing of secondary considerations does not outweigh this
determination.”
FENWICK & WEST | PATENT LAW YEAR IN REVIEW JANUARY 17, 2018 10
An Ally in Judge Reyna?
• Judge Reyna dissented for the same reasons as Judge Newman in
Merck Sharp & Dohme Corp:
• “For too long, this court has turned a blind eye to what I consider to be
a grave concern: the application of a prima facie test that necessarily
achieves a legal determination of obviousness prior to full and fair
consideration of evidence of objective indicia of non-obviousness.”
• “To be clear, nothing in Graham or KSR requires courts to analyze the
first three Graham factors first, make a prima facie determination of
obviousness, and only then examine objective indicia of non-
obviousness. Such a prima facie framework excludes objective indicia in
the primary analysis and artificially creates a heightened standard of
proof for objective indicia.”
FENWICK & WEST | PATENT LAW YEAR IN REVIEW JANUARY 17, 2018 11
6
1/16/2018
Some Practical Issues
• How to structure invalidity arguments?
• Treating objective indicia as first-order requirement is the safest bet.
• Minimize objective indicia evidence as not moving the needle in light of
other strong arguments without reciting the standard as a two-step
process.
FENWICK & WEST | PATENT LAW YEAR IN REVIEW JANUARY 17, 2018 12
Claim construction: what does
O2 Micro really require?
Phil Haack
7