Intellectual Property News and Reports

VirnetX Inc. (“VirnetX”) appeals from two final written decisions of the Patent Trial and Appeal Board (“Board”) finding that Apple Inc. (“Apple”) had demonstrated by a preponderance of the evidence that claims 1– 11, 14–25, and 28–30 of U.S. Patent No. 8,504,696 (“the ’696 patent”) were unpatentable as obvious. VirnetX Inc. v. Apple Inc., No. IPR2016-00331 (P.T.A.B. June 22, 2017) (“331 Board Decision”); VirnetX Inc. v. Apple Inc., No. IPR2016-00332 (P.T.A.B. June 22, 2017) (“332 Board Decision”). Because VirnetX is collaterally estopped from relitigating the threshold issue of whether prior art reference RFC 24011 was a printed publication and because VirnetX did not preserve the only remaining issue of whether inter partes review procedures apply retroactively to patents that were filed before Congress enacted the America Invents Act (“AIA”), we affirm.

Download VirnetX Inc. v. Apple Inc.

This case involves the complicated, potential double patenting situation in which the later-filed of two related patents, which share a common specification and effective filing date, expires before the term of the earlier-filed patent due to an intervening change in law by Congress defining a patent’s term. When the patent owner filed for the first patent, the governing law defined the patent term as 17 years from the date the patent issued. When the patent owner filed for its second, related patent, the governing law was amended to define the patent term as expiring 20 years from the patent’s earliest effective filing date. Because of the two patents’ relatively early effective filing date, the change in patent term law caused the second patent to expire earlier than the first patent. The patent owner here concedes that the claimed inventions in the two related patents are obvious variants of each other. The legal question we confront in this appeal is whether the law of obviousness-type double patenting requires a patent owner to cut down the earlier-filed, but later expiring, patent’s statutorily-granted 17-year term so that it expires at the same time as the later-filed, but earlier expiring patent, whose patent term is governed under an intervening statutory scheme of 20 years from that patent’s earliest effective filing date. See 35 U.S.C. § 154(a)(2) (2012).

Novartis Pharmaceuticals Corporation and Novartis AG (collectively, Novartis) appeal the district court’s decision to invalidate U.S. Patent No. 5,665,772 based on obviousness-type double patenting. The invalidating reference, Novartis’s U.S. Patent No. 6,440,990, was filed after, and issued after, but expired before the ’772 patent. Both patents claimed the same priority date. The ’990 patent expired before the ’772 patent because the ’990 patent was filed after the June 8, 1995 effective date of the Uruguay Round Agreements Act of 1994 (URAA), § 532, Pub. L. No. 103-465, 108 Stat. 4809, 4983, and thus expired on September 23, 2013, 20 years from its earliest effective filing date. The ’772 patent, on the other hand, was filed before the effective date of the URAA and— pursuant to the URAA transition statute 35 U.S.C. § 154(c)(1)—expired 17 years from its issuance, on September 9, 2014. Due to a five-year patent term extension (PTE) Novartis was subsequently granted under 35 U.S.C. § 156, the ’772 patent’s term expires on September 9, 2019. And due to the intervening change in law through the implementation of the URAA, the lifespan of the ’772 patent encompasses that of the ’990 patent (even without considering the § 156 five-year term extension).

Applying our decision in Gilead Sciences, Inc. v. Natco Pharma Ltd., 753 F.3d 1208, 1212 (Fed. Cir. 2014), which held that a later-filed but earlier-expiring patent can serve as a double patenting reference for an earlier-filed but later-expiring patent, the district court found the ’990 patent to be a proper double patenting reference for the ’772 patent. Because the parties stipulated to invalidity if the court concluded that the ’990 patent is a double patenting reference to the ’772 patent, the district court found claims 1–3, 7, and 10 of the ’772 patent invalid. We disagree that the ’990 patent is an invalidating reference.

The patents at issue in Gilead were both filed after the effective date of the URAA and claimed different priority dates. 753 F.3d at 1210. Because Gilead’s earlier-filed patent claimed an earlier priority date, despite issuing after the later-filed patent, that earlier-filed patent expired before the later-filed patent. Id. As the district court correctly summarized, we held in Gilead that the expiration date is the benchmark of obviousness-type double patenting. But our opinion was limited to the context of when both patents in question are post-URAA patents. Id. at 1216. Here we have one pre-URAA patent (the ’772 patent) and one post-URAA patent (the ’990 patent), governed by different patent term statutory regimes. Our decision in Gilead thus does not control the present situation. Instead, the correct framework here is to apply the traditional obviousness-type double patenting practices extant in the pre-URAA era to the pre-URAA ’772 patent and look to the ’772 patent’s issuance date as the reference point for obviousness-type double patenting. Under this framework, and because a change in patent term law should not truncate the term statutorily assigned to the pre-URAA ’772 patent, we hold that the ’990 patent is not a proper double patenting reference for the ’772 patent. Accordingly, we reverse.

Download Novartis Pharmaceuticals Corp. v. Breckenridge Pharmaceutical Inc.

This case concerns the interplay between a patent term extension (PTE) granted pursuant to 35 U.S.C. § 156 and the obviousness-type double patenting doctrine. The Delaware District Court concluded that, in accordance with statutory construction principles and as a logical extension of this court’s holding in Merck & Co. v. Hi-Tech Pharmacal Co., 482 F.3d 1317 (Fed. Cir. 2007), obviousness-type double patenting does not invalidate an otherwise validly obtained PTE under § 156. We agree and accordingly affirm.

Download Novartis AG v. Ezra Ventures LLC

Laerdal Medical Corp. and Laerdal Medical AS (collectively, “Laerdal”) appeal from the U.S. International Trade Commission’s final determination denying Laerdal relief based on claims of trade dress infringement against defaulting respondents. Certain Carbon Spine Board, Cervical Collar, CPR Masks and Various Med. Training Manikin Devices, USITC Inv. No. 337-TA-1008 (June 14, 2017). After instituting an investigation during which the named parties failed to participate and were deemed to be in default, the Commission concluded that Laerdal’s trade dress allegations had not been adequately pleaded, and therefore, denied Laerdal any remedy against the named parties.

We conclude that the Commission erred in reassessing the sufficiency of Laerdal’s complaint against defaulting respondents post-institution and in failing to assess the appropriate remedy to impose under the circumstances. We, therefore, reverse the Commission’s determination as to Laerdal’s trade dress claims and vacate and remand for the Commission to determine the proper remedy.

Download Laerdal Medical Corp. v. International Trade Commission

Defendant ReDigi, Inc. and its founders, Defendants Larry Rudolph and John Ossenmacher,1 8 appeal from the judgment of the United States District Court for the Southern District of New York (Richard J. Sullivan, J.) in favor of Plaintiffs, Capitol Records, LLC, Capitol Christian Music Group, Inc., and Virgin Records IR Holdings, Inc. (“Plaintiffs”), finding copyright infringement. Defendants had created an Internet platform designed to enable the lawful resale, under the first sale doctrine, of lawfully purchased digital music files, and had hosted resales of such files on the platform. The district court concluded that, notwithstanding the “first sale” doctrine, codified in the Copyright Act of 1976, 17 U.S.C. § 109(a), ReDigi’s Internet system version 1.0 infringed the Plaintiffs’ copyrights by enabling the resale of such digital files containing sound recordings of Plaintiffs’ copyrighted music. We agree with the district court that ReDigi infringed the Plaintiffs’ exclusive rights under 17 U.S.C. § 106(1) to reproduce their copyrighted works. We make no decision whether ReDigi also infringed the Plaintiffs’ exclusive rights under 17 U.S.C. § 106(3) to distribute their works.

Download Capitol Records LLC v. ReDigi Inc.