In Myco Industries, Inc. v. Blephex. LLC, [2019-2374] (April 3, 2020), the Federal Circuit reversed the district court’s preliminary injunction enjoining BlephEx from making allegations of patent infringement and also from threatening litigation against Myco’s potential customers over U.S. Patent No. 9,039,718, entitled “Method and Device for Treating an Ocular Disorder,”

The Federal Circuit said that when a preliminary injunction prevents a patentee from communicating its patent rights, a court applies federal patent law and precedent relating to the giving of notice of patent rights. In such cases, the grant of a preliminary injunction is reviewed in the context of whether, under applicable federal law, the notice of patent rights was properly given. The Federal Circuit further said that federal law requires a showing of bad faith before a patentee can be enjoined from communicating his patent rights. A showing of “bad faith” must be supported by a finding that the claims asserted were objectively baseless, and an asserted claim is objectively baseless if no reasonable litigant could realistically expect success on the merits.

The Federal Circuit concluded that the district court abused its discretion when it granted a preliminary injunction enjoining patentee speech with-out a finding of bad faith. The Federal Circuit said that although a district court’s discretion to enter a preliminary injunction is entitled to substantial deference, the patent laws permit a patentee to inform a potential infringer of the existence of its patent. The Federal Circuit found that the district court neither made a finding of bad faith nor even adverted to the requirement. The Federal Circuit added that to the extent the district court made any factual findings relevant to bad faith, the court expressly declined to find that any of BlephEx’s statements were either false or misleading.

The Federal Circuit rejected Myco’s argument that it would be bad faith to accuse physicians with infringement in view of 35 U.S.C. § 287(c)(1), but the Federal Circuit said the statute did not make physicians “immune from infringement,” it merely prevents the patent owner from seeking a remedy. Further, the District Court found no evidence that any threats were made.

Finally the Federal Circuit vacated the finding that Myco was likely to succeed on the merits, finding several lapses in the district court’s efforts at claim construction.

The Federal Circuit concluded:

Speech is not to be enjoined lightly. Here, there is not even a finding, let alone a finding supported by evidence and a correct view of the law, that the speech restrained was either false or misleading. The district court abused its discretion when it granted a preliminary injunction en-joining BlephEx from making allegations of patent infringement without a finding of bad faith and with no adequate basis to conclude that allegations of patent infringement would be false or misleading.

Even though 2020 is a leap year, there will be no leap patents this year because patents only issue on Tuesdays, and February 29 is a Saturday. The last leap patent issued February 29, 2000, and our next opportunity for a leap patent will not occur until February 29, 2028.

Leap patents also issued in 1972, 1944, 1916, and 1876.

In Cheetah Omni LLC v. AT&T Services, Inc., [2019-1264] (February 6, 2020) the Federal Circuit affirmed the dismissal of claims for infringement of U.S. Patent No. 7,522,836.

AT&T (and its supplier Ciena) moved for summary judgment that Cheetah’s infringement claim was barred by agreements settling previous litigation between Cheetah and Ciena involving U.S. Patent No. 7,339,714 the patent-in-suit’s “Aunt”.

To dispose of the previous litigation, Cheetah granted to Ciena “a perpetual, irrevocable, worldwide, non-exclusive, fully paid-up license under the Licensed Patents to make, have made (directly or indirectly and solely for Ciena or its Affiliates), use, offer to sell, sell, and import and export the Licensed Products.” “Licensed Patents” were defined as:

(i) the Patents-in-Suit, and (ii) all parents, provisionals, substitutes, renewals, continuations, continuations-in-part, divisionals, foreign counterparts, reissues, oppositions, continued examinations, reexaminations, and extensions of the Patents-in-Suit owned by, filed by, assigned to or otherwise controlled by or enforceable by Cheetah or any of its Affiliates or its or their respective successors in interest at any time as of, prior to, on or after the Effective Date, whether filed before, on or after the Effective Date.

Relying on General Protecht Group Inc. v. Leviton Manufacturing Co., 651 F.3d 1355, 1361 (Fed. Cir. 2011), the district court determined that the ’836 patent was impliedly licensed as the grandchild of the expressly licensed ’925 patent of the ‘714 patent. The Federal Circuit agreed, noting that the presumption established in General Protecht provided a simple and clear resolution in the case. Because the ’925 patent was expressly licensed, the license also included an implied license to a continuation of its continuation, the ’836 patent-in-suit.

Because the licenses extend to both the ’836 patent and the accused AT&T products the district court properly granted summary judgment for AT&T and Ciena and dismissed the infringement suit.

In Amgen Inc. v. Hospira, Inc., [2019-1067, 2019-1102](December 16, 2019), the Federal Circuit affirmed the district court’s determination that Amgen’s U.S. Patent No. 5,856,298 was infringed and not invalid; fourteen batches of Hospira’s erythropoietin biosimilar drug product were not covered by the Safe Harbor provision of 35 U.S.C. § 271(e)(1); Amgen had proven it was entitled to $70 million in damages; denying Amgen motion for judgment as a matter of law that Amgen’s U.S. Patent No. 5,756,349 was infringed.

After substantial evidence supporting the validity and infringement of the ‘298 patent, the Federal Circuit turned to the safe harbor provisions of 35 U.S.C. § 271(e)(1). The instruction to the jury said that “If Hospira has proved that the manufacture of a particular batch was reasonably related to developing and submitting information to the FDA in order to obtain FDA approval, Hospira’s additional underlying purposes for the manufacture and use of that batch do not remove that batch from the Safe Harbor defense.” Hospira complained that this improperly focused on Hospira’s intent for manufacturing batches of EPO.

The Federal Circuit disagreed, finding that the jury instructions properly articulated the legal principles underlying the Safe Harbor inquiry. Section 271(e)(1)’s exemption from infringement extends to all uses of patented inventions that are reasonably related to the development and submission of any information under the FDCA. The Federal Circuit said that relevant inquiry, therefore, is not how Hospira used each batch it manufactured, but whether each act of manufacture was for uses reasonably related to submitting information to the FDA.2 The jury instructions properly asked whether each act of manufacture, that is, each accused activity, was for uses reasonably related to submitting information to the FDA. The Federal Circuit added that contrary to Hospira’s contentions, the instructions struck the appropriate balance by telling the jury that Hospira’s additional underlying purposes do not matter as long as Hospira proved that the manufacture of any given batch of drug substance was reasonably related to developing information for FDA submission.

Hospira argued that no reasonable jury could find that some of the batches it made were protected by the safe harbor, while some were not. However the Federal Circuit found that substantial evidence supported the jury’s finding that the batches at issue were not manufactured “solely for uses reasonably related to the development and submission of information” to the FDA. There was testimony that Hospira was not required to manufacture additional batches after it made its initial batches. There was also testimony that stability testing was not required but would be part of a “continuing program for stability that is a postapproval commitment.

On the issue of damages, Hospira argued that its Daubert motion to disqualify Amgen’s damages expert should have been granted. However, the Federal Circuit found no reversible error, noting that the district court permitted Hospira to cross-examine Amgen’s expert and to present the testimony of its own damages expert, and make the very arguments it was now raising on appeal. The Federal Circuit said it was not unreasonable for the jury to choose a damages award within the amounts proposed by each expert, and affirm the district court’s denial of Hospira’s JMOL motion.

Lastly, the Federal Circuit agreed that the finding of non infringement of ‘349 patent was supported by substantial evidence.

In Peter v. Nantkwest, Inc., — US — (2019), the Supreme Court, citing the bedrock principle known as the “American Rule” that each litigant pays his own attorney’s fees, win or lose, unless a statute or contract provides otherwise, held that the PTO could not recoup its attorneys fees under §145 from an applicant who challenges a final rejection in district court.

The decision is a relief to all applicants, because it leaves a civil action as a viable remedy to an improper final rejection. But it still leaves applicants liable for the PTO’s “expenses of the proceedings,” win or lose. It is a little galling to have to pay the PTO’s “expenses” in unsuccessfully defending an improper rejection, but that is an issue to take up with Congress, not the courts.

Resort to the courts when one believes that the government has screwed up is an important remedy that keeps the system in balance. The Supreme Court’s decision maintains that balance, preserving the availability of court challenges of incorrect decisions by the examining corps. 

The use of trademarks in patent claims was previously discussed here. Trademarks continue to be used in patent claims, despite the potential for problems, not doubt because the trademark was seen as the best way to properly claim the invention. There is of course the concern that a trademark is indefinite, because the product can be changed at any time by the trademark owner. However changing meaning is a condition that can afflict any word in a claim, not just trademarks, granted changing meaning it is more likely with a trademark because it requires the action of a single person or entity, while changing the meaning of the work requires consensus.

Here are examples of trademarks recently used in patent claims:

AEROSIL– 10,154,954 (claim 2)

Android – 10,417,998 (claim 6), 10,417,008 (claim 6), 10,331,433 (claim 4).

ARSENSA – 10,154,954  (Claim 2)

Bluetooth – 10,420,011 (claim 9), 10,419,592 (claim 1), 10,365,866 (claim 10), 10,341,313 (claim 4), 10,321,516 (claim 6), 10,285,041 (claim 2), 10,027,169 (claim 7), 10,026,018 (claim 5), 9,998,996 (claim 7, 14), 9,955,515 (claim 8), 9,930,669 (claim 1), 9,912,794 (claim 1), 10,129,431 (claim 7, 16), 10,123,333 (claim 3, 14, 28), 10,019,852 (claims 2, 9,16), 9,980,059 (claims 1, 12, 23).

EPO-TEK – 10,330,233 (claim 17)

ETHERNET – 10,303,160 (claim 3,8)

Felica – 10,126,703 (claim 13)

Inconel – 10,392,728 (claim 10)

JAVA – 9,930,201 (claim 1)

JavaScript – 10,365,868 (claim 7)

Java Virtual Machine – 9,727,374 (claim 6)

Kahoot! 10,026,331 (claim 1)

KOVAR – 10,139,700 (claim 3)

Linux – 10,417,998 (claim 5), 10,417,008 (claim 5).

MIFARE – 10,126,703 (claim 13)

Monel – 10,392,728 (claim 10)

TRITON X – 10,254,276 (claim 5)

TWEEN – 10,254,276 (claim 5)

PARLEAM – 10,154,954 (claim 2)

QR Code – 10,223,625 (claim 5), 9,940,565 (claims 7, 10).

RLSA – 10,190,217 (claim 3), 10,017,853 (claim 7, 8)

SOFTISAN – 10,154,954 (claim 2)

VELCRO – 10,151,558  (claims 4, 7)

Vespel – 10,047,863 (claim 20)

VITRALI – 10,330,233 (claim 16)

Wi-Fi – 10,244,055 (claim 11), 10,044,903 (claims 6, 18), 10,129,431 (claims 6, 8, 17).

Wi-Fi Direct – 10,416,941 (claim 8), 10,342,071 (claim 12), 9,942,759 (claim 6).

Windows – 10,275,192 (claim 9).

ZIRCON – 10,240,814 (claims 1, 2, 9)

ZYLON – 10,201,999 (claim 8, 18)

Additional examples are relatively easy to find by search for the word trademark in the text of the claims, or searching for the R-in-the-circle symbol “.RTM.”

Although the meaning of a trademark can change over time, this is apparently understood by those of ordinary skill in the art, and rarely if ever is it necessary to specify that the meaning is determined “as of the filing date.”

A number of patents mention Labor Day, most of these relate to calendars or calendar-based games.

The as of last Tuesday, August 20, 2019, the USPTO issued U.S. Patent 10,390,470. That would seem to be the answer. A patent nerd would remember, however, that before patents were numbered about 9,957 patents — called the X patents — issued. A serious patent nerd would further know that as of August 20, 2019, for one reason or another, more than 48721 numbers did not correspond to issued patents. An uber patent nerd would know about factional patents, patents with fractional numbers issued between patents with whole numbers. There are at least four fractional patents in the era when patents were numbered.

So as of August 20, and until the next batch on August 27, the number may be 10,351,710.