Delaware Valley Floral Group, Inc. v. Shaw Rose Nets, LLC, 597 F.3d 1374 (Fed. Cir. 2010) (PROST, Bryson & Linn) DelawareValleyFloral03112010
MAJOR ISSUES: on sale bar; inventor testimony on date of first sale of invention Read CPLRG 0034
Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325 (Fed. Cir. 2010) (LINN, Michel & Plager), rehearing and rehearing en banc denied, 605 F.3d 1347 (Fed. Cir. 2010) (PLAGER, dissenting from denial of panel rehearing) EnzoBiochem03242010
MAJOR ISSUES: definiteness of claim language; biotechnology; nucelic acid labeling and detection; “substantially interfere”; summary judgment on invalidity by anticipation; prior art references; claim interpretation; claim differentiation Read CPLRG 0037
Federal Trade Commission v. Actavis, Inc., 133 S. Ct. 2223 (2013) (Breyer; Roberts, dissenting). For the Court’s slip opinion, click here.FTCActivis06172013
Actavis arose when the Federal Trade Commission filed suit, asserting that a “reverse payment settlement agreement” of a patent infringement suit between a drug patent owner and a generic maker violated the antitrust laws.
EXAMPLE OF “REVERSE PAYMENT SETTLEMENT.” The Court provided a simple hypothetical of a reverse payment settlement as follows:
“Company A sues Company B for patent infringement. The two companies settle under terms that require (1) Company B, the claimed infringer,not to produce the patented product until the patent’s term expires, and (2) Company A, the patentee, to pay B many millions of dollars. Because the settlement requires the patentee to pay the alleged infringer, rather than the other way around, this kind of settlement agreement is often called a `reverse payment’ settlement agreement.”
The Court noted that “the basic question here is whether such an agreement can sometimes unreasonably diminish competition in violation of the antitrust laws. See, e.g., 15 U.S.C. §1 (Sherman Act prohibition of `restraint[s] of trade or commerce’). Cf. Palmer v. BRG of Ga., Inc., 498 U.S. 46 (1990) (per curiam) (invalidating agreement not to compete).”
The Eleventh Circuit held that the agreement in question was ” `immune from antitrust attack so long as its anticompetitive effects fall within the scope of the exclusionary potential of the patent.’ FTC v. Watson Pharms., Inc., 677 F.3d 1298, 1312 (2012).”
The Court held that the Eleventh Circuit erred. Instead of immunity, a rule of reason approach applies. Read CPLRG 0086
Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060 (2011) (ALITO, Roberts, Scalia, Thomas, Ginsburg, Breyer, Sotomayor, Kagan) GlobalTech.05312011.ussc
MAJOR ISSUES: active inducement of infringement; Section 271(b); knowledge of patent; willful blindness as knowledge
COMMENTS: Section 271(b) imposes liability on those who actively induce infringement. The statute and its sister provision on contributory infringement, Section 271(c), impose liability for “indirect” infringement, that is, for acts of causing another to commit direct infringement by unauthorized making, selling, etc. As has long been recognized, the two statutes are ambiguous on what level of knowledge and intent an accused indirect infringer must have.
In Global Tech, the Supreme Court confirms that (1) there is a requirement that an indirect infringer have knowledge of the patent in question, (2) the knowledge requirement may be met by a showing of “willful blindness, but (3) the Federal Circuit erred by adopting a standard of “deliberate indifference to a known risk.
As discussed below, in Global-Tech, the Supreme Court did not address the difficult questions that arise when an accused inducer clearly knows of a patent, knows of the patent owner’s accusation of infringement, but believes that there is no infringement. For example, the accused inducer may rely on an opinion of counsel that the patent’s claims are invalid or that the infringement accusation is based on an unsupportably broad interpretation of the claims. As of June 2011, Federal Circuit and district court decisions do impose an “intent” requirement and have upheld findings of no liability when an accused inducer believed in good faith that there was no infringement. The issue may be reevaluated by the courts in the future.
CROSS REFERENCES: On active inducement, see Chisum on Patents § 17.04. For case law, see Chisum Patent Law Digest § 5115. Read CPLRG 0067
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