Because the ’215 patent application was, according to IGT, “improperly revived,” it anticipated the ’603 patent under 35 U.S.C. § 102(b). The district court found that IGT properly raised its invalidity argument under 35 U.S.C. § 282 and that, alternatively, it could review the PTO’s decision to revive the ’215 patent application under the APA. Concluding that the PTO improperly revived the patent application by using the incorrect standard, the district court found both patents invalid.

The Federal Circuit interpreted § 286 as a damages limitation rather than a statute of limitations, but reasoned that that distinction was irrelevant to whether Petrella precluded a laches defense in the patent context. The Federal Circuit reasoned that in patent law, unlike copyright law, however, Congress had codified a laches defense in 35 U.S.C. § 282(b)(1): (b) Defenses.—The following shall be defenses in any action involving the validity or infringement of a patent and shall be pleaded: (1) Noninfringement, absence of liability for infringement or unenforceability. (2) Invalidity of the patent or any claim in suit on any ground specified in part II as a condition for patentability.

Under that logic, laches could only survive if Congress codified it as a defense in the Patent Act. The majority found that it did.The majority looked to 35 U.S.C. § 282, which sets out the defenses available in a patent suit and found that Congress implicitly codified a laches defense therein as part of the 1952 Patent Act. According to the majority, § 282 does not "enumerate specific defenses" but sets forth categories, such as "absence of liability" and "unenforceability."

ls for the Federal Circuit had not addressed this issue previously. Further, the patent owner cited numerous prior Board decisions that “considered multiple dependent claims independently and declined to make any determination as to the patentability of multiple dependent claims.” The petitioner, on the other hand, cited a string of Federal Circuit cases that address alternatively recited limitations in the body of the claim.Ultimately, none of these Federal Circuit decisions “affirmatively determined that all versions of the multiple dependent claim were unpatentable based on finding that only one version of the multiple dependent claim was unpatentable.” Accordingly, Director Vidal opined that the Federal Circuit had not previously addressed the situation present in this case. Thus, this was an issue of first impression.SEPARATE CONSIDERATION OF PATENTABILITYUpon further consideration, Director Vidal determined that the plain language of 35 U.S.C. § 112, coupled with the language of 35 U.S.C. § 282 and 36 C.F.R. § 1.75(c), clearly supports requiring separate consideration of patentability of alternative dependencies of a multiple dependent claim. This statutory interpretation aligns with the Federal Circuit precedents, legislative history, and USPTO guidelines and practices.First, after a comprehensive review of various statutes addressing the issue, the director found that Section 112 requires separate consideration of patentability of each alternative dependency of a multiple dependent claim. In particular, reading Section 112(5) to “permit the unpatentability of any one of the individual dependent claims . . . would conflict with 35 U.S.C. § 282, which mandates the presumption of the validity of “[e]ach claim of a patent,” even when such claims are dependent on an invalid claim.Neither party identified a judicial or administrative decision squarely addressing the interpretation presented therein.Second, although neither party identified a judicial or administrative case that

l subject matter jurisdiction over petitioner’s state law claim for breach of the patent license agreement?Under Gunn v. Minton, where is the line drawn for federal jurisdiction for a state law Breach of Contract claim for the breach of a patent license? .Cert. petition filed 4/9/18, conference 9/24/18 (full docket here). Petition denied 10/9/18.CAFC Opinion, CAFC ArgumentNew World International, Inc. v. Ford Global Technologies, LLC, No. 18-264Question Presented:Whether jurisdictional defects in a first suit dismissed for lack of personal jurisdiction can be cured in a second suit by alleging facts that were known before the first suit was dismissed but that occurred after the first suit was filed. Cert. petition filed 8/27/18 (full docket here). Petition denied 10/1/18.CAFC Opinion, CAFC ArgumentQueen's University at Kingston v. Samsung Electronics Co., Ltd., No. 18-190Question Presented:A party asserting patent invalidity bears the burden of establishing that the patent is invalid. 35 U.S.C. § 282. This burden includes not only persuasion, but also the initial production of evidence. Microsoft Corp. v. i4i Ltd. P’ship, 564 U.S. 91, 107 (2011).To invalidate, prior art must enable one of ordinary skill to make the claimed invention without undue experimentation. The Federal Circuit does not, however, place the initial burden of producing evidence to establish this element of invalidity on patent challengers. Instead, it requires patent owners to prove that prior art references are not enabled.Procedurally, this approach results in the first evidence concerning enablement being presented by the patent owner after a challenger’s initial showing on the other elements of invalidity during inter partes review proceedings before the Patent Trial and Appeals Board (the “Board”). The Board then permits the challenger to provide evidence of enablement in its reply.The Administrative Procedure Act affords parties to formal adjudications the right “to submit rebuttal evidence . . . as may b

atent after bringing an infringement action, and it files a supplemental complaint, pursuant to Fed. R. Civ. P. 15(d), after acquiring those rights, does the exclusive licensee have prudential standing to proceed with a patent infringement action in only its name, when it did not own all substantial rights in the patent when it originally brought the infringement action?Cert. petition filed 10/29/15, conference 1/15/16. Petition denied 1/19/16.CAFC Opinion, CAFC ArgumentArunachalam v. JPMorgan Chase & Co., No. 15-691Questions Presented:1. Is the Court of Appeals for the Federal Circuit (“CAFC”) permitted to create a new protected class—a giant corporation—to take private property for public use without any compensation to the inventor, an icon of America Invents (who invented Web applications displayed on a Web browser, in ubiquitous use worldwide, from which the giant corporation has financially benefited excessively), by denying the inventor the protections of the Bill of Rights and 35 U.S.C § 282 of the Patent Act, thereby voiding the judgment?2. Whether the CAFC erred in not honoring the law, after abridging liberty rights of a citizen, arbitrarily dismissing the appeal without a hearing or an opening brief or clear and convincing evidence from a giant corporation, depriving the citizen of patent property rights, was the citizen deprived of the protections of 35 U.S.C. § 282 of the Patent Act and the Bill of Rights, thereby voiding the judgment?3. Whether the CAFC erred in not relieving a citizen of a final judgment for misrepresentation by a giant corporation or for any reason that justifies relief for a judge denying the citizen a hearing according to law, depriving the citizen of patent property rights, was Petitioner deprived of the protections of FRCP Rule 60(b)?4. Whether the CAFC erred in abridging a citizen's liberty rights so that she could not address her medical condition to which the CAFC had been given proper notice, exacerbating her illness and arbitrarily dismi

The Supreme Court first established this heightened burden in the 1934 case of Radio Corp. of America v. Radio Engineering Labs, Inc. 293 U.S. 1 (1934). There, the Supreme Court held that invalidation required "clear and cogent evidence" to overturn an issued patent. The Patent Act later codified this heightened burden in 35 U.S.C. § 282, explaining that a patent "shall be presumed valid." Microsoft argued that the Court's settled interpretation of Section 282 was incorrect and that the presumption of validity does not establish the need for "clear and convincing" evidence to invalidate a patent.

U.S. 42, 44 at n.2 (1935).In SCA Hygiene, the Supreme Court relied in part on a similar law versus equity distinction to hold that the equitable defense of laches is not available for patent causes of action brought within the six-year statute of limitation and seeking damages as a legal remedy. SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, 580 U.S. 328, 333-36, 346 (2017) (“Before the separate systems of law and equity were merged in 1938, the ordinary rule was that laches was available only in equity courts. ... This case turns on the application of the defense to a claim for damages, a quintessential legal remedy. We discussed this subject at length in Petrella.” (internal citation and footnote omitted)); see also Petrella v. Metro-Goldwyn-Mayer, Inc., 572 U.S. 663, 686 (2014).It is not entirely unrealistic for a similar argument to be advanced against the unclean hands defense in some future case. There, of course, is a strong textual counterargument is that 35 U.S.C. §282 expressly includes “unenforceability” as a defense to infringement and unclean hands is a form of unenforceability. See, e.g., J.P. Stevens & Co. v. Lex Tex Ltd., Inc., 747 F.2d 1553, 1561-62 (Fed. Cir. 1984) (quoting P.J. Federico, Commentary On The New Act to confirm that §282 includes “equitable defenses such as laches, estoppel and unclean hands”), overruled on other grounds. However, because the Rules of Civil Procedure and the court’s inherent authority provide various legal remedies to address litigation misconduct, there is a question of whether an equitable remedy should remain available in view of the existence of adequate legal remedies. Similarly, the issue of whether the remedy for unclean hands includes preclusion of just equitable relief (as happened in Keystone Driller) versus both legal and equitable relief (as happened in Luv N’ Care) was also not raised, so the Federal Circuit had no need to address that issue. However, it is better to be safe than sorry, and there

Case Name:In re Sugammadex, No. 20-CV-2576 (CCC/LDW), 2023 WL 3966146 (D.N.J. June 13, 2023) (Cecchi, J.) Drug Product and Patent(s)-in-Suit:Bridion® (sugammadex sodium); U.S. Patent No. RE44,733 (“the ’733 patent”)Nature of the Case and Issue(s) Presented: In Merck’s consolidated action against various ANDA filers, the court took up one issue: whether a patent term extension (PTE) was invalid. The ANDA filers challenged the reissue patent’s five-year PTE (a consequence of FDA’s nearly 12-year regulatory review of Bridion). Specifically, Defendants contended that calculation of a PTE for a reissue patent must be based on the date that the reissue patent issued, pursuant to § 156(c) of the Patent Act. Defendants argued that reading § 156(c) in this way entitles Merck to only 686 days PTE, rather than the five years that the PTO granted. Defendants’ validity challenge, if meritorious, would render the portion of the patent after December 14, 2022, invalid under 35 U.S.C. § 282(c). In response, Merck argued that “the date the patent is issued,” read in the proper context, refers to the date that the original patent issued. Thus, “the crux of the legal dispute concerns whether the Patent Act requires a patent term extension of a reissued patent to be calculated based on the issue date of the original patent—the term of which is inherited by the reissue patent—or, conversely, based on the issue date of the reissued patent.” After a one-day bench trial, the court found that the PTE was not invalid under §282(c).Why Merck Prevailed: The facts of the case were almost entirely undisputed. Merck’s original patent covering sugammadex issued on December 20, 2003. But Merck could not market its product until December 15, 2015, nearly 12 years later. Because the Hatch-Waxman Act allows for restoration of patent term lost to lengthy FDA regulatory review, Merck sought a PTE (maximum five years). And the PTO granted it.The issue here arises from the reissue patent. When Mer

or because it failed to separately consider the patentability of claims 3-16 under the alternatively referenced independent claim 1. In her decision, Director Vidal agreed with Patent Owner that: (i) this was an issue of first impression, and (ii) the Board was required to consider multiple dependent claim patentability with respect to all alternatively referenced independent claims. As such, Director Vidal reversed the PTAB’s decision and ultimately upheld the patentability of claims 3-16 in view of the patentability of independent claim 1.When issuing this ruling, Director Vidal called attention to the plain language of 35 U.S.C. § 112 ¶ 5, quoting in pertinent part “[a] multiple dependent claim shall be construed to incorporate by reference all the limitations of the particular claim in relation to which it is being considered.” According to the Director’s decision, this language requires a separate patentability analysis of multiple dependent claims, particularly when coupled with 35 U.S.C. § 282, which states that “[e]ach claim of a patent (whether in independent, dependent, or multiple dependent form) shall be presumed valid independently of the validity of other claims[.]” Without this interpretation, the Director noted, §§ 112 and 282 would fail to have effect. The plain language of 37 C.F.R. § 1.75(c) regarding fee calculation also supported the decision. See 37 C.F.R. 1.75(c) (“For fee calculation purposes . . . a multiple dependent claim will be considered to be that number of claims to which direct reference is made therein.”). Additionally, the Director reasoned that an interpretation requiring separate analysis of multiple dependent claims for each independent claim on which they rely aligns with long-standing USPTO practice and guidance. See MPEP § 608.01(n)(I)(B)(4) (Eighth Ed., Rev. 7 (July 2008)) (“[A] multiple dependent claim…contains in any one embodiment only those limitations of the particular claim referred to for the embodiment under consideration.”) (empha