By Donald Zuhn --
After reflecting upon the events of the past twelve months, Patent Docs presents its eighth annual list of top patent stories. For 2014, we identified eighteen stories that were covered on Patent Docs last year that we believe had (or are likely to have) the greatest impact on patent practitioners and applicants. Previously, we counted down stories #18 to #15, #14 to #11, and #10 to #7. Today, we count down stories #6 to #4 as we work our way towards the top three stories of 2014. As with our other lists (2013, 2012, 2011, 2010, 2009, 2008, and 2007), links to our coverage of these stories (as well as a few links to articles on related topics) have been provided in case you missed the articles the first time around or wish to go back and have another look. As always, we love to hear from Patent Docs readers, so if you think we left something off the list or disagree with anything we included, please let us know. In addition, we will be offering a live webinar on the "Top Patent Law Stories of 2014" on January 20, 2015 from 10:00 am to 11:15 am (CT). Details regarding the webinar can be found here.
6. Federal Circuit Denies Myriad Motion for Preliminary Injunction
In March, the District Court for the District of Utah denied Myriad Genetics' motion for preliminary injunction in Myriad Genetics v. Ambry Genetics. Myriad had filed suit against Ambry for infringement of ten patents relating to genetic diagnostic testing less than a month after the U.S. Supreme Court announced its decision in AMP v. Myriad Genetics in June 2013. Ambry was one of the first companies to announce that it would provide genetic diagnostic testing for the BRCA 1 and BRCA 2 genes after the Supreme Court's Myriad decision. The litigation with Ambry was consolidated with five other infringement suits against Gene-by-Gene, Quest, GeneDx, Invitae, and LabCorp, and three declaratory judgment actions by Quest, Invitae, and Counsyl. Myriad then appealed the District Court's denial of the company's preliminary injunction motion. Last month, the Federal Circuit affirmed the District Court's decision denying Myriad Genetics' motion for a preliminary injunction in In re BRCA1- and BRCA2-based Hereditary Cancer Test Patent Litigation. The impact of the Federal Circuit's decision in the case (on the U.S. Patent and Trademark's recent interim subject matter guidance, for example) may well land this story on next year's list.
For information regarding this and other related topics, please see:
• "In re BRCA1- and BRCA2-based Hereditary Cancer Test Patent Litigation (Fed. Cir. 2014)," December 17, 2014
• "Guest Post: Myriad -- A Direct and Unexceptional Approach," October 12, 2014
• "Federal Circuit Argument in Myriad Appeal Scheduled," September 25, 2014
• "News from Abroad: Myriad Patent Upheld by Full Federal Court of Australia," September 5, 2014
• "Good News, Bad News and More Inflammatory Rhetoric in Myriad Genetics Case," June 17, 2014
• "Dr. Cook-Deegan Brings the Medical Community Up to Date on the Myriad Case," March 31, 2014
• "Myriad Appeals Adverse Preliminary Injunction Decision," March 20, 2014
• "Panel on Multidistrict Litigation Consolidates Myriad Cases in Utah District Court," March 19, 2014
• "Utah Judge Denies Myriad's Preliminary Injunction Motion," March 11, 2014
• "Gene-by-Gene Cries Uncle, Settles with Myriad Genetics," February 7, 2014
5. Supreme Court Decides Nautilus v. Biosig Instruments –– Overrules Federal Circuit "Insolubly Ambiguous" Standard for Indefiniteness
On June 2, the Supreme Court issued two decisions impacting patent law. In the first, Nautilus, Inc. v. Biosig Instruments, Inc., the Supreme Court reversed the Federal Circuit, overruling the "insolubly ambiguous" standard for patent claim indefiniteness. The Court discerned that § 112 "entails a 'delicate balance,'" wherein "[o]n the one hand, the definiteness requirement must take into account the inherent limitations of language," while on the other hand "a patent must be precise enough to afford clear notice of what is claimed, thereby " 'appris[ing] the public of what is still open to them.'" According to the Court, this inherent ambiguity cannot become so great that it creates a "zone of uncertainty" around the patent claims, which would discourage innovation without any benefit to the public. And the Court was apparently persuaded that "patent applicants face powerful incentives to inject ambiguity into their claims" unless countervailing disincentives (in the form of being put at risk of being invalidated) are in place. Being "[c]ognizant of the competing concerns," the Court announced its test for indefiniteness, stating that "we read §112, ¶2 to require that a patent's claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty," noting that "[t]he definiteness requirement, so understood, mandates clarity, while recognizing that absolute precision is unattainable."
For information regarding this and other related topics, please see:
• "Triton Tech of Texas, LLC v. Nintendo of America, Inc. (Fed. Cir. 2014)," June 16, 2014
• "Nautilus, Inc. v. Biosig Instruments, Inc. (2014)," June 3, 2014
• "In re Packard (Fed. Cir. 2014)," May 18, 2014
4. Supreme Court Decides Limelight v. Akamai -- Reverses Federal Circuit in Divided Infringement Case
In the Supreme Court's other June 2 patent-related decision, Limelight Networks, Inc. v. Akamai Technologies, Inc., the Court again reversed the Federal Circuit, determining that a defendant is not liable for inducing infringement of a patent under 35 U. S. C. § 271(b) when no one has directly infringed the patent under § 271(a) or any other statutory provision. The Court declared that "our case law leaves no doubt that inducement liability may arise 'if, but only if, [there is] . . . direct infringement.'" The Court noted that "the Federal Circuit reasoned that a defendant can be liable for inducing infringement under §271(b) even if no one has committed direct infringement within the terms of §271(a) (or any other provision of the patent laws), because direct infringement can exist independently of a violation of these statutory provisions." However, as the Court explained, "there has simply been no infringement of the method [of Akamai's U.S. Patent No. 6,108,703], because the performance of all the patent's steps is not attributable to any one person," and "where there has been no direct infringement, there can be no inducement of infringement under §271(b)." In addition, the Court refused Akamai's request to review the merits of the Federal Circuit's rule from Muniauction, Inc. v. Thomson Corp. for direct infringement under § 271(a), noting that the question presented clearly focused on § 271(b), and not § 271(a).
For information regarding this and other related topics, please see:
• "Limelight Networks, Inc. v. Akamai Technologies, Inc. (2014)," June 2, 2014
The Court noted that "the Federal Circuit reasoned that a defendant can be liable for inducing infringement under §271(b) even if no one has committed direct infringement within the terms of §271(a) (or any other provision of the patent laws), because direct infringement can exist independently of a violation of these statutory provisions."
Don,
And people wonder why the patent bar is so upset with the Royal Nine when it can't even represent correctly the majority holding by the Federal Circuit in Limelight.
Posted by: EG | January 07, 2015 at 06:29 AM