Court Of Appeals For The Federal Circuit Research Articles

US Legal and Regulatory Update

This article presents an overview of Pfizer v. Sanofi Pasteur, a decision that continues the recent trend of Court of Appeals for the Federal Circuit (CAFC) toward tighter scrutiny of patent claims. The CAFC reaffirmed that an expectation of success in combining and modifying prior art need only be reasonable, not absolute. The results of Pfizer highlights a continued drift by the PTAB and courts toward stricter scrutiny of patent claims, both during prosecution of the claims and during later litigation of the claims. Such claims may be somewhat more difficult to procure, and more open to later invalidation during litigation.

Inventorship Standards for Biotechnology Inventions Under the U.S. and Japanese Patent Acts

This article highlights differences between the United States and Japanese inventorship standards by comparing a U.S. Federal Circuit decision and a Tokyo District Court decision in which inventorship of the same invention was disputed. It further discusses how Japanese courts, by applying Japanese inventorship standards, would not find one of the U.S. researchers in this case to be inventors, despite the Court of Appeals for the Federal Circuit (CAFC) finding inventorship while applying the U.S. standard. It argues that the U.S. standard is over-inclusive by including individuals who did not contribute to any part of the inventive process, but that the Japanese standard is too difficult to meet and may exclude inventors who made an important contribution. The over-inclusive U.S. standard is influenced by the legacy of “first-to-invent”: a formality requirement that all individual inventors must contribute to every claim to file a single application and a substantive requirement that an inventor’s prior joint invention is the prior art against her later invention unless the same group of individual inventors made both inventions. The article concludes with a discussion of the advantages and disadvantages of applying the U.S. and Japanese standards for determining inventorship of biotechnology inventions and proposes a harmonization of inventorship standards through the leadership of the World Intellectual Property Organization.

Distance Puzzle in Knowledge Spillovers: A Revisit from the Legal Perspective

Recent studies found that the localization effect of knowledge spillovers has strengthened during the past few decades, a surprising trend amid the age of digitalization. In this paper, we develop an analytic model to understand this phenomenon from a legal perspective. Our model shows that potential litigations and licenses impose a legal cost on follow-on innovators. The strength of patent protection thus shapes the pattern of knowledge spillovers such that a stronger protection leads to more localized spillovers. We test the model predictions exploiting the introduction of the Court of Appeals for the Federal Circuit (CAFC) in 1982, a remarkable pro-patent shift in the US. Using a matched sample of approximately 2.6 million actual and control citations around the shift, we find that knowledge spillovers became more localized after the creation of the CAFC and this change in the localization effect was more pronounced for judicial areas that were less friendly to patent owners in pre-CAFC litigations, compatible with model predictions. Our study contributes to the literature on knowledge spillovers by introducing a novel legal perspective and offers important policy implications.

A Study on the identity and related Korean translation of the US Court of Appeals for the Federal Circuit (CAFC)

A Study on the identity and related Korean translation of the US Court of Appeals for the Federal Circuit (CAFC)

Functionality and Expression in Computer Programs: Refining the Tests for Software Copyright Infringement

Functionality and Expression in Computer Programs: Refining the Tests for Software Copyright Infringement

Functionality and Expression in Computer Programs: Refining the Tests for Software Copyright Infringement

Functionality and Expression in Computer Programs: Refining the Tests for Software Copyright Infringement

Does Losing a Patent Lawsuit Cause M&A? An Experiment Using Uncertain Lawsuits

I investigate how a change in patent rights affects industry structure and R&D incentives. For this purpose, I hand-collect all patent lawsuits in the Court of Appeals for the Federal Circuit (CAFC). Using the historical decisions of randomly assigned judges as an instrument for lawsuit outcomes, I find that infringers sharply increase M&A to acquire substitute patents. This points to an amplifying effect of patent rights on the M&A market. Next, using an unexpected Supreme Court decision that decreased the strength of patent rights, I find that diminished M&A activity is associated with a decrease in R&D for small firms.

The Court of Appeals for the Federal Circuit's Impact on Patent Litigation

With its powerful mandate to unify patent law, the Court of Appeals for the Federal Circuit (CAFC), established in 1982, represents an intriguing recent example of an institutional innovation with potentially broad economic consequences. Given sole responsibility for handling patent appeals and widely regarded as pro-patent, the CAFC has indeed produced a new body of patent law. Unfortunately, research has yet to identify and explain accurately its impact on patent litigation, patenting and inventive activity. Given that both the amount of patent litigation and the number of patents have grown substantially during the last twenty years, the time is ripe to address this directly. We present and analyze a novel data set, spanning 1953-2002, that reflects more than 6,000 decisions published in the United States Patents Quarterly (USPQ). Specifically, we: (1) compare directly the tendencies of the CAFC to those of its predecessor appeals courts; (2) consider separately the issues of validity and infringement; and (3) examine how appeals court tendencies affect the actions of lower courts and/or litigants. We find that the CAFC has been significantly more reluctant to affirm patents invalid than its predecessors but has not been more reluctant to affirm patents not infringed. As a result, district courts have decided patents invalid significantly less often, patentees have appealed invalid decisions significantly more often and the infringement inquiry has grown in importance.

Are Human Genes Patentable?

This commentary reviews the events leading to the Supreme Court decision regarding Myriad Genetics patents on the BRCA1 and BRCA2 genes. Those developing molecular diagnostics will have to comport ...

Bard v Gore: to injunct, or not to injunct, what is the question? Is it right to reward an infringer for successfully exploiting a patent?

Robert Lundie-Smith is a barrister and solicitor and practises as a Solicitor Advocate in EIP Legal, London. Gary Moss is a solicitor and the head of EIP Legal, London. The application of the United States Supreme Court ruling in eBay v MercExhange, as exemplified in the recent decision of the Court of Appeals for the Federal Circuit (CAFC) in Bard Peripheral Vascular Inc v W L Gore & Associates Inc, has far reaching implications for patentees looking to enforce their rights in the US against infringers who have managed to make a successful business out of their infringing acts. This article analyses and compares the position of patentees in the UK and the US seeking to obtain a final injunction against an infringer. It will be seen that, post eBay, the position of a patentee before the US courts is far weaker than that of patentees before UK courts.

The Duty of Disclosure in the post- Therasense Landscape

*Birch, Stewart, Kolasch & Birch, LLP, Suite 100 East, 8110 Gatehouse Road, Falls Church, VA 22042, USA Tel.: +1 703 205 8000 Fax: +1 703 205 8050 E-mail: maa@bskb.com In Greek mythology the Hydra was a multi-headed creature, with the singular a ttribute that if one head was cut off two heads would grow. Today a hydra is “a persistent or multifaceted problem that cannot be eradicated by a single effort” [101]. Section 37 C.F.R. §1.56 states, in part, that the duty of disclosure “ includes a duty to disclose to the Office all information known to that individual to be material to patentability as defined in this section” [1]. Inequitable conduct may be found, and a patent held unenforceable, when information material to patentability is intentionally withheld from the USPTO. Beginning around 10 years ago, US courts created a hydra through several decisions regarding the duty of disclosure [2–5]. With these cases, the courts developed a sliding scale test, in which materiality of the information was balanced against ‘intent’ [4] . Using the sliding scale, if the information was found to be highly material, intent could be inferred. Because of this test, applicants would submit hundreds of documents, which were of little to no relevance to the patentability of the claims under examination, in an effort to comply with the heightened duty of disclosure. Compliance with the duty of disclosure in the USA became a hydra where no matter how much information the applicant submitted to the USPTO, there seemed to always be more prior art or information that could be submitted. Concomitant with this was the effect on litigations where it has been estimated that up to 80% of patent litigations included an affirmative defense of inequitable conduct for failing to comply with the duty of disclosure [6]. Recognizing the nearly impossible compliance standard that was created, in particular by the sliding scale test, the Court of Appeals for the Federal Circuit (CAFC) revisited the duty of disclosure in the en banc decision of Therasense Inc. v. Becton Dickinson and Co. [7]. The invention in Therasense involved a single-use disposable electrode strip. The element at issue was the feature that the electrode was configured to be exposed to a blood sample ‘without an intervening membrane’ [7]. The applicant distinguished the invention from a prior art reference by arguing that, in the reference, the membrane was considered to be an essential feature. However, in Europe, the applicant characterized the membrane in the European equivalent of the US reference as preferred, but not necessary. The applicant did not submit the statements made before the EPO to the USPTO. In the en banc decision, the court first newly defined materiality as being a ‘butfor’ materiality. Under this standard, ‘but-for’ materiality is met if the USPTO “would not have allowed a claim had it been aware of the undisclosed prior art” [7].

The Market Effects of Patent Litigation

This study measures the value of patents to firms and identifies factors that contribute to that value by observing the abnormal change in firms’ stock market values following court decisions. Firms lose 0.85% (about $19 million) of their value following a decision that one of their patents is “Invalid”, but only gain about 0.7% following a “Valid & Infringed” decision. The factors that that affect the expectations of investors as to the enforceability of patent rights are at least as important in determining the contribution of the patent to the firm’s market value as are characteristics of the patent. Most prominently, this confirms the substantial impact that the creation of the Court of Appeals for the Federal Circuit (CAFC) had on the value of patents. After the creation of the CAFC, “Invalid” decisions resulted in a 0.7% (about $15.5 million) greater loss of firm value. Clearly, patents are more valuable because of this change in the legal landscape.

The Oracle-Google Litigation: Interoperablity Prevails Again

In May 2014, the U.S. Court of Appeals for the Federal Circuit (CAFC) in Oracle America v. Google ruled that Google infringed Oracle’s copyright when Google replicated the Java application program interface in the Android application program interface. In July 2015, the Supreme Court rejected Google’s petition for a writ of certiorari, and the case was remanded to the district court, which now will determine whether Google’s actions were permitted under the fair use doctrine.A final determination that Google infringed Oracle’s copyrights could have a negative impact on the development of interoperable systems. It could signal the extension of copyright protection to program elements necessary for interoperability. This would allow a company that develops a platform that becomes an industry standard to use copyright law to control the ability of other companies to develop their own programs that attach to or compete with that platform. At the same time, Oracle and other large software companies have argued that the decision ensures that software companies receive a return on their investment in the development of software, which in turn will incentivize further innovative activity. This article describes the facts and the holdings of the trial court in favor of Google. It then reviews the CAFC decision reversing the trial court. The article analyzes the decision, identifying several troubling legal conclusions. Finally, the article explores the arguments made before the Supreme Court.

Hummingbirds, Orioles, and Butterflies [Patents

Is there a limit on the prior art a patent examiner can cite in rejecting a patent application, or is everything that is early enough fair game? That was the question before the Court of Appeals for the Federal Circuit (CAFC) in the recent case of In re Klein.

A Case of Studied Ignorance [Patents

What does an infringer need to know about a competitor's patent to be liable for inducing infringement of the patent? That was the question before the Court of Appeals for the Federal Circuit (CAFC) in the recent case of SEB v. Pentalpha.

Patent thickets, courts, and the market for innovation

We study how fragmentation of patent rights and the formation of the Court of Appeals for the Federal Circuit (CAFC) affected the duration of patent disputes, and thus the speed of technology diffusion through licensing. We develop a model of patent litigation which predicts faster settlement when patent rights are fragmented and when there is less uncertainty about court outcomes, as was associated with the “pro-patent shift” of the CAFC. We confirm these predictions empirically using a data set that covers patent suits in U.S. district courts during the period 1975–2000. Finally, we analyze how fragmentation affects total settlement delay, considering both the reduction in dispute duration and the increase in the number of patent negotiations.

The Economics of a Centralized Judiciary: Uniformity, Forum Shopping, and the Federal Circuit

In 1982, the U.S. Congress established the Court of Appeals for the Federal Circuit (CAFC) as the sole appellate court for patent cases. This court was created ostensibly to eliminate inconsistencies in the application and interpretation of patent law across federal courts and thereby mitigate the incentives of patentees and alleged infringers to forum shop for a preferred venue. We perform the first econometric study of the extent of nonuniformity and forum shopping in the pre‐CAFC era and of the CAFC’s impact on these phenomena. We find that in patentee‐plaintiff cases the pre‐CAFC era was indeed characterized by significant nonuniformity in patent validity rates across circuits and by forum shopping on the basis of validity rates. We find weak evidence that the CAFC has increased uniformity of validity rates and strong evidence that forum shopping on the basis of validity rates ceased several years prior to the CAFC’s establishment.

The case of the stolen mouse trap [Patents

As the old adage goes: Build a better mouse trap and the world will beat a path to your door. This is literally what happened to Agrizap, Inc., a small company in the rodent control business. As is also well known, protecting your turf once you have built the better mouse trap is no easy task. The recent case of Agrizap v. Woodstream from the Court of Appeals for the Federal Circuit (CAFC) shows just how tough it can be.

Patents

What should happen when a business method patent covers steps performed by more than one company? Can the company that coordinates the overall system be found to infringe even though it does not perform all of the steps of the patent's claims itself? That was the question before the Court of Appeals for the Federal Circuit (CAFC) in the recent case of BMC v. Paymentech.

Jurisdiction to challenge seizure and destruction of counterfeit merchandise

The United States Court of Appeals for the Federal Circuit (CAFC) has reversed the Court of International Trade's (CIT) decision that it had jurisdiction over an importer's challenge to the fine for importing counterfeit merchandise.