January 8, 2019

Federal Circuit Court Decisions For Week Ending December 7, 2018

Jack Henry & Assoc. v. Plano Encryption Technologies LLC, No. 2016-2700 (Dec. 7, 2018) (nonprecedential); Patent Nos. 5,974,550; 5,991,399; 6,587,858

Key point(s):

  • Each state has substantial interest in protecting residents from threats of infringement actions
  • Using threats of infringement to coerce opponents in a different district of a state lowers the required showing of sufficient contacts for finding jurisdiction in the different district

Novartis Pharmaceuticals Corp. v. Breckenridge Pharmaceutical, Inc, Nos. 2017-2173, (Dec. 7, 2018) (precedential) (3-0); Patent Nos. 5,665,772; 6,440,990;

Key point(s):

  • Change in law from patents having 17 year life from issue date to a variable life from issue date to 20 years from earliest filing date resulted in a first filed patent expiring after the expiration date of a related second filed patent having the same priority date without creating grounds for asserting obviousness-type double patenting.

Novartis AG v. Ezra Ventures, LLC, No. 2017-2284 (Dec. 7, 2018) (precedential) (3-0); Patent No. 5,604,229;

Key point(s):

  • Obviousness-type double patenting does not invalidate an otherwise validly obtained Patent Term Extension (PTE) under § 156.

In re Downing, No. 2018-1795 (Dec. 7, 2018) (nonprecedential); Appl. No. 12/454,528;

Key point(s):

  • Rejection of Claim 1 for lack of antecedent basis for “the end user” was improper because the structure of the claim could only refer to the end user using the product.

Laerdal Medical Corp. et al. v. ITC, No. 2017-2445 (Dec. 7, 2018) (precedential) (3-0);

Key point(s):

  • The ITC erred in reassessing the sufficiency of Laerdal’s complaint against defaulting respondents who failed to participate and are thus deemed to be in default.
  • The ITC retains broad discretion after finding default to determine the appropriate relief and the appellate court remanded the case to the ITC to determine an appropriate remedy.

Related Team:

Keith Tackett

Retired Partner