May 16, 2013

Federal Circuit Decisions for Week Ending May 10, 2013

Sanofi-Aventis Deutschland GMBH v. Genentech, Inc. and Biogen Inc., No. 2012-1454 (May 10, 2013) (precedential) (3-0) Patent Nos. 5,849,522 and 6,218,140

Key points:

  • Whether a party is entitled to an injunction preventing the patent owner from proceeding in a previously-filed foreign arbitration of a license after a final judgment of non-infringement in the U.S. depends on three factors. 
  • Here, the issues were not the same because the issue in arbitration was breach of contract, not patent infringement. Also, an injunction would frustrate the interest in enforcing forum selection clauses.

Baron Services, Inc. v. Media Weather Innovations LLC, No. 2012-1285, -1443 (May 7, 2013) (precedential) (2-1) Patent No. 6,490,525

Key point:

  • The district court’s summary judgment of non-infringement and award of attorney’s fees was premature based on a showing in the record under Fed. R. Civ. P. 56(d).

CLS Bank International and CLS Services LTD. v. Alice Corporation PTY. LTD., No. 2011-1301 (May 10, 2013) (precedential) (en banc) (per curiam) Patent Nos. 5,970,479; 6,912,510; 7,149,720; and 7,725,375

Key points:

  • Under U.S. Supreme Court precedent, abstract concepts are generally not patent eligible subject matter under 35 U.S.C. § 101 unless the patentee adds something novel that limits the patent’s scope. 
  • The Federal Circuit remains philosophically divided about computer-implemented inventions; CLS Bank does not provide desired clarity.

Related Team:

B. Todd Patterson

Practice Head, Managing Partner