patent infringement

Bowman v. Monsanto Company

Monsanto Company, a producer of herbicide resistant soybean seeds and technology, sued Vernon Hugh Bowman, a soybean farmer, for patent infringement.  Bowman replanted second-generation seeds, which were the product of seeds purchased from a licensed Monsanto technology distributor.  Monsanto argued that by planting the product of Monsanto’s herbicide resistant seeds instead of purchasing new ones, Bowman was in violation of the Technology Agreement for the seeds.  The Federal Circuit upheld a district court decision awarding Monsanto damages for violation of their patented technology, reasoning that Monsanto's herbicide resistant technology was covered by patent regardless of whether it was the original seed or a product of the original seeds. Bowman contends that Monsanto’s patent rights were exhausted once he bought the seeds and that use of progeny seeds is an expected use of the product.  Monsanto responds that in the case of self-replicating technologies the patent extends to the technology, here, the trait of herbicide resistance, rather than the seed itself. 

Questions as Framed for the Court by the Parties

Patent exhaustion delimits rights of patent holders by eliminating the right
 to control or prohibit use of the invention after an authorized sale. In this case, the Federal Circuit refused to find exhaustion where a farmer used seeds purchased in an authorized sale for their natural and foreseeable purpose--namely, for planting.                                      

The question presented is: Whether the Federal Circuit erred by (1) refusing to find patent exhaustion in patented seeds even after an authorized sale and by (2) creating an exception to the doctrine of patent exhaustion for self-replicating technologies?

Issue

May patent holders enforce their rights on the products of self-replicating technologies, such as replicating seeds, after an authorized sale or does the patent only apply to the original article?

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Commil USA, LLC v. Cisco Systems, Inc.

Issues

Is a defendant’s reasonable, good-faith belief that a patent is invalid a viable defense to patent infringement by inducement under 35 U.S.C. § 271(b)?

The Supreme Court will determine whether a defendant with a good-faith belief that a patent is invalid can be found liable for induced infringement. Commil argues that a good-faith belief defense of a patent’s invalidity is irrelevant to the intent requirement to establish infringement by inducement under § 271(b). In opposition, Cisco argues that a good-faith belief defense of a patent’s invalidity is crucial to determining culpability and thus, relevant in establishing infringement by inducement. The ruling in this case will impact the scope of a patent owner’s rights and the availability of a new defense to patent infringement by inducement. Additionally, the decision in this case could have important consequences for the sale and marketing of generic-drug counterparts. 

Questions as Framed for the Court by the Parties

Commil holds a patent teaching a method to implement short-range wireless networks. At trial, the jury returned a verdict that Commil's patent was valid, that Cisco directly infringed but did not induce infringement, and awarded damages. Because Cisco's counsel invoked stereotypes about Commil's Jewish owner and inventors during trial, the district court found the verdict "inconsistent with substantial justice" and ordered a new trial on inducement and damages only. At the second trial, the jury returned a verdict that Cisco induced infringement and awarded damages. The Federal Circuit reversed and remanded for a third trial on two grounds. First, although Commil's patent is valid, the Federal Circuit held that Cisco's "good faith belief” that the patent was invalid is a defense to induced infringement. Second, although Cisco had actual knowledge of Commil's patent, the Federal Circuit held that this Court's opinion in Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060 (2011) rendered erroneous and prejudicial the jury instruction based on DSU Medical Corp. v. JMS Co., 471 F.3d 1293 (Fed. Cir. 2006). 

Did the Federal Circuit err in holding that a defendant's belief that a patent is invalid is a defense to induced infringement under 35 U.S.C. § 271(b)?

Petitioner Commil USA, LLC (“Commil”) owns a patent, U.S. Patent No. 6,430,395 (“the ’395 patent”), relating to wireless local area networks (“WLANs”).

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eBay, Inc. v. MercExchange, L.L.C.

Issues

Whether a patentee has an automatic right to a permanent injunction once infringement is found.

 

In 2003, a jury found that eBay, an online auction website, was violating various patents owned by MercExchange. The district court nevertheless refused to issue a permanent injunction that would have barred eBay from continuing to use the patented methods. The Federal Circuit of Appeals granted the injunction against eBay and held that permanent injunctions were the “general rule” in patent infringement cases. The Supreme Court granted certiorari to decide whether a patentee has an automatic right to a permanent injunction after a finding of infringement. If the Court upholds the “near-automatic injunction rule,” then patent holders will have a powerful remedy that can give them tremendous leverage in litigation. However, upholding the rule may also make it easier for “patent trolls” to continue benefiting from genuine innovators. If the Court instead finds that patent holders do not automatically have the right to an injunction, infringers will be able to continue using the patented product, thereby subverting the purposes of patent law. Not granting automatic injunctions may also encourage more patent infringement. How the Supreme Court decides the case will depend on its interpretation of important precedents and how it weighs these important social implications.

Questions as Framed for the Court by the Parties

Whether the Federal Circuit erred in setting forth a general rule in patent cases that a district court must, absent exceptional circumstances, issue a permanent injunction after a finding of infringement.

eBay, Inc. (“eBay”) owns and operates a website that allows buyers to purchase goods either through an auction-style format or at a fixed price via the “Buy it Now” feature. See MercExchange, LLC v. eBay, Inc., 401 F.3d 1323, 1325 (Fed. Cir. 2005).

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Federal Trade Commission v. Watson Pharmaceuticals, Inc.

Solvay Pharmaceuticals, Inc. sued Watson Pharmaceuticals, Inc., a generic drug manufacturer, for infringement of Solvay’s patent for its drug AndroGel. In response, Watson argued that Solvay’s patent was invalid. Before a judgment, however, the parties settled the case. As part of the agreement, Solvay would pay Watson in exchange for Watson’s agreement to delay entering the market with a generic version of AndroGel. The FTC then brought an action against all of the parties to the AndroGel case, contending that the agreement amounted to an anticompetitive attempt to share in the profits afforded by a patent that, but for the settlement agreement, would have been invalidated in court. The District Court dismissed the FTC’s claims and the Court of Appeals affirmed. The Supreme Court’s decision in this case may determine whether agreements such as those in this case, commonly referred to as reverse payments, constitute unfair competition in violation of federal law.

Questions as Framed for the Court by the Parties

Federal competition law generally prohibits an incumbent firm from agreeing to pay a potential competitor to stay out of the market. See Palmer v. BRG of Ga., Inc., 498 U.S. 46, 49-50 (1990). This case concerns agreements between (1) the manufacturer of a brand-name drug on which the manufacturer assertedly holds a patent, and (2) potential generic competitors who, in response to patent-infringement litigation brought against them by the manufacturer, defended on the grounds that their products would not infringe the patent and that the patent was invalid. The patent litigation culminated in a settlement through which the seller of the brand-name drug agreed to pay its would-be generic competitors tens of millions of dollars annually, and those competitors agreed not to sell competing generic drugs for a number of years. Settlements containing that combination of terms are commonly known as "reverse payment" agreements. The question presented is as follows:

Whether reverse payment agreements are per se lawful unless the underlying patent litigation was a sham or the patent was obtained by fraud (as the court below held), or instead are presumptively anticompetitive and unlawful (as the Third Circuit has held).

Issue

Whether a payment by one company to keep a competitor from entering the market with an identical product is always prohibited, or whether such a payment is permissible where the company merely exercises its rights as the holder of a valid patent.

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Impression Products v. Lexmark International

Issues

Does a “conditional sale” transferring title with post-sale restrictions on the use or resale of the item avoid the patent exhaustion doctrine, thus permitting a suit for infringement as a means of enforcing the post-sale restriction; and, does a foreign sale of a patented article exhaust the U.S. patent rights in that article?

The Supreme Court must decide whether Lexmark International, Inc., a company that manufactures toner cartridges for use in its printers, can use post-sale restrictions to prevent remanufacturers such as Impression Products, Inc., the defendant in this case, from refurbishing and reselling the cartridges. Petitioner Impression Products argues that under the patent exhaustion doctrine, all of a patent holder’s rights to a patented item are exhausted by the initial authorized sale of the item. Accordingly, Impression Products argues that the patent holder cannot place restrictions on how the patented article is used after its sale. Respondent Lexmark International, however, contends that Section 154(a) gives a patent holder authority to impose restrictions on the post-sale use of a patented item and allows a patent holder to transfer less than the complete patent rights to the buyer. Thus, a patent holder need not completely exhaust the patent after the sale. The ultimate decision by the Supreme Court may have an impact on the judicial doctrine of patent exhaustion and may potentially hinder the market for remanufactured patented goods. 

Questions as Framed for the Court by the Parties

The “patent exhaustion doctrine”—also known as the “first sale doctrine”—holds that “the initial authorized sale of a patented item terminates all patent rights to that item.” Quanta Computer, Inc. v. LG Elecs., Inc., 553 U.S. 617, 625 (2008).

The questions presented are:

  1. Whether a sale that transfers title to the patented item while specifying post-sale restrictions on the article’s use or resale avoids application of the patent exhaustion doctrine and therefore permits the enforcement of such post-sale restrictions through the patent law’s infringement remedy.
  2. Whether, in light of this Court’s holding in Kirtsaeng v. John Wiley & Sons, Inc., 133 S. Ct. 1351, 1363 (2013), that the common law doctrine barring restraints on alienation that is the basis of exhaustion doctrine “makes no geographical distinctions,” a sale of a patented article—authorized by the U.S. patentee—that takes place outside of the United States exhausts the U.S. patent rights in that article.

Lexmark International, Inc. is a company that makes and sells toner cartridges compatible with its printers. Lexmark International, Inc., v. Impression Products, Inc., No. 14-1617 (Fed. Circuit Feb. 12, 2016) at 9. Lexmark owns several patents on the cartridges it produces.

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Laboratory Corporation of America Holdings v. Metabolite Laboratories, Inc. and Competitive Technologies, Inc.

Issues

To what extent can an inventor patent a method for detecting vitamin deficiency when the patent seeks to grant the inventor exclusive rights to a natural scientific principle?

 

Three medical school professors from the University of Colorado and Columbia University developed a method to diagnose low levels of cobalamin and folate, two vitamins found in the blood serum of warm-blooded animals. After patenting this process, the patent was assigned to Competitive Technologies, Inc. and Metabolite Laboratories for distribution. Competitive Technologies, Inc. and Metabolite Laboratories in turn sublicensed the patent to Laboratory Corporation of American Holdings. Competitive Technologies and Metabolite Laboratories filed suit against Laboratory Corporation of American Holdings for induced infringement of the patent and contributory infringement. Judgment was rendered against Laboratory Corporation of American Holdings at trial and was affirmed by the Court of Appeals for the Federal Circuit. Laboratory Corporation of American Holdings in turn appealed to the United States Supreme Court in an effort to seek clarification about the substantive scope of method patents. The Supreme Court's decision in this case has the potential to alter the balance of the patent system.

Questions as Framed for the Court by the Parties

Whether a method patent setting forth an indefinite, undescribed, and non-enabling step directing a party simply to 'correlat[e]' test results can validly claim a monopoly over a basic scientific relationship used in medical treatment such that any doctor necessarily infringes the patent merely by thinking about the relationship after looking at a test result.

Three medical school professors from the University of Colorado and Columbia University developed a method to diagnose low levels of cobalamin and folate, two vitamins found in the blood serum of warm-blooded animals. Brief for Respondents at 1-2, 6.

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Life Technologies Corp., et al. v. Promega Corp.

Issues

Is the shipment of one commodity component from the United States for the foreign assembly and unauthorized sale of a patented, multi-component invention a violation of 35 U.S.C. § 271(f)(1)?

Under 35 U.S.C. § 271(f)(1), when a party, without the authority to do so, ships from the United States either “all or a substantial portion of the components of a patented invention” or “any component . . . that is especially made or especially adapted for use in the invention” in a way that would induce another party abroad to combine the component(s) to form the patented invention, that party commits patent infringement. Section 271(f)(1) prevents parties from evading domestic patent law when engaging in international transactions. The parties differ on how broad § 271(f)(1) should be construed. Life Technologies Corporation argues that courts should construe § 271(f)(1) narrowly to refer to the percentage of components for the invention that a party ships abroad. Promega Corporation, on the other hand, argues that the statute takes into account a combination of quantity and relative importance of the component(s) shipped abroad. The outcome of this case will determine the limits of 35 U.S.C. § 271(f)(1) and, consequently, the limits of private action in shipping materials abroad. 

Questions as Framed for the Court by the Parties

35 U.S.C. § 271(f)(1) provides that it is an act of patent infringement to “suppl[y] . . . in or from the United States all or a substantial portion of the components of a patented invention, . . . in such manner as to actively induce the combination of such components outside the United States.” Despite this Court’s clear dictate that section 271(f) should be construed narrowly, Microsoft Corp. v. AT&T Corp., 550 U.S. 437 (2007), the Federal Circuit held that Life Technologies is liable for patent infringement for worldwide sales of a multi-component kit made abroad because just a single, commodity component of the kit was shipped from the U.S.

The question presented is:

Whether the Federal Circuit erred in holding that supplying a single, commodity component of a multi-component invention from the United States is an infringing act under 35 U.S.C. § 271(f)(1), exposing the manufacturer to liability for all of its worldwide sales.

Promega Corporation (“Promega”) owns four patents for methods of amplifying particular “short tandem repeats” (“STR”) loci in a DNA strand and has an exclusive license over a fifth method for the same. Promega Corp. v. Life Technologies Corp., No. 10-cv-0281, at 5 (Fed. Cir. Dec.

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Samsung Electronics Co. v. Apple

Issues

Should the award resulting from the infringement of a design patent be calculated as the profits from the entire product or be limited to only the profits attributable to the particular infringed component?

The Supreme Court will decide whether the damages awarded in the case of design patent infringement should be calculated as the entire profits of the whole product or be limited to the profits attributable to the patent-protected component. The parties’ arguments center on divergent purposes of the controlling statute, 35 U.S.C. § 289, as well as the meaning of “article of manufacture” as it is used within § 289. Apple, pointing to the plain language, congressional intent, and policy implications, argues that the purpose of § 289 was to overturn judicial precedent and allow a design patent owner to recover damages when only a component of a device infringes the design patent. Samsung, however, argues that Apple’s reading is too broad and cuts against congressional intent because it will result in illogical outcomes and remove centuries-old judicial precedent. Depending on how the Supreme Court rules, this case will impact research and development funding and potentially create a new avenue of patent trolling. 

Questions as Framed for the Court by the Parties

Where a design patent is applied to only a component of a product, should an award of infringer’s profits be limited to those profits attributable to the component?

In April 2011, Apple sued Samsung for infringement of design and utility patents, trademarks, and trade dress. See Apple Inc. v. Samsung Elecs. Co. Ltd., No. CV 5:11-cv-01846, 4 (Fed. Cir. 2015).

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SAS Institute Inc. v. Matal

Issues

Does 35 U.S.C. § 318(a) require the Patent Trial and Appeal Board to issue a written decision on every claim challenged by the petitioner?

This case arises from a suit in which ComplementSoft claimed SAS Institute infringed its patent and SAS responded by petitioning the Patent Trial and Appeal Board (“PTAB”) for a determination on the validity of ComplementSoft’s patent. SAS argues that, based on a straightforward reading of 35 U.S.C. § 318(a) and the legislative history of the America Invents Act (“the Act”), the PTAB must issue a final written decision on each of the petitioner’s claims. Relying on the same methods of analysis, ComplementSoft reaches the opposite conclusion, arguing that the PTAB must be allowed discretion to select specific claims for review. The Director of the Patent and Trademark Office, which sits above the PTAB, also asserts that the PTAB must have discretion in selecting claims for review. Accordingly, the Court’s decision will affect the efficiency of the PTAB’s review proceedings and impact how parties petition the PTAB.

Questions as Framed for the Court by the Parties

Does 35 U.S.C. § 318(a), which provides that the Patent Trial and Appeal Board in an inter partes review “shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner,” require that Board to issue a final written decision as to every claim challenged by the petitioner, or does it allow that Board to issue a final written decision with respect to the patentability of only some of the patent claims challenged by the petitioner, as the Federal Circuit held?

Issued on September 19, 2006, United States Patent Number 7,110,936 (“’936 patent”) was thereafter assigned to ComplementSoft, LLC (“ComplementSoft”). SAS Institute, Inc. v. ComplementSoft, LLC., 825 F.3d 1341, 1343 (Fed. Cir.

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SCA Hygiene Products v. First Quality Baby Products

Issues

Can an accused patent infringer stop a patent-holder from bringing a claim if the patent-holder waits too long to file the suit for patent infringement, even if the claim is brought within the statutory-provided six-year limitations period?

This case presents the Supreme Court with the opportunity to review whether the defense of laches will remain available to bar a patent infringement claim within the statutory limitations period of six years. The 1952 Patent Act allowed laches as a defense for patents and was later re-codified by Congress.  The United States Court of Appeals for the Federal Circuit reaffirmed this defense in A.C. Auckerman Co. v. R. L. Chaides Construction Co. in 1992. The Copyright Act did not codify a laches defense, however, and in 2014, the Supreme Court ruled against the use of laches in Petrella v. Metro-Goldwyn-Mayer, Inc. SCA Hygiene Products Aktiebolag and SCA Personal Care, Inc. argue that the Petrella decision is applicable to a patent infringement case and that laches should not be used to bar a patent-holder from enforcing its property rights through a legal damage claim. First Quality Baby Products, LLC et al. seeks to distinguish the text, history, and purpose of the Patent Act from the Copyright Act, and argues that laches should remain a viable defense. The Supreme Court’s holding may alter the relationship between patent and copyright law and change the pleading styles in a patent infringement case.

Questions as Framed for the Court by the Parties

Whether and to what extent the defense of laches may bar a claim for patent infringement brought within the Patent Act’s six-year statutory limitations period, 35 U.S.C. § 286.

The doctrine of laches is an affirmative defense that bars claims by those who unreasonably delay bringing a claim to court, because allowing the claim would unjustly harm the defendant. The Patent Act sets a six-year time limit for the recovery of damages following infringement. See SCA Hygiene Prods.

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