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IPO Daily News™

Tuesday, 14 November 2017 8:31 am

Federal Circuit Summaries Logo

*** COURT SAYS PATENT OWNER NOT ENTITLED TO DAMAGE AWARD

Life Techs. Corp. v. Promega Corp., 13-1011 – Yesterday in an opinion by Judge CHEN, on remand from the U.S. Supreme Court, the Federal Circuit upheld the district court’s grant of Life Tech’s motion for JMOL that Promega failed to prove its infringement case under Patent Act 271(a) and 271(f)(1) and denial of Promega’s motion for a new trial. Promega’s patent claimed a process for examining polymorphism in DNA samples. The U.S. Supreme Court found that LifeTech did not infringe under § 271(f)(1) because the single component that Life Tech supplied from the U.S. of a multi-component genetic testing kit was not “a substantial portion” of the invention’s components.

The Federal Circuit said that by relying throughout litigation on Life Tech’s total worldwide sales as the potential base for a lost profits award for all alleged infringement, and declining to offer evidence that could be used to calculate separate damage awards for infringement under §§ 271(a) and 271(f)(1), Promega failed to prove its damages and waived the right to argue on appeal that the record supported a damages award based on a subset of sales. The district court did not abuse its discretion in denying retrial based on theories not pursued by Promega at trial.
(1 to 4 stars rate impact of opinion on patent & trademark law)

Federal Circuit Summaries Logo

* FEDERAL CIRCUIT AFFIRMS FINDING OF INDUCED PATENT INFRINGEMENT

Sanofi v. Watson Labs. Inc., 16-2722 – On 9 November in an opinion by Judge TARANTO, the Federal Circuit affirmed a district court finding of induced infringement. Sanofi’s patents claimed compositions containing the cardiovascular drug dronedarone and methods for reducing hospitalization by administering the drug to patients meeting certain criteria. Watson argued that Sanofi failed to prove specific intent to encourage physicians to infringe by prescribing the drug.

The Federal Circuit said “intent is a factual determination that may rest on circumstantial evidence.” The content of Watson’s proposed label, which stated that the drug was indicated to reduce the risk of hospitalization in atrial fibrillation and described which patients would meet the claimed criteria, permitted the inference of specific intent to encourage infringement. There was “no legal or logical basis” for limiting liability based on evidence of substantial noninfringing uses not forbidden by the label.
(1 to 4 stars rate impact of opinion on patent & trademark law)

Chat Channel Logo with TM

THIS WEEK ON IPO’S IP CHAT CHANNEL™ — OUTSOURCING PATENT WORK: AVOIDING PITFALLS (ETHICS)

Tune in to the IP Chat Channel™ on Thursday, 16 November, at 2:00p.m. ET for Outsourcing Patent Work: Avoiding Pitfalls (Ethics CLE). The patenting process demands many capabilities, from informed legal analysis about the future direction of the law on patent eligibility and indefiniteness to clerical data entry about filed applications. The global legal outsourcing industry has grown dramatically in the last 10 years to over $2 billion annually, as corporations and law firms try to disaggregate those disparate tasks and have them handled cost-effectively by different parties.

Outsourcing in itself does not, however, simplify the patenting process and can present its own pitfalls. This webinar will examine the possible hazards that can trip up customers of patent services and what due diligence and supervision is required to do outsourcing correctly. Regulator and ethical monitors have identified many areas that can raise red flags including:

• Offshoring technical data in disregard of USPTO guidance;
• Improper fee-splitting;
• Monitoring suppliers for conflicts of interest;
• Getting the informed consent of the ultimate client; and
• Aiding and abetting the unauthorized practice of law.

Panelists include MUKUNDAN CHAKRAPANI (Clairvolex), MICHAEL GNIBUS (General Electric Co.), and MICHAEL MCCABE (IP Ethics Law). IP Chat Channel webinars are recorded and available on our website after the live webinars. Ethics CLE granted in many states.

2017 IPO ANTI-COUNTERFEITING SURVEY REPORT

The IPO Anti-Counterfeiting Committee has posted the report associated with its most recent survey. There were 186 respondents for the survey including both law firm and corporate respondents. View the full report on the IPO Law Journal.