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Nov 30, 2021
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Fresh From the Bench: Latest Federal Circuit Court Cases

CASES OF THE WEEK

Indivior UK Ltd. v. Dr. Reddy’s Laboratories S.A., Appeal Nos. 2020-2073, -2142 (Fed. Cir. Nov. 24, 2021)

Our Case of the Week this week focuses on the written description requirement when the patent claims a range.  The Court addressed a circumstance where the application disclosed a number of values within a range, but did not disclose the range itself.  Ultimately, the Court found claims reciting the ranges did not have written description support, but found a claim to a single value to have been supported by the written description.  This is a somewhat unusual case because it is a case involving written description support arising from an inter partes review—a procedure that does not provide Section 112 defenses.  The issue was raised here in the context of a priority date dispute in relation to continuation patent applications.

Read More.

By Nika Aldrich

ALSO THIS WEEK

The Court issued for the first time a redacted copy of a previously-sealed opinion, originally issued on October 22, 2021.

University of South Florida Research Foundation, Inc. v. FujiFilm Medical Systems U.S.A., Inc., Appeal No. 2020-1872 (Fed. Cir. Public Opinion Issued November 23, 2021)

On an appeal from a district court order dismissing a case for lack of standing, the Federal Circuit reversed and remanded for further consideration.  The case involves statutory and Constitutional standing for a licensee of a patent.

A mere licensee of a patent does not have statutory standing to sue for infringement unless it has obtained all substantial rights in the patent.  Determining whether a licensee has obtained all substantial rights requires examining the totality of the license agreement, including two critical factors: (1) whether the licensee has obtained the exclusive right to make, use, and sell the licensed patent; and (2) whether the licensor has retained any right to sue for infringement of the licensed patent.  Where a licensor retains an option to sue for infringement (even if that option only comes into play if the licensee first elects not to sue), or where the licensee must consider the licensor’s interests when determining whether or how to sue for infringement, these factors will likely weigh against the licensee.  In this case, both license agreements under which plaintiff claimed rights were silent on whether it could sue for infringement.  The licensor, the University of South Florida, also reserved the right to make, have made, develop, import, and use the subject invention for internal research, clinical, and educational purposes. The Federal Circuit held that USFRF was a mere licensee and therefore did not have statutory standing to sue for infringement on its own.

But the Federal Circuit reversed the District Court on the issue of Constitutional standing, holding that while USFRF did not obtain all substantial rights, it did gain at least one exclusive right to the patent-in-suit (the specific right was redacted from the public opinion), and that receiving at least one exclusive right satisfied constitutional standing.  The Federal Circuit remanded back to the District Court to determine whether USFRF could join USF to cure USFRF’s lack of statutory standing.

A copy of the opinion can be found here.

By Tyler Hall

Edited by: Scott D. Eads and Nika Aldrich, Schwabe Williamson & Wyatt

Contributor: Tyler Hall