In previous posts “Will Formal Opinions Act as a Shield Against Charges of Induced Infringement?” and “What’s the Intent? Comparing Induced Infringement and Willfulness”, we discussed the impact of the Federal Circuit’s decision in Commil v. Cisco Systems on opinions of counsel. The Supreme Court recently overturned the Federal Circuit’s ruling in Commil, holding that a defendant’s belief regarding patent liability is not a defense to an induced infringement claim. In the opinion, the Court reaffirmed Global-Tech, which held that liability for induced infringement can only attach if the defendant knew of the patent and knew that the induced acts constitute patent infringement. The Court clarified that a person or entity who, for example, reads the patent’s claims differently than the patent holder, and the reading was reasonable, would not be liable for induced infringement. In other words, inducement “requires proof the defendant knew the acts were infringing.”2 The Court’s holding thus affirms that a reasonable opinion of counsel regarding non-infringement can be used to defend against a charge of induced infringement.
Continue Reading Written Opinions Remain Important Following the Supreme Court’s Decision in Commil

On June 12, 2015, the Federal Circuit invalidated Sequenom’s patent on fetal DNA testing (U.S. Patent No. 6,258,540; “the ’540 patent”) holding that the subject matter was not eligible for patent protection under 35 U.S.C. § 101. This is the first time that a lower court applied the Supreme Court’s ruling in Mayo Collaborative Services v. Prometheus Laboratories.
Continue Reading Federal Circuit Deals Blow to Biotech Industry and Diagnostic Method Patents

On May 7, 2015, the California Supreme Court revived a class-action lawsuit against pharmaceutical giant, Bayer AG, in which it was accused of violating the state’s antitrust law.1 A settlement agreement between Bayer and generic pharmaceutical, Barr Laboratories, is central to the dispute. In a 1997 agreement, Bayer paid Barr almost $400 million in cash, and Barr in turn withdrew its challenge on the validity of Bayer’s ciprofloxacin patent (i.e., U.S. Patent No. 4,670,444) and agreed to postpone marketing a generic version of Cipro until the patent expired. Ciprofloxacin was Bayer’s bestselling antibiotic, generating $6 billion in gross sales between 1997 and 2003. The 1997 settlement between Bayer and Barr produced a wave of state and federal antitrust suits. This appeal arose from nine such coordinated class action suits brought by indirect purchasers of Cipro in California against Bayer and Barr.2
Continue Reading Reverse Settlement Payments in Patent Disputes Come Under Scrutiny Under Both Federal Law and State Antitrust Law

In a separate post, we discussed induced infringement of method claims in view of the Supreme Court’s review of Commil USA v. Cisco Systems.1 In this post, we discuss the differences in the standards for proving willful infringement and induced infringement, and the opinion requirements, if any, for each.


Continue Reading What’s the Intent? Comparing Induced Infringement and Willfulness

In Commil v. Cisco Systems, the Federal Circuit held that “evidence of an accused inducer’s good-faith belief of invalidity may negate the requisite intent for induced infringement.”i The court’s opinion did not describe the kind of proof needed to show good faith, but it is reasonable to expect that a competent opinion of counsel may meet this requirement. This holding potentially underscores the value of invalidity opinions, particularly in the context of method of treatment claims. In fact, in Commil, the court reiterated that opinions of counsel regarding non-infringement are admissible to show the defendant’s state of mind and its bearing on indirect infringement.ii The Federal Circuit has now further opened the door to allow the existence of an invalidity opinion to negate the intent required to demonstrate inducement of infringement. The Supreme Court granted certiori and heard oral arguments in this case on March 31, 2015.


Continue Reading Will Formal Opinions Act as a Shield Against Charges of Induced Infringement?

In Commil v. Cisco Systems, the Federal Circuit held that “evidence of an accused inducer’s good-faith belief of invalidity may negate the requisite intent for induced infringement.” CITE. The court’s opinion did not explore the proof needed to show good faith, but it is reasonable to expect that a competent opinion of counsel may meet this requirement, potentially resurrecting the importance of invalidity opinions.


Continue Reading For Indirect Infringement, Will Opinions of Counsel Regarding Invalidity Become More Relevant? If so, Invalidity Where?

Judge Newman’s dissent in Enzo Biochem, Inc. v. Applera Corp., 780 F.3d 1149 (Fed. Cir. 2015), demonstrates that the Federal Circuit is struggling with how much deference it is supposed to give in the review of claim construction in view of the Supreme Court’s ruling in Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831 (2015).


Continue Reading Federal Circuit Reluctant to Relinquish Control of Claim Construction