Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.
It is Federal Circuit week here at IP Takeaways:
1. In a recent opinion from the Federal Circuit involving Sequenom and Ariosa again, the Federal Circuit ruled that a method of isolating cell-free fetal DNA from a mother’s plasma did not run afoul of Section 101 of the Patent Act as an unpatentable natural phenomenon. This may seem to be at odds with the controversial Federal Circuit opinion in 2015 finding patent claims directed to a similar phenomenon invalid under Section 101. In this recent decision, the Federal Circuit (in a 2-1 panel vote), determined that a process by which the cell-free fetal DNA was isolated from the mother’s plasma was not directed to a natural phenomenon, but rather used the natural phenomenon as part of the method. More specifically, it was determined by the inventors that fetal DNA tends to be smaller and lighter than most parental DNA in the mother’s plasma. Hence, this size difference was used as a basis to isolate the cell-free fetal DNA. Judge Reyna dissented, but the author believes he is wrong in this instance.
2. In another recent opinion out of the Federal Circuit, the Court departed from the “first-to-file” rule. The “first-to-file” rule basically says that in situations where multiple cases in different venues are filed on the same dispute, the party to a dispute that first files the case is entitled to the venue of its choice, assuming venue is proper. The first-to-file rule is fairly rigorously applied, but there are exceptions. One of the exceptions is an “anticipatory” filing (blatantly attempting to beat another party in a race to the courthouse, essentially). Here, the first-filed case in Pennsylvania was a declaratory relief case filed by the accused infringer. The accused infringer and patent owner were involved in attempting to negotiate a resolution to their dispute. The patent owner apparently agreed to defer filing of its infringement case while negotiations were pending. The accused infringer apparently dragged out the negotiations a bit, and filed first. The patent owner then filed its infringement case in New York. Because the accused infringer apparently knew that the patent owner was deferring filing during negotiations, and dragged out the negotiations, the Eastern District of Pennsylvania, acting on the patent owner’s motion to dismiss, was determined not to have abused its discretion in dismissing the case. While “abuse of discretion” is a tough standard to overcome on appeal, if the accused infringer did not conduct itself in utmost good faith, this finding is the correct one.
3. In still another recent opinion from the Federal Circuit, this one is a design patent trial (which are not that common), the Court affirmed a finding of infringement in view of what was a jury instruction on design patent functionality that was found to be correct by the Federal Circuit. There were issues with a jury instruction on the standard for finding infringement, but there was no evidence to trigger the jury instruction introduced at trial, so the error was harmless. Interesting opinion to read for design patent litigators (as this author is).