Belcher v. Hospira – Inequitable Conduct is Still in Your Invalidity Toolbox

Ever since Therasense made it more difficult to plea and prove inequitable conduct (IC), I feel that practitioners and litigators have pushed this defense to patent infringement out of the front lines of infringement attacks. In fact, I know of only a handful of cases in the pharma space in which an inequitable conduct defense was successful.  In a sense, it has been replaced by pleas for enhanced damages, sanctions for misbehavior during litigation, and even anti-trust violations. This despite invalidations of a variety of patents post-Therasense in decisions such as GS Cleantech v. Adkins Energy, Appeal No. 2016-2231, 2017-1838 (Fed. Cir., March 2, 2020), Apotex v. UCV, 763 F.3d 354 (Fed. Cir. 2019) and Aventis Pharma. v. Hospira, 675 F.3d 1324 (Fed. Cir. 2012).

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Chemours Co. v. Daikin Industries – Back to Some IP Basics

After trying to untie the Gordian knot of patent eligibility, it is almost IP comfort food to read a Fed. Cir. decision that deals with obviousness. In Chemours Co. FC, LLC v Daikin Industries, Ltd., Appeal Nos. 2020-1289 and 2020-1290 (Fed. Cir., July 22, 2021) a split panel of Reyna (writing) and Newman (Happy Birthday!) with Dyk dissenting, reversed a PTAB final written decision that a co-polymer useful for coating cables at high extrusion speeds (30 +/- 3 g/10 minutes) is obvious. Claim 1 of U.S. Pat. No. 7,126,609 reads:

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USPTO Publishes Interim Process for Director’s Review of PTAB Decisions

Information from the USPTO:

[The USPTO’s] webpage houses useful information regarding the implementation of an interim Director review process in Patent Trial and Appeal Board (PTAB) proceedings following Arthrex.


On June 21, 2021, the U.S. Supreme Court issued a decision in United States v. Arthrex, Inc., Nos. 19-1434, 19-1452, 19-1458, 2021 WL 2519433, addressing the Constitution’s appointments clause as it relates to PTAB administrative patent judges (APJs). The court considered whether APJs are “principal officers” who must be appointed by the President with the Senate’s advice and consent, or, as the United States Patent and Trademark Office (USPTO) and the U.S. government argued, whether they are “inferior officers” who can be appointed by the Secretary of Commerce.

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Yu v. Apple – Transubstantiation of a Machine into an Abstract Idea

Every time the courts re-define a mechanical device as an abstract idea, I struggle with the rationale that is applied to evaluate the claimed subject matter for patent eligibility under s. 101. I am not a computer scientist so the Alice/Bilski notion that a computer programmed to perform a function more quickly than it can be performed by a human sitting at a desk with a pencil and paper is not a technological advance has some appeal. After all, the idea of patents being granted for computerized versions of hoary business practices threatened to overwhelm the PTO. One the other hand, Diehr warned that all inventions can be reduced to underlying principles of nature which, once known make their implementation obvious. Recently, Yu v Apple , Appeal No. 2020-1760  (Fed. Cir., June 11, 2021) exemplifies the dangers of this oversimplification when it is used to render a specialized camera claimed in U.S. Pat. No. 6,611,289 patent-ineligible. This was a split panel decision, with Judge Prost writing for Judge Taranto and Judge Newman dissenting.

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