The words mean what they say…

Short and sweet today, from the Federal Circuit.

In an appeal captioned SmartMetric v Amex, the Federal Circuit ruled, perhaps unsurprisingly, that the following claim language did not encompass the use of contactless smart cards (such as RFID cards):

“insertion of said data card into said data card reader” (emphasis added).

Smartmetric argued that insertion…into covered “a card being ‘passed near’ a card reader,” but to no avail. 

Who knew that things could sometimes be so clear (especially in patent law)?

Mayo Collaborative Services v. Prometheus Laboratories: Supreme Court Limits the Scope of Patent Claims to Diagnostic Methods

This morning, the Supreme Court of the United States handed down its unanimous opinion in Mayo Collaborative Services et al. v. Prometheus Laboratories, Inc., reversing the Federal Circuit’s earlier ruling that the diagnostic-method patent claims at issue are patentable subject matter under 35 U.S.C. Sec. 101.

In making this ruling, the Court reaffirmed the guidance from its case law that although “an application of a law of nature . . . to a known structure or process may [deserve] patent protection,” “a patent must do more than simply state the law of nature while adding the words ‘apply it.'” (Citing Diamond v. Diehr, 450 U. S. 175, 185 (1981), and Gottschalk v. Benson, 409 U. S. 63, 71–72 (1972)) (emphasis in original).  “[The patent] must limit its reach to a particular, inventive application of the law.”  Opinion at 1 (Syllabus).  In the end, the Court held Prometheus’s claims to be unpatentable subject matter because (1) the claims inform the audience about a law of nature; (2) the steps of implementing the law of nature are “understood, routine, conventional activity”; and (3) the steps, even when viewed as a whole, “add nothing significant beyond the sum of their parts taken separately.”  Opinion at 11.

Santorum, Romney, Gingrich, and 1000 others on the hook for patent infringement?

I draft this post with minimal comment because I don’t know what to make of this complaint: EveryMD v. Rick Santorum et al.  It’s short enough (six pages) that you can read the entire thing for yourself in less than five minutes.

In sum, EveryMD is suing Rick Santorum, Mitt Romney, Newt Gingrich, and several thousand other John Does in the Central District of California for infringement of EveryMD’s patents.

I would guess that EveryMD’s actual target is Facebook, and that this is meant to put pressure on Facebook for settlement purposes, but that’s just a guess.  It appears that Facebook has at least one of EveryMD’s patents in reexamination, and rejected at least one EveryMD offer to license its patents.

Here are links to the patents recited in the complaint (at Google Patents):

U.S. Patent No. 6,671,714

U.S. Patent No. 7,644,122

Litigating? Be nice or face the wrath.

In an order dated January 26, 2012, Chief Judge Gerald Rosen of the Eastern District of Michigan sua sponte sanctioned plaintiffs’ counsel $1,000.   The offense?   The “transparent gamesmanship” of opposing the defendant’s out-of-time Answer to plaintiffs’ Amended Complaint.

You can definitely hold the other side’s feet to the fire, but be careful that you don’t fuel the fire with dollar bills.

RBC Capital Markets ANDA Litigation Analysis

RBC Capital Markets undertook an exhaustive analysis (PDF, h/t AmLaw Litigation Daily) of pharmaceutical litigation related to abbreviated new drug applications (ANDAs). These cases involve challenges by a generic drug company to the market occupied by an innovator (or brand-name) drug company.

Some interesting bits from the report:  

-Over the last decade, the overall success rate for the generic drug industry is 48% for cases that have gone to trial. However, the success rate increases to 76% when settlements are included. Over half of all cases are settled or dropped.

-The top three courts by volume — NJ, DE and SDNY — accounted for 69% of all decisions. Unfortunately, these courts have a combined success rate of just 36% for generics.

-Patent challenges remain on the rise with a record 65 new first-to-file lawsuits in 2009, up from 51 in the prior year and more than double the number just three years ago.

-The top five judges by volume accounted for 31% of the total decisions. These five judges ruled in favor of generics only 33% of the time. The total success rate, however, including settlements is 75%.

I am impressed with the depth of research that went into this report, and recommend it to everyone for a read. However, I have one minor quibble. Although the report concludes that “while patent challenges by generics are extremely common, winning is not,” I’m not sure that is completely accurate. The authors state that “winning is not” common, but also say that the “success rate” is 76% (including settlements). I think that it is quite possible to consider settlement a “win,” depending on the terms.

Suppose, for example, that the ANDA litigation will cost the generic provider $10 million over a couple years.  Suppose, as well, that the generic provider has a quite strong position on patent invalidity and/or noninfringement. As a result, the generic provider has a strong negotiating position relative to a settlement and may easily gain a financial windfall without a clear “win” in the case.

For example, in a recent case (Medicis v. Teva, over a generic version of Solodyn), the parties settled, but not until after Teva made an at-risk launch of its competitive drug. How much do you suppose Teva profited during the few days the product entered the market? Quite possibly more than the money it spent (and would spend) on litigation. In addition, Teva was cleared of all damages liability for those sales as part of the settlement. Finally, Teva gained the right to enter the market no later than November 2011.  All in all, Teva gained profits, security, and a certain entry into the market at a later date.  Sounds like a win, even if not at trial.