Page 46 - IP Record
P. 46
44 The IP Record - 2014
IPO’s 4-Star Federal Circuit Summaries™
Gilead Sciences, Inc. v. Natco Pharma Ltd. 13-1418
LATER ISSUED, EARLIER EXPIRING could “preserve the validity of the later-expiring
PATENT QUALIFIED AS OBVIOUSNESS- patent by aligning its expiration date with that of
TYPE DOUBLE PATENTING REFERENCE the earlier-expiring patent.” This would “most
— April 23, 2014 — In an opinion by Judge effectively enforce the fundamental right of the
CHEN, a split Federal Circuit vacated a district public to use the invention claimed in the earlier-
court decision that Gilead’s ‘483 patent was not expiring patent and all obvious modifcations of
invalid. Gilead’s patents claimed antiviral com- it after that patent’s term expires.” Chief Judge
pounds and methods. Natco argued the ’483 pat- RADER, dissenting, argued for “a more re-
ent was invalid for obviousness-type double pat- strained approach.”
enting over Gilead’s ‘375 patent, which listed the
same inventors and included a similar written de-
scription to the ’483 patent, but claimed different
priority. The district court decided the ’375 patent
could not serve as a double patenting reference
because it issued after the ’483 patent.
The Federal Circuit held Gilead’s expiration
dates controlled. Gilead’s later issued, earlier-
expiring patent qualifed as an obviousness-type
double patenting reference. A terminal disclaimer
Lexmark Int’l Inc. v. Static Control Components, Inc. 12-873
FALSE ADVERTISING CLAIM UNDER Static sued Lexmark for false advertising under
LANHAM ACT REQUIRES ALLEGATION the Lanham Act. Static alleged that Lexmark
OF COMMERCIAL INJURY PROXIMATE- materially misrepresented its own products and
LY CAUSED BY DEFENDANT’S MISREP- Static’s by stating it was illegal to sell refurbished
RESENTATION — March 26, 2014 — In an cartridges and to use Static’s microchip.
opinion by Justice SCALIA, the U.S. Supreme
Court upheld a Sixth Circuit decision that Stat- The Supreme Court held Static “alleged an ad-
ic had standing to maintain its false advertising equate basis to proceed” under the Lanham Act.
claim. Lexmark sold toner cartridges for Lex- Static’s alleged injuries, including lost sales and
mark brand laser printers that included a micro- reputational damage, were “injuries to precisely
chip for disabling unauthorized cartridge reuse. the sorts of commercial interests the Act pro-
Static developed a microchip that permitted tects.” Static also suffciently alleged its injuries
Lexmark cartridges to be refurbished and resold were proximately caused by Lexmark’s misrep-
without going through Lexmark. resentations.
Lexmark sued Static for copyright violations and
Intellectual Property Owners Association
IPO’s 4-Star Federal Circuit Summaries™
Gilead Sciences, Inc. v. Natco Pharma Ltd. 13-1418
LATER ISSUED, EARLIER EXPIRING could “preserve the validity of the later-expiring
PATENT QUALIFIED AS OBVIOUSNESS- patent by aligning its expiration date with that of
TYPE DOUBLE PATENTING REFERENCE the earlier-expiring patent.” This would “most
— April 23, 2014 — In an opinion by Judge effectively enforce the fundamental right of the
CHEN, a split Federal Circuit vacated a district public to use the invention claimed in the earlier-
court decision that Gilead’s ‘483 patent was not expiring patent and all obvious modifcations of
invalid. Gilead’s patents claimed antiviral com- it after that patent’s term expires.” Chief Judge
pounds and methods. Natco argued the ’483 pat- RADER, dissenting, argued for “a more re-
ent was invalid for obviousness-type double pat- strained approach.”
enting over Gilead’s ‘375 patent, which listed the
same inventors and included a similar written de-
scription to the ’483 patent, but claimed different
priority. The district court decided the ’375 patent
could not serve as a double patenting reference
because it issued after the ’483 patent.
The Federal Circuit held Gilead’s expiration
dates controlled. Gilead’s later issued, earlier-
expiring patent qualifed as an obviousness-type
double patenting reference. A terminal disclaimer
Lexmark Int’l Inc. v. Static Control Components, Inc. 12-873
FALSE ADVERTISING CLAIM UNDER Static sued Lexmark for false advertising under
LANHAM ACT REQUIRES ALLEGATION the Lanham Act. Static alleged that Lexmark
OF COMMERCIAL INJURY PROXIMATE- materially misrepresented its own products and
LY CAUSED BY DEFENDANT’S MISREP- Static’s by stating it was illegal to sell refurbished
RESENTATION — March 26, 2014 — In an cartridges and to use Static’s microchip.
opinion by Justice SCALIA, the U.S. Supreme
Court upheld a Sixth Circuit decision that Stat- The Supreme Court held Static “alleged an ad-
ic had standing to maintain its false advertising equate basis to proceed” under the Lanham Act.
claim. Lexmark sold toner cartridges for Lex- Static’s alleged injuries, including lost sales and
mark brand laser printers that included a micro- reputational damage, were “injuries to precisely
chip for disabling unauthorized cartridge reuse. the sorts of commercial interests the Act pro-
Static developed a microchip that permitted tects.” Static also suffciently alleged its injuries
Lexmark cartridges to be refurbished and resold were proximately caused by Lexmark’s misrep-
without going through Lexmark. resentations.
Lexmark sued Static for copyright violations and
Intellectual Property Owners Association
