Patent Litigation 2020

Patent Litigation 2020 features 23 jurisdictions. This edition of Patent Litigation provides guidance on intellectual property rights, initiating lawsuits, infringement, revocation/cancellation, trial and settlement, remedies, appeal, costs, ADR, assignment and licensing.

Last Updated: February 10, 2020

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Hogan Lovells International LLP offers clients a full range of legal services. A fast-changing and inter-connected world requires fresh thinking combined with proven experience. That's what Hogan Lovells provides. Located in the world’s key hubs, the firm advises on a range of intellectual property matters as well as litigation, M&A, corporate, and capital markets transactions. Its experience in cross-border and emerging economies gives Hogan Lovells the market perspective to be a global partner to its clients. With more than 45 offices worldwide, the firm's practice groups co-operate closely with each other, providing clients the full resources of a global firm from a single, local point of contact. The author would like to thank Daniel Brook from the London office, Dr Frederick Ch'en from the Tokyo office, Celine Crowson from the Washington, DC office, Arlene Chow from the New York office, Ana Castedo from the Madrid office, Stanislas Roux-Vaillard from the Paris office, Bert Oosting from the Amsterdam office, Luigi Mansani from the Milan office, Katie Feng and Julia Peng from the Shanghai office, Eugen Low and Andrew Cobden from the Hong Kong office, and Natalia Gulyaeva from the Moscow office.


The year 2020 promises to be another exciting one in patent litigation. The present introduction seeks to find the themes that will be keeping litigants particularly busy and casts an eye on upcoming important decision as well as political developments.

Patent courts continue to be en vogue and the increasing impact of competition law and of the enforcement of patents is undeniable. Initially this was felt in the mobile phone sector, but with the increasing interconnectedness of the consumer world the focus is now on cars, household goods, and other areas where connectivity with the internet and between devices offers new utility to manufacturers as well as users.

Europe

In Europe, the UK has become one of the more interesting fora for the determination of royalties in FRAND disputes. While, at the end of 2019, it appears that most patent infringement cases are still being launched in Germany this may change if the UK Supreme Court confirms the power of the UK courts to determine FRAND terms with global effect. This will mean that not just some of the largest telecoms disputes will be litigated in the UK courts but increasingly also other cases where FRAND may play a role. All of this at a time when the UK is leaving the EU and can potentially unburden itself from some of the organisation's unwelcome regulation, including in the area of civil procedure.

As regards the Unified Patent Court (UPC), with the UK now finally scheduled to leave the EU on 31 January 2020 it appears doubtful that the German Constitutional Court, the Bundesverfassungsgericht – despite an announcement to this effect by one of its judges – will be able to rule on the constitutionality of the UPC under German law in time for the UK to still participate in the new system. This will depend largely on the exit agreement the UK will be able (and willing) to negotiate with the EU.

In France, the Paris Court of First Instance granted its first "anti-anti-suit" injunction in 2019, ordering two phone manufacturers to withdraw the motion for an anti-suit injunction which they had filed in the United States against a standard-essential patent (SEP) holder, insofar as this motion targeted patent infringement proceedings before the French Courts. In its decision of November 2019, the French court ruled that, except in very specific circumstances, anti-suit injunctions constitute an inadmissible interference with the jurisdiction of national courts.

Likewise, the French legislator created the new Article L. 612-12, I, 7° of the French Intellectual Property Code which makes lack of inventive step grounds for rejection of a domestic French patent application at the examination level by the French patent office (INPI). This provision will come into force on 22 May 2020, and will be applicable to domestic French patent applications filed as of this date.

In 2020, Article L. 613-23 will be inserted into the French Intellectual Property Code, creating an after-grant opposition procedure against French patents issued by INPI to allow third parties to request the revocation or modification of a French patent through administrative proceedings. Any party will be able to oppose the granted patent within nine months from the publication of the grant in the French patent office gazette.

In Germany, an important change took place in 2019 when the presiding judge of the Federal Supreme Court's Xth (patent) senate, hearing patent appeals in both nullity and infringement actions, was promoted to presiding judge in the Supreme Court's newly established cartel law senate (also the XIIIth senate). This new division will likely also decide FRAND matters unless they are taken by the patent senate.

A large number of new patent infringement cases in Germany were filed in 2019. Owners of standard-essential and non-standard-essential telecoms and semiconductor patents brought proceedings against companies in the automotive industry. Although the numbers of cars made in Germany is much smaller than the number of phones sold there, the value of a car is, of course, much higher so patentees are hoping for further substantial revenue.

This development has been countered by a massive lobbying effort in Germany, which has led to a recently published draft change in the Patent Act which provides for a number of measures to avoid unjustified injunctions (and thus reduce the pressure on defendants to settle on unjustified terms before the whole case (including validity) has been heard. Specifically, the draft provides for an accelerated "preliminary" review of nullity actions in the Federal Patent Court with a view to giving the infringement judge a qualified opinion on validity before deciding on a possible injunction. In addition, the proposed changes address the often-criticised lack of discretion of German judges in granting injunctions.

The draft purports to convert into written legislation the case law established by the German Supreme Court in 2016 (Heat Exchanger) according to which a defendant is entitled to an exemption from injunctive relief where he or she has unsuccessfully attempted to license the patented technology, the enforcement of the injunction would cause the defendant irreparable harm in relation either to its entire operation or the operation of a division, and where because of the value of the invention relative to the value of the product in question the grant of an injunction seems disproportionate. The proposed amendments, however, only mention proportionality and otherwise refer to the Heat Exchanger decision. It remains to be seen whether the German Parliament will actually implement the draft "as is". At present, under the Heat Exchanger decision, the courts already have discretion to refuse injunctions in cases where an injunction would be a disproportionate remedy so there does not seem to be much need for a rushed decision-making process.

In addition, the draft also proposed a long-awaited confidentiality regime for patent cases. 

As far as Italy is concerned, the enforcement and validity of second-medical-use patents are expected to continue to be hot topics in patent litigation. Although often raised, an alleged lack of plausibility of these claim types is an issue only rarely addressed by Italian courts (we are aware of a couple of precedents, one of them very recent, delivered by the court of Milan on 24 July 2019, Judgment No 7427/2019, Actavis v AstraZeneca, fulvestrant formulation). Indeed, while the court of Milan dismissed the lack of plausibility objection in that case, it also implicitly admitted that lack of plausibility may, in principle, lead to patent invalidity for insufficiency of disclosure. There is no consistent case law in Europe as to the relevance of plausibility as an independent invalidity ground; nor is there a uniform approach, even at the EPO, on whether the lack of plausibility should be considered in view of either the sufficiency of the disclosure or the inventive step.

In Actavis v AstraZeneca, the court of Milan also considered the objection that use in clinical trials would have amounted to novelty-destroying prior disclosure. In that case the court denied that such disclosure took place. Second-medical-use patents are usually based on clinical data collected in trials, which are subject to strict regulation, including the informed consent of the patients. There is a potential (and almost inevitable) conflict between the need to abide by the regulations on clinical trials (that require the sponsor to provide the patients with the information on the therapy they receive) and the confidentiality that must be ensured to protect the patentability of inventions. The decision of the court of Milan does not appear to be the last word on this complex topic.

Further issues in this area concern questions as to the interpretation of second-medical-use claims (eg, whether second-medical-use claims should be regarded as product or process claims) as well as what evidence is required to prove infringement.

A further topic that is expected to receive attention in the next months is contributory infringement. A recent judgment handed down from the Italian Supreme Court (Judgment No 29252/2019 of 12 November 2019, Profilumbra v Profitalia) addressed for the first time the interpretation of the statutory provision on contributory infringement (which was introduced in the Italian IP Code in 2016 having previously only been acknowledged by case law). The interpretation by the Supreme Court addresses the statutory requirement that the contributory infringer shall provide an "essential element" of the invention, which did not play a major role in earlier case law. Italian courts can be expected to further elaborate on the circumstances that may justify a contributory infringement, including for the infringement of second-medical-use patents.

Dutch Courts have always held that injunctions are "automatic" in actions on the merits and that the court must grant an injunction if it finds the patent valid and infringed. In preliminary injunction actions, the patentee does not have a right to the injunction and the injunction is not "automatic". The court has discretion to grant or refuse the injunction based on a balance of interests. There is an ongoing debate in the Netherlands over whether the "automatic" injunction is in line with CJEU case law and Article 3 (2) of the IP Enforcement Directive that provides that injunctions must be "effective, proportionate and dissuasive".

Declarations of Non-Infringement are readily available in the Netherlands. The court may grant a Declaration of Non-Infringement if the claiming party has a "sufficient interest" in such a Declaration. This threshold is not high and is generally easily met. The courts have also granted Declarations of Non-Infringement in view of supplementary protection certificates (SPCs). In the past, on one occasion, the courts also granted a so-called "Arrow Declaration" regarding patents and patent applications (divisionals) covering the product at issue and recently accepted jurisdiction to hear Arrow Declarations (Pfizer v Roche in re Avastin/Bevacizumab).

The Netherlands implemented the EU Trade Secrets Directive on 28 October 2018. The new Netherlands Trade Secrets Protection Act introduced changes to the rules of procedure including the introduction of the possibility of a "confidentiality club" allowing for access to certain trade secret information under confidentiality for a limited number of individuals.        

There have also been developments on the protection of confidential information in patent litigation. A "confidentiality club" mechanism was recently introduced into Dutch law through the implementation of the EU Trade Secrets Directive for trade secrets cases involving misappropriation of trade secrets. The District Court of The Hague and the Court of Appeals of The Hague have recently decided that the "confidentiality club" mechanism can also be applied in IP cases.

Important decisions of the Netherlands Supreme Court and the Court of Appeals of The Hague are expected in 2020 in proceedings between Lilly and Fresenius on Pemetrexed dealing with claim construction, equivalence and claim amendments for formal reasons during prosecution.

The Court of Appeals of The Hague has given guidance on the interpretation of the CJEU decision in Huawei v ZTE and the standards for assessing FRAND defences under Netherlands law.

Finally, on the FRAND front, the Dutch courts have sided with the English rather than the German courts. In its decision in Philips v Asus of 7 May 2019, the Court of Appeals considered that the steps set out in Huawei v ZTE are "not a strict set of rules but rather guidelines" for good faith negotiations. If the holder of a standard-essential patent (SEP) does not precisely and completely comply with all of the steps set out in Huawei v ZTE, this does not immediately and necessarily imply that the enforcement of the SEP would constitute an abuse of a dominant position.

The Court of Appeals held that one should take the circumstances of the case into consideration. The SEP holder should inform the SEP user of its SEPs, offer a licence and enter into good faith negotiations before bringing injunction proceedings, so that the negotiations can take place without the pressure of a possible injunction. The SEP user must in response show willingness to enter into a licence and present a counter-offer within a reasonable timeframe and not apply delaying tactics.

The Court of Appeals held that Asus had not acted as a willing licensee but employed delaying tactics and granted an injunction against Asus.

We expect to see more FRAND cases before the Dutch Courts in 2020 following the patentee-friendly guidance given in the Philips v Asus decision.

In Russia, as a reaction to permanent injunctions based on the mere threat of patent infringement in favour of international pharma-producers in 2018, in 2019 generic producers tested new defensive strategies. Generic companies have now started filing secondary patents (eg, to crystalline forms of compounds). Consequently, in patent infringement proceedings the generic argues that the generic product is based on its own patent rather than the compound patent of the originator. However, this "own patent" defence did not pass the scrutiny of the Russian Court for IP rights. In reaction to this, the generic producer adopted a new defence strategy by bringing a compulsory licence claim stating that its own patent was dependent on the originator's patent. The case law on compulsory licences in Russia is sparse, some cases are still pending and the statutory criteria for compulsory licences ("significant economic advantage" and "important technical achievement") are vague without further clarification by the Russian courts. That guidance is expected in 2020.

While the generic producers are still working on refining their defensive strategies, the patentees succeeded in a patent linkage type claim which requires that a generic producer to withdraw price registration for a generic product covered by the originator's patent. This claim is granted to secure the generic producer's compliance with the injunction granted, as without such registration the generic cannot be commercialised via state tenders. All the above speaks to the fact that the Russian pharma-litigation environment remains fairly dynamic and not at all one-sided in terms of IP protection and enforcement despite existing biased views. We see international pharma-businesses prevailing in complex patent disputes before the Russian courts and local producers losing in patent infringement and patent invalidity actions. It is already clear that 2020 will lead to new and perhaps non-trivial outcomes in pharma-patent disputes in Russia. 

In 2019 the Spanish courts continued to interpret the new Patents Act afresh (Law 24/2015, of 24 July 2015), which came into force in April 2017. The law includes new rules in a number of rather relevant, previously unregulated areas and changes some of the old law. For example, the law provides for the possibility of filing protective briefs, changing some aspects of the process developed by the practice of the Barcelona courts in prior years, in particular in the context of actions taken by patentees before and during the Mobile World Congress held in Barcelona every February. The new law also includes provisions on claim limitations – which had already been allowed in practice by some courts under the Patents Act of 1986 – and now requires the patentee to file the limitation at the same time as its defence against invalidity. Some uncertainty still exists with respect to the changes in the process for the assessment of damages caused by the infringement, which the new law moved to the enforcement phase – ie, after a judgment declaring the infringement has been rendered. The uncertainties that are being slowly clarified by the appellate courts (in particular, the Court of Appeals of Barcelona), relate, inter alia, to the timeline for hearing evidence on damages and establishing the criteria for the assessment.

A relevant development in 2019 has been the ruling of 29 May 2019 by the Court of Appeals of Barcelona in which the court changed its long-standing position of rejecting the defendants' petitions to suspend the national infringement proceedings pending opposition proceedings before the EPO. In the case at hand, the court concluded that the opposition proceedings were prejudicial to the Spanish litigation and ruled in favour of the suspension considering that it should be for the court – and not for the parties – to decide whether or not to suspend the proceedings taking into account the specific circumstances of the case. In the case at stake, the enforced patent had been limited by the EPO's Opposition Division and the Board of Appeals had agreed to accelerated proceedings in view of the litigation pending in Spain. Before that decision, the Spanish courts had required the agreement of the parties to suspend the national infringement proceedings which did not exist in this case.

The Barcelona Patent Courts will be busy at the beginning of 2020 (and a number of rulings are expected to be issued in the field of telecoms patents and SEPs) with the implementation of the IP Fast Action Protocol issued each year to expedite the handling of IP-related, unfair competition and unlawful advertising claims arising in connection with the Mobile World Congress. The Protocol has proven to be effective in providing companies with a quick judicial response to their petitions to protect their IP rights. As in prior years, a number of protective briefs, pre-trial inspection proceedings and ex parte preliminary injunctions proceedings will be filed during that time and processed by the courts on an urgent basis (24-48 hours) according to the Protocol.

The UK Supreme Court provided two decisions in 2019 – one making it slightly easier for inventors to successfully claim compensation from their employers and the other effectively blessing the lower courts' approach on inventive step. The Supreme Court also heard the joined appeals in relation to global FRAND licences being considered and set by the UK courts as part of the injunction considerations on SEP patents – judgment is expected early in 2020. It is anticipated that the UK courts will continue to play a role in seeking to resolve global licensing disputes going forwards. Sufficiency is on the Supreme Court's agenda for 2020.

Asia

In Japan, the 2019 revision to the Patent Act was enacted to provide a new discovery (disclosure) process allowing plaintiffs to request the inspection of defendants' facilities by a neutral expert to be designated by the court. Unlike the US, and some European jurisdictions, Japan does not currently have an extensive discovery or disclosure system. In order to assist less well-resourced companies in obtaining potentially relevant evidence of patent infringement, the courts will now permit certain specialists to conduct inspections of facilities based in Japan, not dissimilar to the continental European systems for search and seizure (with some modifications to alleviate concerns about the disclosure of trade secrets). The evidence-gathering provisions of the 2019 revision to the Patent Act will enter into force on 1 April 2020. This may become a powerful tool for some patentees bringing patent infringement actions.

In another patentee-friendly development in Japan, in addition to previously available damages for actual lost profits, the revised Patent Act provides for further damages of reasonable royalties based on the volume of infringing products sold.

For non-Japanese participants in the Japanese patent system, a welcome development has been the update of the Japan Patent Office's website for providing patent information, J-PlatPat. This website has been updated with a new English-language user interface, improved machine-translation quality, and next-day status updates on examinations, trials, and appeals.

Another area of on-going change is in respect of the "patent linkage" in the field of life sciences. Historically, while a patent was valid and in force, the Japanese regulator would typically refrain from granting a marketing authorisation in respect of a generic product falling within the scope of relevant patents, including while a decision of invalidity by the Japan Patent Office (ie, first instance) was being appealed to the IP High Court (ie, second instance) and beyond; now, however, it is becoming much less clear to what extent the regulator will wait for a final and binding invalidation decision (ie, after all avenues of appeal are exhausted) in respect of relevant patents, especially given the Japanese government's emphasis on, and promotion of, generic drugs in the light of the increasing cost of medicine and the aging population.

Arbitration in the International Arbitration Centre in Tokyo (IACT) and elsewhere has yet to challenge the popularity of the convenient Japanese system of court litigation and settlement. Arbitration of patent disputes may slowly become more prevalent.

Finally, a number of biologics and biosimilar patent cases continue to be the subject of dispute resolution in Japan, somewhat mirroring cases in the US and Europe. It is still unclear whether the Japanese courts will take similar positions in respect of issues already litigated elsewhere, but we expect the number of such biologics patent cases to increase, and it will be important to monitor Japan-specific developments in due course.

2019 marked the official launch of the IP Appeals Court (IP Tribunal) inside the Supreme People's Court (SPC). This new division, which hears all second instance civil infringement and administrative court actions (against decisions of the Patent Re-examination Board) related to invention and utility model patents, had its first hearing in March 2019. The IP Tribunal has already issued a few notable decisions with precedential implications. For example, in an appeal of a first instance administrative review ruling by the Beijing IP Court, the IP Tribunal clarified that with respect to pharmaceutical patents, experimental data can be submitted after filing to show sufficiency of enablement of the disclosure, but not to prove inventiveness of the patent (which should be described in the original application as filed). In another ground-breaking decision, the IP Tribunal decided to review an infringement decision and corresponding patent validity decision concerning the same parties and same patent together in one proceeding. This allowed the IP Tribunal to evaluate and apply the same claim construction for both infringement and validity assessments. We expect the consolidation of related appeals (when applicable) to continue in 2020 as it will help decrease the backlog of cases at the SPC and increase the consistency of decisions involving the same patent or issues at appeal.

It is also expected that 2020 will see a fairly robust amendment to the Chinese Patent Law. The current draft aims at strengthening patent protection with provisions such as punitive damages of up to five times the amount of actual damages for "serious wilful infringement", an extension of the design patent term from 10 to 15 years, an increase in statutory damages from a CNY1 million cap to a CNY5 million cap, circumstances for shifting the burden of proof to the infringer, and potential joint liability for internet service providers for online infringement. While the inclusion of punitive damages and the increase of nominal damages are a welcome sign for Chinese patent holders, the current draft has also been criticised for not being comprehensive enough. For example, topics like the introduction of a "patent linkage" type regime for pharmaceuticals, protection of partial designs, and more detailed guidance regarding non-practicing entity (NPE) litigation are notably missing.

Finally, 2020 will also likely see an uptick in administrative patent enforcement as a potentially viable alternative to civil litigation. In China, patent right holders can bring an administrative action based on patent infringement before a local Intellectual Property Office (IPO). Traditionally, local IPO actions have been mostly used by patentees for conducting investigations and evidence collection for the purpose of filing a civil action. That is, local IPOs are traditionally perceived as lacking the sophistication to evaluate technically complex patents (eg, inventions and utility models) as compared to the courts and, therefore, may not be willing or able to evaluate infringement. However, this view may be changing with the restructuring of the China National IP Administration (CNIPA), with a view to it taking a more proactive and expansive role in administrative law enforcement.

Hong Kong introduced a new system to allow Original Grant Patents (OGPs) on 19 December 2019. Applications for OGPs will undergo substantive examination at the Hong Kong Intellectual Property Department (IPD). Under the previous system for obtaining a 20-year invention patent, the only option available for a patentee requiring a Hong Kong patent was first to obtain a UK or Chinese patent ("designated patents"), and then re-register the designated patent at the IPD. This re-registration route, which is fairly straightforward (no local substantive examination is required) and involves a small extra cost for the holder of a designated patent, will continue so patent applicants can now choose between using the new OGP system or continuing to use the current re-registration route to obtain a Hong Kong invention patent. It remains to be seen whether there will be advantages in terms of speed to otherwise in using the OGP route. Another amendment, implemented on 19 December 2018, allows more straightforward second-medical-use claims, following the position in Europe after the changes in the European Patent Convention 2000 (EPC), so that Swiss-style claims will no longer be required in Hong Kong to protect second-medical-use inventions.

The Hong Kong judiciary has recently set up an intellectual property specialist list in the Hong Kong High Court, with a small number of designated judges who can hear patent and other IP cases. Mr Justice David Lok has been appointed as the first judge in charge of the list. The intention of having an IP specialist list is to speed up IP litigation by having greater and more efficient judge-led case management and to improve judicial expertise for dealing with IP cases. New court rules for dealing with IP cases are expected soon. These rules, together with further practice directions for cases in the IP list, are expected to be influenced by the rules currently used for intellectual property cases in England. It is also envisaged that a fast-track system will be implemented to deal with smaller IP cases, with simpler procedures, faster litigation times and, hopefully, reduced costs for litigants.

These improvements in IP dispute resolution compliment other initiatives to increase Hong Kong’s role as a regional IP dispute resolution hub. This involves leveraging the advantages of Hong Kong in international legal and dispute resolution services within China’s Greater Bay Area (GBA), covering Hong Kong and Macao, as well as nine major cities in mainland China including Guangzhou and Shenzhen, the home of many Chinese technology companies. These initiatives, and others related to improving Hong Kong’s position as a favourable place for IP trading, are expected to continue in 2020 and beyond.

United States

The year 2019 was an eventful one for US patent litigation, particularly in the life sciences and technology fields. A number of notable decisions were issued, especially with regard to proceedings before the Patent Trial and Appeal Board (PTAB), including the appealability of PTAB decisions, and even the constitutionality of the PTAB. 

Perhaps most surprisingly, the Federal Circuit determined in Arthrex, Inc. v Smith and Nephew, Inc. that the structure of the PTAB was unconstitutional because of the way administrative patent judges (APJs) were appointed. The Court struck a section of the Patent Act in order to make APJs at-will employees in an effort to correct the problem. The full Federal Circuit may hear the issue en banc, or perhaps Congress will pass legislation to allow the USPTO director or other officials to review the PTAB decisions. Even in the midst of this uncertainty, it is expected that the PTAB will remain a popular forum for challenging US patents.

In 2019, the Federal Circuit also issued several decisions determining whether certain parties have standing to appeal PTAB decisions to the Federal Circuit. In response to arguments that parties appealing PTAB decisions have “competitor standing” before the Federal Circuit, the Court has taken the stance that such competitive harm is too speculative to confer standing, noting that when the PTAB upholds a competitor’s patent claims, that decision does not economically harm the patent challenger.

The U.S. Supreme Court has also weighed in on which parties could bring challenges before the PTAB. In Return Mail, Inc. v U.S. Postal Service, the Supreme Court held that federal agencies cannot challenge patents in PTAB proceedings. The Court held that the AIA’s requirement that a “person” bring a challenge to the PTAB did not include federal agencies. In the same month, the Federal Circuit in Regents of the University of Minnesota v LSI Corp. held that state entities, such as state-run universities, are not shielded by sovereign immunity from PTAB proceedings. A petition for a writ of certiorari was filed by the University of Minnesota in September.

In addition to decisions concerning the PTAB, 2019 also witnessed the Federal Circuit handing down a number of other notable decisions. In Lone Star Silicon Innovations LLC v Nanya Tech. Corp., the Federal Circuit grappled with the interpretation of patent transfer agreements. In this case, the Federal Circuit held that Lone Star’s patent transfer agreement did not create an assignment of “all substantial rights” to the patents for Lone Star to bring an action for patent infringement. The Federal Circuit noted in this case that, despite use of language in the agreement conveying “all right, title, and interest” in the patents to Lone Star, this language was insufficient to show that “all substantial rights” had been transferred when the agreement also allowed the transferor to retain certain rights concerning the patents. Citing one-hundred-year-old Supreme Court precedent, the Federal Circuit noted that, in determining whether a patent transfer agreement results in an assignment or a licence, the court must look to the totality of the agreement. 

Another major issue dealt with by the Federal Circuit involved patent eligibility under Section 101. In July, a Federal Circuit panel in Athena Diagnostics, Inc. v Mayo Collaborative Services, LLC held that a patent on a test for diagnosing an autoimmune disease is invalid for claiming only a natural law. The full Federal Circuit declined to review the decision in an 86-page order with eight separate opinions, reflecting pressure for further consideration of patent eligibility of claims to medical diagnostic tests and detection of natural laws. The Supreme Court then denied a petition for a writ of certiorari, so it appears any changes to the standards of patent eligibility are more likely to come through Congress, rather than the courts.

Looking ahead to 2020, more precedential decisions concerning the PTAB and related jurisprudence are expected from the Supreme Court and the Federal Circuit. In late 2019, the US Supreme Court heard oral arguments in Thryv, Inc. v Click-To-Call Techs., LP, and will issue its decision in 2020. In that case, the Supreme Court must decide whether the Federal Circuit can review a PTAB decision to grant an inter partes review petition upon determining that the statutory time bar did not apply. 

Also at the Supreme Court, a petition for a writ of certiorari was filed in November following the Federal Circuit’s decision in Collabo Innovations Inc. v Sony Corp. Petitioner Collabo argues that patents granted before the Leahy–Smith America Invents Act should not be subject to PTAB review proceedings. Collabo contends that had they known PTAB proceedings created by the AIA would be so effective at invalidating patents, Collabo would not have pursued a patent. While Collabo’s argument has been met with scepticism, a ruling by the Supreme Court in favour of Collabo would exempt millions of patents from PTAB review.

At the Federal Circuit, the Court will decide whether it should give deference to the precedential decisions of the newly created Precedential Opinion Panel (POP). The POP is a panel created to decide issues involving the procedures and policies of the PTAB. Specifically, the Federal Circuit in Facebook Inc. v Windy City Innovations LLC must determine whether Chevron deference applies to POP precedential decisions. The case not only has important implications for the POP, but also underscores recent challenges to the validity of Chevron deference generally. 

Additionally, this year, the Fifth Circuit is expected to rule in Impax Labs., Inc. v Federal Trade Commission whether the Federal Trade Commission (FTC) properly blocked a payment deal between a generic and brand-name pharmaceutical company. In 2013, the Supreme Court ruled that settlements in which branded pharmaceutical companies pay generic pharmaceutical companies to delay entry into the market are not necessarily illegal. This past March, however, the Federal Trade Commission (FTC) determined that such a settlement entered into by Impax Laboratories violated antitrust laws, and blocked the payment deal. This represents the FTC’s first fully litigated case since the Supreme Court’s 2013 decision.

Author



Hogan Lovells International LLP offers clients a full range of legal services. A fast-changing and inter-connected world requires fresh thinking combined with proven experience. That's what Hogan Lovells provides. Located in the world’s key hubs, the firm advises on a range of intellectual property matters as well as litigation, M&A, corporate, and capital markets transactions. Its experience in cross-border and emerging economies gives Hogan Lovells the market perspective to be a global partner to its clients. With more than 45 offices worldwide, the firm's practice groups co-operate closely with each other, providing clients the full resources of a global firm from a single, local point of contact. The author would like to thank Daniel Brook from the London office, Dr Frederick Ch'en from the Tokyo office, Celine Crowson from the Washington, DC office, Arlene Chow from the New York office, Ana Castedo from the Madrid office, Stanislas Roux-Vaillard from the Paris office, Bert Oosting from the Amsterdam office, Luigi Mansani from the Milan office, Katie Feng and Julia Peng from the Shanghai office, Eugen Low and Andrew Cobden from the Hong Kong office, and Natalia Gulyaeva from the Moscow office.