GLENN E. VON TERSCH Principal, SVPC
Initially, consider that in the six months after Alice,1 the Federal Circuit addressed Alice considerations in at least seven decisions. In contrast, during the first quarter of 2015, no precedential decisions related to Alice came down from the Federal Circuit.2 The Court found other ways to keep busy though.
Pfizer and Insite Vision hold patents related to topical administration of azithromycin for eye infections, and Insite Vision markets a corresponding commercial product—Azasite®.3 Sandoz filed an AN-DA[Abbreviated New Drug Application] for a generic version of Azasite®, including a certification that the product does not infringe valid patents, thereby challenging the unexpired Insite Vision patents.4 Sandoz ultimately challenged obviousness of the patents on appeal.5
In particular, Sandoz challenged the framing of the problem to be solved by the inventors at the District Court level.6 Insite Vision asserted and the District Court held that the problem to be solved was finding a new option for topical administration of azithromycin in the eyes.7 Sandoz argued for the much narrower problem to be solved of determining whether topical administration of azithromycin to the eyes would help with conjunctivitis—conjuntivial bacterial infections.8
The Court cites a number of cases, confirming that framing the problem the inventor sought to solve is crucial to the obviousness in-quiry.9 Moreover, the court cites to cases which make the point that defining the problem to be solved in terms of the problem solved by the invention amounts to a form of hindsight reconstruction.10 Likewise, the court points out that the inventive contribution often includes "defining the problem in a new revelatory way"11—along the lines of the classic example of the invention primarily resulting from determining what the problem was and proceeding to a solution that is now obvious in light of the determination of the problem.
Thus, the Federal Circuit here affirmed the District Court determination of the original problem for the inventors.12 From there, the Federal Circuit further affirmed the finding that Sandoz did not meet its burden to prove obviousness of the four patents.13 Additionally, the Federal Circuit affirmed a District Court decision to deny entry into evidence of information from the EPO prosecution of related applications due to an eleventh-hour presentation of the evidence.14
All in all, Insite Vision confirms that hindsight comes in many guises, and that evaluation of obviousness requires careful consideration of the state of the art at the time of invention. The District Court rose to that challenge in this case. The number of opinions addressing this issue over the years indicates that plenty of litigants feel comfortable taking the chance of finding invalidity as a result of hindsight.
Heading in an entirely different direction, Oplus Technologies sued Vizio for infringement.15 Apparently, the District Court considered the conduct of Oplus Technologies in the litigation reprehensible, making numerous findings of misconduct responsive to a motion for fees.16 However, the District Court then went on to make some contrary findings that all of these instances of misconduct did not exceed normal litigation behavior, and thus made no award of fees.17
The Federal Circuit held that in light of the findings of misconduct, failing to award fees constituted an abuse of discretion.18 Essentially, the pervasive examples of misconduct required the fee award.19 However, this case can be read as a suggestion that courts need to award fees and administer sanctions more aggressively. That is, one may read this decision as requiring that when a motion for an award of fees or sanctions is filed with a court in a case where misconduct occurs, then that court lacks discretion on whether to make an award when aware of such misconduct. Traditionally, many courts have awarded attorney fees and administered sanctions reluctantly. This opinion may signal an attempt by the Federal Circuit to encourage courts to allow motions for sanctions and attorney fee awards in cases of misconduct or specious causes of action.
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Turning to a different part of the federal code, Mr. Couture sought federal registration of the mark PLAYDOM based on actual use.20 Mr. Couture provided a website offering services related to writing and production in the entertainment industry, and used a screenshot as evidence of use in an application in 2009.21 However, no services were provided until sometime in 2010.22 A separate entity, Playdom, Inc. sought to register the same mark and met with a rejection over the registration of Mr. Couture.23 Playdom, Inc. moved to cancel the mark, and the proceedings eventually led to this appeal.24
The question for the Federal Circuit, was whether offering services would constitute use or whether actually providing services was also required, which constituted a question of first instance.25 The Federal Circuit held that both an open and notorious offer and actual provision of services were required to constitute use in commerce.26 As a result, Mr. Couture's mark was cancelled and Playdom, Inc. can proceed with its registration.27
Staying with proceedings at the Office, a pair of cases dealing with post-grant considerations also came through. In Automated Merchandising v. Lee, the Court dealt with a situation involving a settlement between the parties and an ongoing inter partes reexamination.28 Automated Merchandising (AMS) settled District Court litigation with Crane Co. after Crane requested inter partes reexamination on four AMS patents.29 AMS then argued that the litigation as dismissed constituted a decision on the merits which justified termination of inter partes reexamination of the same patents.30 The...
