Guest Post from Thomas C. Carey | Chair, Business Practice Group, at Sunstein LLP
The Russian war on Ukraine has resulted in a series of US sanctions and Russian countermeasures that have disrupted the coordination of patent and trademark rights between the United States and Russia.
So far, it’s been a slow year for jurisprudence in the life sciences, so I thought I would take a look at the somewhat quirky decision in Qualcomm, Inc. v. Apple, Inc., Appeal nos. 2020-1558, -1559 (Fed. Cir., February 1, 2022). I won’t pretend to understand the technology in question which involves integrated circuit devices with power detection circuits for systems with multiple supply voltages. Some of the claims in Qualcomm’s patent (U.S. Pat. No. 8,063,674) had been found obvious by the Board in an IPR proceeding, based on a combination of “applicant admitted prior art” (AAPA) that was in the patent itself and a prior art patent application that was also discussed in the ‘674 patent, Majcherczak, (2002/063364). It was conceded that all the elements of the claims in question were disclosed in these two documents, and the Board treated them as “prior art consisting of patents and printed publications” and granted Apple’s petition for IPR, then found the claims obvious.
A split panel of Judges O’Malley, Linn and Moore (dissenting) affirmed a district court ruling that the claims of U.S. Pat. No. 9,187,405 met the written description requirement (WDR) of s. 112(a). Novartis Pharmaceuticals v. Accord Healthcare Inc., Appeal No. 2021-1070 (Fed. Cir., Jan. 3, 2022). Claim 1 reads as follows:
In Biogen v. Mylan, Appeal No. 2020-1933 (Fed. Cir., November 30, 2021), a divided panel of Judges O’Malley, Reyna and Hughes affirmed a district court’s ruling that Biogen’s U.S. Pat. No. 8,399,514 is invalid for failing to meet the written description requirement [WDR] of s. 112(a). Judges Reyna and Hughes were the majority, while Judge O’Malley penned an 11-page dissent.
