The following telephone arguments will be available to the public live. Access information will be available by 9 AM ET each day of argument at: http://www.cafc.uscourts.gov/public-access-arguments.
September 2, 2020
In Re Sorensen, No. 19-2347
This appeal arises from examination of Sorenson's U.S. Patent Application No. 13/838,614 ("the '614 application"), which discloses and claims a computer-implemented system for collecting and analyzing shopper data to determine the need for extra help in a store. The system includes three components: A sensor system, a data analyzer, and an alert device. The Examiner rejected all of the pending claims under 35 U.S.C. § 101 as directed to patent-ineligible subject matter. The Patent Trial and Appeal Board ("PTAB") affirmed the Examiner's rejection under the two-step framework established in Alice Corp. Pty. Ltd. v. CLS Bank International, 573 U.S. 208 (2014). First, under Alice step one, the PTAB determined that all of the algorithmic steps described in claims of the '614 application pertain to elements of managing personal behavior, relationships, interactions between people. Hence, the subject matter of the claims is directed to a method of organizing human activity, which is an abstract idea. The PTAB also found that the three system components in the claims require only generic computer hardware implementation, which is insufficient to render the claims patent-eligible under Alice step one. Then, under Alice step two, the PTAB similarly determined that these components did not amount to significantly more than the claimed abstract idea, and their functions were well-understood, routine, and conventional. Thus, these additional claimed elements were also insufficient to transform the abstract idea into a patent-eligible invention under Alice step two.
Sorenson appeals to the Federal Circuit, arguing that the PTAB erred in its § 101 analysis under both steps of Alice. First, Sorensen argues that, under step one, the claims describe "an alarm system" applying algorithmic steps, and hence are not directed to an abstract idea. Second, Sorensen maintains that the claims recite a technological application that improves monitoring and tracking in-store service needs, which renders the abstract idea patent-eligible under step two. Finally, Sorenson argues that the PTAB's method of § 101 analysis was improper, because it dissected the new claim elements (e.g., the algorithmic claim steps) from the old or generic elements (e.g., the hardware elements in the claims) and only focused on the new elements in determining patent ineligibility. Sorenson asserts that this method of analysis contradicts Diamond v. Diehr, 450 U.S. 175 (1981), which holds that claims should be analyzed as a whole. The Patent and Trademark Office ("PTO") responds by first arguing that while the claims comprise an alarm device, they as a whole are directed to a method of organizing human activity, which the PTAB rightfully found to be an abstract idea under step one. For step two, the PTO maintains that while using the computer system components may improve service efficiency, mere application of the abstract idea using these generic components is still insufficient to render it patent eligible. Finally, the PTO agrees that claims should be read as a whole, but argues that the PTAB did precisely that during its Alice analysis.
September 2, 2020
Amarin Pharma, Inc. v. Hikma Pharmaceuticals USA, No. 20-1723
Amarin filed patent infringement suits against Hikma and Dr. Reddy's, who filed abbreviated new drug applications ("ANDA") to market generic versions of Amarin's drug VASCEPA®. Amarin asserted six patents that claim methods of treating severe hypertriglyceridemia using pure EPA, an omega-3 oil, without simultaneously raising "bad" cholesterol (LDL-C) levels to increase the risk of cardiovascular disease. Both Hikma and Dr. Reddy's asserted noninfringement and invalidity. The district court invalidated Amarin's patents, finding that the defendants established by clear and convincing evidence that all asserted claims in the patents-in-suit are prima facie obvious based on prior art about EPA. Considering the objective indicia of nonobviousness, the district court found that Amarin's evidence of long-felt need and commercial success were outweighed by the other secondary considerations, which favored Hikma. Additionally, the court's analyses of motivation to combine and reasonable expectation of success also favored the defendants.
Amarin appeals, seeking reversal of the district court's obviousness decision. First, Amarin argues that the district court erred by establishing a prima facie case of obviousness without considering all objective indicia of nonobviousness at the same time, thus succumbing to hindsight bias. Second, Amarin maintains that the district court improperly weighed the objective indicia that were found to be in favor of Amarin against those that were not, essentially requiring Amarin to prove every objective indicia or have it count against nonobviousness. Furthermore, Amarin argues that the court's hindsight bias and its premature conclusion of obviousness also extended to its analysis on motivation to combine and reasonable expectation of success, shifting the burden for Amarin to prove nonobviousness while Hikma had not proved obviousness with clear and convincing evidence. In response, Hikma argues that it is entirely appropriate for the court to first find a prima facie case of obviousness and then consider any countervailing secondary objective indicia, citing Novo Nordisk A/S v. Caraco Pharmaceutical Laboratories, Ltd., 719 F.3d 1346 (Fed. Cir. 2013) as support. Hikma also argues that the court did not pit categories of objective indicia against each other, but simply found that certain indicia were weak and did not weigh in favor of nonobviousness. Hikma further maintains that the district court adhered to precedent such as Novo and did not engage in burden shifting, and that the court's analyses on motivation to combine and reasonable expectation of success did not amount to clear error.
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