April 14, 2021

Volume XI, Number 104

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2020 IP Law Year in Review: Patents

Executive Summary

In 2020, the US Supreme Court and Court of Appeals for the Federal Circuit continued to refine key aspects of intellectual property law on issues that will have an impact on litigation, patent prosecution and business strategy. This Special Report discusses some of the most important decisions.

The Federal Circuit issued several panel decisions clarifying the bounds of patent-eligible subject matter in the area of life sciences and computer technology. In the life sciences space, the court found several patents satisfied the conditions for patent eligibility. For example, the Federal Circuit found patent-eligible claims directed to preparing a fraction of cell-free DNA enriched in fetal DNA, claims directed to a method of operating a flow cytometry apparatus with a number of detectors to analyze at least two populations of particles in the same sample to be patent eligible, and claims directed to a method of treating type 2 diabetes mellitus using a DPP-IV inhibitor. In the area of computer technology, the court clarified that claims directed to an improvement to computer networks were patent eligible, but that claims directed to applying longstanding commercial practices to generic computer components remain ineligible. Given the uncertainty of patent eligibility law, questions surrounding life sciences and computer-related technology will continue to be raised in cases.

The Supreme Court issued one decision in 2020, in which it found that the Patent Trial and Appeal Board’s application of the time bar for filing a petition for inter partes review (IPR) is not appealable. The Federal Circuit issued two en banc decisions, including one decision confirming discussing the use of the phrase “consisting essentially of” in patent claims and patent eligibility of mechanical inventions.

Following on the heels of the Supreme Court’s 2017 TC Heartland v. Kraft Foods decision addressing patent venue, the Federal Circuit addressed patent venue in Hatch-Waxman litigation. The court explained that for the purposes of determining venue, infringement occurs only in judicial districts where actions related to the submission of an abbreviated new drug application (ANDA) occur, and not in all locations where future distribution of the generic products specified in the ANDA is contemplated. This ruling may have far-reaching consequences, including the ability for ANDA defendants to effectively control venue for litigation.

Patents

  1. § 101 Decisions in 2020

  2. 2020 at the Supreme Court

  3. Arthrex Decision

  4. En Banc at the Federal Circuit – Two Contentious Denials

  5. The Federal Circuit Limits Venue for Hatch-Waxman Litigation

2021 Outlook

The Supreme Court is set to hear at least two patent cases and one copyright case this term. In The United States of America v. Arthrex, Inc., the Court will consider whether PTAB judges are unconstitutionally appointed and the other addressing whether assignor estoppel and in Minerva Surgical, Inc. v. Hologic, Inc., et al., the Court will consider whether the doctrine of assignor estoppel bars an assignor from asserting invalidity of an assigned patent in district court. A decision is also expected in Google LLC v. Oracle America, Inc. on the issue of copyright ownership of application programming interfaces used in computer technology. We also expect to see many patent trials occurring toward the middle and end of 2021. The COVID-19 pandemic has created a backlog of cases that were set to be tried and parties are likely to face pressure from Court to narrow the issues to be tried. Judge Alan Albright has also made headlines and has attracted case to the filed in the US District Court for the Western District of Texas. We expect even more cases to be filed this year.

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© 2021 McDermott Will & EmeryNational Law Review, Volume XI, Number 28
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TRENDING LEGAL ANALYSIS

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About this Author

Amol Parikh, McDermott Will Emery, Chicago, patent lawyer, Intellectual Property Litigation Attorney
Associate

Amol Parikh is an associate in the law firm of McDermott Will & Emery LLP and is based in the Firm's Chicago office.  He focuses his practice on IP litigation, counseling and prosecution. Amol has been recognized as a 2011 Illinois Rising Star in Intellectual Property by Law & Politics.  Rising Stars are lawyers under the age of 40 that have been in practice for 10 years or less.  No more than 2.5 percent of the lawyers in Illinois are named as Rising Stars.

Amol has...

312-984-6477
Associate

Cecilia Choy, Ph.D., focuses her practice on intellectual property matters. She is a certified patent agent.

Prior to joining the Firm, Cecilia was an extern for the Central District of California’s Patent Pilot Program. She has volunteered with the Make-A-Wish Foundation since 2011.

Cecilia had also conducted research in the neurosurgery department at the City of Hope Cancer Center for her PhD. Her research focused on the interactions between the brain microenvironment and breast cancer cells that metastasized to the brain.

650-815-7684
Amy Mahan, PhD, McDermott Will Emery, Chicago, Illinois, intellectual property, IP, litigation, Neuroscience, University of Pennsylvania Journal of Business Law, editor
Associate

Amy Mahan focuses her practice on intellectual property litigation matters.

While in law school, Amy served as the executive editor of the University of Pennsylvania Journal of Business Law, obtained a Certificate in Engineering Entrepreneurship and served on the board of two pro bono projects: Penn Housing Rights Projects and Criminal Records Expungement project. During law school, she also interned at the Wistar Institute and the Penn Center for Innovation helping put together licensing and sponsored research agreements to help...

312-984-7742
Associate

Hala Mourad* focuses her practice on intellectual property litigation matters in federal district court and the US International Trade Commission. She works with clients to litigate patent cases spanning various technologies including consumer electronics, telecommunications, medical and surgical devices, materials engineering, and biotechnology. She has experience in all phases of litigation from pre-litigation investigations through trial and appeal.

Hala is also a registered patent attorney and has experience in contentious patent proceedings before the Patent Trial and Appeal...

404-260-8536
Associate

Colin J. Stalter focuses his practice on patent litigation, client counseling, and prosecution. He has experience working with large technology companies on complex intellectual property matters including strategic acquisitions, claim chart drafting, portfolio valuation, freedom to operate opinions, and inter partes review. Colin holds a BS in systems engineering and design, and has particular experience in the consumer electronics, telecommunications, and content delivery industries.

312-984-2718
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