Divided Patent Infringement and Inducement: Protecting IP Rights and Allocating Liability

Recording of a 90-minute premium CLE webinar with Q&A


Conducted on Tuesday, January 21, 2020

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Program Materials

This CLE webinar will guide counsel on handling divided infringement claims when enforcing patent rights. The panel will review recent court decisions and outline steps to protect IP rights and allocate liability in the event of an infringement.

Description

The Federal Circuit's decision in Eli Lilly & Co. v. Teva Parenteral Medicines, 845 F.3d 1357 (Fed. Cir. 2017) establishes how Akamai’s divided infringement test applies to claims of induced infringement. Ensuing cases have shed further light on the application of Akamai’s divided infringement standard. In Travel Sentry Inc. v. Tropp, 877 F.3d 1370 (Fed. Cir. 2017), the Court held a defendant liable for the acts of a third party when the third party “hop[ed] to obtain access to certain benefits” but could do so only by performing certain steps identified by the defendant, and under the defendant’s prescribed terms.

Since Travel Sentry, the Court has continued to clarify the standard for divided infringement in Nalco Co. v. Chem-Mod, LLC, 883 F.3d 1337 (Fed. Cir. 2018) and induced infringement in Sanofi v. Watson Labs. Inc., 875 F.3d 636 (Fed. Cir. 2017), Vanda Pharm., Inc. v. West-Ward Pharm. Int’l Ltd., 887 F.3d 1117 (Fed. Cir. 2018), and HZNP Meds. LLC v. Actavis Labs. UT, Inc., 940 F.3d 680 (Fed. Cir. 2019).

As the landscape of divided and induced infringement continues to evolve, practitioners counseling clients must fully grasp the Federal Circuit's stance on culpability for actively performing steps of a claimed method or inducing others to do so. In the pharmaceutical/Hatch-Waxman context, the presence of the FDA-approved label and the proposed generic label give rise to additional considerations.

The panel will analyze Supreme Court cases setting the standard for proving the required knowledge for induced infringement, such as Commil USA, LLC v. Cisco Sys., Inc., 135 S. Ct. 1920 (2015) and Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754 (2011). The panel will also explore the Federal Circuit’s recent treatment of those cases in Omega Patents, LLC v. CalAmp Corp., 920 F.3d 1337 (Fed. Cir. 2019).

Practitioners must arm themselves with litigation strategies to assert or defend against direct and induced infringement. Our panel will guide counsel on handling divided infringement claims when enforcing patent rights. The panel will review recent court decisions and outline steps to protect IP rights and allocate liability in the event of an infringement.

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Outline

  1. Court treatment
  2. Strategies for protecting IP rights
    1. Patent prosecution
    2. Patent claim drafting considerations
    3. Assessing risk of partnerships to allocate potential liability
    4. Litigation issues and strategies

Benefits

The panel will review these and other key issues:

  • How are the federal courts treating the issue of divided infringement?
  • What is guidance in recent decisions concerning the agency relationship and infringement?
  • What steps can companies and counsel take to assess their risk when partnering with other companies to minimize potential exposure?

Faculty

Browning, Paul
Dr. Paul W. Browning

Partner
Finnegan Henderson Farabow Garrett & Dunner

Dr. Browning focuses on patent litigation and appeals. He has led teams as first chair at trial, at Markman...  |  Read More

Irving, Thomas
Thomas L. Irving

Partner
Finnegan Henderson Farabow Garrett & Dunner

Mr. Irving has 35 years of experience in the field of IP law. His practice includes due diligence, patent prosecution,...  |  Read More

Rudolph, Barbara
Barbara R. Rudolph, Ph.D.

Partner
Finnegan Henderson Farabow Garrett & Dunner

Dr. Rudolph has successfully litigated complex Hatch-Waxman Paragraph IV Abbreviated New Drug Application and...  |  Read More

Joseph M. Schaffner
Joseph M. Schaffner

Atty
Finnegan Henderson Farabow Garrett & Dunner

Mr. Schaffner focuses his practice on district court litigation, proceedings at the Patent Trial and Appeal Board...  |  Read More

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