Justia Patents Opinion SummariesArticles Posted in US Court of Appeals for the Ninth Circuit
ZACHARY SILBERSHER, ET AL V. VALEANT PHARMACEUTICALS INT’L, ET AL
Plaintiff alleged that Valeant fraudulently obtained two sets of patents related to a drug and asserted these patents to stifle competition from generic drugmakers. Plaintiff further alleged that Defendants defrauded the federal government by charging an artificially inflated price for the drug while falsely certifying that its price was fair and reasonable. Dismissing Plaintiff’s action under the False Claims Act’s public disclosure bar, the district court concluded that his allegations had already been publicly disclosed, including in inter partes patent review (“IPR”) before the Patent and Trademark Office. The Ninth Circuit reversed the district court’s dismissal. The panel held that an IPR proceeding in which the Patent and Trademark Office invalidated Valeant’s “‘688” patent was not a channel (i) disclosure because the government was not a party to that proceeding, and it was not a channel (ii) disclosure because its primary function was not investigative. The panel held that, under United States ex rel. Silbersher v. Allergan, 46 F.4th 991 (9th Cir. 2022), the patent prosecution histories of Valeant’s patents were qualifying public disclosures under channel (ii). The panel assumed without deciding that a Law360 article and two published medical studies were channel (iii) disclosures. The panel held that the “substantially the same” prong of the public disclosure bar applies when the publicly disclosed facts are substantially similar to the relator’s allegations or transactions. None of the qualifying public disclosures made a direct claim that Valeant committed fraud, nor did they disclose a combination of facts sufficient to permit a reasonable inference of fraud. View "ZACHARY SILBERSHER, ET AL V. VALEANT PHARMACEUTICALS INT'L, ET AL" on Justia Law
ZACHARY SILBERSHER V. ALLERGAN, INC.
Relator alleged that Defendants prevented generic drug competitors from entering the market. Relator alleged that this permitted defendants to charge Medicare inflated prices for the two drugs, in violation of the False Claims Act. The district court denied Defendants’ motion to dismiss based on the False Claims Act’s public disclosure bar, which prevents a relator from merely repackaging publicly disclosed information for personal profit by asserting a claim under the Act.The Ninth Circuit held that an ex parte patent prosecution is an “other 4 UNITED STATES EX REL. SILBERSHER V. ALLERGAN Federal . . . hearing” under 31 U.S.C. Sec. 3730(e)(4)(A)(ii). Thus, the public disclosure bar was triggered. The Ninth Circuit expressed no opinion on whether Relator still could bring his qui tam action because he was an “original source” of the information in his complaint. The court remanded to the district court for further proceedings. View "ZACHARY SILBERSHER V. ALLERGAN, INC." on Justia Law
CPC PATENT TECHS. PTY LTD. V. APPLE, INC.
Appellant CPC Patent Technologies PTY Ltd. (“CPC”) sought documents to use in a potential lawsuit in Germany against an affiliate of appellee Apple, Inc. CPC filed an application in federal court seeking to compel Apple to turn over these documents pursuant to 28 U.S.C. Section 1782, which allows district courts to provide discovery assistance to foreign or international tribunals. After a magistrate judge denied the petition, a district judge reviewed the magistrate judge’s decision for clear error and declined to overturn it.The Ninth Circuit vacated the district court’s order and remanded for further proceedings because the district judge should have reviewed the magistrate judge’s decision de novo.Applying 28 U.S.C. Section 636(b) and its procedural counterpart, Fed. R. Civ. Pro. 72, the court held that CPC’s Section 1782 application was a dispositive matter because the magistrate judge’s order denied the only relief sought by CPC in this federal case: court-ordered discovery. Because both parties did not consent to the magistrate judge's jurisdiction, the magistrate judge lacked jurisdiction to enter an order denying the application, and the district court should have treated the magistrate judge’s ruling at most as a non-binding recommendation subject to de novo review. The court, therefore, remanded for the district court to apply the correct standard of review and left it to the district court to determine whether the case would benefit from further analysis and review by the magistrate judge. View "CPC PATENT TECHS. PTY LTD. V. APPLE, INC." on Justia Law
Hyatt v. Office of Management and Budget
The Ninth Circuit affirmed the district court's grant of summary judgment in favor of OMB in an action brought by plaintiff and AAET, contending that patent applicants should not have to comply with certain U.S. Patent & Trademark Office (USPTO) rules because the USPTO is violating the Paperwork Reduction Act (PRA). Plaintiff and AAET argue that patent applicants need not follow the rules because the USPTO is violating the PRA by failing to obtain OMB approval and a control number each time the USPTO makes a request to an applicant during the back-and-forth communications process concerning a particular patent. The OMB rejected this argument and concluded that the rules are not subject to the PRA.The panel held that the challenged rules do not impose "collections of information" subject to the PRA's procedural requirements. Rather, the PRA and the regulations expressly exclude from coverage individualized communications just like those between a patent examiner and a patent applicant. Furthermore, even if they impose "collections," most of the rules are exempted from the PRA under Exemption 6. View "Hyatt v. Office of Management and Budget" on Justia Law
Attia v. Google, LLC
Attia developed architecture technology called “Engineered Architecture” (EA). Google and Attia worked together on “Project Genie” to implement EA. Attia disclosed his EA trade secrets with the understanding that he would be compensated if the program were successful. After Attia executed patent assignments Google filed patent applications relating to the EA trade secrets and showed a prototype of the EA technology to investors. The patents were published in 2012. Google then allegedly excluded Attia from the project and used Attia’s EA technology to create a new venture. Attia sued Google for state law trade secret and contract claims. After Congress enacted the Defend Trade Secrets Act of 2016 (DTSA), 130 Stat. 376, making criminal misappropriation of a trade secret a predicate act under the Racketeer Influenced and Corrupt Organizations Act (RICO), Attia added RICO claims, 18 U.S.C. 1962(c). The Ninth Circuit affirmed the dismissal of the RICO and DTSA claims. The misappropriation of a trade secret before the enactment of the DTSA does not preclude a claim arising from post-enactment misappropriation or continued use of the same trade secret but Attia lacked standing to assert a DTSA claim. Google’s 2012 patent applications placed the information in the public domain and extinguished its trade secret status. The court rejected an argument that Google was equitably estopped from using the publication of its patent applications to defend against the DTSA claim. View "Attia v. Google, LLC" on Justia Law