Welcome to Skilled in the Art. I'm Law.com IP reporter Scott Graham, and I try to prognosticate Federal Circuit en banc decisions while avoiding combinations of well-worn truisms (Hat tip: CACD Judge Michael Fitzgerald). I've also got a rundown of the heavyweight roster litigating a big biosimilar battle between Roche AG and Pfizer.

As always, email me tips on anything IP and find me on Twitter @scottkgraham.

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First Pushback on Section 101 as a Fact Issue

It didn't take long to get our first vote for en banc review of the Federal Circuit's Berkheimer decision on Section 101 procedure. That's the Feb. 8 decision that said applying the Supreme Court's Alice test often will often raise factual issues that can't be resolved on the pleadings or summary judgment.

There hasn't literally been an en banc vote, of course. HP hasn't even petitioned for en banc review yet. But when it does, we can count Judge Jimmie Reyna as one vote for taking it up, based on his dissent Wednesday in Aatrix Software v. Green Shades Software.

In Aatrix some of the same judges from Berkheimer addressed similar issues.Judge Kimberly Moore wrote that U.S. District Judge Harvey Schlesingerof Jacksonville, Fla., erred by granting a Section 101 motion on the pleadings without letting patent owner Aatrix amend its complaint. “There are concrete allegations in the second amended complaint that individual elements and the claimed combination are not well-understood, routine, or conventional activity,” Moore wrote. “We have been shown no proper basis for rejecting those allegations as a factual matter.”

Judge Richard Taranto concurred in Aatrix, as he had in Berkheimer. But the third member of the Berkheimer panel was Judge Kara Stoll. This time it was Reyna (pictured), and he is not buying in.

“I respectfully disagree with the majority's broad statements on the role of factual evidence in a Section 101 inquiry,” he wrote. “Our precedent is clear that the Section 101 inquiry is a legal question.”

Moore's approach opens the door to “an inexhaustible array of extrinsic evidence, such as prior art, publications, other patents, and expert opinion.” That would “turn the utility of the 12(b)(6) procedure on its head” in the Section 101 context, Reyna wrote.

I could imagine a few other Federal Circuit judges agree with Reyna, but I doubt the votes will be there to go en banc. First, the Federal Circuit's been reluctant to take a Section 101 case en banc. It hasn't done so since Aliceitself in 2013, and that didn't end so well.

Second, Moore is in the right here. In many cases, federal judges are not qualified to decide, based solely on the patent claims and specification, if something would have been considered routine or unconventional to a skilled artisan at the time of the patent. Moore is simply pointing out that this part of the Section 101 emperor has no clothes.

But if the case does go en banc, I think Eliot Williams of Baker Botts was right when he responded to me on Twitter:

Arista Wins Round 2 at the Federal Circuit

The battle of the networking giants is fully engaged at the Federal Circuit.

Last fall Cisco Systems won round one, as it persuaded the appellate court to affirm an ITC limited exclusion order against certain Arista Networks devices and software that infringed three Cisco patents. (The court also affirmed ITC findings that Arista did not infringe two other patents.)

As I reported last week, Cisco and Arista are now facing off over three decisions from the Patent Trial and Appeal Board. On Wednesday, the Federal Circuit summarily upheld one of those decisions, which invalidated 47 claims of a Cisco patent on defending denial-of-service attacks.

Cisco had pointed to a related ITC proceeding where the commission found Arista had copied the patented technology while willfully blinding itself to Cisco's 7,224,668 patent. But Tensegrity Law's Matthew Powers argued—and the Federal Circuit apparently agreed—that the Cisco patent was obvious in light of prior 3Com patents.

According to Arista, Cisco is trying to use the '688 and U.S. Patent 6,377,577 to broaden an ITC exclusion order to cover redesigned Arista products. If the Federal Circuit ultimately affirms the PTAB on the '577, there may not be much of an exclusion case left.

Who Got the Work?

Roche Holding AG subsidiary Genentech is squaring off with Pfizer in Delaware federal court over Pfizer's proposed biosimilar of breast cancer medication Herceptin. Genentech earned $2.5 billion from U.S. sales of Herceptin last year—about 5 percent of Roche's revenues, according to Bloomberg. The company has assembled an all-star team from Wilmer Cutler Pickering Hale and Dorr and Durie Tangri. Pfizer is fighting back behind Willkie Farr & Gallagher.

➤ The dispute: Herceptin is an antibody that targets an aggressive form of breast cancer. Its commercial launch in the late 1990s spared the 20-25 percent of patients with this diagnosis from what was “effectively a death sentence,” Genentech says in its complaint. In the years since, Genentech has “improved dosing schedules and broader indications” to help millions of women. Pfizer replies that the Biologics Price Competition and Innovation Act (BPCIA) sets a 12-year period of exclusivity, and that period “has long since expired.” Pfizer accuses Genentech of refusing to negotiate the BPCIA's “patent dance” in good faith, and is counterclaiming for judgments of invalidity and non-infringement. The case is pending before U.S. District Judge Gregory Sleet.

➤ The attorneys: Genentech has enlisted WilmerHale partners Andrew Danford, Robert Galvin, Robert Gunther Jr., William Kim, William Lee, Lisa Pirozzolo, Kevin Prussia and Emily Whelan along with Durie Tangri's Daralyn Durie and Adam Brausa. Local counsel Frederick Cottrell III and Jason Rawnsley of Richards, Layton & Finger round out Genentech's team. Pfizer is represented by Willkie IP chair Thomas Meloro, partner Michael Johnson, and associates Diana Santos and Dan Constantinescu. Heyman Enerio Gattuso & Hirzel partner Dominick Gattuso provides local counsel.

Whoops

In the previous edition of this newsletter, I referred to Paul Weiss partner Robert Atkins as Rob Atkins. He goes by Bob. Which you'd think I'd know, since I just interviewed him a year ago. I regret the error.

Swift Justice in 'Shake It Off' Copyright Suit

As you might have heard by now, Taylor Swift is out from under a copyright suit that accused her song “Shake It Off” of infringing 3LW's “Playas Gon' Play.” Just as with certain Alice claims, U.S. District Judge Michael Fitzgerald ruled on Tuesday there was “no logical reason to delay the inevitable” by bringing in expert witnesses or a jury to complicate the case.

Songwriters Sean Hall and Nathan Butler argued that although they're short phrases, the combination of “Playas, they gonna play/And haters, they gonna hate” was sufficiently original and creative to merit copyright protection.

Fitzgerald disagreed. “The concept of actors acting in accordance with their essential nature is not at all creative; it is banal,” he wrote in Hall v. Swift.“Combining two truisms about playas and haters, both well-worn notions as of 2001, is simply not enough.”

Fitzgerald granted Hall and Butler leave to amend, but warned that he's “extremely skeptical” that they can rehabilitate their claim “in a manner consistent with Rule 11.”

Their attorney Gerard Fox of Gerard Fox Law took the hint, telling Reutershe would appeal to the Ninth Circuit. “He cannot make himself an expert in the music industry,” Fox said. “I'm sorry it's actually embarrassing.”

Peter Anderson of the Law Office of Peter J. Anderson had the winning motion for Swift.

I'm going to shake it off till next week. Until then, enjoy the holiday weekend.