Fresh From the Bench: Latest Federal Circuit Court Cases
CASE OF THE WEEK
Berkheimer v. HP Inc., Appeal No. 2017-1437 (Fed. Cir. Feb. 8, 2018)
In Berkheimer v. HP Inc., the Federal Circuit reviewed the District Court’s summary judgment finding that certain claims of a patent were invalid as ineligible under 35 U.S.C. §101 and that other claims were invalid for indefiniteness.
On the issue of indefiniteness, the issue was whether the term “minimal redundancy” was reasonably clear. The District Court found that the intrinsic evidence “leaves a person skilled in the art with a highly subjective meaning of ‘minimal redundancy.’” The District Court, relying upon expert evidence, also found “that an ordinary skilled artisan would not have known what the term 'minimal redundancy' meant” in the claims.
ALSO THIS WEEK
Medicines Co. v. Hospira, Inc., Appeal No. 2014-1469 (Fed. Cir. Feb. 6, 2018)
In an appeal from a district court decision, the Court affirmed summary judgment of noninfringement and continued to address whether the asserted claims were also invalid. In doing so, it addressed the on sale bar, and specifically its application to a distribution agreement. The Court found that the distribution agreement was a commercial offer for sale and remanded for the court to determine whether it covered the patented invention. The Court also affirmed that the invention was ready for patenting before the critical date.
Abbvie Inc. v. MedImmune Ltd., Appeal No. 2017-1689 (Fed. Cir. Feb. 5, 2018)
In an appeal from a district court decision, the Federal Circuit addressed the extent to which a district court has jurisdiction to hear a declaratory judgment action concerning patent validity relating to a contract dispute. The contract was in force until the patents “expire.” There was a dispute about whether a finding of invalidity triggered that clause. The Court found that there was no declaratory judgment jurisdiction, because only the validity of the patents was challenged, and not the underlying dispute concerning contract interpretation or liability.
Actelion Pharm. Ltd. v. Matal, Appeal No. 2017-1238 (Fed. Cir.Feb. 6, 2018)
In an appeal from a district court decision, the Federal Circuit affirmed summary judgment in favor of the Patent Office regarding the length of patent term adjustment under 35 U.S.C. § 154(b)(1)(A). The Court found that the PTA calculations beginning with a national-stage application were not triggered by the patentee’s statement that it “earnestly solicits early examination and allowance of these claims.” The casual “solicits early examination” language coupled with failure to mention the national stage filing and check the box on the submitted form requesting early examination was at best “an inconsistent or ambivalent request.”
Elbit Systems of America, LLC. v. Thales Visionix, Inc., Appeal No. 2017-1355 (Fed. Cir. Feb. 6, 2018)
In an appeal from an inter partes review, the Court addressed the sufficiency of the evidence supporting the PTAB’s nonobviousness determination. The prior art did not explicitly disclose the asserted claims, so the Court’s analysis turned on the appellant’s expert obviousness opinion. Because the PTAB attributed “little weight” to the credibility of the expert’s testimony, the Court concluded that substantial evidence supports nonobviousness and affirmed the PTAB’s decision.
Macom Tech. Solutions v. Infineon Tech. Am., Appeal No. 2017-1448 (Jan. 29, 2018, decision unsealed Feb. 7, 2018)
In an appeal from a preliminary injunction, the Court addressed whether a declaratory judgment plaintiff was likely to succeed on its "wrongful termination of license" claim, insofar as it allegedly did not breach the license agreement. The Court found that where the patent licensee was limited to practice in a certain "Field of Use only," the licensee was not contractually obligated to limit its practice to the “Field of Use” and likely had not breached the license agreement by practicing beyond the licensed “Field of Use.” The Court also vacated a sentence prohibiting defendant licensor from practicing patent rights exclusively licensed to plaintiff licensee. The Court relied on precedent finding that under Fed. R. Civ. P. 65(d), an injunction against patent infringement must specify products, and held that a more generalized prohibition through a license contract did not satisfy the Rule.
In Re: Nordt Dev. Co., LLC, Appeal No. 2017-1445 (Fed. Cir. Feb. 8, 2018)
In an appeal from a Board decision following an examiner rejection of application claims, the Federal Circuit addressed when manufacturing processes in an apparatus claim have patentable weight. The claim for a knee brace included “injection molded” parts. The Federal Circuit reversed the board, finding that “injection molded” described a structure and therefore had patentable weight.
Merck Sharp & Dohme Corp. v. Amneal Pharm. LLC, Appeal No. 2017-1560 (Fed. Cir. Feb. 9, 2018)
In an appeal from a district court decision in a Hatch-Waxman case, the Federal Circuit affirmed a finding of non-infringement. The Court held that the district court did not abuse its discretion in holding a trial, though a discovery violation was identified six weeks before trial. Although the defendant failed to produce later samples of its accused product, there was “little more than theoretical evidence” to show that the samples would have been different.
Polaris Indus., Inc. v. Arctic Cat, Inc., Appeal No. 2016-1807 (Fed. Cir. Feb. 9, 2018)
In an appeal from an inter partes review of patents concerning all-terrain vehicles, the Federal Circuit addressed the PTAB’s obviousness analysis, including whether substantial evidence supported a motivation to combine the prior art. For one claim, the Federal Circuit concluded that, although the PTAB’s analysis “could have been more thorough,” it was sufficient. However, for three additional claims, the PTAB used an improper obviousness standard and failed to properly consider prior art teaching away and its relationship to any motivation to combine the art. The PTAB also failed to properly consider objective indicia of nonobviousness, including commercial success.
Xitronix Corp. v. KLA-Tencor Corp., Appeal No. 2016-2746 (Fed. Cir. Feb. 9, 2018)
In an appeal from a district court decision, the Court reviewed its jurisdiction over a Walker Process monopolization claim—the assertion of antitrust violations based on fraudulent prosecution of a patent. The Court held that Walker Process claims concern fraud and misrepresentation, and implicate no substantial question of federal patent law. Though both parties consented to the jurisdiction of the Federal Circuit, the Court transferred the case to the United States Court of Appeals for the Fifth Circuit.
Written by: Scott D. Eads and Nika F. Aldrich, Schwabe, Williamson & Wyatt
Weekly contributors: Jason Wrubleski and Cristin Wagner