Fresh From the Bench: Latest Federal Circuit Court Cases
CASE OF THE WEEK
WesternGeco LLC v. Ion Geophysical Corp., Appeal Nos. 2013-1527, 2014-1121, -1526, -1528 (Fed. Cir. Jan. 11, 2019)
In the continuing saga between WesternGeco and ION Geophysical, a Federal Circuit panel addressed lost profits on remand from the Supreme Court’s decision last year. See our write-up of the June 2018 Supreme Court decision here. The Supreme Court had held “that WesternGeco’s damages award for lost profits was a permissible domestic application of [35 U.S.C.] § 284.” By the time the case came back to the Federal Circuit, the Patent Trial and Appeal Board had invalidated four of the six asserted patent claims, as we discussed here. Of the two claims that survived, only one supported the lost profits award. Accordingly, on remand, the issues before the Federal Circuit were: “(1) the impact of the intervening invalidation of four of the six asserted patent claims on the fully paid reasonable royalty award, and (2) the impact of the invalidation of the four claims on the lost profits award and ION’s argument (presented in its original appeal) that ‘Panduit cannot be satisfied because ION and [WesternGeco] do not compete in the marketplace.’”
ALSO THIS WEEK
AC Technologies S.A. v. Amazon.com, Inc., Appeal No. 2018-1433 (Fed. Cir. Jan. 9, 2019)
The Court affirmed a decision of the Patent Trial and Appeal Board (PTAB) ruling claims of a patent unpatentable. The PTAB had initially instituted review on two of three grounds. After a final written decision finding some but not all claims to be unpatentable, Petitioners moved for reconsideration on the third petitioned ground, which the PTAB granted. After additional briefing and submission of evidence, the PTAB found that Petitioner had shown the remaining claims to be unpatentable. On appeal, the Patent Owner argued that the Board had exceeded its statutory authority and violated its due process rights when it invalidated claims based on a ground that the PTAB did not institute in its original institution decision. The Court found that the Supreme Court’s decision in SAS Inst. Inc. v. Iancu—holding that PTAB must institute on all grounds petitioned or not at all—foreclosed appellant’s argument that PTAB exceeded its statutory authority, and held that no due process violation had occurred. The Court also affirmed the Board’s claim construction, anticipation, and obviousness rulings on the merits.
The opinion can be found here.
Realtime Data, LLC v. Andrei Iancu, Appeal No. 2018-1154 (Fed. Cir. Jan. 10, 2019)
In this appeal from an inter partes review, the Federal Circuit affirmed the PTAB’s decision to invalidate a patent as obvious over certain prior art. The Court first addressed whether the PTAB erred in determining a person of ordinary skill in the art would have been motivated to combine the teachings of two references: the first a patent that taught all elements of the asserted claims, and the second a well-known textbook that provided more explicit teachings. In holding the PTAB did not err, the Court explained that because all elements of the claims were disclosed by a single reference, the PTAB was not required to address whether there was a motivation to combine. Moreover, the additional reference was not relied upon for disclosure of any elements or teachings—it was beneficial to better understand or interpret what the first reference disclosed.
The Court also addressed whether the PTAB erred in failing to construe a term. The Court held there was no error because no construction was necessary.
The opinion can be found here.
Amerigen Pharmaceuticals Limited v. UCB Pharma GMBH, Appeal No. 2017-2596 (Fed. Cir. Jan. 11, 2019)
The Federal Circuit affirmed the PTAB’s inter partes review holding that patent claims were not unpatentable as obvious. The patent claims related to chemical compounds used to formulate an antimuscarinic drug used to treat urinary incontinence. The Court first held that Amerigen had appellate standing because the asserted patent blocked Amerigen’s launch of its tentatively approved drug, and invalidation of the patent would advance the drug’s launch. On the merits, the Federal Circuit held that substantial evidence supported the PTAB’s finding that a skilled person would not have been motivated to modify the compound.
The opinion can be found here.
Written by: Scott D. Eads and Nika Aldrich, Schwabe Williamson & Wyatt
Contributors: Cristin Wagner, Jason Wrubleski, Angela Addae and Erin Forbes