Fresh From the Bench: Latest Federal Circuit Court Cases
CASE OF THE WEEK
American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, Appeal No. 2018-1763 (Fed. Cir. Oct. 3, 2019)
In this week’s Case of the Week, the Federal Circuit considered whether patent claims directed to methods of manufacturing drive shaft assemblies were patent-ineligible under 35 U.S.C § 101. The patent at issue generally claimed “tuning” a driveline propeller shaft liner to “dampen” undesirable vibrations, which was known in the art to be accomplished by altering the mass and stiffness of the liner to attenuate phenomena referred to as “bending mode,” “torsion mode,” and “shell mode” vibrations. The patent owner claimed to have invented a method of tuning liners to attenuate more than one such “mode” of vibration simultaneously, describing a single embodiment of one such “tuned” liner but not the process by which such “tuning” could be achieved. Instead, the claims described the “tuned” liner only in terms of the type or degree of dampening achieved with respect to the different vibration modes.
OSI Pharmaceuticals, LLC v. Apotex Inc., Appeal No. 2018-1925 (Fed. Cir. Oct. 4, 2019)
In an appeal of a decision finding claims concerning cancer drugs obvious, the Federal Circuit reversed. The PTAB had found that it would have been obvious to have combined teachings from different references, and that there would have been a reasonable expectation of success from doing so. The Federal Circuit found that there was insufficient evidence to support a reasonable expectation of success, in part because of the highly unpredictable nature of testing cancer treatments and an over 99.5% failure rate for drugs entering Phase II clinical studies. The Court also rejected the theory that IPRs are unconstitutional as applied to pre-AIA patents, following from its recent decision in Celgene Corp. v. Peter, 931 f . 3d 1342, 1362 (Fed. Cir. 2019). See our write-up of the Celgene case here.
Honeywell International Inc. v. Arkema Inc., Appeal Nos. 2018-1151, -1153 (Fed. Cir. Oct. 1, 2019)
In an appeal from a post-grant review, the Federal Circuit reversed on an issue concerning the right to seek a certificate of correction. The case concerned a Honeywell patent. During prosecution, Honeywell canceled 20 pending claims and added 20 new claims but failed to update the priority chain to reflect the written support for the new claims dating back to 2002. Arkema filed a post-grant review asserting that priority extended only to the filing date of the patent’s application—that Honeywell was not entitled to claim priority back to 2002. Honeywell sought leave to file a motion for a Certificate of Correction pursuant to 35 U.S.C. 255. The Board denied the request, finding the facts in this case did not warrant a Certificate of Correction. The Federal Circuit reversed, finding that the Board abused its discretion. Pursuant to Section 255, the decision to issue a Certificate of Correction is expressly provided to the Director, not the Board, so it is the Director, not the Board, that determines whether the facts and circumstances merit a Certificate of Correction. By denying Honeywell’s request to file a motion, the Board exceeded the scope of its authority, usurping the decision-making authority of the Director.