Fresh From the Bench: Latest Federal Circuit Court Cases
CASE OF THE WEEK
Dana-Farber Cancer Institute, Inc. v. Ono Pharmaceutical Co., Ltd., Appeal No. 2019-2050 (Fed. Cir. July 14, 2020)
In this week’s Case of the Week, the Federal Circuit addressed inventorship issues in a series of United States patents covering methods for treating cancer. The treatments arose from Dr. Tasuku Honjo’s Nobel Prize-winning discovery of an inhibitory receptor on T cells, PD-1, which operates to inhibit T cell activity when it binds to one of its ligands such as PD-L1 or PD-L2. These ligands are expressed by some cancer cells, and the claimed treatments covered the use of antibodies to block the PD-1/PD-L1 receptor-ligand interaction, effectively stimulating the immune response against tumor cells that would otherwise have been hidden by their expression of the ligands.
Mayborn Grp., Ltd. v. ITC, Appeal No. 2019-2077 (Fed. Cir. July 16, 2020)
In a case arising from the International Trade Commission, the Court upheld an exclusion order against a party that was not party to original litigation concerning the patent at issue. After finding infringement of the patent at issue, the ITC issued a general exclusion order (GEO). The patent owners notified Mayborn of the proceedings in October 2018, but Mayborn took no action. After the GEO had issued, the patent owners notified Mayborn that its products infringed the patent in violation of the GEO. Mayborn then petitioned the ITC to rescind the GEO under a rule that allows the Commission to rescind or modify an order if “the conditions which led to such exclusion from entry or order no longer exist.” The ITC denied the petition, and Mayborn appealed the denial of the petition. The Court found that Mayborn had standing to appeal, but affirmed the ITC because Mayborn had not presented a change in conditions as required by the relevant statute.
Packet Intelligence, LLC v. NetScout Systems, Inc., Appeal No. 2019-2041 (Fed. Cir. July 14, 2020)
In this appeal from the U.S. District Court for the Eastern District of Texas, the Federal Circuit deals with issues relating to, among other things, pre-suit damages and patent marking requirements. After finding NetScout’s products infringe the patents-at-issue, one of which was subject to the marking requirements of 35 U.S.C. § 287(a), the district court awarded Packet Intelligence pre-suit damages. NetScout appealed that award, asserting that Packet Intelligence’s licensees failed to properly mark their products. The Court agreed with NetScout and reversed the district court’s award of pre-suit damages. First, it explained that the alleged infringer holds the initial burden of production to articulate the products it believes are unmarked “patented articles.” The low bar of that burden is met by simply notifying the patentee that certain licensees sold specific unmarked products that the alleged infringer believes practice the patent. The burden then shifts to the patentee to prove the identified products do not practice the patent. The Court held that NetScout met its initial burden, but that Packet Intelligence failed to then prove the identified products did not practice the patent. Evidence that the inventors removed from their patent application any reference to the identified products did not support an inference that those products do not practice the patent. And a witness’s conclusory testimony failing to address which claim limitations were purportedly missing from the products is similarly insufficient to meet the required burden.
The Court also held that Packet Intelligence could not preserve the award of pre-suit damages with evidence of direct infringement of two method patents (which are not subject to the marking statute’s requirements). Method claims are not directly infringed by the mere sale of an apparatus capable of performing the claimed process; rather, to prove infringement, one must produce evidence that the claimed method was actually used and, thus, infringed. Because Packet Intelligence failed to properly mark certain infringing products, the Court held that it cannot circumvent § 287 and include those products in its royalty base simply by arguing that infringement of related method claims drove sales of those products.