Fresh From the Bench: Latest Federal Circuit Court Cases
CASE OF THE WEEK
C.R. Bard Inc. v. AngioDynamics, Inc., Appeal No. 2019-1756, -1934 (Fed. Cir. Nov. 10, 2020)
Our Case of the Week is one of two cases decided this week in which the Federal Circuit finds that a district court jumped the gun on granting judgment where there were genuine disputes of material fact to be tried. In the Ferring case, discussed below, the court granted summary judgment concerning equitable estoppel. In the C.R. Bard case, the case got halfway through trial before the judge issued judgment as a matter of law of noninfringement. A Federal Circuit panel remanded the case for retrial, issuing a precedential decision on the “printed matter” doctrine, and finding there was sufficient evidence of infringement and willfulness to present the questions to a jury.
In this pharmaceutical patent inventorship dispute, the Federal Circuit vacated the district court’s grant of summary judgment that appellant Ferring was equitably estopped from pursuing its correction of inventorship claims under 35 U.S.C. § 256. Listed inventor Seymour Fein had worked as a consultant for Ferring when it was developing a nocturia treatment in the late 1990s and early 2000s, and subsequently obtained his own patents covering low dosages of the treatment, purportedly enabled by Fein’s contribution of a sublingual administration by placing a dissolving “melt” under the tongue. Based on correspondence between Ferring and Fein’s attorney while Fein’s patent applications were pending, which indicated that Ferring did not claim inventorship of the sublingual administration method, the district court concluded that Ferring was equitably estopped from claiming an inventorship interest in Fein’s issued patents.
The Federal Circuit disagreed, finding that the district court erred in resolving disputed issues of fact on summary judgment. The Court specifically noted that Fein’s issued patents were not limited to sublingual administration, and that the parties’ pre-issuance correspondence could reasonably be interpreted to indicate that Ferring had not relinquished ownership of other elements of claims as issued, including “duration of action” limitations that had been contributed by Ferring’s own scientists. The Court expressly rejected Ferring’s proposed bright-line rule that any change in claim scope precludes a finding of equitable estoppel where the purportedly misleading communications occurred in the context of different claims, but nonetheless found the change in claim scope to be relevant to whether Ferring’s pre-issuance conduct was necessarily misleading as to whether it would later seek to correct inventorship. Because an inference that Ferring made misleading communications was not the only possible inference to be drawn from the parties’ pre-issuance correspondence, the district court vacated the grant of summary judgment and remanded for further proceedings.
In re: Google Tech. Holdings LLC, Appeal No. 2019-1828 (Fed. Cir. Nov. 13, 2020)
In an appeal from the Board’s decision of obviousness, the Court reviewed whether the Board erred when it construed the claim terms recited in the claims in contradiction to an explicit definition in the specification. The Court held that, because Appellant never previously presented a claim construction argument based on explicit definitions in the specification, Appellant forfeited this argument. Regarding Appellant’s arguments against forfeiture, essentially that the Board “passed upon” an unraised argument in its decision, the Court pointed out that the “passed upon” doctrine has been applied to infringement determinations after a bench trail, not Board unpatentability determinations after examination in which the Applicant has had multiple opportunities to raise its arguments. For these reasons, the Court affirmed the Board’s decision of upholding the rejection of the claims under obviousness.
On Petition for Writ of Mandamus to the United States District Court for the Western District of Texas, the Court granted Apple’s petition to transfer venue to the Northern District of California. Apple moved to transfer the lawsuit to a more convenient forum—NDCA. The district court indicated it would deny Apple’s motion at oral arguments, but it did not issue a written order. Instead, the district court proceeded with the Markman hearing, claim construction, and discovery prior to issuing its written order on venue. Apple moved to stay the case pending the district court’s written order to allow Apple to appeal the order, but its motion was denied without explanation. Apple then filed the petition to the Court.
The Court began by scolding the district court for proceeding on the merits and not prioritizing its disposition of Apple’s motion for forum non conveniens. Turning to the merits, the Court found that the district court committed numerous errors in its findings of fact and application of law. Consequently, the Court granted Apple’s petition and reversed the district court.
Judge Moore dissented, cautioning that the majority’s exercise of “de novo dominion” over the district court’s findings of facts did not provide the district court’s finings with appropriate deference.
Donner Tech. LLC v. Pro Stage Gear LLC, Appeal No. 2020-1104 (Fed. Cir. Nov. 9, 2020)
In an appeal from an inter partes review, the Federal Circuit reversed, issuing an opinion about the proper consideration of analogous art in an obviousness analysis. The patents related to a pedalboard for mounting electric guitar pedals, with troughs for the wires to go between the pedals. The petitioner asserted a number of obviousness theories based on a prior art reference that related to wiring in 1970s-era relay circuits. The PTAB dismissed the petition, finding that the prior art was not analogous to guitar pedal boards. The Federal Circuit reversed, holding that the Board applied the wrong standard for determining analogous art. The Court refused to find that the prior art reference was prior art, however, and remanded for further consideration of the issue.