Fresh From the Bench: Latest Precedential Patent Cases
CASE OF THE WEEK
Univ. of South Florida Bd. of Trustees v. United States, Appeal No. 2022-2248 (Fed. Cir. Feb. 9, 2024)
In this week’s Case of the Week, the Federal Circuit examined the scope of a provision of the Bayh-Dole Act of 1980 (35 U.S.C. §§ 200 et seq.) which provides the U.S. government with a nonexclusive license to practice inventions that were paid for with federal funding. The Bayh-Dole Act specifically applies to inventions “conceived or first actually reduced to practice in the performance of work under a funding agreement,” and the Court held that in order to be “work under a funding agreement,” a funding agreement need not actually have been in place at the time the work was performed. Instead, the Federal Circuit held that the Act also applies to work that was only retroactively paid for out of a qualifying funding agreement.
The appeal arose out of appellant USF’s lawsuit against the United States for infringement of a patent covering mice that have been genetically altered for medical research purposes to prematurely develop symptoms of Alzheimer’s disease. The patented invention arose out of work commenced by four USF scientists in the mid-1990s, with one of the scientists—Dr. Hardy—having applied in September 1995 for a National Institutes of Health grant to cover the project. The first litter of mice containing the altered genes was born in August 1996, and the grant was approved the following month. During this same period, Dr. Hardy and another project scientist moved from USF to Mayo, and the grant application was amended to name Mayo as the grantee instead of USF.
ALSO THIS WEEK
RAI Strategic Holdings, Inc. v. Philip Morris Products S.A., Appeal No. 2022-1862 (Fed. Cir. Feb. 9, 2024)
In an appeal from the Patent Trial and Appeal Board’s final written decision in a post-grant review, the Federal Circuit addressed whether the Board erred in holding that U.S. Patent No. 10,492,542—relating to electrically powered smoking articles—was unpatentable as obvious or lacking written description. The Federal Circuit affirmed in part, vacated in part, and remanded, specifically holding that substantial evidence supported the Board’s obviousness finding but did not support its finding that certain range claims lacked written description support under 35 U.S.C. § 112. As to the former, the Federal Circuit found there was substantial evidence to support the Board’s finding that a skilled artisan would have been motivated to combine prior art (heater and smoking article) to create the claimed electrically powered smoking article. As to the latter, the Federal Circuit found that no reasonable fact finder could find that under the particular facts of the case there was no evidence that the claimed subrange resulted in a different invention from the one disclosed in the specifications.
Weber, Inc. v. Provisur Technologies, Inc., Appeal Nos. 2022-1751, -1813 (Fed. Cir. Feb. 8, 2024)
Also this Week, the Federal Circuit reviewed and reversed the Patent Trial and Appeal Board’s inter partes review determinations that challenger Weber’s operating manuals were not “printed publication” for prior art purposes, finding that the manuals were in fact printed publications. The Court remanded for further proceedings.
Google LLC v. Ecofactor, Inc., Appeal Nos. 2022-1750, -1767 (Fed. Cir. Feb. 7, 2024)
In an appeal from the Board’s decision in an inter partes review that the petitioner failed to show the prior art taught the disputed claim limitation, the Court reviewed whether the Board’s “findings” amounted to claim construction. The Court clarified that the point in the proceeding at which the analysis occurs is not dispositive, and determined that the Board had engaged in claim construction because it relied on cited cases to determine the scope and meaning of a claim limitation.
Editors:
Nika Aldrich, IP Litigation Group Leader, Schwabe
Jason A. Wrubleski, Shareholder
Contributors:
Michael A. Cofield, Shareholder
Mario E. Delegato, Associate
Tyler Hall, Shareholder