Fresh From the Bench: Latest Precedential Patent Cases
CASE OF THE WEEK
Pfizer Inc. v. Sanofi Pasteur Inc., Appeal Nos. 2019-1871, -1873, -1875, -1876, -2224 (Fed. Cir. Mar. 5, 2024)
This week’s Case of the Week mostly resolves an appeal filed five years ago, following decisions from the PTAB in IPRs that were filed as early as 2017. Although the decision covers a number of issues, the portion that arguably broke new ground relates to the question of obviousness—specifically the “result-effective variable doctrine.” The doctrine is typically invoked when there are overlapping ranges between the patent claim and the prior art. Such a circumstance results in a presumption of obviousness, which can only be overcome if it can be shown that the variable was not recognized as “result-effective.” Here, the Court affirmed application of the result-effective variable doctrine even though the prior art did not discuss the variable at all in relation to the claimed structure.
The case involves a patent owned by Pfizer directed to immunogenic compositions comprising Streptococcus pneumoniae capsular saccharide antigens (i.e., glycoconjugates) for use in pneumococcal vaccines. The patent had 45 claims. Merck and Sanofi collectively challenged each of them. Here, two of the prior art references were known as GSK-711 and Merck-086, each of which discussed S. pneumoniae in various ways relevant to the claims. Sanofi asserted that these two prior art references combined to render all 45 claims invalid as obvious. The PTAB instituted review and, through a combination of the arguments raised by Sanofi and Merck, ultimately concluded that all the claims were invalid as obvious. Pertinent here are the two references and arguments made by Sanofi.
ALSO THIS WEEK
Chewy, Inc. v. International Business Machines Corporation, Appeal No. 2022-1756 (Fed. Cir. Mar. 5, 2024)
Also this week, the Federal Circuit affirmed in part and reversed in part summary judgment holdings that claims in one of IBM’s patents were invalid as ineligible under 35 U.S.C. § 101, and that Chewy had not infringed claims of another IBM patent.
Maxell, Ltd. v. Amperex Technology Limited, Appeal No. 2023-1194 (Fed. Cir. Mar. 6, 2024)
In a brief precedential decision, the Federal Circuit reversed a partial final judgment from the Western District of Texas that held all claims of Maxell’s U.S. Patent No. 9,077,035 to be invalid as indefinite. The ’035 patent is directed to a rechargeable lithium-ion battery comprising, inter alia, transition metal elements denominated as M1, M2, and M3. The sole independent claim defined M1 with a series of limitations, including “wherein M1 represents at least one transition metal element selected from Co, Ni and Mn” and “wherein the content of Co in the transition metal M1 … is from 30% by mole to 100% by mole.” The second limitation had been added during prosecution to distinguish prior art.
Editors:
Nika Aldrich, IP Litigation Group Leader, Schwabe
Jason A. Wrubleski, Shareholder
Contributors: