Fresh From the Bench: Latest Precedential Patent Cases
CASE OF THE WEEK
Mirror Worlds Technologies, LLC v. Meta Platforms, Inc., Appeal Nos. 2022-1600, -1709 (Fed. Cir. Dec. 4, 2024)
In this appeal from the United States District Court for the Southern District of New York, the Federal Circuit affirmed the lower court’s finding of non-infringement as a matter of law relating to certain patents that describe and claim methods for storing, organizing, and presenting data in a chronological manner on a computer system.
ALSO THIS WEEK
Galderma Laboratories, L.P. v. Lupin Inc., Appeal No. 2024-1664 (Fed. Cir. Dec. 6, 2024)
In this case, the Federal Circuit affirmed the district court’s holding that Lupin’s generic drug would not infringe patents covering Galderma’s Oracea® drug. When Lupin filed an ANDA for a generic version of the drug, Galderma sued for infringement. Galderma’s patents protect a drug with 30 mg immediate-release doxycycline and 10 mg delayed-release doxycycline. In contrast, Lupin’s proposed drug contains 22 mg immediate-release doxycycline and 18 mg delayed-release doxycycline.
In district court, Galderma argued that 8 mg of the delayed-release portion of Lupin’s drug actually released immediately, and therefore Lupin’s drug would infringe under the doctrine of equivalents. To support this argument, Galderma submitted a two-stage in vitro test which showed the release of Lupin’s drug at pH 1.1 and pH 4.5. Galderma’s expert witness testified that the experiment supported its contention that the 8 mg delayed-release portion of Lupin’s drug actually released immediately. Lupin argued this in vitro test was not sufficiently demonstrative of the actual physiological conditions of the human digestive tract in vivo, and therefore, it did not prove that 8 mg of their delayed-release drug was actually released immediately. The district court agreed with Lupin and found that Lupin’s drug would not infringe Galderma’s patents.
The Federal Circuit agreed with and affirmed the district court. Specifically, the Federal Circuit agreed Galderma’s in vitro test was not sufficiently representative of in vivo physiological conditions and Galderma had not provided sufficient evidence to support a finding of infringement under a doctrine of equivalents theory.
The full opinion can be found here.
By Ann Bernert
PS Products Inc. v. Panther Trading Co. Inc., Appeal No. 2023-1665 (Fed. Cir. Dec. 6, 2024)
In this case, the Federal Circuit affirmed the district court’s award of $25,000 in deterrence sanctions under its inherent authority for plaintiff/appellant PS Products’ frivolous lawsuit, in addition to an award of attorneys’ fees pursuant to 35 U.S.C. § 285. PS Products had filed a complaint for design patent infringement that was meritless on its face, in view of the clear dissimilarity between the claimed and accused designs, and had done so in the Eastern District of Arkansas notwithstanding that venue was plainly improper there. Concluding this was the latest in a string of frivolous lawsuits PS Products had filed in E.D. Ark. on the same patent, the district court ruled that PS Products’ bad faith warranted additional sanctions to deter future misconduct.
The Federal Circuit affirmed. Relying on precedent concerning Rule 11 sanctions and the imposition of expert witness fees, the Court stated “[i]t is well-settled that § 285 does not preclude a district court from separately imposing sanctions or fees under another authority,” and specifically held this includes sanctions pursuant to a district court’s inherent authority. The Federal Circuit also found the district court had not abused its discretion in imposing sanctions under the regional circuit law. However, the Court declined to shift attorneys’ fees for the appeal itself, noting that “[w]hile this appeal, and the arguments made herein, are entirely without merit, they are not quite frivolous.” The Court particularly noted the fact that it had not previously decided the specific question of whether deterrence sanctions may be awarded in addition to attorneys’ fees under § 285, and found that other considerations raised by the appellee did not quite bring the appeal over the threshold that would warrant the imposition of further sanctions.
The full opinion can be found here.
By Jason A. Wrubleski
EcoFactor, Inc. v. Google LLC, Appeal No. 2023-1101 (Fed. Cir. Dec. 4, 2024)
In a curt order issued this week and marked precedential, the en banc court admonished Google for attempting to exceed the scope of en banc review in the case. The Court had ordered en banc review “limited to addressing the district court’s adherence to Federal Rule of Evidence 702 and Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993), in its allowance of testimony from EcoFactor’s damages expert assigning a per-unit royalty rate to the three licenses in evidence in this case.” We wrote about the Panel’s ruling here, and the Court’s en banc order that set review here. In its brief, Google apparently included 18 pages of argument on issues that exceeded the scope of the Court’s en banc rehearing. The Court ordered that “EcoFactor should not address this argument in its response brief.” The Court’s one-paragraph order on this topic, which it designated precedential, is shorter than this write-up.
The full opinion can be found here.
By Nika Aldrich
Cytiva BioProcess R&D AB v. JSR Corp., Appeal Nos. 2023-2074, -2075, -2191, -2192, -2193, -2194, -2239, -2252, -2253, -2255 (Fed. Cir. Dec. 4, 2024)
In an appeal from the Board’s decision in six inter partes reviews (“IPRs”), that the petitioner had failed to present evidence to support a lead-compound analysis for purposes of establishing obviousness of the composition claims of the patents, the Court reviewed whether the Board had erred by failing to conduct the lead-compound analysis. The Court clarified that the obviousness inquiry is a flexible one, and the lead-compound analysis was not required where the prior-art references expressly suggested the proposed modification.
Having affirmed the Board’s conclusion of obviousness of the composition claims of the patents, the Court turned to the opposite conclusion with respect to the process claims of the patents. The Court explained the process claims and the composition claims contained only immaterial differences, and as such, it concluded the Board had erred in its determination that the process claims were not unpatentable under the obviousness inquiry.
The full opinion can be found here.
By Michael A. Cofield
Editors:
Nika Aldrich, IP Litigation Group Leader, Schwabe
Jason A. Wrubleski, Shareholder
Contributors:
Ann Bernert, Associate
Michael A. Cofield, Shareholder