Alston & Bird LLP's weekly Federal Circuit Patent Case Summaries are published by Wolters Kluwer Law & Business as part of its Aspen Publishers product line. The following is a summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit for the week ending on the date below.
Patent Case Summaries for the Week Ending September 28, 2012
Scott Amy and Kirk Bradley prepared the summaries in this issue
Litigation Practice and Procedure: Jurisdiction: Moot or Unripe Issues
Litigation Practice and Procedure: Declaratory Judgment Actions
Litigation Practice and Procedure: Procedure: Motions to Dismiss
Matthews International Corp. v. Biosafe Engineering, LLC, et al., No. 12-1044 (Fed. Cir. (W.D. Pa.) Sept. 25, 2012). Opinion by Mayer, joined by Rader and Schall.
In affirming the dismissal of a declaratory judgment complaint, the Federal Circuit held that the plaintiff’s dispute with the defendants lacked the requisite immediacy and reality to support the exercise of declaratory judgment jurisdiction. The Federal Circuit also affirmed the dismissal of the plaintiff’s state law claims on the ground that the plaintiff failed to plead the bad faith element to support those claims.
Matthews International Corporation (“Matthews”) sued Biosafe Engineering, LLC and Digestor, LLC (collectively “Biosafe”), seeking a declaratory judgment of noninfringement, invalidity, and unenforceability of a number of method patents directed to the application of alkaline hydrolysis to dispose of various types of waste. Matthews also brought state law claims of trade libel, defamation, and tortious interference with contractual relations, alleging that Biosafe had wrongly accused Matthews of patent infringement and made false accusations about Matthews. Subsequently, Matthews amended its complaint to request that a later-issued system patent be declared invalid and unenforceable. In response, Biosafe moved to dismiss Matthews’s claims for lack of declaratory judgment jurisdiction and for failure to adequately plead the state law claims. The U.S. District Court for the Western District of Pennsylvania granted Biosafe’s motion, and Matthews appealed.
On appeal, the Federal Circuit held that Matthews’s dispute with Biosafe lacked the requisite immediacy and reality to support the exercise of declaratory judgment jurisdiction. Specifically, the court ruled that Matthews’s dispute lacked “immediacy” because there was no evidence as to when, if ever, Matthews’s customers will use its equipment in a manner that could even arguably infringe Biosafe’s method patents. The Federal Circuit also ruled that Matthews’s dispute lacked “reality” because it was undisputed that Matthews’s equipment could be operated in a manner that would not infringe Biosafe’s method patents, and Matthews never provided information regarding the specific parameters under which its equipment would likely be operated. Thus, because the operating protocols for the equipment were unknown, “any judicial determination as to whether operation of those units could infringe the Method Patents would constitute an advisory opinion based upon a hypothetical set of facts.”
The Federal Circuit next addressed the district court’s jurisdiction over the system patent, which had been first introduced into the case in an amended complaint. On this issue, the Federal Circuit affirmed the district court’s conclusion that, absent “predicate jurisdiction” based upon the method patents, the court had no authority to exercise jurisdiction over the system patent.
Lastly, the Federal Circuit addressed Matthews’s state law claims of trade libel, defamation, and tortious interference with contractual relations. Matthews, however, failed to plead the bad faith element necessary to support its state-law claims. Moreover, the claims would not have been ripe for review even if Matthews had properly pled the required bad faith element because the court would be required to determine whether Biosafe’s infringement allegations were made in bad faith, requiring a determination that the allegations were objectively baseless. The district court could not make such an assessment until it had some particularized knowledge as to how Matthews’s customers planned to operate its equipment. Without such evidence, any determination as to whether Biosafe acted unreasonably in asserting infringement would be premature.
Patent Office Procedures: Reexamination
Claim Interpretation: Intrinsic Evidence: Specification
Claim Interpretation: Intrinsic Evidence: Prosecution Disclaimer
Claim Interpretation: Intrinsic Evidence: Preferred Embodiments
In re Abbott Diabetes Care Inc., Nos. 11-1516, -1517 (Fed. Cir. (B.P.A.I.) Sept. 28, 2012). Opinion by Prost, joined by Lourie and Wallach.
In vacating and remanding the Board of Patent Appeals and Interferences’s (“Board”) decision as to the patentability of certain claims, the Federal Circuit held that the Board’s constructions of two claim terms were unreasonable and inconsistent with the specification.
Abbott Diabetes Care Inc. (“Abbott”) is the owner of U.S. Patent Nos. 6,175,752 and 6,565,509 (collectively “the Abbott Patents”), which are directed to methods and devices for in vivo monitoring of glucose for diabetics. On March 27, 2006, the Patent and Trademark Office granted third party requests for ex parte reexamination of the Abbott Patents. During reexamination, the examiner finally rejected all of the claims subject to reexamination as being indefinite, anticipated, or obvious over several combinations of prior art references.
In reviewing the examiner’s rejections, the Board determined that the proper construction of the claim term “electrochemical sensor” includes wire and cables, and the proper construction of the claim term “substantially fixed” permits some movement of the sensor relative to the position of the sensor control unit. Based on these constructions, the Board concluded that all of the claims subject to reexamination were unpatentable in light of several prior art references. The Board rejected Abbott’s arguments in its requests for rehearing, and Abbott appealed.
The Federal Circuit held that the Board’s construction of the claim term “electrochemical sensor” was unreasonable and inconsistent with the language of the claims and the specification. Specifically, the court held that the claims themselves suggest that the electrochemical sensor does not have wires or cables, and that suggestion is reinforced by the specification, which contains only disparaging remarks about external wires and cables of prior art sensors. The court also noted that the specification repeatedly, consistently, and exclusively depicts an electrochemical sensor without external wires and cables.
Turning to the parties’ dispute over whether the phrase “some movement” in the construction of the claim term “substantially fixed” includes the degree of movement disclosed in a prior art reference, the court held that the Board’s modified construction requiring only a “somewhat restrained” sensor was not reasonable in view of the specification. Specifically, the court stated that this degree of movement was significantly greater than the movement described in the specification.
Patentable Invention: Obviousness: Scope and Content of Prior Art
Patentable Invention: Obviousness: Teaching, Suggestion, or Motivation in Prior Art
The Patent Application: Specification: Written Description
Infringement: Doctrine of Equivalents: All Limitations Rule
Infringement: Doctrine of Equivalents: Function-Way-Result
Pozen Inc. v. Par Pharmaceutical, Inc., et al., Nos. 11-1584, -1585, 1586 (Fed. Cir. (E.D. Tex.) Sept. 28, 2012). Opinion by Wallach, joined by Newman. Opinion dissenting in part by Clevenger.
The Federal Circuit affirmed the district court’s judgment that the patents-in-suit were not invalid as obvious in light of several prior art references, and affirmed the judgment that one of the patents-in-suit was infringed under the doctrine of equivalents.
Pozen, Inc. is the owner of U.S. Patent Nos. 6,060,499 (“the ’499 patent”), 6,586,458 (“the ’458 patent”), and 7,332,183 (“the ’183 patent”), which are directed to methods and compositions for treating migraines by combining the drugs sumatriptan and naproxen. Pozen markets and sells a combination of sumatriptan and naproxen under the name Treximet®.
Par Pharmaceutical, Inc. (“Par”), Alphapharm Pty Ltd., and Dr. Reddy’s Laboratories, Inc. (“DRL”) (collectively “Appellants”) filed Abbreviated New Drug Applications (“ANDA”) with the FDA seeking approval to market generic forms of Treximet before expiration of Pozen’s patents. Based on the ANDA filings, Pozen sued Appellants for infringement. Following claim construction and a bench trial, the U.S. District Court for the Eastern District of Texas found that the patents were not invalid, that Appellants’ ANDA products infringed the ’499 and ’458 patents, and that Par’s and DRL’s ANDA products infringed the ’183 patent.
On appeal, the Federal Circuit held that the ’499 and ’458 patents were not invalid as obvious in light of four prior art references because the references would not have provided one of ordinary skill with the motivation to combine sumatriptan and naproxen in order to benefit from longer lasting efficacy as compared to when either agent is taken alone. The court also rejected Par’s argument that the ’138 patent was invalid as obvious because Par failed to explain how the plain and ordinary meaning of the claim term “independent dissolution” differed from the narrow meaning adopted by the district court. Additionally, the court held that the ’499 patent was not invalid for lack of written description because the specification describes the invention in such a way that it is understandable to a person of ordinary skill in the art.
Addressing infringement, the Federal Circuit held that Appellants’ ANDA products infringed the ’183 patent under the doctrine of equivalents because the record contained sufficient evidence that the “independent dissolution” limitation was met. The court also held that Appellants’ ANDA products met the “substantially all” claim limitation under the doctrine of equivalents because, although the district court’s claim construction provided specific percentages, the doctrine of equivalents may be applied to find infringement where the accused value is insubstantially different from the claimed value.
In an opinion dissenting in part, Judge Clevenger disagreed with the majority’s holding that Appellants’ ANDA products met the “substantially all” claim limitation, stating that it was improper for the district court to fail to consider whether the “substantially all” limitation may be met by ANDA products if the accused value is numerically nonequivalent.
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