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 August 23, 2013. Chris Byrnes and Ross Barton prepared this edition.
Case Summaries
Inventors and Inventorship: Generally
Litigation Practice and Procedure: Jurisdiction: Standing
Litigation Practice and Procedure: Jurisdiction: State Eleventh Amendment Immunity
Litigation Practice and Procedure: Venue
Litigation Practice and Procedure: Procedure: Motions to Dismiss
University of Utah v. Max-Planck-Gesellschaft Zur Forderung Der Wissenschaften e.V., et al., Nos. 12-1540, -1541, -1661 (Fed. Cir. (D. Mass.) Aug. 19, 2013). Opinion by Reyna, joined by Wallach. Dissenting opinion by Moore.
In affirming the U.S. District Court for the District of Massachusetts’s denial of a motion to dismiss, the Federal Circuit held that a state has no core sovereign interest in inventorship of a patent because only natural persons, and not corporations or sovereigns, are capable of being inventors. The Federal Circuit also held that when state universities are involved on both sides of an inventorship dispute, the dispute does not necessarily fall within the exclusive original jurisdiction of the Supreme Court. In addition, the Federal Circuit held that because Eleventh Amendment sovereign immunity applies only to suits by citizens against a state, there is no sovereign immunity issue when a state university is a plaintiff. Finally, the Federal Circuit ruled that a state university is not an “indispensable” or “mandatory” party in a dispute regarding inventorship when a court is fully capable of correcting inventorship without the state university’s involvement.
The University of Utah (“UUtah”) brought suit to correct inventorship of U.S. Patent Nos. 7,056,704 and 7,078,196. UUtah originally named as defendants the assignees of the patents: Max-Planck-Gesellschaft zur Forderung der Wissenschaften e.V., Max-Planck-Innovation GmbH, Whitehead Institute for Biomedical Research, Massachusetts Institute of Technology, and Alnylam Pharmaceuticals, Inc., as well as the University of Massachusetts (“UMass”). UMass argued that, because the dispute was between two states, the Supreme Court had exclusive original jurisdiction. UUtah then amended its complaint, substituting four UMass officials in place of UMass. The named officials moved to dismiss the case, arguing that UUtah’s claims were barred by sovereign immunity and that UUtah failed to join UMass, which the officials claimed was an indispensable party. The district court denied the motion, and the defendants appealed.
The Federal Circuit affirmed the district court’s denial of the motion to dismiss after evaluating the Supreme Court’s exclusive original jurisdiction, Eleventh Amendment immunity, and indispensable parties under Federal Rule of Civil Procedure 19(b). The court considered Second Circuit and Supreme Court case law in determining that because no state defendants were named in the amended complaint and because inventors must be natural persons, UMass is not a real party in interest and therefore the Supreme Court does not have exclusive original jurisdiction. Regarding sovereign immunity, the court ruled that because the case does not involve a suit by citizens against a state, there is no viable sovereign immunity issue. With respect to indispensable parties, the court ruled that the district court did not abuse its discretion when it concluded that UMass was not an indispensable party because UMass’s interests were adequately represented by the defendants, UMass was not prejudiced, inventorship could be corrected without UMass, and the possibility of the Supreme Court accepting original jurisdiction weighed only slightly against UUtah.
In a dissenting opinion, Judge Moore stated that the Supreme Court has original and exclusive jurisdiction because UMass, not the named officials, are the real parties in interest. Judge Moore explained that the dispute was between two state universities about ownership, rather than inventorship, which can only be brought in the Supreme Court. In addition, Judge Moore stated that UMass is an indispensable party because no other party has identical interests to UMass.
http://cafc.uscourts.gov/images/stories/opinions-orders/12-1540.Opinion.8-15-2013.1.PDF
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The Patent Application: Specification: Written Description
Claim Interpretation: Ordinary Meaning
Claim Interpretation: Intrinsic Evidence: Specification
Claim Interpretation: Intrinsic Evidence: Prosecution Disclaimer
Claim Interpretation: Extrinsic Evidence: Dictionaries and Treatises
Claim Interpretation: Extrinsic Evidence: Expert Testimony
Litigation Practice and Procedure: Procedure: Summary Judgment: Sufficiency of Evidence
SkinMedica, Inc. v. Histogen, Inc., et al., No. 12-1560 (Fed. Cir. (S.D. Cal.) Aug. 23, 2013). Opinion by Prost, joined by Clevenger. Dissenting opinion by Rader.
In affirming the U.S. District Court for the Southern District of California’s grant of summary judgment of noninfringement, the Federal Circuit determined that the district court made no legal error in construing a claim term away from its ordinary meaning because the intrinsic evidence disavowed the ordinary meaning on four different occasions. Specifically, the Federal Circuit ruled that although “culturing . . . cells in three-dimensions” on beads was known in the art of dermatological products, the claim term should be construed not to include beads. The court explained that the patentees disavowed beads because they unambiguously defined the use of beads as culturing in two-dimensions, and they differentiated such practices from three-dimensional cultures to avoid anticipatory prior art.
In 2009, SkinMedica, Inc. (“SkinMedica”) sued Histogen, Inc., Histogen Aesthetics, and Gail Naughton (collectively “Histogen”), alleging infringement of U.S. Patent Nos. 6,372,494 (“the ’494 patent”) and 7,118,746 (“the ’746 patent”). The two patents share an identical written description. The asserted claims relate to methods for producing cell culture media that provide the nutritional needs required to grow cells, which can be grown in either “two dimensions” or “three dimensions.” The district court construed the phrase “culturing . . . cells in three-dimensions” as “growing . . . cells in three dimensions (excluding growing in monolayers or on microcarrier beads).” Histogen then moved for summary judgment on the infringement claims, which the district court granted because Histogen’s cell growth process uses beads.
SkinMedica appealed the district court’s grant of summary judgment, arguing that the district court erroneously excluded beads from the definition of “culturing . . . cells in three-dimensions.” The Federal Circuit noted that patentees can disclaim the ordinary meaning of a claim term through repeated and definitive remarks in the written description. The court evaluated four instances in the intrinsic record wherein beads were mentioned in conjunction with cell culturing, and concluded that the patentees unambiguously distinguished beads from three-dimensional culturing when they used “as opposed to,” “or,” “i.e.,” and distinguished “conventional” cell culture media from three-dimensional cultures to avoid anticipatory prior art.
The Federal Circuit rejected SkinMedica’s argument that “three-dimensional framework” was defined to encompass beads because SkinMedica did not explain how beads were a “three-dimensional scaffold,” which was included in the definition. The court also rejected SkinMedica’s argument that a publication that was incorporated by reference encompassed beads because the publication did not define bead culturing as “three-dimensional” and the patentees did not refer to the publication for defining this term. The court likewise rejected SkinMedica’s attempt to utilize extrinsic evidence through an international patent application because SkinMedica first mentioned the document in its reply brief. Lastly, the court declined to consider SkinMedica’s expert testimony because it found the testimony to be conclusory and incomplete.
In a dissenting opinion, Chief Judge Rader stated that the claim term should be given its ordinary meaning, which encompasses beads. Chief Judge Rader explained that the four references to beads from the intrinsic evidence are ambiguous and that Histogen’s counsel’s failure to object to the form of SkinMedica’s expert testimony waived any defect in the form of such testimony.
http://cafc.uscourts.gov/images/stories/opinions-orders/12-1560.Opinion.8-20-2013.1.PDF
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Litigation Practice and Procedure: Courts: Standard of Review
Litigation Practice and Procedure: Jurisdiction: Generally
Litigation Practice and Procedure: Procedure: Generally
Apple, Inc. v. Samsung Electronics Co., et al., Nos. 12-1600, -1606, 13-1146 (Fed. Cir. (N.D. Cal.) Aug. 23, 2013). Opinion by Prost, joined by Bryson and O’Malley.
In reversing and remanding the U.S. District Court for the Northern District of California’s denial of requests to seal various confidential exhibits attached to pre-trial and post-trial motions, the Federal Circuit held that the district court abused its discretion by not adequately protecting the parties’ competitive interests. The Federal Circuit explained that, while the public has a legitimate interest in access to the courts and understanding judicial proceedings, parties also have a right to access those same courts upon terms that will not unduly harm their competitive interests.
In early 2011, Apple, Inc. (“Apple”) sued Samsung Electronics Company, Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications America, LLC (collectively “Samsung”), alleging that certain Samsung smartphones and tablets infringe certain of Apple’s patents and trade dress. Samsung filed counterclaims, alleging that Apple’s iPhone and iPad products infringed several of Samsung’s patents. In August 2012, the jury returned a verdict awarding Apple more than $1 billion in damages, drawing an extraordinary amount of attention from the public. Because of the extraordinary public attention, the district court explained to the parties that the trial would be “open” and that only a small number of exhibits would be sealed.
Before trial, the parties sought to seal confidential financial information, confidential source code and schematics, proprietary market research reports, future business plans, confidential licensing information, and information disclosing tax accounting procedures. The district court granted-in-part and denied-in-part the parties’ motions to seal, generally ordering unsealed documents disclosing the parties’ product-specific financial information, including profit margins, unit sales, revenues, costs, and Apple’s proprietary market research reports, customer surveys, and non-price terms of licensing agreements (“August Order”). Both parties appealed to the Federal Circuit, and the district court stayed the August Order pending appeal.
After trial, Samsung, with Apple’s support, sought to seal confidential capacity information, license agreements, and consumer research reports. The district court largely denied this motion to seal (“November Order”). Apple appealed to the Federal Circuit, and the district court stayed the November Order pending appeal. The Federal Circuit consolidated the appeals of the August and November Orders (collectively “Unsealing Orders”) into a single appeal.
On appeal, the Federal Circuit allowed various members of the press to file amici curiae briefs in support of the Unsealing Orders. The court also determined that it had jurisdiction to hear the appeals under the collateral order doctrine, which permits the appeal of trial court orders affecting rights that will be irretrievably lost in the absence of an immediate appeal.
Ruling that the district court abused its discretion in denying the parties’ motions to seal, the Federal Circuit held that as an initial matter, the district court erred by applying a “compelling reasons” standard rather than a “good cause” standard, which the Ninth Circuit utilizes for non-dispositive motions. The Appeals Court also ruled that Apple and Samsung would be at a clear disadvantage if suppliers are given access to their confidential financial information. The court rejected amici curiae arguments that the public has an interest in detailed financial information because such information was not considered by the jury and is not essential to understanding the jury’s damages awards. In addition, the court ruled that the district court abused its discretion in refusing to seal Apple’s nine market research documents because Apple obtains a competitive advantage from the documents and because Apple has agreed to make public all of the information contained in the documents cited by the parties or the district court. Accordingly, the Federal Circuit ruled that the documents will not aid the public’s understanding of the judicial process and should thus not be made public.
http://cafc.uscourts.gov/images/stories/opinions-orders/12-1600.Opinion.8-20-2013.1.PDF
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Alston & Bird's Federal Circuit Patent Case Summaries are intended to be informational and do not constitute legal advice or opinions regarding any specific situation. The material may also be considered advertising under certain rules of professional conduct or other law. This publication may be reprinted without the express permission of Alston & Bird as long as it is reprinted in its entirety including the copyright notice, ©2013.