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 February 21, 2014. Byron Holz and Kirk Bradley prepared this edition.
Case Summaries
Claim Interpretation: Intrinsic Evidence: Generally
The Patent Application: Specification: Written Description
Butamax Advanced Biofuels LLC v. Gevo, Inc. , No. 13-1342 (Fed. Cir. (D. Del.) Feb. 18, 2014). Opinion by Linn, joined by Rader and Wallach.
The Federal Circuit reversed the trial court’s claim construction relating to keto-acid reductoisomerase (“KARI”) in certain claimed biosynthetic pathways for producing isobutanol, and reversed the trial court’s decision that certain claims relating to deactivation of a genetic pathway were invalid for lack of written description.
Butamax Advanced Biofuels LLC (“Butamax”) asserted two patents against Gevo, Inc. (“Gevo”): U.S. Patent Nos. 7,851,188 (“the ’188 patent”) and 7,993,889 (“the ’889 patent”). Both patents relate to the production of isobutanol using a biosynthetic pathway in a recombinant microbial host, such as yeast. Central to the appeal was the district court’s determination that KARI-related claim language required use of “an enzyme that is solely NADPH-dependent” (referring to nicotinamide adenine dinucleotide phosphate + hydrogen). It was undisputed that the patents defined KARI as “an enzyme that catalyzes [a specific reaction] using NADPH,” though the parties disputed whether this definition required exclusion of any other enzyme co-factors, besides NADPH. Gevo’s accused products used KARI enzymes with an alternate cofactor known as NADH (nicotinamide adenine dinucleotide + hydrogen).Affirming the Board’s claim construction, the Federal Circuit ruled that Tivoli’s amendment of the claims during prosecution constituted dispositive intrinsic evidence of what the phrase “inert to light” meant. This prosecution-based intrinsic evidence was superior to the inconsistent extrinsic dictionary evidence relied on by the examiner in her prior, erroneous construction. The Federal Circuit then vacated the Board’s conclusion that the claims were patentable because the Board improperly relied on the examiner’s discussion of prior art using the erroneous construction of “inert to light.” The Federal Circuit thus remanded for new factual findings under the proper construction.
On appeal, the Federal Circuit agreed with Butamax that the trial court had improperly limited the claims to an “NADPH-dependent” enzyme, and held that the KARI claim terms should be construed in a manner consistent with the use of other enzyme cofactors, in addition to NADPH. Although there was no dispute that the patents offered a definition of KARI, the Federal Circuit held that the definition’s use of the phrase “using NADPH” did not require the use of only NADPH. The court further concluded that the use of a specific Enzyme Commission (EC) number in the ’188 patent did not require a different result there, in light of evidence from Butamax showing that the EC number in question was not always associated with an NADPH-dependent enzyme. The court also observed that the trial court’s construction had excluded a preferred embodiment, also reflected in a dependent claim, involving an organism whose KARI enzyme could use both NADH and NADPH.
In light of the claim construction ruling, the Federal Circuit vacated the denial of a summary judgment of infringement and remanded for reconsideration of whether Gevo had raised a sufficient fact question regarding the presence of NADPH in its products to avoid summary judgment.
The Federal Circuit also reversed a summary judgment ruling that Claims 12 and 13 of the ’889 patent, related to inactivating certain competing gene pathways, lacked written description. Although the court characterized Butamax’s evidence as “weak,” it nevertheless concluded that Butamax had raised a sufficient factual question of whether deactivation of the genetic pathway was sufficiently well-known in the art that a person of ordinary skill would have understood the patentee to be in possession of these claimed inventions.
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Infringement: Doctrine of Equivalents: Generally
Ring & Pinion Service Inc. v. ARB Corp. Ltd. , No. 13-1238 (Fed. Cir. (W.D. Wash.) Feb. 19, 2014). Opinion by Moore, joined by Clevenger and Reyna.
The Federal Circuit reversed and remanded the district court’s summary judgment of noninfringement, concluding that the district court had applied the doctrine of claim vitiation in a manner contrary to a binding stipulation between the parties.
ARB Corporation Ltd. (“ARB”) owns U.S. Patent No. 5,591,098 (“the ’098 patent”), related to an automobile locking differential. Ring & Pinion Service Inc. (“R&P”) sued ARB for a declaratory judgment that R&P does not infringe the ’098 patent. Following claim construction, both parties cross-moved for summary judgment. The court’s decision turned on a claim limitation involving a “cylinder means.” The parties stipulated that all other limitations were literally present, and that R&P used an equivalent to the “cylinder means” limitation, without literally satisfying it. The parties further agreed that R&P’s equivalent to the “cylinder means” would have been foreseeable to a person of ordinary skill at the time of filing the application for the ’098 patent. The parties disputed, however, whether this foreseeability prevented R&P’s equivalent from satisfying the limitation under the doctrine of equivalents. The district court concluded that foreseeability was not a bar to the application of the doctrine of equivalents but nevertheless held that a finding of infringement would vitiate the “cylinder means” element, entering summary judgment of noninfringement accordingly.
The Federal Circuit reversed. As an initial matter, it agreed with the district court that “[t]here is not, nor has there ever been, a foreseeability limitation on the application of the doctrine of equivalents.” The Federal Circuit disagreed, however, with the district court’s application of the doctrine of claim vitiation. It explained that claim vitiation was not an exception to the doctrine of equivalents, but instead requires a determination that no reasonable jury could find that two elements are equivalent. The Federal Circuit determined that such a finding would be inconsistent with the parties’ stipulation that R&P used an equivalent of the “cylinder means” element. Thus, the court determined that R&P should be held to the stipulation.
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Claim Interpretation: Intrinsic Evidence: Generally
The Patent Application: Claims: Indefiniteness
The Patent Application: Specification: Written Description
The Patent Application: Specification: Enablement
Takeda Pharmaceutical Co. Ltd., et al. v. Zydus Pharmaceuticals USA, Inc., et al. , 13-1406 (Fed. Cir. (D.N.J.) Feb. 20, 2014). Opinion by Prost, joined by Plager and Chen.
The Federal Circuit reversed the district court’s claim construction, reversed its summary judgment of literal infringement, and affirmed its summary judgment of no invalidity in this appeal from a case involving Zydus Pharmaceuticals’s (“Zydus”) abbreviated new drug application for a generic version of Prevaid® SoluTab™, used in treating acid reflux.
Plaintiffs Takeda Pharmaceutical Company Limited, Takeda Pharmaceuticals North America, Inc., Takeda Pharmaceuticals, LLC, Takeda Pharmaceuticals America, Inc., and Ethypharm, S.A. own patents claiming the formulation for Prevaid® SoluTab™. The patent at issue, U.S. Patent No. 6,328,994, relates to a formulation designed to disintegrate in the mouth, with granules small enough to avoid a feeling of roughness. The trial court construed a claim requirement of “granules having an average particle diameter of 400 μm” as having a ±10% margin of error, effectively raising the average diameter that could infringe to 440 μm. Based on this, the court entered summary judgment of literal infringement. The district court also rejected invalidity arguments of indefiniteness, written description, and enablement.
On appeal, the Federal Circuit reversed the district court’s claim construction, concluding that the requirement of an average particle diameter of less than 400 μm was not subject to a margin of error. First, it explained that this was inconsistent with the plain language. It also examined the specification, noting that none of the teachings or disclosed embodiments suggested that a particle size greater than 400 μm could achieve the desired inventive result of avoiding a feeling of roughness in the patient’s mouth. Based on this claim construction decision, the Federal Circuit also reversed the summary judgment of literal infringement. There were disputes about how to measure average particle diameter, but even the results most favorable to Zydus showed an average diameter above 400 μm.
The Federal Circuit also affirmed the trial court’s conclusions of no invalidity due to indefiniteness, written description, or enablement. Regarding indefiniteness, the court explained that the failure to define a method for measuring average diameter did not render the claim indefinite, particularly given that the evidence in the case did not show significant differences between alternate measurement methods available. Regarding written description, Zydus alleged a failure to show possession of an invention particle size below 400 μm post- tableting. The Federal Circuit disagreed, observing that the evidence merely suggested that tableting might affect particle size, and concluding that the district court’s ruling of no invalidity had not committed clear error. Finally, regarding enablement, the Federal Circuit affirmed the district court’s conclusion that there was an enabling disclosure of how to measure particle size, albeit on alternate grounds. The Federal Circuit concluded that the patent did not disclose measurement techniques taking into account deagglomeration, but (contrary to Zydus’ view) such deagglomeration was not required for the particle size measurement.
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Claim Interpretation: Intrinsic Evidence: Generally
Frans Nooren Afdichtingssystemen B.V., et al. v. Stopaq Amcorr Inc., et al. , No. 13-1200 (Fed. Cir. (S.D. Tex.) Feb. 21, 2014). Opinion by Rader, joined by Taranto and Chen.
The Federal Circuit vacated and remanded the district court’s summary judgment of noninfringement, concluding that the decision below was based on faulty and incomplete claim construction analysis regarding the composition of a material for insulation, sealing, and coating.
Frans Nooren Afdichtingssytemen B.V. (“Nooren”) owns U.S. Patent No. 5,898,044 (“the ’044 patent”), which is under exclusive license to Stopaq B.V. The ’044 patent relates to a composition used for providing insulation and protection from corrosion, water ingress, and mechanical stresses. Defendants Stopaq Amcorr Inc. d/b/a Amcorr Products and Services and Dolphin Sealants, LLC (collectively “Amcorr”) manufacture accused products including ViscoWrap, EZ Wrap and Hippo Patch.
At the trial court, the dispute focused on construction of the claim phrase, “a filler comprising a plurality of fractions each comprising different size particles, and wherein said different fractions have different particle size distributions.” Nooren argued that the requirement for a plurality of “fractions” in the “filler” material was satisfied in the accused products by various combinations of polypropylene with other materials. Amcorr countered with two arguments: (i) that the “fractions” of “filler” must each be of the same material; and (ii) that polypropylene was not a “filler” in the accused products. The trial court sided with Amcorr and entered summary judgment of noninfringement.
The Federal Circuit disagreed with both of Amcorr’s arguments that polypropylene could not satisfy the “filler” requirements. First, it rejected the position that the plurality of “fractions” could not be satisfied by different materials. The Federal Circuit examined the prosecution history that the trial court had relied upon, where the applicant had made amendments to overcome prior art disclosing “metal foil coated with asilica and graphite filled organopolysiloxane.” The Federal Circuit concluded that this rejection was not clearly based on the number of materials in a filler, and thus did not clearly limit the filler to a single material.
Second, the Federal Circuit rejected the trial court’s conclusion that polypropylene could not be a filler because, in the trial court’s words “[p]olypropylene mixes with polybutene to form a homogenous polymer mixture.” Because the court below had not announced a clear construction or explained this observation in detail, however, the Federal Circuit concluded that it should vacate the ruling of noninfringement for further consideration of whether polypropylene can be a filler, as well as a more detailed analysis of related claim language involving the filler.
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Claim Interpretation: Generally
Litigation Practice and Procedure: Courts: Standard of Review
Lighting Ballast Control LLC v. Philips Electronics North America Corp., et al. , No. 12-1014 (Fed. Cir. (N.D. Tex.) Feb. 21, 2014). En banc opinion by Newman, joined by Lourie, Dyk, Prost, Moore, and Taranto. Concurring opinion by Lourie. Dissenting opinion by O’Malley, joined by Rader, Reyna, and Wallach.
Sitting en banc, the Federal Circuit held that it would continue to apply a standard of de novo review to district court claim construction decisions, thus reaffirming the rule established in Cybor Corp. v. FAS Techs., Inc. , 138 F.3d 1448 (Fed. Cir. 1998) (en banc).
The Federal Circuit had held that a particular “voltage source means” was indefinite for lacking corresponding structure under 35 U.S.C. § 112 ¶¶ 2, 6. The patentee argued that the trial court’s holding had relied on factual determinations entitled to greater deference. On rehearing en banc, the en banc court considered three questions: (1) Should this court overrule Cybor? (2) Should this court afford deference to any aspect of a district court’s claim construction? (3) If so, which aspects should be afforded deference?
The court considered three possible responses. The first, advocated by the patentee and various amici curiae, argued that Cybor should be abandoned and additional deference given to district courts because claim construction is a question of fact. The second, advocated by the United States and various amici curiae, sought an intermediate standard in which factual aspects of claim construction would receive deference, while the ultimate legal conclusion would continue to be reviewed de novo. Finally, certain amici curiae sought to preserve the current de novo standard under Cybor.
Relying on principles of stare decisis, the Federal Circuit held that the high burden for deviating from the court’s prior ruling had not been met, and reaffirmed the existing de no vo review standard under Cybor. The court concluded that deviating from its precedent would require a showing that Cybor was unworkable, and determined that none of the proponents of change had made such a showing. The court also expressed concern that none of the proposed alternatives was itself workable, given the difficulties of disentangling legal and factual questions in claim construction.
Judge Lourie wrote a concurring opinion adding additional reasons for retaining the rule of Cybor . These included: (1) that Cybor follows Supreme Court precedent; (2) that Cybor promotes uniformity in construction, consistent with the goals of the patent laws; (3) that fact finding in claim construction risks incorrect ex-post reasoning; and (4) that there is already a degree of “informal” deference provided under Cybor .
Judge O’Malley wrote a dissenting opinion raising concerns including that Cybor mischaracterized the Supreme Court’s Markman ruling, that Cybor is inconsistent with Fed. R. Civ. P. 52(a), and that the current standard leads to uncertainty in claim construction.
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