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 March 27, 2015. Shri Abhyankar and Kirk Bradley prepared this edition.
Case Summaries
Patentable Invention: Obviousness: Secondary Considerations of Nonobviousness
Patentable Invention: Obviousness: Teaching, Suggestion, or Motivation in Prior Art
Claim Interpretation: Intrinsic Evidence: Importing Limitations from the Specification into Claims
Infringement: Doctrine of Equivalents: Generally
Cadence Pharmaceuticals Inc., et al. v. Exela PharmSci Inc., et al., No. 14-1184 (Fed. Cir. (D. Del. Mar. 23, 2015). Opinion by Linn, joined by Reyna and Wallach.
In affirming the district court’s determinations and claim construction, the Federal Circuit held that U.S. Patent Nos. 6,028,222 (“the ’222 patent”) and 6,992,218 (“the ’218 patent”), both of which addressed aqueous phenol formulations, particularly acetaminophen, were infringed literally or under the doctrine of equivalents, and that the ’218 patent was not invalid. The litigation arose after appellants Exela PharmSci Inc., Exela Holdings, Inc., and Exela Pharm Sciences, LLC (collectively “Exela”) filed an Abbreviated New Drug Application with the Food and Drug Administration, alleging noninfringement and invalidity of both patents, prompting a responsive suit by patentee-appellees SCR Pharmatop and Cadence Pharmaceuticals Inc. (“collectively Cadence”).
The Federal Circuit affirmed the district court’s construction of the ’222 patent term “buffering agent.” The term was given its plain and ordinary meaning of “an agent that helps the formulation resist change in pH” despite language suggesting a certain concentration in the specification, which appellant Exela argued mandated a claim construction including an efficacy requirement. The Federal Circuit held that including an efficacy requirement would have improperly imported a limitation from the written description into the claim. As the claim construction argument was the sole basis for Exela’s noninfringement appeal of the ’222 patent, the Federal Circuit also affirmed the district court’s finding of infringement of that patent.
The Federal Circuit also affirmed the district court’s ruling that Exela infringed certain claims of the ’218 patent under the doctrine of equivalents. The Federal Circuit agreed with the testimony of patentee Cadence’s expert that the timing of deoxygenation of a certain solution used in that patent was an inconsequential difference. Therefore, appellant Exela’s process, which deoxygenated after the formation of the aqueous solution, rather than using deoxygenated components as in the ’218 patent, still infringed under the doctrine of equivalents. The Federal Circuit rejected Exela’s argument that this equivalence vitiated any claim limitation, holding that “vitiation” is not a doctrine that forecloses an otherwise effective argument of infringement under the doctrine of equivalents, but instead is a legal conclusion that the factual scenario is not equivalent. As a reasonable trier of fact determined that Exela’s process was insubstantially different from that recited in the claims, there was no viable argument that a claim limitation was vitiated. The Federal Circuit also affirmed that when a multi-step claim begins with the term “optionally,” every step in that claim is optional and need not be performed in order to infringe.
Finally, the Federal Circuit rejected appellant Exela’s assertion that the ’218 patent was obvious over certain prior art. The prior art presented had already been overcome during prosecution of the ’218 patent, and Exela failed to present sufficient evidence to show that the district court was clearly erroneous in finding that there was not clear and convincing evidence of invalidity. The Federal Circuit affirmed that one skilled in the prior art would not have been motivated to combine the two prior art teachings, as they dealt with protections against two distinct degradation processes.
The Federal Circuit also affirmed the district court’s holding that secondary considerations related to the marketing of a product that only infringed the ’218 patent under the doctrine of equivalents were relevant.
http://www.cafc.uscourts.gov/images/stories/opinions-orders/14-1184.Opinion.3-19-2015.1.PDF
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Patentable Invention: Obviousness: Teaching, Suggestion, or Motivation in Prior Art
Claim Interpretation: Generally
Infringement: Willful Infringement
Defenses: Invalidity
Remedies: Damages: Exceptional Case (Enhanced Damages)
Stryker Corp., et al. v. Zimmer, Inc., et al., No. 13-1668 (Fed. Cir. (W.D. Mich., Decided Dec. 19, 2014, Revised Opinion Issued Mar. 23, 2015). Opinion by Prost, joined by Newman and Hughes.
The Federal Circuit upheld the district court’s judgment on infringement and invalidity, but reversed the district court’s finding of willfulness and exceptional case requiring treble damages and an award of attorneys’ fees. The underlying litigation involved three separate patents concerning pulsed lavage devices, portable medical devices for irrigating surgical areas or wounds.
The Federal Circuit dismissed an argument by appellees Zimmer, Inc., Zimmer Surgical, Inc., and Zimmer Orthopaedic Surgical Products (collectively “Zimmer”) that the district court ignored certain prosecution history arguments pertinent to construction of the claim term “handle” in one of the patents-in-suit. Zimmer had failed to raise those arguments at or before the Markman hearing. The Federal Circuit affirmed the district court’s decision to only consider the newly presented argument as it related to infringement. The court held that there was sufficient evidence that Zimmer infringed the relevant claim containing the term “handle”; however, the court also held that Zimmer’s claim construction and noninfringement position were not unreasonable.
Second, the Federal Circuit addressed Zimmer’s claim that the district court erred in granting summary judgment of infringement on asserted claims of a separate patent-in-suit. Zimmer argued that the district court erred when it rejected Zimmer’s argument that a claim in which the handle “receive[s]” a discharge tube requires that the discharge tube fit within the front end of a handle. Zimmer’s device instead had the front end of the handle fitting within the discharge tube. The Federal Circuit held that the district court did not err in holding that Zimmer’s construction of the term “receive” was artificially narrow, and therefore upheld the grant of summary judgment for the patentee.
Third, the Federal Circuit affirmed as reasonable the jury’s decision that there was no clear and convincing evidence that the prior art submitted by Zimmer anticipated one of the patents-in-suit. Similarly, the Federal Circuit affirmed that a reasonable jury could have found that a separate patent was not obvious in light of a prior art combination proposed by Zimmer, which included both a medical irrigation device and an eye wash, as there was reason to believe one skilled in the art would have had no motivation to combine the two devices.
Despite finding against Zimmer on all of its invalidity and noninfringement positions, the Federal Circuit held that those positions were not objectively unreasonable and therefore Zimmer had not engaged in objective recklessness with regard to the patents-in-suit. The Federal Circuit reversed the district court’s finding of willful infringement, holding that the district court failed to undertake an objective assessment of Zimmer’s specific defenses, as it had instead relied on improper summary evidence, such as evidence regarding the pioneering nature of the patented invention, to generate its finding that Zimmer’s positions had been unreasonable. As the district court’s award of attorneys’ fees for exceptional case was based on the reversed willful infringement determination, the award of attorneys’ fees was reversed and remanded for consideration of a litigation misconduct dispute.
http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/2013-1668_3-23-2015_revised_opinion.pdf
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Patentable Invention: Anticipation: Prior Publication
Patentable Invention: Obviousness: Secondary Considerations of Nonobviousness
Litigation Practice and Procedure: Procedure: Waiver
Kennametal, Inc. v. Ingersoll Cutting Tool Co., No. 14-1350 (Fed. Cir. (USPTO, Mar. 25, 2015). Opinion by Prost, joined by Newman and Linn.
In affirming the Patent Trial and Appeal Board’s (“Board”) rejection of all claims of U.S. Patent No. 7,244,519 (“the ’519 patent”) as either anticipated, obvious, or both, the Federal Circuit held that substantial evidence supported the Board’s determinations, and there was no error in the Board’s legal conclusion of obviousness. However, the Federal Circuit additionally held that patentee Kennametal had not waived its right to argue that certain claims were independently patentable over certain claims of obviousness. The Federal Circuit held that because Kennametal had faced a single obviousness combination when it briefed the Board, Kennametal had no motivation for arguing the independent patentability of certain claims. Without a previous requirement to make the independent patentability argument, Kennametal could not have waived the argument.
Patentee Kennametal filed suit against appellee Ingersoll Cutting Tool Co. (“Ingersoll”), after which Ingersoll submitted a request that the ’519 patent be submitted for inter partes reexamination on the grounds that certain of the original claims were anticipated under 35 U.S.C. § 102(b) and all of the claims were obvious under 35 U.S.C. § 103(a). The examiner rejected as obvious all claims of the ’519 patent, which related to cutting tools containing ruthenium as a binder coated using physical vapor deposition (“PVD”). Kennametal filed new claims, which Ingersoll again submitted were anticipated and/or obvious. The examiner again rejected all claims as obvious, which Kennametal appealed. Ingersoll cross-appealed the examiner’s refusal to adopt its proposed anticipation rejections. The Board then found that the examiner erred in not finding that certain claims were anticipated by U.S. Patent No. 6,6554,548 to Grab (“Grab”), while additionally finding that those claims deemed not anticipated were nonetheless obvious over Grab in combination with other cited prior art.
On appeal, Kennametal argued that Grab does not disclose the combination of a certain binder (ruthenium) and a PVD coating process. The Federal Circuit rejected this argument, holding that as Grab disclosed the proper binding material in a claim, and included the PVD coating process in its specification, even as a non-preferred method, Grab expressly contemplated the combination claimed by the ’519 patent. Grab need not provide evidence of actual performance of the ruthenium/PVD combination in order to anticipate the claims of the ’519 patent.
The Federal Circuit heard but rejected Kennametal’s argument that the remaining claims were independently patentable and nonobvious, despite Ingersoll’s argument that Kennametal had waived that argument. The Federal Circuit also rejected Kennametal’s argument that its invention was supported by secondary considerations of nonobviousness, as the well-known problem of cobalt capping would have discouraged the use of the ruthenium/PVD combination disclosed in the ’519 patent. The Federal Circuit held that as Grab expressly taught the combination of ruthenium/PVD, the combination also would have been obvious, despite the issue posed by cobalt capping. The rejection of all claims of the ’519 patent was affirmed.
http://www.cafc.uscourts.gov/images/stories/opinions-orders/14-1350.Opinion.3-23-2015.1.PDF
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The Patent Application: Generally
Patent Office Procedures: Generally
Exela Pharma Sciences, LLC, et al. v. Lee, No. 13-1206 (Fed. Cir. (E.D. Va. Mar. 26, 2013). Per curiam opinion by Newman and Dyk. Concurring opinion by Newman. Concurring opinion by Dyk.
The Federal Circuit affirmed on separate grounds the district court’s dismissal of appellants Exela Pharma Sciences, LLC, Exela Pharmsci, Inc., and Exela Holdings, Inc.’s (collectively “Exela”) petition to the U.S. Patent and Trademark Office (“PTO”) to “reconsider and withdraw” the PTO’s revival of the national stage application of Cadence Pharmaceuticals, Inc., and to cancel the issued patent, U.S. Patent No. 6,992,218. The Federal Circuit held that PTO revival rulings are not subject to third-party collateral challenge, thus preventing review.
Patentee SCR Pharmatop filed an initial patent application in France on June 6, 2000, and filed an international patent application identifying the United States on June 6, 2001. SCR Pharmatop failed to timely file the required materials with the PTO by December 6, 2002, and the U.S. application was deemed abandoned. The PTO granted SCR Pharmatop’s subsequent petition to revive the application on the ground that the delay was unintentional.
The patent issued on January 31, 2006, and five years later, SCR Pharmatop and exclusive sublicensee Cadence Pharmaceuticals, Inc. sued appellant Exela. In response, Exela filed a petition in the PTO under the Administrative Procedure Act (“APA”), claiming that national stage applications could only have delay excused when the non-compliance was unavoidable, making the PTO’s application of revival on the basis of unintentional non-compliance ultra vires. The PTO declined review, and Exela filed a district court action to compel the PTO. The district court dismissed Exela’s action on the ground that Exela’s claim amounted to a challenge of an issued regulation of the PTO, and that such challenge was time-barred, as the regulation had issued in 1982 and any challenge faced a six-year period of limitations from issuance.
On appeal, the Federal Circuit focused on the appropriateness of APA review, rather than the limitations issue. Appellant Exela argued that the PTO’s action in reviving the application was contrary to the Patent Cooperation Treaty statute, and that the APA was designed to provide judicial review to this type of conduct. In response, appellee PTO argued that there is no authority for third parties to collaterally challenge the correctness of PTO revival proceedings.
The Federal Circuit held that Congress did not intend to permit judicial review of PTO decisions via the APA. The Patent Act itself provides an “intricate scheme for administrative and judicial review of PTO patentability determinations.” This separate framework indicates that third-party challenges outside of those procedures provided by the Patent Act are not legislatively intended.
Judge Newman and Judge Dyk both wrote concurring opinions. Judge Newman defended the Federal Circuit’s prior related decision, Aristocrat Technologies Australia Pty Ltd. v. International Game Technology, 543 F.3d 657 (Fed. Cir. 2008), which held that a defendant in an infringement action cannot raise improper revival as a defense in litigation before the district court. In Judge Newman’s view, the other non-listed defenses are easily distinguished from the procedural irregularity at issue when the PTO decides to revive an application. Judge Dyk called into question the propriety of the Aristocrat decision, explaining that it fails to properly distinguish the non-listed defense of improper revival from other non-listed defenses available to patent defendants.
http://www.cafc.uscourts.gov/images/stories/opinions-orders/13-1206.Opinion.3-23-2015.1.PDF
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