A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.
There were no qualifying cases for the first week of the year (Jan. 5).
AC Technologies S.A. v. Amazon.com, Inc., et al., No. 18-1433 (Fed. Cir. (PTAB) Jan. 9, 2019). Opinion by Stoll, joined by Moore and Schall.
In affirming the Patent Trial and Appeal Board’s judgment, the Federal Circuit held that the Board did not exceed its authority in invalidating Claims 2, 4, and 6 of U.S. Patent No. 7,904,680.
Certain petitioners challenged the ’680 patent in an IPR, presenting three grounds for unpatentability. The Board instituted review based on Grounds 1 and 2 but determined that Ground 3 was moot. In a final written decision, the Board therefore did not address whether Claims 2, 4, and 6 would have been obvious under Ground 3. The petitioners moved for reconsideration, and the Board then agreed that it should reach Ground 3. After additional briefing and expert declarations, the Board determined that the petitioners had proven unpatentability based on Ground 3. The patent owner appealed, arguing that the Board exceeded its statutory authority in invalidating claims based on a ground not included in the institution decision.
The Federal Circuit affirmed, noting that under the Supreme Court’s SAS Institute decision and the Federal Circuit’s interpretations of SAS, a final written decision must address all claims challenged by a petitioner and all grounds of patentability. The Board therefore acted within its authority, consistent with due process, in invalidating Claims 2, 4, and 6 under Ground 3.
Realtime Data, LLC v. Iancu, No. 18-1154 (Fed. Cir. (PTAB) Jan. 10, 2019). Opinion by Stoll, joined by Dyk and Taranto.
The Federal Circuit affirmed the Patent Trial and Appeal Board’s determination that certain claims of U.S. Patent No. 6,597,812 were unpatentable as obvious.
The petitioner asserted that the challenged patent claims were obvious over U.S. Patent No. 4,929,946 (“O’Brien”) in view of Mark Nelson, The Data Compression Book (1992) (“Nelson”). The patent owner argued that O’Brien failed to disclose all claim limitations and that HP failed to provide sufficient evidence of motivation to combine the references. The Board determined that O’Brien disclosed every limitation of Claim 1 and that the compression techniques of O’Brien and Nelson shared striking similarities, establishing a motivation to combine.
On appeal, the Federal Circuit affirmed, explaining that O’Brien alone taught every limitation of the challenged claims, with Nelson simply demonstrating that “string encoding” as disclosed in O’Brien was the same as the “dictionary-based encoding” in the challenged claims. Because Nelson merely explained O’Brien’s encoder teachings, and was not relied on as disclosing a particular claim limitation or teaching, “the Board had no obligation to find a motivation to combine O’Brien and Nelson.”
WesternGeco LLC v. ION Geophysical Corp., Nos. 13-1527 and 14-1121, -1526, -1528 (Fed. Cir. (S.D. Tex.) Jan. 11, 2019). Opinion by Dyk, joined by Wallach and Hughes.
On remand from the U.S. Supreme Court, the Federal Circuit remanded for the district court to assess lost profits in light of the Supreme Court’s decision and the Federal Circuit’s intervening invalidation of several asserted patent claims.
During the initial infringement suit, a jury found infringement and awarded damages in the form of a reasonable royalty and lost profits. The Supreme Court held that the damages award for lost profits under 35 U.S.C. § 271(f)(2) was a permissible domestic application of 35 U.S.C. § 284 because it was the “domestic act of supplying the components that infringed [the] patents.” While the case was pending in the Supreme Court, the Federal Circuit affirmed a Patent Trial and Appeal Board ruling that four claims were unpatentable, leaving only one claim that could support the lost profits award.
On remand, the Federal Circuit first affirmed the reasonable royalty award, which had been fully satisfied based on a compromise agreement between the parties. The court’s subsequent invalidation of some of the claims was not a basis for “reopen[ing] the agreed and fully paid unappealable final judgment on the reasonable royalty.” As to lost profits, the court remanded to the district court to determine whether a new trial on lost profit damages is warranted.
Amerigen Pharmaceuticals Ltd. v. UCB Pharma GmbH, No. 17-2596 (Fed. Cir. (PTAB) Jan. 11, 2019). Opinion by Lourie, joined by Chen and Stoll.
The Federal Circuit affirmed the Patent Trial and Appeal Board’s determination that certain claims of U.S. Patent No. 6,858,650 were not unpatentable as obvious.
During an IPR, the Board determined that the challenged patent claims were not unpatentable as obvious over the asserted prior art, and one of the petitioners appealed. On appeal, the patent owner argued that the appellant lacked standing to appeal. The Federal Circuit disagreed because “the launch of [the appellant’s] tentatively approved drug was blocked by the ’650 patent, and invalidation of the patent would advance [the] drug’s launch.”
On the merits, the appellant argued that the Board misunderstood certain arguments concerning lipophilicity, placed an excessive burden on the petitioner to show a motivation to make a 5-HMT prodrug, and failed to recognize that arriving at the specific claimed compounds would have been routine optimization. The Federal Circuit rejected each of these arguments and affirmed the Board’s decision that the claims were not unpatentable as obvious.
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