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.
Arctic Cat Inc. v. GEP Power Products, Inc., Nos. 2018-1520, -1521 (Fed. Cir. (PTAB) Mar. 26, 2019). Opinion by Taranto, joined by Prost and Reyna.
The Patent Trial and Appeal Board determined that all claims in two patents owned by Arctic Cat were unpatentable. The patents cover an electrical-connection box for distributing power to various electrical components, including components of a personal recreational vehicle. On appeal, the Federal Circuit affirmed as to one of the patents, and reversed in part, vacated in part, and remanded as to the other.
The Federal Circuit first determined that the Board did not abuse its discretion in expunging Arctic Cat’s submission of a full deposition transcript after the Petitioner had supplied only excerpts. The Board noted that Arctic Cat neither sought authorization nor explained why the transcript could not have been filed earlier. The Federal Circuit explained that even if the applicable regulation, 37 C.F.R. § 42.53, provides for submission of a full transcript, “the regulation does not say that the submission … may be made at any time.” The Board “has discretion to decide when a filing is too late.”
Next, the Federal Circuit addressed the Board’s determination that certain preamble language is not limiting. The Federal Circuit agreed with the Board, explaining that the preamble references to a “personal recreational vehicle” merely identify an intended use for the claimed power distribution module, and the claims otherwise define “a structurally complete invention.” Thus, the preambles are not limiting.
Finally, the Federal Circuit reversed the Board’s determination that the “Boyd” reference qualified as prior art under 35 U.S.C. § 102(e)(2). According to the court, “the Board’s analysis rested on too rigid a standard” for analyzing whether the inventor successfully antedated Boyd by establishing a prior conception and diligence in reducing the invention to practice. The Federal Circuit explained that “diligence need not be perfectly continuous—only reasonably continuous.” The point of a diligence analysis “is not to scour the patent owner’s corroborating evidence in search of intervals of time where the patent owner has failed to substantiate some sort of activity.” “Rather, the adequacy of the reduction to practice is determined by whether, in light of the evidence as a whole, the invention was not abandoned or unreasonably delayed.”
Grunenthal GmbH, et al. v. Alkem Laboratories Ltd., et al., Nos. 2017-1153, -2048, -2049, -2050 (Fed. Cir. (D.N.J.) Mar. 28, 2019). Opinion by Reyna, joined by Taranto and Chen.
In this appeal, the Federal Circuit addressed issues of induced and contributory infringement, obviousness, and utility for certain patents related to using the Form A polymorph of tapentadol hydrochloride to treat polyneuropathic pain. Notably, the Form B polymorph was known and previously disclosed in the art.
Grunenthal and its exclusive licensee sued Alkem Laboratories, Hikma Pharmaceuticals, and Actavis Elizabeth for infringement based on Abbreviated New Drug Applications seeking to market generic versions of tapentadol hydrochloride tablets. The district court determined that Hikma and Actavis did not indirectly infringe because their proposed labels do not indicate treatment of polyneuropathic pain. The Federal Circuit agreed. On the issue of induced infringement, the Federal Circuit ruled that Hikma and Actavis lacked specific intent, based on the contents of their proposed labels, to encourage physicians to use the proposed products to treat polyneuropathic pain. On the issue of contributory infringement, the patent owner had not shown a lack of substantial noninfringing uses.
Turning to obviousness, the Federal Circuit upheld the district court’s finding that Alkem failed to prove a reasonable expectation of success in arriving at Form A of tapentadol hydrochloride. The Federal Circuit noted that, “Our decision today does not rule out the possibility that polymorph patents could be found obvious.” The Federal Circuit also upheld the district court’s finding that it would not have been obvious to try to find a polymorph of Form B of the compound. An obvious to try theory requires proof that “there are a finite number of identified, predictable solutions” that would lead to an expectation of success. Here, the prior art identified a “huge number of possible choices.”
Finally, addressing utility, the Federal Circuit explained that, “For pharmaceutical patents, practical utility may be shown by evidence of any pharmacological activity.” While test results often support claims of such utility, “testing is not always required.” In this case, Form A was shown to be stable at room temperature and useful for pain relief.
ChargePoint, Inc. v. SemaConnect, Inc., No. 2018-1739 (Fed. Cir. (D. Md.) Mar. 28, 2019). Opinion by Prost, joined by Reyna and Taranto.
The Federal Circuit affirmed the district court’s dismissal of ChargePoint’s complaint because the asserted patent claims were ineligible for patenting under 35 U.S.C. § 101.
The patent at issue concerned improved charging stations for electric vehicles, accomplished by creating networked charging stations. In analyzing whether the claims are patent eligible, the Federal Circuit applied the two-step analysis articulated in Mayo and further delineated in Alice. At step one, the court emphasized that “it is not enough to merely identify a patent-ineligible concept underlying the claim; we must determine whether that patent-ineligible concept is what the claim is directed to.” Also, the central focus is the claim language. “Even a specification full of technical details about a physical invention may nonetheless conclude with claims that claim nothing more than the broad law or abstract idea underlying the claims, thus preempting all use of that law or idea.” Applying this framework, the Federal Circuit determined that the claims are directed to the abstract idea of communication over a network for device interaction. At step two—the search for an inventive concept—the Federal Circuit ruled that the only possible inventive concept in the claims is network communication. But network communication is “the abstract idea itself,” and thus it “cannot supply the inventive concept at step two.” The claims were therefore ineligible for patenting.
Endo Pharmaceuticals, Inc., et al. v. Teva Pharmaceuticals USA, Inc., et al., Nos. 2017-1240, -1455, -1887 (Fed. Cir. (D. Del.) Mar. 28, 2019). Opinion by Stoll, joined by Wallach and Clevenger.
The Federal Circuit reversed the district court’s decision that Endo’s patent claims are directed to a natural law and therefore ineligible under 35 U.S.C. § 101.
The patent at issue covers a method of using oxymorphone to treat pain in patients with impaired kidney function. More specifically, it covers a treatment method that allows patients with renal impairment to ingest less oxymorphone while still treating their pain. Applying step one of the Alice/Mayo test, the district court found that the claims are directed to the natural law that the bioavailability of oxymorphone is increased in people with severe renal impairment. At step two, the district court found that the patent was not directed to a patent-eligible application of that natural law.
The Federal Circuit reversed, ruling that under step one of the Alice/Mayo test the claims are not directed to patent-ineligible subject matter. The court explained that its conclusion “is supported by the claim language itself and confirmed by the specification.” The claims recite a “method of treating pain in a renally impaired patient.” “Consistent with the claims, the abstract, patent title, and summary of the invention all describe the invention as a ‘method of treating pain’ in patients with renal impairment.”
The Federal Circuit explained that it held similar claims patent-eligible in Vanda Pharmaceuticals, Inc. v. West-Ward Pharmaceuticals International Ltd., 887 F.3d 1117 (Fed. Cir. 2018), since both “recite a method for treating a patient.” The Federal Circuit stated that the claims at issue here are “like those in Vanda.” “They are eligible because they are ‘directed to a specific method of treatment for specific patients using a specific compound at specific doses to achieve a specific outcome.’” As such, the Federal Circuit viewed its precedent as “leav[ing] no room for a different outcome.”
TEK Global, S.R.L., et al. v. Sealant Systems International, Inc., et al., No. 2017-2507 (Fed. Cir. (N.D. Cal.) Mar. 29, 2019). Opinion by Prost, joined by Dyk and Wallach.
Following a jury trial finding SSI liable to TEK for patent infringement, SSI appealed several pre- and post-judgment orders from the district court. The Federal Circuit vacated the district court’s judgment as to validity and reversed its denial of SSI’s motion for partial new trial on validity. In the interest of judicial economy, the Federal Circuit also addressed certain other issues raised on appeal.
In a prior appeal, the Federal Circuit had addressed the teachings of two prior art references, Bridgestone and Eriksen. On remand, the district court interpreted the prior decision as foreclosing all obviousness theories based on Eriksen in view of Bridgestone, and the court managed the jury trial with that interpretation in mind. The Federal Circuit, however, explained that “taken in context,” its prior decision “does not go so far.” The prior appeal raised only one obviousness theory, “and the district court should not have barred SSI from presenting to the jury other preserved obviousness theories based on the combination of Eriksen and Bridgestone that were not before this court in [the prior appeal].” The Federal Circuit thus ordered a partial new trial on validity.
The Federal Circuit also addressed SSI’s argument that the claim term “conduit” is a nonce word that should be construed as a means-plus-function limitation. The Federal Circuit disagreed, concluding that “the intrinsic and extrinsic evidence in this case establishes that the term ‘conduit’ recites sufficiently definite structure to avoid classification as a nonce term.” Finally, the Federal Circuit upheld the district court’s handling of a product-to-product comparison before the jury, decision to let the jury consider lost profits, and award of a permanent injunction to TEK.