Patent Case Summaries May 15, 2019

Patent Case Summaries | Week Ending May 10, 2019

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.

Valve Corp. v. Electronic Scripting Products, Inc., Nos. IPR2019-00062, -00063, -00084 (Apr. 2, 2019) (designated precedential on May 7, 2019). Opinion by Weinschenk, joined by Iancu and Fink.

The Patent Trial and Appeal Board exercised its discretion under 35 U.S.C. § 314(a) to deny institution of three IPRs. The Board agreed with the Patent Owner that denial was appropriate because the petition was “an unfair follow-on petition” filed after the Board had denied institution of a previous petition filed by another petitioner.

In denying the new petition, the Board recounted the non-exhaustive General Plastic factors for determining whether to deny a petition that challenges the same patent as a previous petition. One of the factors considers whether “the same petitioner” previously filed a petition directed to “the same claims of the same patent.” The Board explained, however, that “application of the General Plastic factors is not limited solely to instances when multiple petitions are filed by the same petitioner.” Rather, when different petitioners challenge the same patent, as here, the Board considers “any relationship between those petitioners” when weighing the factors.

The Board found that each of the seven General Plastic factors weighed against institution. For instance, the Board found that the new petitioner (Valve) and the prior petitioner (HTC) were similarly situated as co-defendants in district court litigation, that Valve knew or should have known of the prior art at the time HTC filed its petition, that Valve used the Board’s prior institution decision “as a roadmap for the Petition in this case,” and that the “serial and repetitive attacks” on the patent at issue “implicate the efficiency concerns underpinning General Plastic.” Therefore, the Board denied institution.

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NHK Spring Co. v. Intri-Plex Technologies, Inc., No. IPR2018-00752 (Sept. 12, 2018) (designated precedential on May 7, 2019). Opinion by Ankenbrand, joined by Kaiser and Roesel.

The Patent Trial and Appeal Board exercised its discretion under both 35 U.S.C. § 325(d) and 35 U.S.C. § 314(a) to deny institution of an IPR.

Under § 325(d), the Board has discretion to deny institution when “the same or substantially the same prior art or arguments previously were presented to the Office.” The Board addressed six non-exclusive factors for evaluating whether to deny institution, finding that the factors weighed in favor of denial. In particular, the Board found that the asserted prior art “is a subset of the same prior art that the Examiner applied in rejecting the claims during prosecution” and that “the arguments Petitioner advances in its Petition are substantially similar to the findings the Examiner made to reject the claims, and that Patent Owner overcame.”

The Board next addressed § 314(a), observing that “simply because we exercise our discretion to deny the Petition under § 325(d) does not mean that we cannot consider and weigh additional factors that favor denying institution under § 314(a).” In its analysis, the Board found that the advanced state of co-pending district court proceedings weighed in favor of denying the petition. Specifically, the Board found that the same invalidity contentions will be addressed in an upcoming jury trial that will be resolved before completing any trial on the IPR petition. Thus, instituting an IPR would not be consistent with the AIA objective of IPRs serving as “an effective and efficient alternative to district court litigation.”

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Amgen Inc., et al. v. Sandoz Inc., et al., Nos. 2018-1551,-1552 (Fed. Cir. (N.D. Cal.) May 8, 2019). Opinion by Lourie, joined by O’Malley and Reyna.

The Federal Circuit affirmed the district court’s claim construction and associated grant of summary judgment of noninfringement.

The two patents-in-suit concern, respectively, methods of treating diseases requiring peripheral stem cell transplantation and methods of protein purification by adsorbent chromatography. For one of the patents, the district court construed “disease treating-effective amount of at least one chemotherapeutic agent” as limited to “an amount sufficient to treat a disease for which at least one chemotherapeutic agent is prescribed.” For the other patent, the district court construed the claimed “washing” and “eluting” steps as separate steps where the eluting step “must occur after the step of ‘washing the separation matrix.’” Because the accused process involved only one step, the district court granted summary judgment of noninfringement.

The Federal Circuit affirmed the claim constructions, determining that they were supported by the claim language and specifications. Next, the Federal Circuit affirmed the award of summary judgment of noninfringement. Addressing the doctrine of equivalents, the Federal Circuit considered whether the accused one-step, one-solution process is insubstantially different from the claimed three-step, three-solution process. The Federal Circuit agreed with the district court that the accused process does not function in the same way as the claimed process, rendering summary judgment appropriate. In discussing the doctrine of equivalents, the Federal Circuit stated that the doctrine “applies only in exceptional cases and is not ‘simply the second prong of every infringement charge, regularly available to extend protection beyond the scope of the claims.’”

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