Patent Case Summaries July 2, 2019

Patent Case Summaries | Week Ending June 28, 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.

UCB, Inc., et al. v. Watson Laboratories Inc., et al., Nos. 2018-1397, -1453 (Fed. Cir. (D. Del.) June 24, 2019). Opinion by Chen, joined by Taranto and Schall.

The Federal Circuit affirmed the district court’s findings that (i) a patent owned by UCB was infringed and not proved invalid and (ii) a second UCB patent was invalid based on a prior public use.

The UCB patents at issue generally relate to the compound rotigotine, a skin patch treatment for Parkinson’s disease. The ’434 patent is directed to a transdermal therapeutic system comprising rotigotine, and the ’414 patent is directed to a specific polymorph of rotigotine. Watson Laboratories and Actavis Laboratories (Actavis) filed an abbreviated new drug application for generic versions of transdermal rotigotine patches, prompting UCB to file a lawsuit for infringement.

UCB asserted infringement of the ’434 patent under the doctrine of equivalents, arguing that polyisobutylene-based adhesives used in the proposed generic are interchangeable with the claimed silicone-based or acrylate-based polymer adhesives. The district court first determined that UCB was not barred from asserting the doctrine of equivalents based on prosecution history estoppel, intentional narrow claiming, vitiation, or ensnarement. The Federal Circuit addressed and agreed as to each of these.

Next, the district court addressed the merits, making fact findings as to the differences between polyisobutylene and silicates/acrylates. The district court determined that “the polyisobutylene-based adhesive system is an insubstantial modification of the claimed invention” and that the two are interchangeable. The Federal Circuit affirmed, finding no clear error in the district court’s fact findings. 

The Federal Circuit also upheld the district court’s findings that the asserted claims were not anticipated or obvious. The district court’s analysis was not erroneous because the prior art taught the use of a rotigotine patch containing significant amounts of water, whereas the ’434 patent claimed a water-free patch. Also, other prior art that did not specifically contain rotigotine would have led a person of ordinary skill to test thousands of possibilities before arriving at the claimed invention. 

Turning to the ’414 patent, the Federal Circuit affirmed the district court’s finding of invalidity. The Federal Circuit determined that the district court reasonably found that a patient in the United States had used a rotigotine patch that contained the claimed polymorph prior to the critical date. UCB argued that the patient’s use did not qualify as a “use” under § 102 because it did not have a therapeutic effect, but the Federal Circuit disagreed, explaining that § 102 does not require that the polymorph be used for a particular purpose.  

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Cellspin Soft, Inc. v. Fitbit, Inc., et al., Nos. 2018-1817, -1819, -1820, -1821, -1822, -1823, -1824, -1825, -1826, -2178, -2179, -2180, -2181, -2183, -2184 (Fed. Cir. (N.D. Cal.) June 25, 2019). Opinion by O’Malley, joined by Lourie and Taranto.

The Federal Circuit vacated the district court’s grant of a motion to dismiss and award of attorneys’ fees because the district court misapplied precedent in finding the asserted patents ineligible for patent protection under 35 U.S.C. § 101.

The patents generally relate to connecting a data capture device, such as a digital camera, to a mobile device so that a user can automatically publish content from the data capture device to a website. The district court granted the defendants’ motion to dismiss based on the two-step framework for analyzing patent eligibility articulated in Mayo and Alice. At step one, the district court concluded that the asserted claims were directed to an abstract idea of acquiring, transferring, and publishing data and multimedia content on websites. At step two, the district court found that the claims did not recite an inventive concept. The district court also awarded attorneys’ fees, finding the case to be “exceptionally meritless.”

On appeal, the Federal Circuit agreed that the asserted claims are directed to an abstract idea but determined that the district court erred with respect to the inventive concept inquiry “by ignoring allegations that, when properly accepted as true, preclude the grant of a motion to dismiss.” Cellspin’s allegations identified several ways in which its application of capturing, transferring, and publishing data was unconventional. Also, Cellspin alleged that its specific ordered combination of elements was inventive. The Federal Circuit ruled that the district court erred by not accepting those allegations as true. The Federal Circuit reiterated its precedent stating that “patentees who adequately allege their claims contain inventive concepts survive a § 101 eligibility analysis under Rule 12(b)(6).” Accordingly, the Federal Circuit vacated the district court’s dismissal as well as its subsequent award of attorneys’ fees.

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Elbit Systems Land & C4I Ltd., et al. v. Hughes Network Systems, LLC, No. 2018-1910 (Fed. Cir. (E.D. Tex.) June 25, 2019). Opinion by Taranto, joined by Mayer and Chen.

The Federal Circuit affirmed the jury’s finding of infringement as supported by substantial evidence. The court also determined that it lacked jurisdiction over the district court’s award of attorneys’ fees because the district court had not quantified the fees.

As pertinent to the appeal, Elbit alleged that Hughes infringed a patent directed to a system for transmitting information from user terminals to a central hub via satellite communication. The district court ruled that the claim terms “communication means for continuous transmission of data” and “switching means” were means-plus-function terms. A jury found infringement and awarded damages. 

On appeal, the Federal Circuit ruled that “the jury’s findings as to infringement of the communication means and switching means were each supported by substantial evidence” and therefore rejected Hughes’s challenge. The Federal Circuit also ruled that the district court did not abuse its discretion in denying Hughes’s motion for a new trial on damages. Substantial evidence supported the jury’s damages award. 

The Federal Circuit then addressed Hughes’s challenge to the district court’s determination that the case is exceptional thus entitling Elbit to attorneys’ fees, the amount of which the district court had not quantified. The Federal Circuit dismissed this aspect of the appeal, concluding that the court lacks jurisdiction to review the unquantified attorneys’ fees award. Specifically, the Federal Circuit determined that jurisdiction was lacking under 28 U.S.C. §§ 1295 or 1292(c)(2). Additionally, the court saw “no sound basis for exercising pendent appellate jurisdiction over the fees-entitlement determination.”

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