Patent Case Summaries August 21, 2019

Patent Case Summaries | Week Ending August 16, 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.

Iridescent Networks, Inc. v. AT&T Mobility, LLC, et al., No. 2018-1449 (Fed. Cir. (E.D. Tex.) Aug. 12, 2019). Opinion by Reyna, joined by Prost and Taranto.

Iridescent sued AT&T and Ericsson Inc. for infringement of a patent directed to network communications that provide guaranteed bandwidth on demand and that minimize data delay and loss during transmission. The district court construed the claim term “high quality of service connection,” concluding that it is a term of degree that was coined by the patentee rather than being known in the art. The district court construed the term to require specific parameters emphasized during prosecution of the parent application and described in Figure 3 of the patent. The parties stipulated to noninfringement based on the court’s construction, and Iridescent appealed.

On appeal, Iridescent argued that the term “high quality of service connection” should not be limited to the specific parameters of Figure 3 and should be instead correlated with “assured” quality of service. The Federal Circuit disagreed, ruling that the arguments made during prosecution “focuse[d] on the objective characteristics of the quality of the connection rather than on whether any amount of quality is assured.”

Iridescent also argued that the prosecution history was irrelevant to claim construction because there was no “clear and unmistakable disavowal of claim scope.” The Federal Circuit again disagreed, explaining that “where there is no clear ordinary and customary meaning of a coined term of degree, we may look to the prosecution history for guidance without having to first find a clear and unmistakable disavowal.” The Federal Circuit ultimately affirmed the district court’s claim construction, and the associated judgment, because “Figure 3 and the applicant’s prosecution history statements disclose the disputed term’s scope,” meaning that “the district court’s analysis was correct.”

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MTD Products Inc. v. Iancu, No. 2017-2292 (Fed. Cir. (PTAB) Aug. 12, 2019). Opinion by Stoll, joined by Reyna and Taranto.

The Toro Company initiated an IPR of a patent owned by MTD Products. Relying on the specification and prosecution history, the Patent Trial and Appeal Board determined that the claim term “mechanical control assembly” is not in means-plus-function format. The Board ultimately held the challenged claims obvious.

On appeal, the Federal Circuit agreed with the Board that the disputed claim term “is similar to other generic, black-box words that this court has held to be nonce terms similar to ‘means’ and subject to § 112, ¶ 6 because the term does not connote sufficiently definite structure.” The court also saw no error in the Board’s finding that the term does not have an established meaning in the art. The Federal Circuit, however, concluded that the Board erred by relying on the specification to conclude that the term has an established structural meaning.

The Federal Circuit explained that interpretation of a means-plus-function term is a two-step process, first requiring a determination of whether the term is in means-plus-function format, and then requiring a review of the specification to identify corresponding structure. “In this case, however, the Board conflated these distinct inquiries, holding that the specification’s disclosure of corresponding structure demonstrates that the alleged means-plus-function term is sufficiently definite so as not to invoke § 112, ¶ 6.” The Board’s approach “would seem to leave § 112, ¶ 6 without any application.” The Federal Circuit therefore vacated the Board’s decision and remanded.

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Sanofi-Aventis U.S., LLC, et al. v. Dr. Reddy’s Laboratories, Inc., et al., Nos. 2018-1804, -1808, -1809 (Fed. Cir. (D. N.J.) Aug. 14, 2019). Opinion by Lourie, joined by Moore and Taranto.

Sanofi filed an infringement suit asserting the ’592 and ’170 patents directed to the compound cabazitaxel and methods of using it. While the district court case was pending, the Patent Trial and Appeal Board held the challenged claims of Sanofi’s ’592 patent invalid as obvious. Sanofi then filed a statutory disclaimer of those claims. Afterward, the district court concluded that a case or controversy still existed with respect to those claims. The district court then held a bench trial, concluding that the disclaimed claims were invalid as obvious and that certain claims of Sanofi’s ’170 patent were not invalid as obvious.

On appeal, the Federal Circuit first ruled that Sanofi’s “disclaimer of the disclaimed claims mooted any controversy over them,” removing any case or controversy. The court explained that “at the time the district court entered final judgment, the relief requested by Defendants was both speculative and immaterial to its possible future defense, and Defendants thus failed to demonstrate an Article III case or controversy.” The Defendants asserted that the invalidity ruling for the ’592 patent claims should not be vacated because the Defendants “will lose the possible benefit of an issue preclusion defense based on that judgment should Sanofi obtain amended claims and assert them against Defendants.” The Federal Circuit disagreed, ruling that “this alleged injury did not provide a case or controversy.”

Turning to the ’170 patent, the Federal Circuit upheld the district court’s conclusion that the asserted claims were not invalid as obvious. The asserted prior art references “investigated compounds that are structurally very different,” the references did not establish a motivation to modify the compounds, and the obviousness arguments were “emblematic of hindsight reasoning.”

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Nalpropion Pharmaceuticals, Inc. v. Actavis Laboratories FL, Inc., No. 2018-1221 (Fed. Cir. (D. Del.) Aug. 15, 2019). Opinion by Lourie, joined by Wallach. Opinion dissenting in part by Prost.

Nalpropion sued Actavis for infringement of three patents covering naltrexone hydrochloride and bupropion hydrochloride extended release tablets. Two of the district court’s rulings are pertinent to the appeal. First, in the district court, Actavis argued that the inventors did not possess the invention of claim 11 of the ’195 patent at the time of filing, since the claim refers to using a “USP Apparatus 2 Paddle Method” while the specification discloses using a “USP Apparatus 1 Basket Method.” The district court disagreed, finding that the inventors possessed the invention and holding that using the paddle method versus the basket method was “not relevant to whether the inventors had possession of the invention.” Second, Actavis argued that certain claims in the ’111 and ’626 patents were obvious in view of the prior art. The district court disagreed, finding Actavis’s argument to be “a classic case of hindsight bias.”

Addressing the sufficiency of the ’195 patent’s written description, the Federal Circuit saw no clear error in the district court’s ruling. The district court performed a suitable fact-finding function, weighing credibility of testimony and concluding that the paddle method and basket method were “substantially equivalent.” The Federal Circuit elaborated: “While as a general matter written description may not be satisfied by so-called equivalent disclosure, in this case, buttressed by the district court’s fact-finding, and where the so-called equivalence relates only to resultant dissolution parameters rather than operative steps, we affirm the district court’s conclusion.”

Turning to the district court’s ruling that the asserted claims in the ’111 and ’626 patents were not obvious, the Federal Circuit reversed, agreeing with Actavis that the claims would have been obvious. “The prior art here discloses the claimed components of the composition claims and the steps of the method claims including the use claimed by the method.” The Federal Circuit also determined that a person of ordinary skill would have been motivated to combine the cited references with a reasonable expectation of success, noting that “in fact, such persons did so.”

Chief Judge Prost dissented, concluding that “the majority adds what appears to me to be a new rule to this court’s long-standing written description jurisprudence,” namely, the majority’s holding that a “substantially equivalent” disclosure may satisfy the written description requirement when the relevant claim limitation recites only “resultant dissolution parameters rather than operative claim steps.” Chief Judge Prost explained that “that is not the law.”

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MyMail, Ltd. v. ooVoo, LLC, et al., Nos. 2018-1758, -1759 (Fed. Cir. (N.D. Cal.) Aug. 16, 2019). Opinion by Reyna, joined by O’Malley. Dissenting opinion by Lourie.

In a divided opinion, the Federal Circuit held that patent eligibility under 35 U.S.C. § 101 may be determined on a Rule 12(c) motion, “but only when there are no factual allegations that, if taken as true, prevent resolving the eligibility question as a matter of law.”

MyMail sued ooVoo and IAC Search & Media for infringement of two patents relating to methods of modifying toolbars that are displayed on Internet-connected devices. The defendants filed motions for judgment on the pleadings under Rule 12(c), asserting that the claims are patent ineligible. MyMail opposed the motions, arguing that a construction of the claim term “toolbar” in an earlier proceeding demonstrated that the claimed inventions are patent eligible. Without construing the claims or addressing the parties’ dispute, the district court granted the motions and held the patents invalid under § 101.

The Federal Circuit reversed, explaining that “determining patent eligibility requires a full understanding of the basic character of the claimed subject matter.” “As a result, if the parties raise a claim construction dispute at the Rule 12(c) stage, the district court must either adopt the non-moving party’s constructions or resolve the dispute to whatever extent is needed to conduct the § 101 analysis.” Here, the district court erred by not doing so. Accordingly, the Federal Circuit vacated the decision and remanded.

In dissent, Judge Lourie explained that “the claims at issue are clearly abstract, regardless of claim construction.” Judge Lourie therefore would have resolved the legal question of eligibility and affirmed the district court.

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Anza Technology, Inc. v. Mushkin, Inc., et al., No. 2019-1045 (Fed. Cir. (D. Colo.) Aug. 16, 2019). Opinion by Bryson, joined by Prost and Newman.

In district court, Anza filed a complaint and then a first amended complaint for infringement of Anza’s ’927 patent. Later, Anza filed a second amended complaint that removed the infringement allegations regarding the ’927 patent and alleged infringement of two different patents. Mushkin filed a motion to dismiss the second amended complaint, arguing that the new claims do not relate back to the original complaint. The district court granted the motion. The effect of the district court’s ruling was that the claims in the second amended complaint were time-barred under the six-year statute of limitations of 35 U.S.C. § 286, prompting the court to dismiss the suit. Anza appealed.

The Federal Circuit first determined that its own law, rather than regional circuit law, governs whether the claims in an amended complaint relate back to the date of the original complaint. The court also determined that a de novo review standard applies.

On the merits, the Federal Circuit reversed in part, holding that “the district court’s application of the relation back doctrine was overly restrictive.” The court explained that, “in determining whether newly alleged claims, based on separate patents, relate back to the date of the original complaint, we will consider the overlap of parties, the overlap in the accused products, the underlying science and technology, time periods, and any additional factors that might suggest a commonality or lack of commonality between the two sets of claims.”

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