Patent Case Summaries August 14, 2019

Patent Case Summaries | Week Ending August 9, 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.

Ajinomoto Co., et al. v. ITC, Nos. 2018-1590, -1629 (Fed. Cir. (ITC) Aug. 6, 2019). Opinion by Taranto, joined by Moore. Opinion concurring in part and dissenting in part by Dyk.

Ajinomoto filed an ITC complaint against CJ CheilJedang Corp. and others (CJ) alleging infringement of a patent claim directed to E. coli bacteria that have been genetically engineered to increase their production of certain proteins. The ITC found that CJ’s early strains of E. coli bacteria did not infringe but that two later strains did. The ITC also found that the asserted claim is not invalid for lack of an adequate written description. Ajinomoto appealed, and CJ cross-appealed.

Affirming, the Federal Circuit first addressed the finding of no infringement by the earlier strains, which turned on the claim construction of “replacing the native promoter … with a more potent promoter.” The Federal Circuit affirmed the ITC’s construction, concluding that it was supported by the claim language, specification, and “the best understanding of what transpired before the examiner” during prosecution. The court concluded that, during prosecution “the applicants surrendered more than may have been necessary.” Based on the affirmed claim construction, the Federal Circuit affirmed the finding of no infringement by the earlier strains.

Regarding infringement by CJ’s later strains, CJ argued that amendment-based prosecution history estoppel barred Ajinomoto from relying on the doctrine of equivalents. The Federal Circuit concluded that estoppel did not apply because the “tangential relation” exception applied. “The reason for the narrowing amendment—limiting the amino-acid makeup of the proteins included in one of the alternatives covered by the claim—is unrelated to differences among the several DNA sequences that encode a given protein.”

Finally, the Federal Circuit ruled that there was adequate written description for the genus of “more potent promoters” recited by the asserted claim. “A sufficient description of a genus … requires the disclosure of either a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can ‘visualize or recognize’ the members of the genus.” The Federal Circuit determined that substantial evidence supported the ITC’s finding that the asserted patent discloses a representative number of species of more potent promoters and that there are structural features common to the genus of more potent promoters.

In an opinion concurring-in-part and dissenting-in-part, Judge Dyk dissented “from the majority’s conclusion that Ajinomoto successfully rebutted the presumption of prosecution history estoppel under the tangential exception.” The Federal Circuit has “consistently described this exception as ‘very narrow.’” In Judge Dyk’s view, “the reason for the narrowing amendment in this case is directly related to the equivalent.”

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ATEN Int’l Co. v. Uniclass Technology Co., et al., No. 2018-1606 (Fed. Cir. (C.D. Cal.) Aug. 6, 2019). Opinion by Moore, joined by Wallach and Taranto.

ATEN sued its former licensee, Uniclass Technology, and others for infringement of ATEN’s ’141 patent and ’289 patent, which are directed to keyboard-video-mouse switch systems. A jury found that the claims of the ’141 patent are invalid as anticipated and not infringed, and that the claims of the ’289 patent are not infringed. The district court denied ATEN’s motion for judgment as a matter of law (JMOL) seeking to overturn the jury verdict, and ATEN appealed.

First, the Federal Circuit reversed the district court’s denial of JMOL as to anticipation. The jury had found anticipation without indicating which of two asserted prior art references formed the basis for the decision. The Federal Circuit ruled that substantial evidence did not support the jury’s finding of anticipation based on either reference. In order for the first reference to qualify as prior art, Uniclass had to prove that it existed prior to the critical date of July 24, 2006. The only evidence, however, was testimony that the reference was available in 2006, without specifying a day or month. The Federal Circuit held that “merely establishing that the [reference] existed in the same year as the critical date is insufficient.” Regarding the second reference, Uniclass had offered no evidence explaining how it met one of the limitations of the asserted claims. Thus, because neither reference supported the jury’s anticipation verdict, the Federal Circuit reversed the district court’s denial of JMOL.

Second, the Federal Circuit upheld the district court’s denial of JMOL as to noninfringement. ATEN argued that Uniclass’s expert improperly testified at trial about issues of claim construction. The Federal Circuit agreed with this premise, explaining that “it is beyond dispute that claim construction issues are to be decided by the court,” and “it is thus improper for an expert witness to testify before the jury regarding claim construction.” However, ATEN failed to object to the expert’s testimony, and “by failing to object, ATEN has waived any challenge to the jury’s finding of [non]infringement based on this testimony.”

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ATEN Int’l Co. v. Uniclass Technology Co., et al., No. 2018-1922 (Fed. Cir. (C.D. Cal.) Aug. 6, 2019). Opinion by Moore, joined by Wallach and Taranto.

In an appeal arising from the same lawsuit discussed above, Uniclass sought reversal of the district court’s decision not to award attorneys’ fees. Uniclass’s theory was “that the district court erred in not finding this case exceptional based on ATEN’s disregard for the ‘foundational policy’ of proportional litigation,” since the cost of litigating the case exceeded ATEN’s potential recovery.

The Federal Circuit rejected this argument, explaining that “there is no per se rule that a case is exceptional if litigation costs exceed the potential damages.” The court noted that there can be many reasons to bring a lawsuit beyond damages, including injunctive relief, seeking to deter others from infringement, encouraging licensing, or testing a patent’s ability to withstand validity challenges. In this case, ATEN sought injunctive relief against Uniclass, its direct competitor, which “alone undermines” Uniclass’s argument.

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Eli Lilly & Co. v. Hospira, Inc., Nos. 2018-2126, -2127, -2128 (Fed. Cir. (S.D. Ind.) Aug. 9, 2019). Opinion by Lourie, joined by Moore and Taranto

Eli Lilly & Co. brought separate infringement suits under the Hatch-Waxman Act against Hospira and Dr. Reddy’s Laboratories (DRL). Lilly asserted infringement of its patent directed to an improved method of treatment with antifolates, particularly pemetrexed disodium. After a bench trial, the district court ruled that Hospira infringed both literally and under the doctrine of equivalents, and that DRL infringed under the doctrine of equivalents.

On appeal, the Federal Circuit first reversed the determination of literal infringement. The court concluded that “to literally practice the ‘administration of pemetrexed disodium’ step under the district court’s claim construction, the pemetrexed disodium salt must be itself administered.” Hospira’s New Drug Application, by comparison, sought approval to market pemetrexed ditromethamine. The Federal Circuit ruled that neither the “proposed product nor methods of administering it will constitute administering the pemetrexed disodium salt.”

Next, the Federal Circuit addressed the doctrine of equivalents. The court ruled that neither prosecution history estoppel nor the disclosure-dedication rule prevented Lilly from relying on the doctrine. Regarding estoppel, during prosecution Lilly had made a narrowing amendment for a substantial reason relating to patentability, but the Federal Circuit ruled that the reason for the amendment was “merely tangential” to the equivalent in question. The prosecution history “strongly indicated” that the reason for Lilly’s amendment was to surrender antifolates other than pemetrexed—not to surrender other pemetrexed salts. A broad surrender of other pemetrexed salts was “implausible”; “indeed, such a relinquishment would effectively dedicate the entirety of Lilly’s invention to the public.”

Regarding the disclosure-dedication rule, the Federal Circuit held that the rule is “inapplicable” because the patent “does not disclose methods of treatment using pemetrexed ditromethamine, and, as a result, Lilly could not have dedicated such a method to the public.”

Finally, addressing the merits, the Federal Circuit saw no clear error in the district court’s findings that the accused product “will accomplish an identical aim … in exactly the same way” as that claimed in Lilly’s patent. Therefore, the court upheld the finding of infringement under the doctrine of equivalents.

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Genetic Veterinary Sciences, Inc. v. LABOKLIN GmbH & Co. KG, et al., No. 2018-2056 (Fed. Cir. (E.D. Va.) Aug. 9, 2019). Opinion by Wallach, joined by Hughes and Stoll.

Genetic Veterinary Sciences sued LABOKLIN and the University of Bern, seeking a declaratory judgment that the claims of the University’s patent are ineligible under 35 U.S.C. § 101. The district court first concluded that it had subject matter jurisdiction and personal jurisdiction over both entities, and then held the claims patent-ineligible under § 101. LABOKLIN and the University appealed.

Addressing the jurisdictional issues, the Federal Circuit ruled that LABOKLIN, a German company, had the requisite “minimum contacts” with “the entire United States as the forum” by sending a cease-and-desist letter and entering into commercial sublicenses for the patent-in-suit. Likewise, jurisdiction over LABOKLIN was “reasonable and fair” because it had “purposefully availed itself of the benefits and protections of U.S. laws through its commercial sublicensing as well as its enforcement of a U.S. patent.” The Federal Circuit also upheld the exercise of jurisdiction over the University. In particular, the University could not claim immunity “because it obtained a U.S. patent and then participated in licensing and enforcing” the patent, which constitutes “commercial activity” under the Foreign Sovereign Immunities Act.

Turning to the issue of patent-eligibility under § 101, the Federal Circuit affirmed the district court’s ruling of ineligibility. The patent relates to “in vitro methods for genotyping Labrador Retrievers, in order to discover whether the dog might be a genetic carrier” of the disease Hereditary Nasal Parakeratosis (HNPK). The inventor discovered that the presence of HNPK in Labrador Retrievers resulted from a point mutation in gene SUV39H2. Applying the two-step Alice framework, the court concluded at step one that the claims are “directed to nothing more than ‘observing or identifying’ the natural phenomenon of a mutation in the SUV39H2 gene.” At step two, the Federal Circuit ruled that “conducting conventional detection in a laboratory does not transform the discovery of a natural phenomenon into patent eligible subject matter.” The claims involved merely the observation and detection of a mutation in a dog’s DNA, which is “a positive and valuable contribution” but nonetheless ineligible for patenting.

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