Patent Case Summaries September 4, 2019

Patent Case Summaries | Week Ending August 30, 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.

Guangdong Alison Hi-Tech Co. v. ITC, No. 2018-2042 (Fed. Cir. (ITC) Aug. 27, 2019). Opinion by Stoll, joined by Wallach and Hughes.

The ITC determined that certain products infringe a patent directed to an improvement in aerogel composite products. The patent discloses an aerogel composite that uses a “lofty fibrous structure,” or “lofty batting,” as the fibrous material. Alison argued that the claim phrase “lofty … batting” is indefinite. The Administrative Law Judge (ALJ) disagreed because the term is defined and explained in the specification. Alison also challenged the validity of the asserted claims based on a prior art patent issued to Ramamurthi. The ALJ rejected those challenges as well and the Commission affirmed, prompting Alison to appeal.

The Federal Circuit affirmed. Regarding the question of indefiniteness, the court explained that patents with claims involving terms of degree, as here, “must provide objective boundaries for those of skill in the art.” The phrase “lofty … batting” satisfied that standard. The Federal Circuit explained that the written description “provides express definitions for the phrase ‘lofty … batting’ and its components.” The patent also “details the functional characteristics of a ‘lofty … batting,’” and “is replete with examples and metrics that further inform the meaning” of the phrase. Extrinsic evidence provided additional support for the objective boundaries of the phrase.

Turning to the invalidity challenges, the Federal Circuit ruled that substantial evidence supported the Commission’s final determination. The patent-in-suit “expressly discusses and distinguishes Ramamurthi, which was also considered by the patent examiner during prosecution and later by the Board in denying Alison’s IPR petition.” Alison essentially asked the court “to reweigh the evidence, which [the court] may not do on substantial evidence review.”

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Allergan, Inc., et al. v. Sandoz, Inc., et al., No. 18-2207 (Fed. Cir. (D.N.J.) Aug. 29, 2019). Opinion by Wallach, joined by Newman. Concurring opinion by Prost.

The Federal Circuit affirmed a district court’s claim construction that two recited “wherein” clauses are “material to patentability” and thus limit the scope of the claims.

The claims at issue are directed to methods of treating patients with glaucoma or ocular hypertension. Representative independent claim 1 recites a method of treating a patient comprising administering twice daily a particular ophthalmic drug. The claim then recites two “wherein” clauses—an “efficacy” wherein clause (“wherein” the claimed method is as effective as administering a different specified drug) and a “safety” wherein clause (“wherein” the claimed method reduces the incidence of certain adverse events when compared to administering a different specified drug). During claim construction, Sandoz argued that the two wherein clauses merely state the intended results of administering the claimed ophthalmic drug and that the recited results are not material to patentability.

The district court disagreed with Sandoz, and the Federal Circuit affirmed. The Federal Circuit ruled that “the ‘wherein’ clauses are material to patentability and thus limiting.” The patent specification “demonstrates that the claimed invention is ultimately a formulation (and methods of using that formulation) that allows for increased efficacy and safety.” Also, Allergan relied on the efficacy and safety of the claimed invention during prosecution, and the Examiner “explicitly relied on the ‘wherein’ clauses in explaining why the claims … were ‘novel and non-obvious over the prior art.’”

Chief Judge Prost concurred in the result and reasoning, but wrote separately to “add one narrow but crucial point about the claim language.” In her view, “the claim language on its face confirms that these [“wherein”] clauses give meaning and purpose to the other manipulative steps of claim 1.” Thus, she agreed with the majority but would have started “by explaining why the plain language of the claim compels us to reject Sandoz’s position that the ‘wherein’ clauses here are mere statements of inherent or intended results.”

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Cisco Systems, Inc. v. Chrimar Systems, Inc., No. IPR2018-01511 (Jan. 31, 2019) (designated precedential on Aug. 29, 2019). Opinion by Weinschenk, joined by Easthom and Anderson.

Under 35 U.S.C. § 315(a)(1), an IPR “may not be instituted if, before the date on which the petition for such review is filed, the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent.” Interpreting that language, the Patent Trial and Appeal Board held that “§ 315(a)(1) bars institution of an inter partes review even though Petitioner voluntarily dismissed its earlier civil action challenging the validity of a claim of [the patent] without prejudice.”

Cisco filed a petition for IPR challenging the patentability of certain claims in a patent owned by Chrimar. Cisco, however, had previously filed a civil action challenging the validity of a claim in the patent. Cisco had voluntarily dismissed that civil action without prejudice before petitioning for IPR.

Addressing these circumstances, the Board denied institution based on § 315(a)(1). The Board explained that the statutory provision “does not include an exception for a civil action that was dismissed without prejudice,” and Congress could have included such an exception but did not. Further, the Board explained that “the ordinary meanings of the terms ‘file’ and ‘civil action’ show that the phrase ‘filed a civil action’ in § 315(a)(1) applies to a civil action that was dismissed without prejudice.” The Board also noted that “the ordinary meaning of the phrase ‘filed a civil action’ only requires that a party commenced a noncriminal litigation, not that the party engaged in any substantive litigation.” Accordingly, the Board denied the IPR petition and refused to institute trial.

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