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.
Amgen Inc. et al. v. Hospira, Inc., Nos. 2019-1067, -1102 (Fed. Cir. (D. Del.) Dec. 16, 2019). Opinion by Moore, joined by Bryson and Chen.
The Federal Circuit affirmed the district court’s decision upholding a jury verdict that Hospira infringed Amgen’s patent relating to erythropoietin (EPO) and that Amgen was entitled to $70 million in damages.
After Hospira submitted a Biologics License Application to the FDA directed to a biosimilar of Amgen’s Epogen product, Amgen sued Hospira for infringement of two patents. A jury awarded Amgen $70 million in damages for Hospira’s infringement of one of the patents. Hospira filed post-trial motions relating to the jury’s findings of infringement, no invalidity, the Safe Harbor provisions of 35 U.S.C. § 271(e)(1), and damages, and Amgen filed post-trial motions relating to the jury’s finding of noninfringement of the second patent. The district court denied all of the motions.
The Federal Circuit affirmed as to all issues. First, regarding infringement of the first patent, the Federal Circuit determined that substantial evidence supported the jury verdict of infringement of claim 27 because, although claim 27 references claim 1 and although Amgen did not mention claim 1 at trial, “the jury heard evidence on whether Hospira’s process met the limitations of claim 1.” The Federal Circuit also rejected Hospira’s claim construction challenge that attempted “to limit claim 27 to one embodiment based on [the inventor’s] testimony.” The court was also not persuaded by Hospira’s argument that a prior art reference (Lai) anticipated the asserted claims because, according to the Federal Circuit, Lai “does not expressly disclose EPO isoforms with a predetermined in vivo specific activity.”
Regarding the Safe Harbor provisions of § 271(e)(1), the Federal Circuit disagreed with Hospira’s argument that the jury instructions “improperly focused on Hospira’s intent for manufacturing batches of EPO.” The “jury instructions properly asked whether each act of manufacture … was for uses reasonably related to submitting information to the FDA.” The Federal Circuit also upheld the jury’s finding that only a subset of Hospira’s EPO batches was within the Safe Harbor. Hospira had manufactured some batches of EPO that were not required for FDA approval, and some batches were for commercial inventory.
Addressing Hospira’s challenge to the damages award, the Federal Circuit ruled that the district court did not abuse its discretion in allowing Amgen’s expert to testify. The court also upheld the amount of the award, stating that “it was not unreasonable for the jury to choose a damages award within the amounts proposed by each expert.”
Turning to Amgen’s cross-appeal relating to the jury’s finding of noninfringement of the second patent, the Federal Circuit analyzed the circumstances and determined that substantial evidence “supports the jury’s finding that Amgen did not meet its burden of proving infringement.”
Blackbird Tech LLC v. Health in Motion LLC, et al., No. 2018-2393 (Fed. Cir. (C.D. Cal.) Dec. 16, 2019). Opinion by Wallach, joined by Prost and Hughes.
The Federal Circuit affirmed the district court’s grant of attorneys’ fees and expenses against Blackbird because the case was exceptional under 35 U.S.C. § 285.
Blackbird filed a lawsuit for infringement of a patent directed to exercise equipment with multiple pairs of pulleys. During the year following the complaint, Blackbird made a series of decreasing settlement offers, ultimately offering to provide a license to the asserted patent at no cost. The defendants refused all of the settlement offers, insisting that Blackbird should pay the defendants’ attorneys’ fees. After summary judgment briefing, and without advance notice to the defendants, Blackbird filed a notice of voluntary dismissal with prejudice, a covenant not to sue, and a motion to dismiss for lack of subject matter jurisdiction.
The district court entered the dismissal and granted the defendants’ motion that the case was exceptional, awarding attorneys’ fees and expenses. The district court based its decision on the substantive weakness of Blackbird’s litigation positions, the manner in which Blackbird litigated the case, and the need to deter future abusive litigation by Blackbird. The court awarded the full requested amount of $363,243.80.
In affirming, the Federal Circuit first determined that the district court did not abuse its discretion in finding that Blackbird’s litigation positions were “meritless” and “frivolous.” The accused device did not include claimed elements even when accepting Blackbird’s proposed claim construction.The district court also did not abuse its discretion in finding that the case stood out in terms of the manner in which Blackbird litigated it, citing Blackbird’s “decreasing settlement offers … each of which was significantly less than the cost of litigation,” Blackbird’s unreasonable delay in producing documents during discovery, and the timing of Blackbird’s dismissal.
Next, the Federal Circuit determined that the district court “did not abuse its discretion by considering the need to deter future abusive litigation.” Blackbird had filed over 110 cases in a four-year period, none of which were decided on the merits in favor of Blackbird.
Finally, the Federal Circuit addressed the amount of the attorneys’ fees and expenses, ruling that the district court did not abuse its discretion in awarding the full amount sought.
The Chamberlain Group, Inc. v. One World Technologies, Inc., No. 2018-2112 (Fed. Cir. (PTAB) Dec. 17, 2019). Opinion by Hughes, joined by Dyk and Reyna.
Addressing an IPR final written decision, the Federal Circuit concluded that the Patent Trial and Appeal Board erred in finding that Chamberlain waived an argument raised for the first time at the oral hearing, but the court nevertheless affirmed the Board’s finding of anticipation because it was supported by substantial evidence.
One World filed an IPR petition challenging certain claims of Chamberlain’s patent directed to improved methods of human interaction with “barrier movement operators,” such as garage door operator systems. One World asserted that all challenged claims were anticipated by “Schindler” and that two claims were obvious over the combination of Schindler and another reference. In response, Chamberlain argued that a claimed step should be construed to require identification of multiple activities, which is not disclosed by Schindler. At the oral hearing, Chamberlain argued for the first time that Schindler also does not disclose a limitation requiring transmitting guidance “responsive to the first and second identifying steps.” The Board found that Chamberlain waived that argument, and the Board found all asserted claims anticipated. Chamberlain appealed.
The Federal Circuit ruled that the Board erred in finding waiver because Chamberlain’s “responsive to” argument responded to new arguments made in One World’s reply and was “merely clarifying its earlier position.” However, even considering Chamberlain’s “responsive to” argument, substantial evidence supported the Board’s finding of anticipation. The Federal Circuit therefore affirmed.
FOX Factory, Inc. v. SRAM, LLC, Nos. 2018-2024, -2025 (Fed. Cir. (PTAB) Dec. 18, 2019). Opinion by Prost, joined by Wallach and Hughes.
The Federal Circuit vacated and remanded the Patent Trial and Appeal Board’s determinations in two IPRs because the Board erred in presuming a nexus between the claims and secondary considerations evidence pertaining to the patentee’s products.
In two IPR proceedings, FOX challenged SRAM’s patent directed to improved bicycle chainring structures. The Board found that the prior art disclosed all limitations of the challenged claims and that a skilled artisan would have been motivated to combine the asserted prior art, but the Board ultimately concluded that the challenged claims were not obvious based on secondary considerations associated with SRAM’s chainring products. The Board applied a presumption of nexus between the claims and SRAM’s products because the products were coextensive with the claims and because the Board “interpreted the coextensiveness requirement to mean only that the claims must broadly cover the product.”
The Federal Circuit vacated and remanded, ruling that the Board applied the wrong legal standard. A patentee is entitled to a rebuttable presumption of nexus between the evidence of secondary considerations and a patent claim “if the patentee shows that the asserted evidence is tied to a specific product and that the product ‘is the invention disclosed and claimed.’” The Federal Circuit clarified that, “to be sure, we have never held that the existence of one or more unclaimed features, standing alone, means nexus may not be presumed.” Rather, “if the unclaimed features amount to nothing more than additional insignificant features, presuming nexus may nevertheless be appropriate.” On the facts presented here, the Federal Circuit ruled that “because no reasonable factfinder could find otherwise, we conclude that SRAM’s X-Sync chainrings are not coextensive with the independent claims.” The Federal Circuit therefore vacated and remanded.
As part of the appeal, FOX requested remand based on the Supreme Court’s decision in SAS, because the Board had instituted review of only two of the eight grounds of unpatentability raised by FOX. The Federal Circuit agreed. SRAM argued that FOX had waived the argument, but the Federal Circuit disagreed. “SAS issued after the Board’s final written decision, and we have not required filing a request for reconsideration to preserve a SAS-based remand.”
Syngenta Crop Protection, LLC v. Willowood, LLC, et al., Nos. 2018-1614, -2044 (Fed. Cir. (MDNC) Dec. 18, 2019). Opinion by Reyna, joined by Taranto and Stoll.
Addressing an issue of first impression, the Federal Circuit concluded that the district court erred by imposing a “single-entity requirement” for patent infringement under 35 U.S.C. § 271(g).
Syngenta sued domestic and foreign Willowood entities for copyright infringement and for infringement of four patents directed to a fungicide compound and its manufacturing processes. Syngenta premised its patent infringement allegations on § 271(g), which attaches liability for “a product which is made by a process patented in the United States.” The district court interpreted § 271(g) to require that all steps of the patented process be performed by or at the direction or control of a single entity.
The Federal Circuit ruled that the district court erred in its interpretation of § 271(g). “Nothing in th[e] statutory language suggests that liability arises from practicing the patented process abroad. Rather, the focus is only on acts with respect to products resulting from the patented process.” Thus, “whether that process is practiced by a single entity is immaterial to the infringement analysis under that section.”
The Federal Circuit contrasted direct infringement under § 271(a), “which limits direct infringement liability only to circumstances ‘where all steps of a claimed method are performed by or attributable to a single entity.’” The court ruled that “the single-entity requirement, which is necessary for direct infringement liability under § 271(a), has no application to acts that do not constitute infringement under § 271(g).”
Intellectual Ventures I LLC v. Trend Micro Inc. et al., No. 2019-1122 (Fed. Cir. (D. Del.) Dec. 19, 2019). Opinion by Stoll, joined by Dyk and Taranto.
The Federal Circuit held that “a district court has discretion, in an appropriate case, to find a case exceptional [under 35 U.S.C. § 285] based on a single, isolated act.”
During claim construction, the parties disputed the meanings of several terms containing the word “characteristic.” The district court adopted the constructions offered by Intellectual Ventures and its expert. During a jury trial, however, Intellectual Ventures’s expert changed his opinion as to what qualifies as a “characteristic.” Trend Micro moved for attorneys’ fees under § 285, arguing that the case was exceptional due to the circumstances surrounding the changed opinion. The district court awarded fees, ruling that while the case “overall” was not exceptional, Intellectual Ventures’s conduct was exceptional “solely with respect to this collection of circumstances surrounding its expert’s changed testimony.” Intellectual Ventures appealed.
The Federal Circuit noted that, “instead of determining whether the case was exceptional, it appears that the district court may have focused on whether one discrete portion of the case” stood out in terms of its substantive strength or the manner in which it was litigated. The Federal Circuit ruled that “[t]his is not the appropriate analysis.” The court held that “a district court has discretion, in an appropriate case, to find a case exceptional based on a single, isolated act,” and the inquiry does not change “whether the conduct is a single, isolated act or otherwise.” Under § 285, the district court “must determine whether the conduct, isolated or otherwise, is such that when considered as part of and along with the totality of circumstances, the case is exceptional.”
Because it was unclear whether the district court applied the proper standard for exceptionality, the Federal Circuit vacated and remanded.
Hulu, LLC. v. Sound View Innovations, LLC, No. IPR2018-01039 (PTAB POP Dec. 20, 2019) (designated precedential on Dec. 20, 2019). Opinion by Boalick, joined by Iancu and Hirshfeld.
The Patent Trial and Appeal Board’s Precedential Opinion Panel (POP) ruled that a petitioner relying on a printed publication must present evidence to establish a reasonable likelihood that the reference was publicly accessible by the critical date of the challenged patent.
Hulu filed a petition for IPR on a patent owned by Sound View Innovations. The Board denied institution because there was insufficient evidence to determine that one of Hulu’s references qualified as a prior art printed publication. On a petition for rehearing, the POP held that “the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” The POP explained that there is no presumption that a reference is a printed publication; the burden remains on the petitioner to establish that the reference qualifies.
The POP also considered the relevance of conventional markers of publication on the face of a reference, holding that there is no per se sufficient indicia on any particular reference. Rather, the indicia on the face of a reference, “such as printed dates and stamps, are considered as part of the totality of the evidence.”
Addressing the circumstances in this case, the POP determined that Hulu had met its burden to show that the reference is a printed publication based on the reference’s copyright date, printing date, and ISBN date. The POP therefore remanded to the Board for a determination whether to institute a trial.