Patent Case Summaries April 29, 2020

Patent Case Summaries | Week Ending April 24, 2020

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.


Biogen International GmbH v. Banner Life Sciences LLC, No. 2020-1373 (Fed. Cir. (D. Del.) Apr. 21, 2020). Opinion by Lourie, joined by Moore and Chen.

Biogen owns a patent relating to a method of treating multiple sclerosis by administering a particular pharmaceutical preparation. The patent term was extended by 811 days under 35 U.S.C. § 156 to compensate for the period for which the FDA had reviewed Biogen’s New Drug Application for the active ingredient, dimethyl fumarate (DMF), which is the dimethyl ester of fumaric acid. Notably, the patent claims cover both DMF as well as the monomethyl ester of fumaric acid, monomethyl fumarate (MMF).

In response to an infringement complaint filed by Biogen, Banner filed a motion for judgment on the pleadings of noninfringement, arguing that the patent term was not extendable under § 156 because the relevant product was not an active ingredient of an approved product or an ester or salt of that active ingredient. Essentially, the parties disputed whether the monomethyl ester MMF, covered by the claim, is covered by the extension under § 156. The district court held that it is not.

On appeal, the Federal Circuit affirmed. Under the statute, the “product” eligible for term extension is defined as “the active ingredient of … the new drug … including any salt or ester of the active ingredient.” 35 U.S.C. § 156(f)(2)(A). Because MMF is the de-esterified form of the active ingredient, DMF, the two are not the same product under § 156 and the asserted product did not fall within the scope of the patent term extension. The Federal Circuit also held that Biogen could not assert infringement under the doctrine of equivalents because a product cannot logically infringe an extended patent claim as an equivalent if the product is not included within the extension under § 156.

View Opinion


Dragon Intellectual Property, LLC v. Dish Network LLC, No. 2019-1283 (Fed. Cir. (D. Del.) Apr. 21, 2020). Opinion by Moore, joined by Lourie and Stoll.

The Federal Circuit vacated and remanded the district court’s judgment that DISH and Sirius XM were not prevailing parties for purposes of attorneys’ fees under 35 U.S.C. § 285.

After Dragon Intellectual Property separately sued DISH, Sirius XM, and eight other defendants for patent infringement, DISH filed a petition for IPR. The Patent Trial and Appeal Board instituted the IPR and subsequently granted Sirius XM’s request for joinder. The district court then stayed its proceedings as to both parties, but not as to the other defendants. Following a claim construction order in district court, all parties stipulated to noninfringement. Afterward, the Board issued a final written decision in the IPRs finding the claims unpatentable. The Federal Circuit affirmed the Board’s decision and dismissed a parallel district court appeal as moot.

Back in the district court, DISH and Sirius XM moved for attorneys’ fees under § 285. The district court denied the motions, stating that DISH and Sirius XM were not “prevailing parties” under § 285 because they were not granted “actual relief on the merits,” noting that “success in a different forum is not a basis for attorneys’ fees” in the district court.

The Federal Circuit vacated and remanded. Quoting precedent, the court explained that a party can be a prevailing party where it “rebuffed [the opposition]’s attempt to alter the parties’ legal relationship in an infringement suit.” Because DISH and Sirius XM had succeeded in the IPR proceedings, they had successfully rebuffed Dragon’s attempt to alter the parties’ legal relationship and were therefore prevailing parties.

DISH and Sirius XM also argued that fees under § 285 should include fees incurred in related proceedings, including IPRs and appeals. The Federal Circuit noted that it saw “no basis in the Patent Act for awarding fees under § 285 for the work incurred in inter partes review proceedings that the Appellants voluntarily undertook,” but it remanded for the district court to consider the fee motions.

View Opinion


Hologic, Inc., et al. v. Minerva Surgical, Inc., Nos. 2019-2054, -2081 (Fed. Cir. (D. Del.) Apr. 22, 2020). Opinion by Stoll, joined by Wallach and Clevenger. Additional views by Stoll.

The Federal Circuit held that the doctrine of assignor estoppel does not bar an assignor from relying on the Federal Circuit’s affirmance of a Patent Trial and Appeal Board decision invalidating patent claims in an IPR proceeding.

U.S. Patent Nos. 6,872,183 and 9,095,348 were developed by an inventor through a company that eventually, through corporate acquisitions, assigned the patent rights to Hologic. The inventor left the original company and founded the accused infringer, Minerva. Hologic sued Minerva, and Minerva filed petitions for IPR challenging both patents. The Board instituted review of the ’183 patent but denied review of the ’348 patent.

In the district court, Hologic moved for summary judgment that assignor estoppel barred Minerva from challenging the validity of the ’183 and ’348 patent claims. The court agreed and also granted summary judgment of infringement and no invalidity. At trial, a jury awarded Hologic lost profits and royalties based on Minerva’s infringement of both patents without apportioning the damages. The Federal Circuit later affirmed the Board’s decision that the ’183 patent claims are invalid. The district court then ruled that the invalidity of the ’183 patent did not affect the jury’s damages determination because the jury’s findings could be adequately supported by the findings as to the ’348 patent alone.

On appeal, the Federal Circuit first addressed assignor estoppel, holding that although Minerva would have been estopped from challenging the validity of the ’183 patent claims in district court, the doctrine of assignor estoppel did not bar the filing of an IPR petition. Therefore, the Federal Circuit affirmed the district court’s denial of Hologic’s post-trial motions based on the ’183 patent because Hologic was collaterally estopped from asserting infringement of those claims. Second, the Federal Circuit held that the district court did not abuse its discretion in applying assignor estoppel to preclude Minerva from challenging the validity of the asserted claims of the ’348 patent, as the inventor was in privity with Minerva. The court therefore affirmed the district court’s grant of summary judgment of no invalidity as to the ’348 patent.

The Federal Circuit also affirmed the district court’s award of damages even though the jury had not apportioned damages between the two patents and the ’183 patent was later held invalid. The Federal Circuit explained that the damages award could be sustained if undisputed evidence demonstrated that the sustained patent claim is necessarily infringed by all of the accused activity on which the damages award was based, as occurred here.

Next, the Federal Circuit affirmed the district court’s construction of two claim terms at issue in the ’348 patent, declining to read into the claims certain features found in the specification. The Federal Circuit also affirmed the district court’s denial of certain supplemental damages, ruling that the district court did not abuse its discretion. Finally, the Federal Circuit held that the district court erred by using an incorrect judgment date in its calculation of pre- and post-judgment interest on the supplemental damages award. The court remanded for the district court to award interest from the appropriate date.

Judge Stoll wrote an “additional views” opinion to “highlight and question the peculiar circumstance created in this case by this court’s precedent,” where an assignor can circumvent the doctrine of assignor estoppel by attacking a patent’s validity in the Patent Office instead of in district court. Judge Stoll suggested that the court should consider the doctrine of assignor estoppel, and its application in district courts and the Patent Office, en banc.

View Opinion


Argentum Pharmaceuticals LLC v. Novartis Pharmaceuticals Corp., No. 2018-2273 (Fed. Cir. (PTAB) Apr. 23, 2020). Opinion by Moore, joined by Lourie and Reyna.

The Federal Circuit dismissed Argentum’s appeal of a Patent Trial and Appeal Board decision finding that Petitioners had not demonstrated unpatentability of the claims. The court held that Argentum lacked Article III standing to pursue the appeal.

Apotex filed a petition for IPR on a particular patent held by Novartis, and Argentum, along with several others, filed requests for joinder under 35 U.S.C. § 315(c). The Board granted those requests and eventually issued a final written decision finding that Petitioners had not met their burden of demonstrating unpatentability. Petitioners appealed, but then all except Argentum settled their respective disputes with Novartis.

Novartis argued that Argentum lacked Article III standing for the appeal. In response, Argentum argued that it had demonstrated at least three concrete injuries in fact, but the Federal Circuit disagreed with each.

First, Argentum argued that it faced a real and imminent threat of litigation while it jointly pursues, along with its partner, a generic version of Novartis’s product for which Argentum and its partner are in the process of filing an Abbreviated New Drug Application (ANDA). The Federal Circuit agreed with Novartis that because any ANDA would be filed by Argentum’s partner, it is Argentum’s partner that is at risk of being sued. Moreover, the perceived threat of litigation was merely conjectural.

Second, Argentum argued that it would incur significant economic injury because its investments in developing a generic product and preparing an ANDA would be at risk with a “looming infringement action by Novartis.” The Federal Circuit deemed these allegations conclusory and speculative.

Finally, the Federal Circuit rejected Argentum’s argument that absent relief on appeal, Argentum would be estopped under 35 U.S.C. § 315(e) from raising patentability and validity issues in a future infringement action. The court held that, under its precedent, invocation of the estoppel provision was not a sufficient basis for Article III standing.

View Opinion


In re Rudy, No. 2019-2301 (Fed. Cir. (PTAB) Apr. 24, 2020). Opinion by Prost, joined by O’Malley and Taranto.

The Federal Circuit affirmed the Patent Trial and Appeal Board’s rejection of certain pending patent claims as ineligible under 35 U.S.C. § 101.

An illustrative claim at issue recites a method of fishing, including observing clarity of water, measuring light transmittance, and selecting a colored or colorless quality of the fishing hook to be used. Under the two-step Alice framework, the Board concluded that “select[ing] a colored or colorless quality of a fishing hook based on observed and measured water conditions” is a concept performed in the human mind, and that the claim limitations, taken individually or as an ordered combination, do not amount to significantly more than the abstract idea.

The Federal Circuit affirmed, first explaining that although a portion of the Board’s analysis was framed as a recitation of the Office Guidance, in this particular case, the Board’s reasoning and conclusion were nevertheless fully consistent with precedent.

Under Alice step one, the Federal Circuit concluded that the claims were directed to the abstract idea of selecting a fishing hook based on observed water conditions. The court noted that, as in the computer context, “collecting information” and “analyzing” that information are generally abstract ideas. Under Alice step two, the court held that the elements of the claim, taken individually or as an ordered combination, do not transform the nature of the claim into a patent-eligible application of that abstract idea. Specifically, the three steps of the claim merely repeat the abstract idea itself.

Also, the court held that the Board had not improperly considered a particular claim as illustrative of all pending claims.

View Opinion

Meet the Authors
Media Contact
Nicholas Clarke
Senior Communications Manager
Phone: 212.210.1222

This website uses cookies to improve functionality and performance. For more information, see our Privacy Statement. Additional details for California consumers can be found here.