Patent Case Summaries October 20, 2020

Patent Case Summaries | Week Ending October 16, 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.

Immunex Corp. v. Sanofi-Aventis U.S. LLC, et al., Nos. 2019-1749, -1777 (Fed. Cir. (PTAB) Oct. 13, 2020). Opinion by Prost, joined by Reyna and Taranto.

The Patent Trial and Appeal Board instituted two IPR proceedings initiated by Sanofi challenging a patent owned by Immunex. The patent is directed to an isolated human antibody that binds the human interleukin-4 receptor. In the first IPR, the Board construed the claim term “human antibody” and, applying that construction, invalidated all of the challenged claims. Immunex appealed. In the second IPR, the Board rejected Sanofi’s challenge based on inventorship. Sanofi appealed.

The Federal Circuit consolidated the two appeals and affirmed the Board’s claim construction and associated invalidity decision. Because that affirmance left no valid claims in the second IPR, the Federal Circuit dismissed Sanofi’s inventorship appeal.

In its analysis, the Federal Circuit first considered the applicable claim construction standard. Immunex filed a terminal disclaimer during the appeal, causing the patent to expire just before oral argument. Immunex then argued that the expiration changed the standard from the broadest reasonable interpretation standard to the Phillips standard applicable to expired patents. The Federal Circuit rejected the argument, explaining that it was Immunex’s decision to cut short the patent’s term and to do so after the parties had briefed claim construction on appeal.

Turning to the merits of the claim construction dispute, the court framed the question in these terms: “in the context of this patent, must a ‘human antibody’ be entirely human? Or may it also be ‘partially human,’ including ‘humanized’?” The Board had construed the term to include both fully human and partially human antibodies, which includes humanized antibodies. The Federal Circuit agreed.

First, the Federal Circuit ruled that “nothing in the claim’s language restricts ‘human antibodies’ to those that are fully human.” Second, “the usage of ‘human’ throughout the specification confirmed its breadth.” Third, the prosecution history also supported the Board’s construction. Although “human” was added to the claims during prosecution to overcome an anticipating reference, that reference “disclosed nonhuman murine antibodies—a far cry from ‘humanized’ antibodies.” The court concluded that “nothing indicates that Immunex added ‘human’ to limit the scope to fully human.” Finally, the court held that “the intrinsic record trumps” Immunex’s extrinsic evidence, which “squarely conflict[ed]” with the meaning of “human antibody” as discerned from the intrinsic evidence.

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St. Jude Medical, LLC v. Snyders Heart Valve LLC, Nos. 2019-2108, -2109, -2140 (Fed. Cir. (PTAB) Oct. 15, 2020). Opinion by Taranto, joined by Newman and O’Malley.

St. Jude filed two IPR petitions challenging various claims in a patent owned by Snyders. The patent is directed to an artificial heart valve having three main components: a valve element, a frame, and a “band.” In the first IPR, the Patent Trial and Appeal Board construed the term “band” to mean “a structure generally in the shape of a closed strip or ring.” Applying that construction, the Board held that none of the challenged claims were anticipated by the “Leonhardt” patent or were obvious over Leonhardt in combination with two other patents. In the second IPR, the Board held that a subset of the claims were anticipated by the “Bessler” patent.

On appeal, the Federal Circuit affirmed the Board’s decision in the first IPR but reversed the finding in the second IPR that Bessler anticipated certain claims.

Regarding the first IPR, the sole issue on appeal was whether the Board erred in determining that Leonhardt does not disclose the claimed “band.” St. Jude argued that the Board failed to apply its construction and instead applied “a narrower implicit construction.” The Federal Circuit disagreed, finding St. Jude’s arguments to be “flawed on their own terms.” The basis for St. Jude’s arguments “simply does not address the terms ‘strip’ and ‘ring’” in the Board’s construction. The Federal Circuit therefore rejected St. Jude’s challenge to the decision in the first IPR.

Regarding the second IPR, both St. Jude and Snyders raised issues on appeal. St. Jude challenged the Board’s conclusion that certain claims were not obvious, but the Federal Circuit disagreed. The Board’s decisions were not unreasonable and were supported by substantial evidence.

In a cross-appeal, Snyders argued that the Board committed three errors in finding that Bessler anticipated. The Federal Circuit agreed with Snyder’s first argument—that the Board erred in construing the “sized and shaped for insertion” limitation—and thus did not reach the other two. According to the Federal Circuit, several passages in the patent specification made it “unreasonable to read the ‘sized and shaped for insertion’ claim language as covering an artificial valve fitted for the space left after removing the native valve.” That conclusion precluded anticipation by Bessler. Therefore, the Federal Circuit reversed the Board’s contrary determination.

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