Patent Case Summaries March 10, 2021

Patent Case Summaries | Week Ending March 5, 2021

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.


Rain Computing, Inc. v. Samsung Electronics America, Inc., et al., Nos. 2020-1646, -1656 (Fed. Cir. (D. Mass.) Mar. 2, 2021). Opinion by Moore, joined by Lourie and Dyk.

Rain sued Samsung for infringement of a patent directed to delivering software application packages to a client terminal in a network based on user demands. Among other rulings, the district court determined that the claim term “user identification module” was a means-plus-function term subject to 35 U.S.C. § 112 ¶ 6 and was not indefinite. The parties then stipulated that the asserted claims were neither infringed nor invalid for indefiniteness.

On appeal, the Federal Circuit agreed that “user identification module” is in means-plus-function format. Because the term does not include the word “means,” there is a rebuttable presumption that § 112 ¶ 6 does not apply. The court explained that “module” is “a well-known nonce word that can operate as a substitute for ‘means.’” The court then ruled that here the term “module” “does not provide any indication of structure,” and the prefix “user identification” likewise does not impart structure; instead, “it merely describes the function of the module: to identify a user.” Therefore, § 112 ¶ 6 applies.

The Federal Circuit next examined the corresponding function for the “user identification module,” agreeing with the parties that it involves “controlling access.”

Finally, the court considered whether the specification identifies structure that is clearly linked with this function. The district court had determined that the specification’s disclosure of computer-readable media or storage devices provided sufficient structure. The Federal Circuit disagreed, stating that “these computer-readable media or storage devices amount to nothing more than a general-purpose computer.” And “under these circumstances where a general purpose computer is the corresponding structure and it is not capable of performing the controlling access function absent specialized software, an algorithm is required.” Neither the claim language nor the specification, however, provided an algorithm. Therefore, the term lacked sufficient structure, rendering the claims indefinite.

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Bayer Healthcare LLC v. Baxalta Inc., et al., Nos. 2019-2418, 2020-1017 (Fed. Cir. (D. Del.) Mar. 1, 2021). Opinion by Stoll, joined by Newman and Linn.

Addressing various issues of claim scope, infringement, validity, damages, and willfulness, the Federal Circuit affirmed the district court’s judgments following a jury trial.

Bayer sued Baxalta and its collaborator for infringement of a patent directed to recombinant forms of human factor VIII, which is useful for treating hemophilia A. Prior to trial, the district court construed the claims and, separately, held as a matter of law that Baxalta’s conduct did not meet the requirements for willfulness. The remaining issues were presented to a jury, and the jury found that the asserted claims were enabled and infringed, and that Bayer was entitled to damages based on a royalty rate of 17.78%.

On appeal, the Federal Circuit first upheld the district court’s claim constructions. As to a first claim term, the district court did not err because the claim language, specification, and prosecution history supported the construction. As to a second term, the district court construed “an isolated polypeptide conjugate” to mean “a polypeptide conjugate where conjugation was not random.” Baxalta argued that the district court erred by refusing to define the term “random” in the construction. The Federal Circuit disagreed, ruling that the district court had “resolved the parties’ controversies as to the meaning of ‘random’” and “did not violate its duty to interpret the claims in declining to provide a detailed interpretation.”

Turning to the jury’s finding of infringement and enablement, the Federal Circuit ruled that substantial evidence supported both findings. Regarding enablement, the appellate court was “not persuaded that the district court erred in considering the knowledge of an ordinarily skilled artisan to determine whether undue experimentation would have been required.” The inquiry “must be viewed ‘from the perspective of one of ordinary skill in the art,’” and the specification need not include working examples for all embodiments.

Addressing various damages-related issues, the Federal Circuit determined that the district court acted within its discretion in allowing Bayer to ask the jury to select a royalty rate within a range of presented rates. The Federal Circuit was “aware of no precedent that requires an expert to provide a single proposed royalty rate.” Also, the amount of damages was supported by substantial evidence. Further, the district court did not violate Baxalta’s Seventh Amendment right to a jury trial by amending the judgment to award Bayer pre-verdict supplemental damages based on the jury’s 17.78% royalty rate.

Finally, the Federal Circuit addressed Bayer’s challenge to the district court’s judgment as a matter of law that Baxalta did not willfully infringe the asserted claims. The Federal Circuit ruled that the court did not err. “The evidence adduced at trial merely demonstrates Baxalta’s knowledge of the ’520 patent and Baxalta’s direct infringement of the asserted claims. Knowledge of the asserted patent and evidence of infringement is necessary, but not sufficient, for a finding of willfulness.”

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