Patent Case Summaries May 31, 2023

Patent Case Summaries | Week Ending May 26, 2023

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.

OneSubsea IP UK Ltd., et al. v. FMC Technologies, Inc., No. 2022-1099 (Fed. Cir. (S.D. Tex.) May 23, 2023). Opinion by Clevenger, joined by Moore and Dyk.

OSS brought suit against FMC for infringement of certain patents related to the recovery of production fluids from an oil or gas well. During claim construction, the district court construed the claim term “divert” to require that fluid flow be forced from its current flowpath to a different flowpath. FMC then moved for summary judgment of noninfringement, arguing that its products have only one continuous flowpath and thus do not meet the “divert” limitations. OSS opposed the motion, relying on an expert declaration that identified “current” and “different” flowpaths in the accused products.

Before ruling on FMC’s motion, the district court stayed the case for nearly three years pending resolution of the parties’ IPR proceedings. Once the court lifted the stay, FMC renewed its motion and also filed a motion to exclude the opinions of OSS’s expert. The district court granted both motions.

Following those rulings, FMC filed a motion for attorneys’ fees and non-taxable costs under 35 U.S.C. § 285 arguing that the case was exceptional based on OSS’s substantively weak infringement claims and alleged litigation misconduct. The district court denied the motion, and FMC appealed.

The Federal Circuit affirmed the district court’s denial of FMC’s motion for attorneys’ fees. FMC’s primary arguments were that the case was objectively baseless once the district court construed the “divert” limitations, and that OSS committed misconduct by continuing to pursue the litigation.

The Federal Circuit disagreed with FMC. The court ruled that there “can be no doubt that the district court was unwilling to grant summary judgment to FMC [prior to the stay] and willing to allow the case to proceed.” It was not until the district court granted FMC’s motion to exclude OSS’s expert’s opinions that the court agreed to grant summary judgment of noninfringement.

The Federal Circuit thus concluded that the district court appropriately exercised its discretion in denying FMC’s § 285 motion, stating: “When a district court, fully aware of the competing contentions of the parties, declines to end the case on summary judgment and allows a plaintiff’s case to proceed, the district court may have effectively determined that the position of the party opposing summary judgment is not objectively baseless, making it nearly impossible for the plaintiff’s case (on the issue that was the subject of the summary judgment motion) to ‘stand out’ as lacking substance at that time.”

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Medtronic, Inc., et al. v. Teleflex Innovations S.À.R.L., Nos. 2021-2356, -2358, -2361, -2363, -2365 (Fed. Cir. (PTAB) May 24, 2023). Opinion by Lourie, joined by Moore. Dissenting opinion by Dyk.

Medtronic filed a series of IPR petitions challenging the claims of several related Teleflex patents directed to guide extension catheters. The petitions all asserted the “Itou” reference as the primary prior art reference under pre-AIA 35 U.S.C. § 102(e). After institution of the IPRs, Teleflex argued that Itou did not qualify as prior art because the claimed inventions were conceived prior to Itou’s filing date, and were either actually reduced to practice or diligently worked on toward a constructive reduction to practice. The Patent Trial and Appeal Board agreed with Teleflex that Itou did not qualify as prior art, thereby eliminating Medtronic’s IPR challenges. Medtronic appealed.

On appeal, Medtronic challenged three of the Board’s determinations. The Federal Circuit rejected each one and, thus, affirmed the Board’s ruling that Itou did not qualify as prior art.

First, Medtronic argued that the Board erred in identifying the intended purpose of the claimed invention. According to Medtronic, the intended purpose was both providing increased backup support as compared with a guide catheter alone (as the Board found) and facilitating the delivery of interventional devices through tough or chronic occlusions. The Federal Circuit ruled that, based on the intrinsic evidence, Medtronic’s proposed intended purpose was overly narrow.

Second, Medtronic argued that the Board erred in not requiring comparative testing to demonstrate that the invention worked for its intended purpose. The Federal Circuit disagreed, ruling that substantial evidence supported the Board’s finding that the claimed invention worked for its intended purpose. For example, “the Board thoroughly reviewed and analyzed [certain] evidence of testing in the record,” and the test results sufficiently showed that the claimed invention worked for its intended purpose.

Third, Medtronic argued that the Board erred in relying solely on uncorroborated inventor testimony as evidence of actual reduction to practice. The Federal Circuit disagreed, concluding that under the rule of reason standard the inventors’ testimony was sufficiently corroborated by both documentary evidence and non-inventor testimony.

Judge Dyk dissented because, in his view, Itou was shown to be prior art and therefore could support a determination of anticipation or obviousness. He stated that Itou has an earlier filing date, and the evidence failed to adequately corroborate the inventor testimony that the invention had been reduced to practice before Itou’s filing date. Judge Dyk explained that his “disagreement lies with respect to the issue of testing. Specifically, the evidence does not corroborate that testing of the [Teleflex] prototypes before the critical date had shown them to work for their intended purpose.”

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