United States: Federal Circuit Patent Update - February 20, 2019

Last Updated: February 21 2019
Article by Arthur W. Coviello, Richard Goldenberg and William G. McElwain

    Lourie, J. The Court considered a consolidated appeal of two district court cases involving two similar patents—U.S. Patents 8,595,054 ("the '054 patent") and 7,854,310 ("the '310 patent")—and a related Inter Partes Review ("IPR") challenging the '310 patent. The patents relate to a credit-card enabled, solar-powered, single-space parking meter. With respect to the district court decisions, the Court affirmed a summary judgment of no infringement of the '310 patent but vacated a summary judgment of no infringement of the '054 patent based on claim construction. With respect to the IPR, the Court reversed the PTAB's decision and held that the challenged claims of the '310 patent were anticipated by the earlier '054 patent under 35 U.S.C. § 102(e). The named inventor on the '310 patent was Dave King and the named inventors on the '054 patent were King and his co-inventor Alexander Schwarz. The Court explained that because the earlier '054 patent was developed jointly by King and Schwartz, and not King alone, the '054 patent was anticipatory prior art to the '310 patent under § 102(e).


    Lourie, J. Affirming the PTAB's IPR decision that the challenged patent claims were not invalid as obvious under 35 U.S.C. § 103. The patent claims are directed to certain compounds used for the treatment of epilepsy and other central nervous system disorders. As an initial matter, the Court held that the appellants had standing to pursue the appeal because they were properly joined in the IPR under 35 U.S.C. § 315(c). On the merits of the obviousness issue, the Court agreed with the PTAB that the appellants had not met their burden to show a motivation to modify the prior art compound to arrive at the claimed compounds.


    Lourie, J. Affirming the district court's dismissal of the complaint under Federal Rule of Civil Procedure 12(b)(6) on the ground that the asserted patent was invalid for lack of patentable subject matter under 35 U.S.C. § 101. The asserted patent was directed to methods for diagnosing neurological disorders by detecting antibodies to a human protein called muscle-specific tyrosine kinase ("MuSK"). The Court explained that the patent claims are directed to a natural law, namely: the correlation between the presence of naturally-occurring MuSK autoantibodies in bodily fluid and MuSK related neurological diseases. The Court also explained that the additional steps recited in the claims merely applied conventional techniques to detect that natural law. Thus, the Court held that claims were directed to an unpatentable natural law, not an improvement in the underlying technology or a patent-eligible application of the natural law.

    Judge Newman dissented, writing that the patent claims should be upheld on the basis that they are directed to a multi-step method of diagnosis, not a law of nature.


    Newman, J. Dismissing an appeal of an IPR decision for lack of standing and mootness. Momenta Pharmaceuticals, Inc. ("Momenta") filed the IPR petition challenging the validity of a Bristol-Myers Squibb Company ("BMS") patent. The patent is directed to specific fluid formulations of an immunosuppressive agent used in treatment of immune system disorders, such as rheumatoid arthritis. The PTAB sustained the patentability of the relevant claims, and Momenta filed an appeal to the Federal Circuit. BMS challenged Momenta's standing, noting that Momenta had not obtained FDA approval for the biosimilar product it was seeking to develop and, in fact, had not yet even filed its application with the FDA. BMS argues that it was speculative whether Momenta would ever be in a position to face possible infringement liability. Before the Court decided the appeal, Momenta's allegedly infringing product failed clinical trials and Momenta elected to abandon its efforts to develop a biosimilar. Momenta continued to assert that it had standing, but the Court concluded that it lacked Article III jurisdiction to consider the appeal because Momenta was not engaged in any activity that would give rise to a potential infringement suit and it was speculative whether Momenta's former partner would ever succeed in developing a biosimilar and therefore pay royalties to Momenta.

    *WilmerHale represented amici curiae Pharmaceutical Research and Manufacturers of America and Biotechnology Innovation Organization.


    Lourie, J. Vacating the district court's judgment of non-infringement of four asserted patents based on claim construction and remanding for further proceedings. The asserted patents are directed to a "multilayer electrical device ... having a tooth structure" and methods for making the same. In addressing claim construction, the Court held that the district court erred in limiting the claims to require a "repeated desmear process." In particular, the Court held that the claims did not expressly recite a repeated desmear process and that the specification and prosecution history did not clearly and unmistakably limit the claims to require a repeated desmear process. The Court remanded for further proceedings in view of its claim construction.

    *WilmerHale represented the appellees.

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