United States: Federal Circuit Patent Update - April 2, 2019

Precedential Federal Circuit Opinions

1.                  FOREST LABORATORIES, LLC v. SIGMAPHARM LABORATORIES, LLC [OPINION - PRECEDENTIAL] (2017-2369, 2017-2370, 2017-2372, 2017-2373, 2017-2374, 2017-2375, 2017-2376, 2017-2389, 2017-2412, 2017-2436, 2017-2438, 2017-2440, 2017-2441, 03/14/2019) (PROST, DYKE, MOORE)  

Moore, J.  Vacating and remanding the district court's determinations regarding validity and infringement issues.  This appeal involves multiple Abbreviated New Drug Applications (ANDAs) filed with the Food and Drug Administration by companies seeking to market generic versions of Saphris, a drug product administered sublingually (i.e., dissolved under the tongue).  Regarding the validity issue, the Court remanded for the district court to make an express finding regarding one of the defendants' proposed motivations to combine prior art references that allegedly rendered the claims invalid as obvious.  The Court also affirmed the district court's determination that appellants had not established invalidity for lack of written description by clear and convincing evidence.  Regarding the infringement issue, the Court held that the district court had found no infringement based on an incorrect claim construction that limited the asserted claims to the treatment of certain disorders.  The Court held that the claims were not limited only to treating certain disorders, but also covered treating certain symptoms, and remanded for further consideration of the infringement issue in view of the corrected claim construction.

2.                  NATURAL ALTERNATIVES INTL. v. CREATIVE COMPOUNDS, LLC [OPINION - PRECEDENTIAL] (2018-1295, 03/15/2019) (MOORE, REYNA, WALLACH)  

Moore, J.  Reversing and remanding the district court's determination, on a motion for judgment on the pleadings, that the plaintiff's six asserted patents related to dietary supplements were invalid for lack of patentable subject matter under 35 U.S.C. § 101.  The Court explained that in deciding a motion for judgment on the pleadings a court must accept the plaintiff's allegations that the claims did not recite conventional subject matter.  The Court also accepted the plaintiff's proposed claim constructions for purposes of evaluating the pleadings, noting that neither party had argued for a different construction on appeal.  Applying this standard, the Court held that the plaintiff's complaint had sufficiently pleaded that the claims were directed to patent eligible dietary supplements and methods of treatment. 

Judge Reyna concurred in part and dissented in part, writing that he would have applied a different claim construction than the construction applied by the majority.

3.                  SRI INTERNATIONAL, INC. v. CISCO SYSTEMS, INC. [OPINION - PRECEDENTIAL] (2017-2223, 03/20/2019) (LOURIE, O'MALLEY, STOLL)*  

Stoll, J.  Affirming in part, vacating in part, and remanding the district court's judgment in a patent infringement case regarding network intrusion detection technology.  The Court affirmed the district court's denial of Cisco's motion for summary judgment of patent ineligibility under 35 U.S.C. § 101, finding that the claims were not directed to an abstract idea.  Instead, the Court concluded that the claims "are directed to using a specific technique—using a plurality of network monitors that each analyze specific types of data on the network and integrating reports from the monitors—to solve a technological problem arising in computer networks: identifying hackers or potential intruders into the network."  The Court also affirmed the district court's construction of the claim term "network traffic data" to mean "data obtained from direct examination of network packets."  The Court held that the patentee's statements during reexamination did not amount to a disclaimer of "pre-processing" of network packets.  The Court also affirmed the district court's grant of summary judgment of no anticipation, finding that the prior art at issue did not expressly disclose directly examining network packets as required by the claims.  The Court also affirmed the award of an ongoing royalty.  However, the Court vacated the district court's finding of willfulness, concluding that there was no substantial evidence to support a finding of willfulness prior to when the plaintiff notified the defendant of the asserted patent in 2012.  The Court also vacated the district court's award of attorneys' fees and remanded for recalculation.

Judge Lourie dissented, writing that the claims should have been held invalid under 35 U.S.C. § 101 because they are directed to an abstract idea without an inventive concept.

*WilmerHale represented the defendant on appeal.

4.                  ARCTIC CAT INC. v. GEP POWER PRODUCTS, INC. [OPINION - PRECEDENTIAL] (2018-1520, 2018-1521, 03/26/2019) (PROST, REYNA, TARANTO)  

Taranto, J.  The Court considered two IPR decisions invalidating all claims of two patents directed to a "Power Distribution Module for Personal Recreational Vehicle."  With respect to both patents, the Court affirmed the PTAB's determination that the preambles were not limiting.  However, the Court reversed in part, vacated in part, and remanded one of the IPR decisions because it depended in part on a reference (called the "Boyd" reference) that the PTAB had incorrectly determined to be prior art.  The Court held that the patent owner had shown that claims of the patents at issue were conceived before the Boyd reference and were then diligently reduced to practice.  As a result, Boyd was not prior art.  However, the Court affirmed the PTAB's findings of invalidity with regard to the IPR of the second patent, in which the grounds did not depend on the Boyd reference.

5.                  GRUNENTHAL GMBH v. ALKEM LABORATORIES LIMITED [OPINION - PRECEDENTIAL]  (2017-1153, 2017-2048, 2017-2049, 2017-2050, 03/28/2019) (REYNA, TARANTO, CHEN)  

Reyna, J.  Affirming the district court's judgment in a bench trial involving multiple defendants regarding two patents directed to certain compounds and methods for the treatment of pain.  On appeal, three defendants appealed the judgment that U.S. Patent No. 7,994,364 is not invalid for obviousness or lack of utility.  The Court held that the district court did not clearly err in concluding that the claims were not invalid as obvious, because a person of ordinary skill in the art would not have had a reasonable expectation of success of producing the claimed invention based on the prior art.  The Court also rejected the defendants' argument that the patent lacked utility, finding that there was substantial evidence that the claimed compound is useful for pain relief.  In addition, the plaintiff cross-appealed to challenge the district court's determination that three defendants did not indirectly infringe U.S. Patent No. 8,536,130, which is directed to the treatment of polyneuropathic pain, a type of pain caused by damage to multiple nerves.  The Court affirmed that these defendants were not liable for induced infringement because they not induce others to use the accused medications for the treatment of polyneuropathic pain.  The Court also affirmed that these defendants were not liable for contributory infringement because their medications had substantial non-infringing uses for the treatment of chronic pain conditions that are not polyneuropathic.

6.                  CHARGEPOINT, INC. v. SEMACONNECT, INC. [OPINION - PRECEDENTIAL] (2018-1739, 03/28/2019) (PROST, REYNA, TARANTO)  

Prost, C.J.  Affirming the district court's judgment that all of the asserted patent claims directed to networks of charging stations for electric vehicles were invalid for lack of patentable subject matter under 35 U.S.C. § 101.  The Court explained that the patents are directed to "the abstract idea of communicating over a network for device interaction," applied to network charging stations.  The Court further explained that the claims do not add network connectivity to these charging stations in an unconventional way.  Accordingly, the Court held that the only possible inventive concept was the abstract idea of network connectivity itself, and therefore that the claims were ineligible for patent protection.

7.                  ENDO PHARMACEUTICALS INC. v. TEVA PHARMACEUTICALS USA, INC. [OPINION - PRECEDENTIAL] (2017-1240, 2017-1455, 2017-1887, 03/28/2019) (WALLACH, CLEVENGER, STOLL)  

Stoll, J.  Reversing the district court's judgment that a patent directed to pharmaceutical compositions and dosing methods for renal impairment was invalid for lack of patentable subject matter under 35 U.S.C. § 101.  The Court held that the claims are patent eligible because they are "directed to a specific method of treatment for specific patients using a specific compound at specific doses to achieve a specific outcome."

TEK GLOBAL, S.R.L. v. SEALANT SYSTEMS INTERNATIONAL [OPINION - PRECEDENTIAL] (2017-2507, 03/29/2019) (PROST, DYK, WALLACH)  

Prost, C.J.  Affirming in part, reversing in part, and vacating in part the district court's judgment in a case regarding a patent directed to an emergency kit for repairing vehicle tires deflated by puncture.  The Court vacated the judgment with respect to validity on the ground that the district court improperly restricted the defendant's effort to present relevant evidence of invalidity at trial.  In particular, the Court held that the district court had incorrectly prevented the defendant from relying on two prior art references that had been found not to render the claims obvious in a prior appeal.  The Court explained that its prior mandate foreclosed an invalidity theory based on only those two references but did not preclude the defendant from combining those references with other prior art to challenge validity on remand.  Accordingly, the Court remanded for the district court to conduct a new trial on the issue of validity.  The Court also addressed the remaining issues on appeal in the interest of judicial economy.  The Court affirmed the judgment with respect to infringement and lost profits damages as supported by substantial evidence.  The Court also affirmed the award of a permanent injunction, noting among other things that the parties were direct competitors and that the defendant's infringement had forced the plaintiff to compete against its own patented invention.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.