In a case involving a patented method for purifying antibodies, the US Court of Appeals for the Federal Circuit determined that the process of chilling a composition to below room temperature could be found both obvious and anticipated by a process that purified that composition at room temperature. Genentech, Inc. v. Hospira, Inc., Case No. 18-1933 (Fed. Cir. Jan. 10, 2020) (Chen, J) (Newman, J, dissenting).
Addressing issues of copyright and patent infringement, the US Court of Appeals for the Federal Circuit found that the Federal Insecticide, Fungicide, and Rodenticide Act did not preempt copyright protection and that patent infringement under 35 U.S.C. § 271(g) does not require that the claimed process be performed by a single entity. Syngenta Crop Protection, LLC v. Willowood, LLC, Case Nos.18-1614, -2044 (Fed. Cir., Dec. 18, 2019) (Reyna, J.).
Addressing the proper test for shifting fees under 35 U.S.C. § 285, the US Court of Appeals for the Federal Circuit held that a district court erred when it shifted fees to the accused infringer because the district court found that only a series of events was exceptional but did not determine that the “case ” was exceptional. Intellectual Ventures LLC v. Trend Micro Inc., Case No. 19-1122 (Fed. Cir. Dec. 19, 2019) (Stoll, J.). Because it was unclear what standard the district court used when making its “exceptional case” determination, the Federal Circuit vacated and remanded for an analysis under the proper legal standard.
Raising the hurdle for proving secondary considerations, the US Court of Appeals for the Federal Circuit found that the “coextensiveness” requirement for purposes of nexus requires that the practicing product be “essentially the claimed invention.” FOX Factory, Inc. v. SRAM, LLC, Case No. 18-2024, -2025 (Fed. Cir. Dec. 18, 2019) (Prost, J.).
Bicycle chainrings are the toothed disks to which bicycle chains engage. SRAM owns a patent directed to an improved chainring structure that better maintains the chain, obviating the need for extraneous structures. The independent claims of the patent recite a chainring with alternating narrow and wide tooth tips and teeth offset from the center of the chainring. Some of the claims recite tooth tips offset toward the body of the bicycle (inboard offsets) and other claims recite teeth offset away from the body of the bicycle (outboard offsets). The specification discloses additional chainring features that are not recited in the claims. Each of the disclosed but unclaimed features contribute to improving chain retention. For example, the specification discloses forwardly protruding tip portions that function to engage a chain link earlier than a chain lacking the tip portion, a hook feature formed on the rear flank of each tooth to provide better guiding of the chain, and also that the narrow and wide teeth preferably fill at least 80% of the axial distance of the corresponding space in the chain link (>80% gap filling). SRAM sells 13 different versions of its “X-Sync” chainrings, 12 of which embody the inboard offset claims and one of which embodies the outboard offset claims. The X-Sync chains also embody the unclaimed features disclosed in the specification.
The US Court of Appeals for the Federal Circuit affirmed a district court’s award of attorneys’ fees and expenses to deter serial patent filers’ future “abusive litigation.” Blackbird Tech LLC, DBA Blackbird Technologies v. Health in Motion LLC, DBA Inspire Fitness, Leisure Fitness Equipment LLC, Case No. 18-2393 (Fed. Cir. Dec. 16, 2019) (Wallach, J.).
Blackbird sued Health in Motion and Leisure Fitness (HIM) for infringing a patent directed to exercise equipment that includes a housing with a structural surface defining an arcuate path and multiple pairs of pulleys positioned along the arcuate path. Shortly after filing the case, Blackbird offered to settle for $80,000. HIM rejected the offer, stating that they believed that Blackbird would be ordered to pay their attorneys’ fees, and countered with a settlement offer that included Blackbird paying HIM $120,000. Over the course of the next year, Blackbird continued to negotiate until it eventually offered HIM a license to the patent for zero dollars. HIM declined.
Finding that inherency can be used to show the presence of a missing claim limitation, the US Court of Appeals for the Federal Circuit affirmed a district court decision that asserted claims in pain management method patents were invalid as obvious. Persion Pharmaceuticals LLC v. Alvogen Malta Operations Ltd., Case No. 18-2361 (Fed. Cir., Dec. 27, 2019) (Reyna, J.).
Persion has US Food and Drug Administration (FDA) approval for its extended release hydrocodone product, Zohydro ER, and also owns two patents directed to methods of treating pain with extended release hydrocodone in patients with mild to moderate hepatic impairment. Persion sued Alvogen for infringement of certain claims in these two patents after Alvogen filed an Abbreviated New Drug Application (ANDA) requesting approval from the FDA to market a generic version of Zohydro ER. The asserted claims include: (i) non-adjustment claims directed to administering a dose of hydrocodone to patients with mild to moderate hepatic impairment without adjusting the dose relative to a healthy liver patient, and (ii) pharmacokinetic claims directed to pharmacokinetic parameters achieved after treatment with hydrocodone.
The US Court of Appeals for the Federal Circuit vacated a district court decision setting license rates for standard-essential patents (SEPs), holding that the district court deprived the patent owner of its constitutional right to trial by jury. TCL Commc’n Tech. Holdings Ltd. v. Telefonaktiebolaget LM Ericsson, Case Nos. 8-1363, -1732 (Fed. Cir., Dec. 5, 2019) (Chen, J.).
Ericsson holds a number of patents that are essential to the 2G, 3G and 4G mobile communications standards set by the European Telecommunications Standards Institute (ETSI). As a member of ETSI, Ericsson has agreed to license its SEPs to implementers of the ETSI standards on fair, reasonable and non-discriminatory (FRAND) terms. TCL manufactures mobile devices that implement the ETSI standards.
The US Court of Appeals for the Federal Circuit denied counterclaim plaintiff’s petition for panel rehearing and rehearing en banc with respect to its decision that the counterclaim plaintiff was estopped from bringing antitrust counterclaims in a patent infringement suit. Intellectual Ventures 1, LLC v. Capital One Financial Corporation, Case No. 18-1367 (Fed. Cir. Dec. 11, 2019) (per curium). In its decision, the Federal Circuit determined that the counterclaim plaintiff could not invoke Tuttle v. Arlington County School Board (4th Cir. 1999) to save its counterclaim and left unaddressed the trial court’s decision with respect to the scope of the Noerr-Pennington doctrine, which was an alternative trial court basis for dismissal of Capital One’s counterclaim.
In its prior decision applying Fourth Circuit law, the Federal Circuit determined that Capital One, the counterclaim plaintiff, could not bring an antitrust counterclaim against Intellectual Ventures based on the doctrine of collateral estoppel. Intellectual Ventures 1, LLC v. Capital One Financial Corporation, (IP Update, Vol. 22, No. 10). In that decision, the Court reviewed Capital One’s appeal of the trial court’s denial of its counterclaims against a prior litigated case in which Capital One’s identical antitrust counterclaim had been denied by the trial court. In bringing its initial appeal, Capital One argued that the antitrust issues related to market definition and Intellectual Ventures’ market power in the initial case were different from the market definition and Intellectual Ventures’ market power issues in the instant case. In its prior decision, the Federal Circuit disagreed and held that the doctrine of collateral estoppel applied as (1) the issues in the instant case was identical to the issues in the prior case; (2) the issues were actually decided in the prior proceeding; (3) the issues were critical and necessary to the judgment in the prior proceeding; (4) the judgment was valid and final; and (5) Capital One had a full and fair opportunity to litigate the issues.
A divided panel decision of the US Court of Appeals for the Federal Circuit affirmed a summary judgment of noninfringement, finding no disputed issues of material fact to preclude summary judgement. Plastic Omnium Advanced v. Donghee America, Inc., Case No. 2018-2087 (Fed. Cir., Nov. 21, 2019) (Reyna, J) (Clevenger, J, dissenting).
Plastic Omnium filed suit against Donghee for patent infringement of patents generally relating to manufacturing plastic fuel tanks formed by blow molding. A portion of this process, as claimed, requires “cutting and opening an extruded parison of closed cross section.” The primary dispute on appeal is the meaning of the claim term “parison.” In its claim construction order, the district court found the patentee had acted as its own lexicographer, defining the key disputed term “parison” as “referring to a plastic tube with a closed cross section that is shaped by—and has reached the end of—a die and is split either immediately upon exiting the die or at some point thereafter.” Following claim construction, the district court granted Donghee’s motion for summary judgment of noninfringement as to the asserted claims. Plastic Omnium appeals the grant of summary judgment under both literally infringement and infringement under the doctrine of equivalents.
The US Court of Appeals for the Federal Circuit affirmed that the majority of the batches of an accused biosimilar manufactured by Hospira were not protected by the Safe Harbor exemption of § 271(e)(1), and that patent infringement damages were not unreasonable, notwithstanding that none of the accused product had been sold. Amgen Inc. v. Hospira, Inc., Case Nos. 19-1067; -1102 (Fed. Cir., Dec. 16, 2019)(Moore, J.).
EPO is a glycoprotein that regulates red blood cell development. Recombinant versions of EPO are used to treat anemia. One example is Amgen’s product Epogen. In 2014, Hospira submitted a Biologics License Application (BLA) to the Food and Drug Administration (FDA) requesting approval for its EPO biosimilar. Amgen then sued Hospira for infringement of its patent directed to methods of producing EPO isoforms and its patent directed to recombinant cells producing EPO at certain rates. Specifically, Amgen asserted that 21 pre-approval batches of EPO manufactured by Hospira infringed various claims of these patents.
Hospira appealed.
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