Overview
In this series of monthly updates, we summarize decisions where the Federal Circuit reversed or vacated PTAB or trial court rulings, which can provide guidance on how to succeed on appeal.
Quick takeaways:
- A district court’s analysis of only certain facts on a transfer motion, to the exclusion of other more relevant facts, is an abuse of discretion warranting mandamus.
- Where expert testimony suggests that a pharmaceutical label that carves out an indication, together with promotional materials nevertheless encourage the excluded indication, it is for a jury to decide whether the evidence supports a claim of induced infringement.
- If the meaning of a claim term is clear from the intrinsic evidence, it is error to resort to extrinsic evidence, even though the art at the time of the invention teaches a special meaning for the term.
- Reading the claims in the context of the specification shows that “a vehicle position in the turn” of an adaptive cruise control system refers to the position of the vehicle along the curve of the turn, not the position of a vehicle that is turning.
- Where a skilled artisan would only have needed to make logical choices among limited design options to arrive at the claimed invention, the claimed invention would have been obvious, even if the combination is not expressly described.
- Authentication of a prior art reference can be established by comparing the reference with an authenticated specimen, and the Board has an obligation to make the comparison.
- For the presumption of nexus analysis, to determine whether a specific product is coextensive with the claimed invention of a design patent, the question is not whether unclaimed features are insignificant to a product’s ornamental design; instead, the question should be whether unclaimed features are insignificant, period. Additionally, to establish nexus-in-fact absent the presumption, the objective indicia need to derive from the unique characteristics that distinguish the claimed designs from the prior art reference.
- Motivation to combine does not require the identification of a preexisting device to show that the combination is necessary.
- Failure to state that the identified devices perform the claimed function warrants a reversal of the trial court’s denial of a motion for judgment as a matter of law of no infringement.
- The Federal Circuit’s ineligibility decision under §101 arising from a district court case moots the appeal of the overlapping claims decided under §102 or §103 from an IPR proceeding.
- Antibody-related genus claims defined by functional language are invalid for lack of written description when the claims cover a vast number of possibilities and the patent disclosed neither representative species nor common structural features of the claimed genus to identify which of the millions of billions of antibodies will bind to which targe
In re Hulu, LLC, Case No. 2021-142, 2021 WL 3278194 (Fed. Cir. Aug. 2, 2021)
In In re Hulu, the panel granted Hulu’s mandamus petition because the court below failed to properly analyze the public and private interest factors.
SITO Mobile sued Hulu in the Western District of Texas, accusing Hulu’s internet video streaming platform of infringing its patents on streaming combined with other features related to some third-party partners, such as revenue sharing and advertising. The case was assigned to Judge Alan Albright.
Hulu moved to transfer the case to the Central District of California, and the district court denied the motion. Hulu petitioned for a writ of mandamus. The Federal Circuit concluded that the district court erred in ruling that three of the factors relevant to transfer under Fifth Circuit precedent weighed against transfer. The panel therefore vacated the district court’s denial, with direction to grant Hulu’s motion.
The first error concerned the availability of compulsory process to secure attendance of witnesses, which favors transfer to venue where more witnesses would be subject to the court’s compulsory process to secure witness attendance. Hulu had identified several relevant third-party partners that would be relevant to infringement and several possible prior art witnesses, all of whom resided in California. But the district court discounted Hulu’s prior art witnesses, and faulted Hulu for failing to show that its partners would be unwilling to testify, and so found the factor weighed against transfer.
The panel faulted the district court for failing to conduct a comparative analysis of the districts in question as to this factor. At best, the court found two potential prior art witnesses would be equally subject to the compulsory process of both forums which, in itself, would make this factor neutral. However, the panel found that the district court failed to properly consider numerous other third-party witnesses that were only subject to the compulsory power of the transferee venue, which would weigh heavily in favor of transfer.
In particular, the panel held that the district court gave undue weight to the fact that two possible prior art witnesses would have been subject to compulsory process in the Western District of Texas, to the exclusion of evidence of important third-party witnesses who would not have been subject to the court’s compulsory process. The district court further abused its discretion by categorically discounting prior art witnesses as unlikely to testify. Finally, the panel held the district court erroneously applied the Sixth Circuit’s higher burden for forum non conveniens (rather than venue transfer), by requiring Hulu to show potential witnesses would have been unwilling to testify.
The second error concerned the “willing witness” factor, which favors transfer to a venue where a substantial number of witnesses reside. Even though nearly all of Hulu’s witnesses—and most of SITO’s—resided in the Central District of California, and the district court identified none that resided in the Western District of Texas, the district court held this factor weighed against transfer. The district court reasoned that Hulu could compel its own witnesses to testify. The panel rejected that reasoning (while noting it carried some weight in balancing the convenience of two forums) and further faulted the district court for entirely ignoring SITO’s witnesses that were located in the proposed transferee district.
The third error concerned court congestion. The statistics comparing the two forums indicated they were similarly congested, yet the district court relied on its own ability to set a trial date to find the factor weighed against transfer. The Federal Circuit had previously rejected the same reasoning in In re Apple, 979 F.3d 1332 (Fed. Cir. 2020).
After rebalancing these three factors, no factors weighed against transfer, and several weighing for it. The panel therefore granted Hulu’s mandamus petition.
GlaxoSmithKline LLC v. Teva Pharms. USA, Inc., 7 F.4th 1320 (Fed. Cir. 2021)
In GSK v. Teva, the majority reversed the district court’s grant of judgment as a matter of law, finding sufficient evidence for a jury to find inducement of infringement.
GlaxoSmithKline markets the medicinal product carvedilol under the brand name Coreg, with FDA approval for three indications. GSK holds a patent claiming a method of treatment related to one of those indications. GSK sued Teva, claiming it induced infringement of that patent. A jury found in GSK’s favor for two distinct time periods—one in which Teva used a partial label that excluded certain references to GSK’s claimed indication, and one in which Teva’s label completely matched GSK’s full label.
To prove induced infringement, GSK needed to prove that Teva had the specific intent to encourage infringement and that it actually induced direct infringement. DSU Med. Corp. v. JMS Co., 471 F.3d 1293, 1304, 1306 (Fed. Cir. 2006) (en banc in relevant part). The District Court set aside the jury’s verdict, holding that no reasonable jury could have determined (1) that Teva’s partial label had encouraged the infringing use of carvedilol, and (2) that Teva had proven that either the partial or the full label had actually caused direct infringement. GSK appealed.
Last year, Judge Moore, joined by Judge Newman, vacated the district court’s decision in part (but for Teva’s contingent cross appeal) and remanded. Then-Chief Judge Prost dissented. Teva petitioned for rehearing, with support from numerous amici. The panel vacated its prior opinion, heard a new round of arguments, and issued this new opinion (authored by now-Chief Judge Moore), reaching the same result. Judge Prost again dissented.
On rehearing, the majority held that the jury was entitled to credit expert testimony opining that certain aspects of Teva’s partial label taught the claimed method. Teva’s express carveout of the relevant indication, the majority held, raised a factual dispute, not a legal basis for judgment as a matter of law. The jury was also entitled to credit testimony that one of the remaining indications overlapped with the claimed indication. The jury further heard evidence that Teva’s marketing materials encouraged use of Teva’s generic as a substitute for GSK’s Coreg tablets, and was entitled to conclude that such statements encouraged the patented use, particularly with support from expert testimony. Reversal was appropriate, therefore, because resolution of whether these facts amounted to encouragement to perform the claimed method—that is, that the “carve out” was not sufficient—was a “quintessential fact question” for the jury, not a legal question.
In reaching this conclusion, the majority distinguished decisions rejecting infringement based on labels that encouraged only a part of the claimed method. Here, by contrast, the expert opined that “the partial label met each claim limitation and represented to doctors that the treatment” was suitable for the carved-out indication.
As to both the partial and full label periods, GSK also needed to show that the label in fact caused infringement of the claimed method. The jury heard the evidence of encouragement, which the majority found sufficient, and evidence that doctors in fact reviewed drug labels as well as marketing materials—circumstantial evidence of doctors’ prescription practices. Teva presented evidence that doctors did not read labels or make prescribing decisions based on the labels. The majority held it was for the jury to decide which view to credit.
Judge Prost would have held that Teva’s effort to carve out the claimed indication in reliance on GSK’s statement of which aspects of the label related to the patent at issue defeated a finding of specific intent to encourage infringement. Further, Judge Prost would have held that neither label in fact caused direct infringement.
Seabed Geosolutions (US) Inc. v. Magseis FF LLC, No. 20-1237 (Fed. Cir. Aug. 11, 2021)
Because the Board erred in construing claims, the Federal Circuit vacated and remanded the Board’s decision that the challenged claims were not anticipated or obvious.
The Board construed “geophone internally fixed within [the] housing” to require a non-gimbaled geophone. It found, based entirely on extrinsic evidence, that “fixed” had a special meaning in the relevant art at the time of the invention: “not gimbaled.”
The Federal Circuit disagreed with that construction. The Federal Circuit disagreed that portions of the specification described a non-gimbaled geophone. The Federal Circuit also found that Magseis’ argument and its expert testimony that the specification limited the claims to a non-gimbaled geophone were unpersuasive.
Claim construction begins with the intrinsic evidence. According to the panel, if the meaning of a claim term is clear from the intrinsic evidence, there is no reason to resort to extrinsic evidence. The grammatical position of the word “fixed” indicated that it specified the geophone’s relationship with the housing, not the type of geophone. The plain language that placed the word “fixed” between the adverb “internally” and the preposition “within,” the specification that described mounting the geophone inside the housing, and the prosecution history that used the word “fixed” in its ordinary sense of mounted or fastened supported interpreting “internally fixed within” to mean mounted or fastened inside. This conclusion was bolstered by the fact that the specification never mentioned gimbaled or non-gimbaled geophones, nor did it provide a reason to exclude gimbals. That silence did not support reading the claims to exclude gimbaled geophones.
Therefore, the Federal Circuit found that the Board erred in reaching a narrower interpretation, and vacated and remanded for further proceedings.
Carrum Tech., LLC v. Unified Patents, No. 20-2204 (Fed. Cir. Aug. 13, 2021)
Because the prior art reference did not teach a claim limitation when properly construed, the Federal Circuit reversed the Board’s decision that found certain claims to be unpatentable over the prior art reference.
In this appeal from an inter pares review, the challenged claims required “a controller . . . capable of determining when the vehicle is in a turn, said controller operative to reduce the vehicle speed according to a vehicle position in the turn.” The asserted prior art reference disclosed reducing vehicle speed to improve driving safety in certain scenarios, for example when the running state of the vehicle was unstable. It also detected when a vehicle was in a turn. Relying on that the prior art system detected when a vehicle was in a turn and that the prior art reference disclosed reducing vehicle speed, the Board found the prior art reference taught the claimed controller, and held the challenged claims unpatentable.
The Federal Circuit disagreed with the Board’s finding because proper claim construction required determining the vehicle position along the curve of a turn. The challenged patent related to an adaptive cruise control system that reduced vehicle speed in a turn according to the vehicle’s position within the turn, which addressed the issue of excessive lateral acceleration if the vehicle maintained the set speed in a turn. The specification uniformly discussed reducing vehicle speed based on the position of the vehicle along the curve of the turn. Therefore, the controller limitation required reducing vehicle speed according to the vehicle’s position along the curve of the turn.
The prior art reference, by contrast, taught reducing vehicle speed based on the difference between intended and estimated target positions, for example on a snowy or icy road surface when the vehicle was running in a direction opposite to a direction in which the steering wheel was operated. Such speed reduction was not based on where the vehicle was along the curve of a turn, as claimed.
The Federal Circuit also noted that construing “a vehicle position in the turn” as “the position of a vehicle along the curve of the turn” was the phrase’s ordinary and customary meaning, as understood by a skilled artisan when read in the context of the specification. Because the prior art reference did not teach the controller limitation that required reducing vehicle speed according to the vehicle’s position in the turn, as properly construed, the Federal Circuit found reversal to be appropriate.
C.R. Bard, Inc. v. Medline Indus., Inc., No. 2020-1900, 2021 WL 3574043 (Fed. Cir. Aug. 13, 2021)
The panel found that the Board erred by applying too rigid a standard for obviousness, where the claimed invention resulted from a skilled artisan’s logical choice among a limited set of design options.
Medline owns several patents directed to trays designed to hold catheterization tools. Medline’s inventions purported to reduce the risk that catheterization tools would become contaminated, such as while resting on a surface while a provider attaches a syringe, by providing a tray with a specific structure and arrangement of the various tools used in catheterization.
Bard challenged Medline’s patents via inter partes review. The Board rejected each of Bard’s challenges. Bard appealed.
The Federal Circuit concluded that the Board evaluated obviousness too rigidly, several times seeking express disclosures from the prior art where none was required. The prior art left a skilled artisan with limited choices regarding the limitations at issue, and the Board failed to consider the creativity a skilled artisan would have exercised in view of that prior art. For example, a skilled artisan would have had only two choices regarding how to arrange two syringes in compartments—the same compartment or different compartments. “When two equally viable options are available . . . without more, either one would seem to have been obvious.”
Because the Board had not evaluated secondary considerations of nonobviousness as to the claims Bard successfully appealed, the Federal Circuit remanded for further consideration, rather than holding the claims obvious.
Valve Corp. v. Ironburg Inventions Ltd, No. 20-1315 (Fed. Cir. Aug. 17, 2021)
The Federal Circuit reversed the Board’s decision that a reference was not qualified as prior art. The reference was a printout from the internet of an online review article with a download date of February 6, 2017, and a note of “Posted: 6 years ago.” The earliest priority date of the challenged patents was May 22, 2013. The Petitioner argued that the reference was prior art because it was a printout of the same online article that was cited and enclosed in the prosecution histories, and the article from the prosecution history was prior art. The Board, however, rejected the reference as not authenticated, and held that it had not been shown to be the same as the prior art document in the prosecution histories.
The Federal Circuit disagreed. Authentication can be established by comparing with an authenticated specimen, here, the article cited in the prosecution histories. As Federal Rules of Evidence 901(b)(3) contemplates and as the precedent requires, the Board had an obligation to make the comparison and erred by not doing so. In comparing the reference relied on during the IPR and the version of the article cited in the prosecution histories, the Federal Circuit found them to be nearly identical. The differences appeared to be due to how the copies were downloaded and printed and were not material.
The Federal Circuit next decided that overwhelming evidence showed that the article cited in the prosecution history was publicly accessible and was prior art. Thus, the reference, which was substantively the same, was also prior art.
The Federal Circuit thus reversed the Board’s determination that the reference was not prior art and remanded to the Board for consideration of the arguments based on the reference.
Campbell Soup Co. v. Gamon Plus, Inc., No. 2020-2344, 2021-1019 (Fed. Cir. Aug. 19, 2021)
The patents claimed ornamental design for a gravity feed dispenser display. Many features were drawn using broken lines, indicating that those features were not part of the claimed design. The claimed design was limited to the label area, cylindrical object, and stops. Although the prior art reference had the same overall visual appearance as the claimed designs, the Board found that evidence of obviousness in reviewing the prior art was outweighed by objective indicia of nonobviousness, and that there was a nexus between the objective indicia and the claimed designs, as is required. The Federal Circuit disagreed with the Board’s nexus finding.
First, the Federal Circuit decided that the presumption of nexus did not apply. Courts presume a nexus if the objective indicia evidence is tied to a specific product that is coextensive with the claimed invention. The Board found coextensiveness and reasoned that the unclaimed portions of the products that embodied the design were not prominent ornamental features and were therefore insignificant to the ornamental design. The Federal Circuit disagreed with that finding. The question was not whether unclaimed features were insignificant to a product’s ornamental design. Instead, the question should be “whether unclaimed features are insignificant, period.” The claimed design covered only a small portion of the product. Uncovered structures, such as the rails and side portions of the products, were significant because they facilitated the loading and dispensing of products. Because the product undisputedly included significant unclaimed functional elements, it was not coextensive with the claimed designs.
Second, to establish nexus-in-fact absent the presumption, secondary indicia such as commercial success and praise of the product need to derive from the unique characteristics that distinguished the claimed designs from the prior art reference. The evidence presented merely tied the commercial success and the praise to aspects of the label area that were already present in the prior art. The record did not support the inventor’s self-serving testimony that the commercial success was due to the size of the label area. And the size of the label was not even claimed. As in the utility patent context, objective indicia must be linked to a design patent claim’s unique characteristics. Accordingly, given the absence of evidence tying any commercial success or praise to the claimed unique characteristics of the product, the required nexus did not exist. Additionally, the alleged copying of the unique characteristics of the claimed designs alone could not overcome the strong evidence of obviousness.
Therefore, the Federal Circuit found the claimed designs to be obvious, reversing the Board’s decision.
Ethicon LLC v. Intuitive Surgical, Inc., 2020-1528, 2020-1546 (Fed. Cir. Aug. 23, 2021)
The challenged patent relates to a tool mounting device for coupling a surgical tool to a robotic system. It claimed five control motions, including (1) articulating the end effector about a first articulation axis; (2) articulating the end effector about a second articulation axis; (3) rotating the end effector; (4) closing the anvil; and (5) firing the cutting instrument. The main prior art reference disclosed control of four motions. The Board recognized that the combination of the primary prior art (disclosing articulating and rotating) and the secondary prior art (disclosing rotating, articulating, opening and closing, and cutting and stapling) disclosed more than four functions. However, it found no motivation to do so for the reason that the Petitioner failed to identify a surgical instrument known in the at the time of the invention that performed more than four functions, and thus, in the Board’s view, there would be no need to obtain a functionality for which there was no use.
The Federal Circuit disagreed with the Board's analysis and conclusion. First of all, the Federal Circuit found that one prior art reference disclosed a surgical device that could perform at least five different functions. Even without that reference, the combination of two other references disclosed more than four functions, showing that a surgical device with more than four functions was at least possible. The Board went too far by requiring Intuitive to specifically identify a preexisting surgical device with more than four functions. Additionally, the Board also failed to address other undisputed evidence regarding motivations to combine, particularly expert testimony that the combination provided certain advantages.
Therefore, the Federal Circuit determined that the Board's finding of no motivation to combine was not supported by substantial evidence, and reversed the Board’s decision as to obviousness, since the combined prior art disclosed all of the claim limitations.
CommScope Techs. LLC v. Dali Wireless Inc., No. 2020-1817, 2021 WL 3731854 (Fed. Cir. Aug. 24, 2021)
CommScope sued Dali alleging that Dali’s antenna systems infringed five patents relating to telecommunications technology. Dali counterclaimed, alleging that CommScope infringed two of Dali’s patents, including U.S. Patent No. 9,031,521 ("the ’521 Patent"). The jury rendered a verdict of infringement, no invalidity, and damages for both CommScope and Dali. The district court denied both parties’ motions for JMOL. CommScope appealed and Dali cross-appealed. The Federal Circuit reversed the district court’s denial of JMOL of no infringement as to the '521 patent and affirmed the remaining issues.
The claim limitation at the center of the parties' infringement dispute was "switching a controller off to disconnect signal representative of the output of the power amplifier." The district court construed this term to mean "switching a controller to a nonoperating state to disconnect signal representative of the output of the power amplifier," which the Federal Circuit affirmed.
Dali’s expert pointed to the switch or the controller in the accused product as the claimed controller, but the expert never stated that either the switch or the controller was rendered nonoperating. Not only was there a lack of evidence to show that the accused product met the proper construction of the claims, unrebutted evidence showed that both the switch and the controller were continuously operating in the accused product. Additionally, Dali’s infringement argument could not stand in light of Dali's arguments of no anticipation by a prior art reference that operated the same way as the accused product. "A patent may not, like a nose of wax, be twisted one way to avoid anticipation and another to find infringement."
Accordingly, substantial evidence did not support the jury's finding that the accused product met the limitation "switching a controller off" as properly construed. The Federal Circuit therefore reversed the district court's denial of CommScope’s motion for JMOL of no infringement of the '521 patent.
Apple Inc. v. Universal Secure Registry LLC, No. 2020-1223, 2020-1243 (Fed. Cir. Aug. 26, 2021)
This appeal arose from an inter partes review proceeding, where the Board found that among the challenged claims, certain claims were not unpatentable, and certain claims were unpatenable. The same claims were also at issue in a parallel district court proceeding, and the Federal Circuit in a concomitantly issued opinion affirmed that those same claims were ineligible under §101. In light of that decision, the appeal of the overlapping claims from the IPR proceeding was moot. Thus, the Federal Circuit vacated the Board’s final written decision and remanded for the Board to dismiss the petition as to the overlapping claims.
In the underlying IPR proceeding, the Board found proposed substitute claim 50 eligible and granted Patent Owner’s Motion to Amend with respect to that claim. The Federal Circuit compared substitute claim 50 with claim 10 that it found to be ineligible in the parallel district court proceeding. While claim 50 included more specific limitations not found in claim 10, the analysis under Alice steps remained the same. The Federal Circuit therefore reversed the Board’s eligibility determination as to substitute claim 50.
Juno Therapeutics, Inc. v. Kite Pharma, Inc., No. 20-1758 (Fed. Cir. Aug. 26, 2021)
The Federal Circuit ruled that the asserted patent, Patent No. 7,446,190 ("the ’190 Patent"), was invalid for lacking written description. As a consequence, this also vacated a $1.2 billion judgment.
The '190 Patent related to anticancer therapy, wherein a chimeric targeted receptor (CAR) directed to T cells was used to stimulate a patient’s immune response against tumor cells. The Chimeric T cell receptor comprised a binding element that specifically interacted with a selected target. Claims 3, 5, 9, and 11 were at issue. Claims 3 and 9 broadly covered any single-chain antibody variable Fragment ("scFv") as the binding element. Claims 5 and 11 were limited to scFvs that bound CD19, a specific target. These were genus claims defined by the binding function of the scFvs.
Generally, a genus can be sufficiently disclosed by either a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can visualize or recognize the members of the genus.
Claims 3 and 9 broadly claimed all scFvs that bound to any target. But the written description of the ’190 patent disclosed only two scFv examples binding to two specific targets. They were not representative of all scFvs, because such disclosure did not provide information sufficient to teach a skilled artisan how to identify the species of scFvs capable of binding to the limitless number of targets as the claims required. Juno primarily relied on its expert testimony that the two exemplary scFvs were representative because scFvs all bound to the antigen. The Federal Circuit found this to be far too general. The mere fact that scFvs in general bind – without more, such as the characteristics of the exemplary scFvs that allow them to bind to particular targets or nucleotide sequences - was insufficient to demonstrate that the inventors were in possession of the claimed invention. The specification provided no means of distinguishing which scFvs would bind to which targets.
In addition to lacking representative species, the '190 patent did not disclose structural features common to the members of the genus to support that the inventors possessed the claimed invention. Juno’s expert testified that scFvs generally had a common structure of two regions connected with a linker. But the Federal Circuit found that insufficient. The same general common structure having a different amino acid sequence would recognize a different antigen. The ’190 patent failed to disclose a way to distinguish those scFvs capable of binding from scFvs incapable of binding those targets.
Even the narrowest claims at issue, claims 5 and 11, limited to scFvs binding to CD 19 (a specific target), likewise found no written description support in the patent. There were four or five CD19-specific scFvs arguably known in the art at the priority date of the ’190 Patent, but the universe of CD19-specific scFvs was in the range of millions to billions. Without more guidance, in a vast field of possible CD19-specific scFvs with so few of them known, no reasonable jury could find the inventors satisfied the written description requirement.
In reaching the conclusion that the claims at issue lacked written description, the Federal Circuit also relied on its previous decisions, including Idenix Pharms. LLC v. Gilead Scis. Inc., 941 F.3d 1149 (Fed. Cir. 2019) and Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010), where similar claims were found invalid for failure to meet the written description requirement.
