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.
Adapt Pharma Operations Ltd., et al. v. Teva Pharmaceuticals USA, Inc., et al., No. 2020-2106 (Fed. Cir. (D.N.J.) Feb. 10, 2022). Opinion by Stoll, joined by Prost. Dissenting opinion by Newman.
Adapt accused Teva of infringing four patents directed to methods of treating opioid overdose by intranasal administration of a naloxone formulation, as well as devices for intranasal administration. Teva asserted invalidity based on two different combinations of prior art. After a two-week bench trial, the district court determined that the asserted claims would have been obvious in view of the prior art. Adapt appealed.
The Federal Circuit affirmed, concluding that the district court did not err in its obviousness determination. First, the court saw no error in the district court's finding of sufficient motivation to combine the prior art references. The Federal Circuit explained that there was "ample evidence" demonstrating "why a skilled artisan would have been motivated to combine the prior art references to arrive at the claimed invention." Although Teva's expert "did not expressly provide a reason to combine or modify the prior art," the Federal Circuit explained that "an obviousness case does not require expert testimony for every piece of the analysis." Also, there was "other documentary evidence" that supported the district court's finding.
Next, the Federal Circuit upheld the district court's finding that the prior art did not teach away from the claimed invention. The Federal Circuit clarified that "a reference does not teach away if a skilled artisan, upon reading the reference, would not be 'discouraged from following the path set out in the reference,' and would not be 'led in a direction divergent from the path that was taken by the applicant.'" Here, the district court had credited expert testimony demonstrating that a skilled artisan would not have been dissuaded from the claimed combination.
The Federal Circuit also ruled that the alleged objective indicia of nonobviousness were insufficient to rebut a finding of obviousness. The Federal Circuit rejected Adapt's argument that the district court erred by analyzing the objective indicia after discussing the prima facie case of obviousness. The Federal Circuit ruled that there was "nothing inherently wrong" with the district court's analysis. Substantively, the Federal Circuit held that there was no clear error in the district court's findings as to lack of unexpected results, copying, skepticism, and failure of others.
Judge Newman dissented, stating that "there was no teaching or suggestion in the prior art to make this combination of ingredients for use in the claimed method to achieve the beneficial results." Also, in her view, "the record contains no support for the district court's finding that a skilled artisan would have been motivated" to modify one of the references in view of two other references. According to Judge Newman, this was "a classical example of judicial hindsight, where the invention itself is the only guide to the selections from the prior art."
Junker v. Medical Components, Inc., et al., No. 2021-1649 (Fed. Cir. (E.D. Pa.) Feb. 10, 2022). Opinion by Stoll, joined by Dyk and Reyna.
The Federal Circuit reversed the district court's summary judgment that a design patent was not invalid. The appeal turned on whether a letter sent before the critical date qualified as a commercial offer for sale of the claimed design, or instead was merely a quotation signaling that the parties were engaged in preliminary negotiations. The Federal Circuit held that the letter was a commercial offer for sale, making the claim invalid under the on-sale bar of 35 U.S.C. § 102(b).
In reaching this conclusion, the Federal Circuit relied on the fact that the letter was addressed to a single recipient and stated that it was a response to a "request for quotation," rather than an unsolicited price quotation or an invitation to negotiate. The letter also included "a number of necessary terms typical for a commercial contract," including delivery conditions, a payment term, and purchase options.
The Federal Circuit was unpersuaded by the patent owner's contrary arguments. First, the court rejected the patent owner's argument that because the letter did not specify the size or quantity of devices purchased, it was not an offer that could be made into a binding contract by simple acceptance. The Federal Circuit held that even without those terms, the letter still included "multiple offers" that could have been accepted by specifying the size and quantity in reply. Second, the court was unmoved by the fact that the letter used the word "quote" three times. The Federal Circuit reasoned that "[w]hile the precise label used for a given communication is relevant, it is not controlling. Rather, the terms of the communication must be considered in their entirety to determine whether an offer was intended, or if it was merely an invitation for an offer or further negotiations." Here, "taken as a whole, the overall language of the letter" signaled an "intent to make a commitment ... rather than merely negotiate."
Intuitive Surgical, Inc. v. Ethicon LLC, No. 2020-1481 (Fed. Cir. (PTAB) Feb. 11, 2022). Opinion by O'Malley, joined by Clevenger and Stoll.
Intuitive filed three IPRs challenging the patentability of certain claims of a patent owned by Ethicon. All three IPRs challenged the patentability of claim 24 but relied on different prior art references in doing so. The Patent Trial and Appeal Board instituted two of the IPRs, and then instituted the third the next month.
In due course, the Board issued final written decisions in the first two IPRs, upholding the patentability of claim 24. At that time, the third IPR remained ongoing. Ethicon then filed a motion to terminate Intuitive as a party to the third IPR on the basis that Intuitive was estopped under 35 U.S.C. § 315(e)(1) by virtue of the decisions in the two companion IPRs. The Board agreed, concluding that § 315(e)(1) did not preclude estoppel from applying where simultaneous petitions were filed by the same petitioner on the same claim. Intuitive appealed.
The Federal Circuit upheld the Board's finding of estoppel. In doing so, the Federal Circuit reasoned that the "plain language of § 315(e)(1) is clear that estoppel is triggered when an IPR proceeding results in a final written decision." The court explained that "we cannot ignore this statutory language simply because the petitions were filed on the same day and were instituted within days of each other." The Federal Circuit also determined that this result furthered the legislative purpose of preventing a petitioner from obtaining "another bite at the apple" to invalidate claims after other IPRs had failed.
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