ARTICLE
14 January 2025

Fourth Quarter 2024 Federal Circuit Law Update

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Baker Botts LLP

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"While much of our case law on inherency in the chemical and biological fields discusses composition claims, we see no reason that these same guideposts do not apply equally to claims for processes...
United States Intellectual Property

I. Patentability Requirements

A. Prior Art Invalidity

1. Reference Disclosure

a. Inherency

"While much of our case law on inherency in the chemical and biological fields discusses composition claims, we see no reason that these same guideposts do not apply equally to claims for processes of making those compositions." Cytiva BioProcess R&D AB v. JSR Corp., n.16, 2023-2074, 12/4/24.

2. Anticipation (§ 102)

a. On Sale Bar

i. Commercial Offer for Sale

"Quotation" found [by Judge Dyk] to be a commercial offer of sale as a matter of law, contrary to the district court's summary judgment for patentee and without mention of the standard of review for reversing a denial of summary judgment. "[T]he letter was sent specifically to potential-purchaser Complete and signed by Crown's representative, Adrian Long." "Moreover, the letter to Complete was sufficiently definite as to the terms of the offer for sale to constitute a commercial offer for sale." "The district court also concluded that Crown's express reservation that "[q]uotations . . . are subject to [Crown's] written acceptance of your order," precluded Complete from creating a binding contract through acceptance. Our case law, however, counsels against concluding that a term of written acceptance is determinative." Crown Pack'g Tech., Inc. v. Belvac Production Machinery, Inc., 2022-2299, 12/10/24 (citation omitted).

ii. In This Country

"Our precedent demonstrates that an offer directed to a United States entity at its United States place of business is an offer "made in this country" as required for pre-AIA § 102(b)." Crown Pack'g Tech., Inc. v. Belvac Production Machinery, Inc., 2022-2299, 12/10/24.

3. Obviousness (§ 103)

a. Differences Between the Prior Art and the Claims at Issue

i. Undisclosed Elements and Different Claims

"Because the composition and process claims have no material differences, and because the parties relied on the same arguments before the Board for each of these claims, we see no basis for treating the claims differently here and for finding one set of claims unpatentable and the other not unpatentable." Cytiva BioProcess R&D AB v. JSR Corp., 2023-2074, 12/4/24.

b. Reasonable Expectation of Success

i. Inherent Properties

"When claims require prior knowledge of the inherent property—e.g., for motivation to combine—then a petitioner would still generally need to demonstrate a reasonable expectation of success." "But that situation is different from simply claiming an inherent property of an otherwise obvious composition or process—i.e., one obvious without regard to the property at issue." Cytiva BioProcess R&D AB v. JSR Corp., 2023-2074, 12/4/24.

c. Secondary Indicia of Nonobviousness

i. Commercial Success

"Bald assertions of commercial success unconnected to the patented features of the claimed invention are not given patentable weight." Purdue Pharma L.P. v. Accord Healthcare, Inc., 2023-1953, 12/30/24 (nonprecedential).

ii. Unexpected Results

"It is also not unusual that the reasonable expectation-of-success and unexpected-results inquiries may contain similar underlying factual inquiries." Cytiva BioProcess R&D AB v. JSR Corp., 2023-2074, 12/4/24.

d. Subject Matter as a Whole/Routine Additions

"As a practical matter, a court must normally address one issue at a time, and in patent cases, it is the norm for both parties and courts to discuss disputed claim limitations sequentially." "Therefore, we disagree that the court erred by failing to address the claims as a whole." Purdue Pharma L.P. v. Accord Healthcare, Inc., 2023-1953, 12/30/24 (nonprecedential).

e. Chemical Compounds

i. Lead Compound Analysis

"A lead-compound analysis is not required where the prior-art references expressly suggest the proposed modification." Cytiva BioProcess R&D AB v. JSR Corp., 2023-2074, 12/4/24.

II. Other Defenses

A. License/Covenant Not to Sue

"As patent infringement is the practice of a patent claim without consent of the patentee, the existence of a license, express or implied, provides an affirmative defense to infringement." AlexSam, Inc. v. Aetna Inc., 2022-2036, 10/8/24.

III. Literal Infringement

"In short, the claims identify the invention. Infringement is a distinct concept with a different statutory basis. Inventors claim what they invent, but infringement occurs when others make, use, or sell the invention without authorization." Teva Branded Pharm. Prods. R&D, Inc. v. Amneal Pharms. of N.Y., LLC, 2024-1936, 12/20/24.

A. Summary Judgment/JMOL

1. Despite Marketing/Promotion Materials

Noninfringement SJ affirmed because claims required full compliance with a limitation and "the cited exhibits and testimony cannot be reasonably understood to establish that generalization." "Others are nontechnical high-level promotions about the Timeline feature as a whole, not reasonably read as either comprehensive or focused on the specific issue of Timeline Aggregator and Timeline DB." Mirror Worlds Techs., LLC v. Facebook, Inc., 2022-1600, 12/4/24.

2. Despite Expert Testimony

Affirmed summary judgment where plaintiff's expert "refers to certain Facebook source code, which is not itself presented to us, and the most specific assertion [plaintiff] makes about the code to support its "glance view" argument is that the code is used "to create a contextual-dialog component containing a member-bio-story component and displays it on hover." [That expert] testimony does not supply a reasonable basis for finding that the accused systems display an "abbreviated version" of the underlying document indicative of its content, as the claim requires." Mirror Worlds Techs., LLC v. Facebook, Inc., 2022- 1600, 12/4/24 (emphasis in original)(citation omitted).

B. Indirect Infringement

1. Pleading

"[W]e do not require patentees to plead that an alleged inducer of infringement had knowledge of the specific patent claims a patentee later asserts in litigation." AlexSam, Inc. v. Aetna Inc., 2022-2036, 10/8/24.

C. Infringing by Using the Claimed Invention

"Like the customers in Centillion, NCR's merchants put the system into service because they initiate at the POS terminal a demand for service (for example, building or editing a POS) and benefit from the back end providing that service." "That NCR occasionally provides the POS hardware used by the customer-merchants does not change our view." CloudofChange, LLC v. NCR Corp., 2023-1111, 12/18/24.

D. Capability

"Provisur proffered no evidence that Weber's customers could readily activate the alleged advance-to-fill functionality. Dr. Vorst testified about configuring the SmartLoader through the HMI, but he had access to screens that Weber's customers do not." "Dr. Vorst provided no evidence Weber's SmartLoader ever was configured to advance-to-fill and no evidence that he configured it to advance-to-fill. He admitted as much . . . . Dr. Vorst's testimony is therefore not substantial evidence demonstrating [the accused product] infringes [the asserted] claim." Provisur Techs., Inc. v. Weber, Inc., 2023-1048, 10/2/24 (emphasis added).

E. Joint Infringement/Divided Infringement

1. Direction or Control

"NCR does not direct or control its merchants to subscribe to the NCR Silver system, download the NCR Silver app on their POS terminals, or put the NCR Silver system into use by initiating action at the POS terminals to cause the NCR Silver software to modify its POS terminals. NCR's merchants take these actions of their own accord. That NCR's Merchant Agreement makes merchants responsible for obtaining and maintaining Internet access does not equate to contractually obligating merchants put the entire accused NCR Silver system into use." CloudofChange, LLC v. NCR Corp., 2023-1111, 12/18/24.

"[I]n the context of this case, directing the merchants to perform one element of a system claim is not the proper test for analyzing vicarious liability for use of a system claim." CloudofChange, LLC v. NCR Corp., 2023-1111, 12/18/24.

IV. DOE Infringement

A. Substantial Equivalence

1. Summary Judgment/JMOL

a. Lack of Particularized Testimony and Linking Argument

"Dr. Selker's testimony never identified a particular element or elements in the My Account App as being equivalent to the "single action" limitation." "Dr. Selker's generalized reference to "several button presses" fails to identify what specific elements in the My Account App are allegedly equivalent to the clamed "single action" limitation." "By itself, the failure to explicitly identify the alleged equivalent is fatal to NexStep's doctrine of equivalents theory" NexStep, Inc. v. Comcast Cable Commc'ns, LLC, 2022- 1815, 10/24/24.

"NexStep's final argument is that we should adopt a novel exception to the requirement of particularized testimony and linking argument. According to NexStep, for certain "easily understandable" technologies, a patentee simply need not offer particularized testimony and linking argument from a skilled artisan. We reject this argument because it is contrary to both our precedent and the policies underlying why we require particularized testimony and linking argument." "Simply put, our precedent requires particularized testimony and linking argument, regardless of the complexity or the simplicity of the underlying technology." NexStep, Inc. v. Comcast Cable Commc'ns, LLC, 2022-1815, 10/24/24.

2. Insufficient Evidence of Equivalence

"That leaves only [Appellant]'s evidence of bioequivalence, which at most showed substantially the same result. This is insufficient to meet either the "function, way, result" test or the "insubstantial differences" test." Galderma Lab'ys L.P. v. Lupin Inc., 2024- 1664, 12/6/24.

3. Insubstantial Differences Test

"Dr. Selker's testimony neither particularly identified what specific elements of the accused products are allegedly equivalent to the "single action" limitation nor offered the required testimony explaining why those elements were only insubstantially different in light of the claim language reciting what is being avoided by the "single action."" "Either ofthese shortcomings is sufficient to foreclose a verdict of infringement under the doctrine of equivalents." NexStep, Inc. v. Comcast Cable Commc'ns, LLC, 2022-1815, 10/24/24.

V. Relief

A. Attorneys' fees

1. Sanctions Under Inherent Powers

"We see no reason to treat sanctions under the court's inherent power differently from sanctions under Rule 11 or expert fees under the court's inherent power. We hold the district court can impose sanctions under its inherent power in addition to awarding attorney fees and costs under § 285." PS Prods., Inc. v. Panther Trading Co., 2023-1665, 12/6/24.

"Given there were no other mechanisms to sanction PSP's bad faith conduct except the court's inherent power, the district court acted within its discretion by relying on its inherent power to sanction conduct that would typically fall under Rule 11." PS Prods., Inc. v. Panther Trading Co., 2023-1665, 12/6/24.

a. Consideration of Multiple Cases

"While the district court did not individually analyze each of the twenty-five lawsuits, it was reasonable given these facts for the district court to infer PSP's many other lawsuits mirroring this suit's procedural posture were similarly meritless. Under these circumstances, the district court did not clearly err when it inferred bad faith from PSP's history of filing meritless lawsuits." PS Prods., Inc. v. Panther Trading Co., 2023-1665, 12/6/24.

2. Amount

Inadequate analysis of amount being reasonable where "the district court provided no explanation as to why it held Salesforce's attorneys' fees to be reasonable, even though the narratives for all of Salesforce's time entries were redacted." Applications in Internet Time, LLC v. Sallesforce.com, Inc., 2024-1133, 10/10/24 (citation omitted) (nonprecedential).

B. Entire Market Value Rule/Convoyed Sales

1. Apportionment

a. Inadequate Evidence

"Dr. Vorst testified that the patented features drive the demand or substantially create the value of Weber's accused products. But Dr. Vorst's testimony was conclusory and did not provide any evidence, e.g., evidence from customers, to show the patented features drove the demand for the entire slicing line." "His testimony does not explain why these "conventional" features do not provide any value or drive customer demand." Provisur Techs., Inc. v. Weber, Inc., 2023-1048, 10/2/24 (citation omitted).

C. Willfulness

1. Opinion of Counsel

"Patentees are prohibited from using the accused infringer's failure to obtain the advice of counsel as an element of proof that the accused infringer willfully infringed." "Provisur cannot circumvent § 298 by substituting advice from a third party for advice of counsel." Provisur Techs., Inc. v. Weber, Inc., 2023-1048, 10/2/24.

2. JMOL/Summary Judgment

"At most, the patent matrix demonstrates Weber's knowledge of the asserted patents and their relevance to Weber's business in general." "Provisur's evidence as a matter of law is not enough to establish deliberate or intentional infringement." Provisur Techs., Inc. v. Weber, Inc., 2023-1048, 10/2/24.

D. Injunction

1. ANDA-specific injunctions

a. Orange Book Modifications

For purposes of the orange book statute, "a patent claims the drug when it particularly points out and distinctly claims the drug as the invention." "[T]o qualify for listing, a patent must claim at least what made the product approvable as a drug in the first place— its active ingredient." Teva Branded Pharm. Prods. R&D, Inc. v. Amneal Pharms. of N.Y., LLC, 2024-1936, 12/20/24.

"When looking at how the FDA approves the many different medical products it regulates, it is apparent that a product regulatable and approvable as a drug contains an active ingredient." Teva Branded Pharm. Prods. R&D, Inc. v. Amneal Pharms. of N.Y., LLC, 2024-1936, 12/20/24 (emphasis in original).

"[W]e conclude that a combination product being approved with an NDA does not necessarily make every part of the NDA a drug." Teva Branded Pharm. Prods. R&D, Inc. v. Amneal Pharms. of N.Y., LLC, 2024-1936, 12/20/24.

2. Injunctions Against Other Proceedings

a. Injunctions Against Pursuing Foreign Litigation

"Courts that have analyzed foreign-antisuit-injunction requests have used—at least in substance—the general framework as articulated in the Ninth Circuit's Microsoft opinion." Telefonaktiebolaget LM Ericsson v. Lenovo (United States), Inc., 2024-1515, 10/24/24.

CAFC vacated denial of injunction based on agreeing that "Ericsson's FRAND commitment precludes Ericsson from pursuing SEP-based injunctive relief unless it has first complied with the commitment's obligation to negotiate in good faith over a license to those SEPs. Therefore, the argument goes, whether Ericsson has complied with that obligation—an issue before the district court—is dispositive of Ericsson's ability to pursue its Colombian and Brazilian injunctions." Telefonaktiebolaget LM Ericsson v. Lenovo (United States), Inc., 2024-1515, 10/24/24.

"In sum, we conclude that the "dispositive" requirement of the foreign-antisuit-injunction framework is met here. That is because (1) the ETSI FRAND commitment precludes Ericsson from pursuing SEP-based injunctive relief unless it has first complied with the commitment's obligation to negotiate in good faith over a license to those SEPs; and (2) whether Ericsson has complied with that obligation is an issue before the district court." Telefonaktiebolaget LM Ericsson v. Lenovo (United States), Inc., 2024-1515, 10/24/24.

E. False Marking (35 USC § 292 and Lanham Act § 43(a))

"We hold that a cause of action arises from Section 43(a)(1)(B) where a party falsely claims that it possesses a patent on a product feature and advertises that product feature in a manner that causes consumers to be misled about the nature, characteristics, or qualities of its product." Crocs, Inc. v. Effervescent, Inc., 2022-2160, 10/3/24.

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