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.
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