Post-Trial Decision on Ensnarement Defense to Doctrine of Equivalents Upheld in $200 Million Patent Dispute

There are two types of direct infringement: (1) literal infringement; and (2) infringement under the doctrine of equivalents. The former asks whether a product or process meets all of the requirements of a claim, exactly. The latter is a long-standing judicial doctrine that focuses on whether a given requirement of the claim, though not literally met, is nevertheless equivalent to that requirement. Recognizing the potential for the doctrine of equivalents to subvert the public notice function of a patent’s claims, the federal courts have developed a number of legal defenses that constrain its application. Prosecution history estoppel, which generally prevents a patentee from recapturing through the doctrine of equivalents claim scope that it surrendered during prosecution for purposes of patentability (subject to certain exceptions), tends to be the most common. But there are others, and they can be equally important when addressing a doctrine-of-equivalents theory of direct infringement. The ensnarement defense is one of those other defenses, and it holds that a doctrine of equivalents theory cannot be asserted if it will encompass or “ensnare” the prior art.

On September 29, 2017, in Jang v. Boston Scientific Corp., the Federal Circuit issued a relatively rare precedential decision addressing the application of the ensnarement defense. Nos. 2016-1275, 2016-1575, slip op. at 14-23 (Fed. Cir. Sept. 29, 2017). Continue reading

Federal Circuit Endorses District Court’s Prima Facie Approach to Obviousness on Summary Judgment

For several years now, the Federal Circuit has seemingly struggled to articulate the proper role of objective evidence of non-obviousness, often referred to as secondary considerations, in obviousness determinations. In accordance with the Supreme Court’s decision in Graham v. John Deere Co., 383 U.S. 1 (1966), the Federal Circuit requires that legal determinations of obviousness be based on factual inquiries regarding: (1) the scope and content of the prior art; (2) differences between the prior art and the claims at issue; (3) the level of ordinary skill in the pertinent art; and (4) any objective indicia of non-obviousness, such as commercial success, long-felt but unsolved need, failure of others, industry praise, unexpected results, and copying. On one hand, the Federal Circuit has appeared to reject a formal burden-shifting framework under the Graham factors, directing courts to consider all evidence relevant to obviousness or non-obviousness, and to consider it collectively, before reaching a conclusion of obviousness. See, e.g., In re Cyclobenzprine, 676 F.3d 1063, 1077-78 (Fed. Cir. 2012). On the other hand, the Federal Circuit also has held that, in particular cases, a patent owner’s objective evidence failed to overcome a prima facie case of obviousness based on the first three factors. See, e.g., Cubist Pharm., Inc. v. Hospira, Inc., 805 F.3d 1112, 1130 (Fed. Cir. 2015).

On September 7, 2017, in Intercontinental Great Brands LLC v. Kellogg North America Co., a 2-1 panel decision of the Federal Circuit again endorsed the latter approach, affirming a district court’s summary judgment of obviousness. Nos. 2015-2082, 2015-2084, majority slip op. at 1, 14-19 (Fed. Cir. Sept. 7, 2017). Continue reading

PTAB Obviousness Determination Vacated and Remanded for Flawed Analysis of Unexpected Results

When a patent claims an invention directed toward a combination of previously known elements, evidence that the combination produced unexpected results can often play a critical role in rebutting a challenge to the patent’s validity based on obviousness. On August 1, 2017, in Honeywell International Inc. v. Mexichem Amanco Holdings S.A. DE C.V., the Federal Circuit rejected a Patent Trial and Appeal Board obviousness determination that failed to properly consider such evidence in two merged inter partes reexaminations. No. 2016-1996, slip op. (Fed. Cir. Aug. 1, 2017). Continue reading

Join us for the Complimentary Webinar “SaaS Agreements – A View from the Customer’s Perspective”

Please join us on Tuesday, July 25 at 12:00 p.m. Central for the first session in Michael Best’s 2017 intellectual Property Webinar series “SaaS Agreements – A View from the Customer’s Perspective.”

By 2020, nearly 80 percent of all software will be provided as a service rather than as a copy with a license. Companies that are not already operating in the cloud, will be. In this complimentary webinar, attorneys Derek Stettner and Gregory Helding will discuss key points to consider when negotiating a Software as a Service (SaaS) contract, mainly from a customer’s perspective. Continue reading

Federal Circuit Reverses Eastern District of Texas Denial of Attorneys’ Fees Motion

A little over three years ago, the Supreme Court’s decisions in Octane Fitness, LLC v. Icon Health & Fitness, Inc., 134 S. Ct. 1749 (2014) and Highmark Inc. v. Allcare Health Mgmt. Sys., Inc., 134 S. Ct. 1744 (2014) drastically changed the Federal Circuit’s standards governing the award of attorneys’ fees under 35 U.S.C. § 285, making attorneys’ fees easier to recover in district court patent litigation and increasing deference toward fee decisions on appeal. In Highmark, the Supreme Court held that “an appellate court should review all aspects of a district court’s § 285 determination for abuse of discretion.” 134 S. Ct. at 1747. And in Octane, the Supreme Court explained that § 285 “imposes one and only one constraint” on that discretion—“[t]he power is reserved for ‘exceptional’ cases,” which the Supreme Court characterized as those standing out from others “with respect to the substantive strength of a party’s litigating position (considering both the governing law and the facts of the case) or the unreasonable manner in which the case was litigated.” 134 S. Ct. at 1755-56. Since that time, the Federal Circuit has had a number of occasions to address § 285 determinations by the district courts and generally recognized the deference owed to the district courts in deciding fee motions. However, it also has recognized that deference is not absolute. Continue reading

Federal Circuit Holds that the USPTO May Recover Attorneys’ Fees in Actions Under 35 U.S.C. § 145

On June 23, 2017, in Nantkwest, Inc. v. Matal, No. 2016-1794, slip op. (Fed. Cir. June 23, 2017) (precedential), the Federal Circuit held that the United States Patent and Trademark Office (USPTO) may recover the pro-rata share of the attorneys’ fees it incurs to defend an applicant’s appeal under 35 U.S.C. § 145.

Section 145 provides:

[a]n applicant dissatisfied with the decision of the Patent Trial and Appeal Board . . . may, unless appeal has been taken to the United States Court of Appeals for the Federal Circuit, have remedy by civil action against the Director in the United States District Court for the Eastern District of Virginia . . . . All the expenses of the proceedings shall be paid by the applicant. Continue reading

Federal Circuit Finds Inventor Testimony Inadequate to Establish A Common Inventive Entity Under 35 U.S.C. § 102(e)

On June 15, 2017, the Federal Circuit rejected a patent owner’s attempt to establish with uncorroborated and conclusory inventor testimony that an alleged prior art reference was not “by another” under pre-AIA 35 U.S.C. § 102(e).

In EmeraChem Holdings, LLC v. Volkswagon Group of Am., Inc., No. 2016-1984, slip op. (Fed. Cir. June 15, 2017) (precedential), the Federal Circuit largely affirmed an obviousness determination by the Patent Trial and Appeal Board in an inter partes review proceeding based on a prior art patent listing some, but not all, of the inventors listed on the challenged patent. Section 102(e) provides: “A person shall be entitled to a patent unless . . . the invention was described in patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent . . . .” 35 U.S.C. § 102(e) (2010) (emphasis added). “The statute’s reference to ‘by another’ means that an application issued to the same inventive entity cannot qualify as § 102(e) prior art.” EmeraChem, slip op. at 5. “However, the relevant question is not whether references list different inventors, but whether the portions of the reference relied on as prior art, and the subject matter of the claims in question, represent the work of a common inventive entity.” Id. at 5-6. (quotations omitted). Continue reading