Federal Circuit Removes the Burden of Proving Patentability of Amended Claims During IPR Proceedings from Patentee

On October 4, 2017, in Aqua Products, Inc. v. Matal, No. 2015-1177 (Fed. Cir. Oct. 4, 2017) (en banc), a divided en banc court for the Federal Circuit issued a significant ruling that has the potential to make it far easier, and more common, for patent owners to amend their claims during inter partes review (“IPR”) proceedings. Specifically, the Federal Circuit held that the PTAB may not place on the patentee the burden of persuasion of proving patentability of amended claims submitted in an IPR, absent a USPTO rule directed to the issue. Continue reading

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 Rejects E.D. Texas Patent Venue Test

In its first decision addressing patent venue since the Supreme Court’s ruling in TC Heartland LLC, the Federal Circuit struck down the patent venue test established by Judge Gilstrap of the U.S. District Court for the Eastern District of Texas. The Federal Circuit concluded that the district court “misunderstood the scope and effect” of Federal Circuit precedent in determining that patent infringement defendant Cray Inc. has a “regular and established place of business” in the Eastern District of Texas under the patent venue statute 28 U.S.C. § 1400(b) and abused its discretion in refusing to transfer venue. In re Cray Inc., No. 2017-129 (Fed. Cir. Sept. 21, 2017). In doing so, the Federal Circuit provided highly-anticipated clarification of what constitutes a “regular and established place of business.” Continue reading

Foreign Patent Litigation Not Sufficient to Create Article III Case or Controversy

On September 15, 2017, the Federal Circuit issued a precedential decision concluding that two parties’ engagement in litigation in a foreign country is not sufficient to confer jurisdiction for declaratory judgment purposes in the United States.

In Allied Mineral Products, Inc. v. Osmi, Inc., et al., the Federal Circuit upheld the United States District Court for the Southern District of Florida’s ruling that a manufacturer’s declaratory judgment action seeking to preemptively invalidate a patent should be dismissed since the patent owner (“Stellar”) made no attempts to enforce its United States patent against the manufacturer (“Allied”). No. 2016-2641, slip op. at 2 (Fed. Cir. September 15, 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

Federal Circuit Rejects PTAB’s Articulation of Obviousness Rationale, Disregard for Evidence, and Burden Shifting

On August 25, 2017, a 2-1 Federal Circuit panel vacated and remanded the Patent Trial and Appeal Board’s affirmance of an examiner’s obviousness rejection of Stepan Company’s herbicide formulation patent claims, holding that the Board “failed to adequately articulate its reasoning, erroneously rejected relevant evidence of nonobviousness, and improperly shifted to Stepan the burden of proving patentability.” In re Stepan Co., No. 2016-1811, slip op. at 6 (Fed. Cir. Aug. 25, 2017). Continue reading

Federal Circuit Clarifies Boundaries of Discovery During Litigation Under the BPCIA

This week, the Federal Circuit issued a much-anticipated precedential decision in Amgen, Inc. v. Hospira, Inc., No. 2016-2179 (Fed. Cir. Aug. 10, 2017), rejecting Amgen’s efforts to compel discovery regarding aspects of Hospira’s biosimilar application relevant to patents Amgen chose not to identify during the “patent dance” established by the Biologics Price Competition and Innovation Act of 2009 (“BPCIA”). While much of the court’s discussion is dictum, the opinion nonetheless provides important guidance to reference product sponsors regarding what patents can and should be identified under 42 U.S.C. § 262(l)(3)(A). Continue reading