Precedential Federal Circuit Opinions

  1. ATEN INTERNATIONAL CO., LTD. v. UNICLASS TECHNOLOGY CO., LTD. [OPINION - PRECEDENTIAL] (2018-1922, 8/6/19) (Moore, Wallach, Taranto) Moore, J.  Affirming denial of motion for attorney fees. “There is no per se rule that a case is exceptional if litigation costs exceed the potential damages.”

  2. ATEN INTERNATIONAL CO., LTD. v. UNICLASS TECHNOLOGY CO., LTD. [OPINION - PRECEDENTIAL] (2018-1606, 8/6/19) (Moore, Wallach, Taranto) Moore, J.  Affirming denial of JMOL as to noninfringement.  Defendants’ expert testified to the jury regarding claim construction, but patent owner failed to object and thus “waived any challenge to the jury’s finding of [noninfringement] based on this testimony.  It is beyond dispute that claim construction issues are to be decided by the court.  It is thus improper for an expert witness to testify before the jury regarding claim construction…  We do not fault the district court here for allowing claim construction to go to the jury.  It is the parties’ obligation to raise a dispute regarding the proper scope of claims to the court.”  Also reversing denial of JMOL as to validity.  “The district court erred in its denial of JMOL because the jury’s finding of anticipation was not supported by substantial evidence as to either reference.”  

  3. AJINOMOTO CO., INC. v. ITC [OPINION - PRECEDENTIAL] (2018-1590, 2018-1629, 8/6/19) (Dyk, Moore, Taranto) Taranto, J.  Affirming ITC finding of infringement and no invalidity of a patent related to genetically engineered E. coli bacteria.  The Court found that the “tangential relation” exception to the Festo bar applied and affirmed the Commission’s finding of infringement under the doctrine of equivalents.  “Here, we conclude, the Commission correctly concluded that [patent owner] had rebutted the Festo presumption because the amendment was tangential to the equivalent in question…  [The] reason for the narrowing amendment—limiting the amino-acid makeup of the proteins included in one of the alternatives covered by the claim—is unrelated to differences among the several DNA sequences that encode a given protein.”  The Court also rejected defendant’s written description challenge.  “Adequate written description does not require a perfect correspondence between the members of the genus and the asserted common structural feature; for a functionally defined genus like the one at issue here, we have spoken more modestly of a ‘correlation between structure and function.’”  Dyk, J. concurred in part and dissented in part and would have found that the Festo bar precluded infringement under the doctrine of equivalents.

  4. GENETIC VETERINARY SCIENCES v. LABOKLIN GMBH & CO. KG [OPINION - PRECEDENTIAL] (2018-2056, 8/9/19) (Wallach, Hughes, Stoll) Wallach, J.  Affirming JMOL that claims related to invitro methods for genotyping Labrador Retrievers are patent-ineligible under § 101.  “Here, the Asserted Claims are not directed to a new and useful method because they begin and end with the point of discovery of the [] mutation in the [] gene…  The parties do not dispute that the mutation itself is a naturally occurring phenomenon…  Conducting conventional detection in a laboratory does not transform the discovery of natural phenomenon into patent eligible subject matter.”  The Court also rejected defendants’ arguments regarding lack of jurisdiction and sovereign immunity.

  5. ELI LILLY AND COMPANY v. HOSPIRA, INC. [OPINION - PRECEDENTIAL] (2018-2126, 2018-2127, 2018-2128, 8/9/19) (Lourie, Moore, Taranto) Lourie, J.  Affirming finding of infringement under the doctrine of equivalents and finding that the “tangential relation” exception to the Festo bar applied in a Hatch-Waxman case.  “We therefore hold that [patent owner’s] amendment was merely tangential to pemetrexed ditromethamine because the prosecution history, in view of the [] patent itself, strongly indicates that the reason for the amendment was not to cede other, functional identical, pemetrexed salts…  [I]t is implausible that the reason for [patent owner’s] amendment was to surrender other pemetrexed salts.  Indeed, such a relinquishment would effectively dedicate the entirety of [patent owner’s] invention to the public and thereby render the [] patent worthless, and it would have been irrelevant for distinguishing the prior art.  Again, the prosecution history strongly indicates a less sweeping and more sensible reason for [patent owner’s] amendment:  to surrender antifolates other than pemetrexed.  Thus, we conclude on this prosecution record that [patent owner’s] amendment was merely tangential to pemetrexed ditromethamine.”  The Court also rejected defendants’ argument that the disclosure-dedication rule precluded infringement under the doctrine of equivalents and held that “the disclosure-dedication rule is inapplicable to this case because the [] patent does not disclose methods of treatment using pemetrexed ditromethamine, and, as a result, [patent owner] could not have dedicated such a method to the public.”  Also reversing finding of literal infringement.

  6. IRIDESCENT NETWORKS, INC. v. AT&T MOBILITY, LLC [OPINION - PRECEDENTIAL] (2018-1449, 8/12/19) (Prost, Reyna, Taranto) Reyna, J.  Affirming judgment of noninfringement.  “This appeal turns on whether the term ‘high quality of service connection’ is a term of degree that is limited to the minimum connection parameter requirements disclosed in Figure 3 of the [] patent.  We conclude that it is…  [W]here there is no clear ordinary and customary meaning of a coined term of degree, we may look to the prosecution history for guidance without having to first find a clear and unmistakable disavowal.”

  7. MTD PRODUCTS INC. v. IANCU [OPINION - PRECEDENTIAL] (2017-2292, 8/12/19) (Reyna, Taranto, Stoll) Stoll, J.  Vacating Board finding of obviousness in IPR, finding that “mechanical control assembly” is a means-plus-function term, and remanding.  “That the specification discloses a structure corresponding to an asserted means-plus-function claim term does not necessarily mean that the claim term is understood by persons of ordinary skill in the art to connote a specific structure or a class of structures…  Interpretation of an asserted means-plus-function limitation involves two steps.  First, we determine if the claim limitation is drafted in means-plus-function format.  As part of this step, we consider whether the claim limitation connotes ‘sufficiently definite structure’ to a person of ordinary skill in the art.  If we conclude that the limitation is in means-plus-function format, the second step requires us to review the specification to identify the structure that performs the claimed function(s) and thus ‘corresponds to’ the claimed means.  While related, these two inquiries are distinct.”

  8. SANOFI-AVENTIS U.S., LLC v. FRESENIUS KABI USA, LLC [OPINION - PRECEDENTIAL] (2018-1804, 2018-1808, 2018-1809, 8/14/19) (Lourie, Moore, Taranto) Lourie, J.  Vacating judgment that some claims were obvious because there was no case or controversy with respect to those claims.  Patent owner’s disclaimer of some claims “mooted any controversy over them.”  Also affirming judgment that other claims related to drug for treating prostate cancer were not invalid.

  9. NALPROPION PHARMACEUTICALS, v. ACTAVIS LABORATORIES FL, INC. [OPINION - PRECEDENTIAL] (2018-1221, 8/15/19) (Prost, Lourie, Wallach) Lourie, J.  Affirming decision that claim directed to drug for weight management was not invalid.  Defendant argued that the claim lacked adequate written description because the claimed “dissolution profile was achieved using [one apparatus], but the specification discloses data obtained using [a different apparatus]…  While as a general matter written description may not be satisfied by so-called equivalent disclosure, in this case, buttressed by the district court’s fact-finding, and where the so-called equivalence relates only to resultant dissolution parameters rather than operative claim steps, we affirm the district court’s conclusion.  Rigidity should yield to flexible, sensible interpretation.”  Also reversing decision that another claim was not obvious and finding claim obvious.  Prost, J. dissented in part and would have found claim invalid due to lack of written description.  

  10. MYMAIL, LTD. v. OOVOO, LLC [OPINION - PRECEDENTIAL] (2018-1758, 2018-1759, 8/16/19) (Lourie, O’Malley, Reyna) Reyna, J.  Vacating judgment on the pleadings and remanding.  “Patent eligibility may be determined on a Rule 12(c) motion, but only when there are no factual allegations that, if taken as true, prevent resolving the eligibility question as a matter of law…  We conclude that the district court erred by failing to address the parties’ claim construction dispute before concluding, on a Rule 12(c) motion, that the [] patents are directed to patent-ineligible subject matter under § 101.”  Lourie, J. dissented.

  11. ANZA TECHNOLOGY, INC. v. MUSHKIN, INC. [OPINION - PRECEDENTIAL] (2019-1045, 8/16/19) (Prost, Newman, Bryson) Bryson, J.  Reversing grant of motion to dismiss for some products, vacating dismissal order for other products and remanding.  The district court granted a motion to dismiss and ruled that patent owner would be permitted to file an amended complaint.  Patent owner subsequently filed an amended complaint after which the district court granted another motion to dismiss finding that the new claims did not relate back to the original complaint and were therefore time-barred.  The Court found that the district court’s application of the relation back doctrine was “overly restrictive.”  “At bottom, however, the question remains whether the general factual situation or the aggregate of operative facts underlying the original claim for relief gave notice to [defendant] of the nature of the allegations it was being called upon to answer.”