Precedential and Key Federal Circuit Opinions

1. ONESUBSEA IP UK LIMITED v. FMC TECHNOLOGIES, INC. [OPINION] (2022-1099, 5/23/2023) (Moore, Clevenger, and Dyk)

Clevenger, J. The Court affirmed a district court decision denying a defendant’s motion for attorneys’ fees under 35 U.S.C. § 285. Two days after briefing on the § 285 motion concluded, the district court announced that the case had been reassigned to a new judge, following the original judge’s retirement. The district court then denied the defendant’s § 285 motion. On appeal, the defendant argued that the newly assigned judge “should [have been] disqualified from exercising discretion in deciding [the defendant’s] § 285 motion” based on its assertion that the new judge had “only briefly ‘lived with the case.’” The Court rejected that argument, explaining that the defendant “overlook[ed] the substantial body of law in which appellate courts have consistently reviewed successor judges’ decisions on discretionary issues for abuse of discretion.” The Court then affirmed the district court’s denial of attorneys’ fees, holding “that [the defendant] ha[d] shown no error in the district court’s discretionary decision that [the plaintiffs] did not present an exceptional case to the district court.”

2. MEDTRONIC, INC. v. TELEFLEX INNOVATIONS S.A.R.L. [OPINION] (2021-2356, 2021-2358, 2021-2361, 2021-2363, 2021-2365, 5/24/2023) (Moore, Lourie, and Dyk)

Lourie, J. The Court affirmed a PTAB decision finding that a reference did not qualify as prior art to the challenged patents under pre-AIA 35 U.S.C. § 102(e). The Board had found that the intended purpose of the claimed inventions was “providing improved backup support for a guide catheter.” On appeal, the appellant “fault[ed] the Board for relying on extrinsic evidence to determine the intended purpose.” The Court found it was “appropriate to consider extrinsic evidence, particularly when it does not contradict the patents themselves” and found that the “claims do not mandate a purpose beyond performing the functions of a guide extension catheter.” The Court found the testing performed to be “sufficient to show that the claimed invention worked for its intended purpose as determined by the Board.”

Judge Dyk dissented on the ground that “[t]he evidence d[id] not corroborate that testing of the . . . prototypes before the critical date had shown them to work for their intended purpose.” Judge Dyk would have reversed the PTAB’s holding that the invention had actually been reduced to practice before the reference’s priority date.