D Three Enterprises, LLC v. SunModo Corporation, Appeal Nos. 2017-1909, -1910 (Fed. Cir. May 21, 2018)

The Court affirmed a grant of summary judgment of invalidity in favor of patent infringement defendants, based on a lack of written description support for the patents’ claimed priority date, resulting in a finding of anticipation by the accused products.

The asserted patents were directed to roof mount sealing assemblies, with claims directed to such assemblies both with and without soft washers, which may be located above or below a flashing piece, and with various types of bracket assemblies.  The asserted claims all claimed priority to a 2009 application, which the district court found disclosed a “washerless” assembly only with a “W-pronged attachment bracket 1700” (“1700 bracket”), and disclosed a “washered” assembly only with the washer situated above the flashing.  As such, the district court found that claims directed to washerless assemblies with other kinds of brackets, and to “washered” assemblies with washers situated below the flashing or elsewhere, were not entitled to the 2009 application’s priority date, and were invalid as anticipated by the accused sealing assemblies and other prior art.

On appeal, plaintiff argued that there was a genuine issue of fact as to whether a POSITA would have understood the 2009 application to disclose washerless assemblies with various brackets, or assemblies with washers below the flashing. 

As to washerless assemblies, the Federal Circuit first addressed appellant’s argument that because appellees did not specifically argue that the “washerless” claims were generic as to the attachment bracket (and therefore unsupported), the district court should not have granted summary judgment on that fact without advance notice to appellant, as required by Fed. R. Civ. P. 56(f).  Applying Tenth Circuit law, the Court found that appellant was not prejudiced by the district court’s reliance on this theory, as appellees had filed a summary judgment motion on the breadth of the 2009 disclosure of washerless assemblies generally; appellant thus “clearly knew” that the scope of those disclosures would be an issue; and appellant had a full opportunity to present evidence to support its position.  The Court also noted that appellant, as patentee, bore the burden of establishing its claimed priority date, and was therefore on notice that it needed to present all evidence supporting that date in opposition to the motion for summary judgment.  The Court found its decision to be further supported by other comments made in the briefing and at the hearing on the motion.

On the merits of the “washerless assemblies” argument, the Court applied the rule that to support a claim to a genus (here, attachment brackets), the patentee must disclose “a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that [a POSITA] can visualize or recognize the members of the genus.”  The Court found that, drawing inferences in the non-movant’s favor, certain figures of the 2009 application did not depict or describe a washer, and therefore could be said to disclose one embodiment of a washerless assembly.  However, the Court found that this embodiment was disclosed only with a 1700 bracket, and that the 2009 application in no way contemplated the use of other types of attachment brackets with a washerless assembly.  The Court rejected appellant’s argument that the 2009 application did not prohibit other types of brackets, as adequate written description must not require the POSITA to “speculate as to the modifications that the inventor might have envisioned.”  The Court further found that boilerplate language in the 2009 specification as to “certain modifications, permutations, additions and sub-combinations” was also not sufficient disclosure, and rejected appellant’s “conclusory” expert testimony that other types of brackets were disclosed.

As to “washered” assemblies, the Court rejected appellant’s argument that “nowhere in the specification is there a disclaimer that would require the washer to be atop the flashing as opposed to below,” because “adequate written description does not ask what is permissible, rather, it asks what is disclosed.”  The Court found that the lack of any disclosed assembly with a  washer below the flashing, or any statement suggesting flexibility of the position of the washer, was fatal to appellant’s argument.  As such, claims directed to such assemblies lacked sufficient written description in the 2009 Application and were therefore invalid.

Opinion can be found here.

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XY, LLC v. Trans Ova Genetics, L.C., Appeal Nos. 2016-2054, -2136 (Fed. Cir. May 23, 2018)

In an appeal from a jury trial, Trans Ova appealed the district court’s antitrust, breach of contract, invalidity, and willfulness rulings and XY appealed the ongoing royalty rate adopted by the district court.  The Federal Circuit upheld the District Court’s grant of summary judgment in favor of XY, LLC on Trans Ova’s antitrust counterclaims.  It also upheld the jury’s findings of no invalidity, infringement and breach of contact.  The Court also vacated the ongoing royalty rate and remanded to the District Court to recalculate an ongoing royalty rate in accordance with the remainder of its opinion.

Opinion can be found here.

UCB, Inc. v. Accord Healthcare, Inc., Appeal Nos. 2016-2610, -2683, -2685, -2698, -2710, 2017-1001 (Fed. Cir. May 23, 2018)

In an appeal from a bench trial, the Federal Circuit affirmed the district court’s findings that patent claims related to anticonvulsant drugs for the treatment of epilepsy are not invalid.  The Court considered whether the asserted claims are invalid for obviousness-type double patenting, a judicially-created doctrine which “prohibits an inventor from obtaining a second patent for claims that are not patentably distinct from the claims of the first patent.”  The Federal Circuit determined that the differences between an earlier patent and the asserted claims are not “patentably distinct,” and the district court did not err by focusing its double patenting analysis on the claims’ differences, as well as the claims as a whole.  The appellate court also affirmed rejection of the defendant’s other invalidity arguments, including obviousness, anticipation, indefiniteness, and improper reissue.

Opinion can be found here.