Precedential and Key Federal Circuit Opinions

1.  VLSI TECHNOLOGY LLC, v. INTEL CORPORATION [OPINION] (2022-1906, 12/04/2023) (Lourie, Dyk, Taranto)

Taranto, J. The Court reversed the judgment of infringement on one patent with a $675 million jury award, affirmed the judgment of infringement on another patent but vacated the damages award of $1.5 billion with respect to that patent, and reversed the denial of a motion for leave to amend to add a license defense.

On infringement, for the first patent, the Court rejected claim construction arguments on claim terms where construction was not previously sought and also found that expert testimony and internal documents supported the jury’s verdict of infringement. On the second patent, the Court held that expert testimony which contained no meaningful explanation of why “the way” was substantially the same as what the claim prescribed was insufficient for infringement under the doctrine of equivalents. The claim required that certain function be performed by one component and that other functions be performed by another distinct component. Therefore, plaintiff had to prove, with particularized testimony and linking argument, that the elements of the defendant’s arrangement were substantially the same as the elements of the claimed arrangement.

On the damages, with respect to the first patent, the Court set aside the remaining $1.5 billion award because plaintiff’s experts used inputs for a regression analysis that were chosen by trying to match (only or in part) data not from use of infringing functionality. This was on its face significant and undermined the reliability of the results. The Court found that the proper relief was a remand for a new trial on the issue of damages.

On the license defense, the Court found that the district court abused its discretion in concluding that a motion seeking leave to amend its answer to add a license defense was unduly delayed. The Court found that based on the timing of actions alone, there was no reasonable basis for a determination of undue delay. And there was no basis on which prejudice alone could support denial of the motion—defendant requested severance of the defense from the rest of the case and a stay of its adjudication, so trial of the other issues was not to be delayed. Finally, with respect to futility, the case law did not definitively enough answer questions of potential significance to make the proposed license defense futile.

WilmerHale represented Appellee Intel Corporation.

2.  H. LUNDBECK A/S v. LUPIN LTD. [OPINION] (2022-1194, 12/07/2023) (Dyk, Prost, Hughes)

Dyk, J. The Court affirmed the district court’s decisions on the non-infringement and infringement. As an initial matter, the Court affirmed its prior cases establishing that “the use . . . claimed in a patent” under section 271(e)(2)(A) must be the use for which an applicant is seeking marketing approval. Thus, actions for infringement of method of use patents under section 271(e)(2)(A) are limited to patents that claim an indication of the drug for which indication the applicant is seeking approval. Because defendants were not seeking approval for an indication claimed by the patents, plaintiffs failed to establish that section 271(e)(2)(A) provides an independent basis of infringement.

The Court also affirmed the district court’s finding of no induced infringement, where plaintiffs’ inducement case relied solely on defendants’ proposed ANDA labels as the inducing conduct. The Court explained that a patentee cannot bar the sale of a drug for a use covered only by patents that will have expired simply by securing a new patent for an additional, narrower use. A label required to market the drug for a use covered by expired patents would not demonstrate the required specific intent to encourage infringement of new patents covering different uses. 

The Court also affirmed the district court’s finding of no contributory infringement, where there were substantial noninfringing uses of the drug. The Court explained that substantial noninfringing use in section 271(c) refers to uses that do not infringe the patent in question, not other patents. To consider patents other than those asserted against a defendant would impermissibly expand the exclusive grant Congress provided. And while section 271(c) not use the word “intent,” the statute still imposes a scienter requirement—that the accused infringer sells articles knowing the same to be especially made or especially adapted for use in an infringement of such patent.

The Court also affirmed the district court’s construction, finding that the district court did not discount evidence from the prosecution history, and the dependent claims were not inconsistent with the claim construction.