Federal Circuit Review - September 2020

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Joining an IPR Triggers IPR Estoppel Only for Instituted Grounds

In Network-1 Technologies, Inc. v. Hewlett-Packard Company, Hewlett Packard Enterprise Company , Appeal No. 18-2338, the Federal Circuit held that a party joined to an IPR under 35 U.S.C. § 315(c) is not statutorily estopped from raising in district court any invalidity grounds other than those that were instituted in the IPR. 

Network-1 sued HP, Avaya, and other defendants alleging infringement of one patent. Avaya petitioned for inter partes review (“IPR”) of the asserted patent, and the Patent Trial and Appeal Board instituted IPR based on two grounds. After institution, HP filed its own petition for IPR of the asserted patent and also moved to join Avaya’s IPR. The Board found that HP’s petition was time barred under 35 U.S.C. § 315(b) because it had been filed more than one year after Network-1 served HP with its district-court complaint, but the Board granted HP’s motion to join Avaya’s IPR. Thereafter, the Board issued a final written decision in Avaya’s IPR upholding patentability of the asserted patent over the instituted grounds.

The district court case later proceeded to trial, where HP argued that Network-1’s asserted patent was rendered obvious both by public use of an allegedly prior-art system and by patents and printed publications that had not been included in the instituted IPR. Using a general verdict form, the jury found the asserted patent was invalid. But following the verdict, the district court granted a motion by Network-1 for judgment as a matter of law (“JMOL”) on invalidity. The district court reasoned that the proffered public use was not prior art and that HP was estopped under 35 U.S.C. § 315(e) from raising its obviousness challenges based on patents and printed publications because HP had joined Avaya’s IPR. Network-1 appealed regarding other issues and HP cross-appealed the portion of the district court’s invalidity decision regarding estoppel.

The Federal Circuit vacated the district court’s JMOL regarding invalidity and remanded for further proceedings. It stated that, although HP had been time barred under § 315(b) from bringing its own IPR petition, HP was permitted to join Avaya’s IPR as a party under § 315(c). The Federal Circuit noted that § 315(c) does not permit the joining party to raise new grounds of invalidity that had not been instituted. The court therefore reasoned that HP, as the joining party, could not have raised any additional invalidity challenges in Avaya’s IPR. The estoppel statute, § 315(e), applies only to grounds that a party “raised or reasonably could have raised” during the subject IPR. The Federal Circuit concluded that because HP could not have raised in Avaya’s IPR its obviousness challenges based on patents and printed publications that had not been instituted, HP was not estopped under § 315(e) from raising those obviousness challenges in district court.

An Old Method Using an Old Product from a New Source is Not New 

In Biogen Ma Inc. v. Emd Serono, Inc., Appeal No. 19-1133, the Federal Circuit held that a known method of administering a known product made by a new process is not novel.

Biogen sued Serono and other parties for contributory infringement of Biogen’s patent directed toward a method of treating viral conditions by administering a pharmaceutically effective amount of recombinant interferon-β produced by a non-human host.  Serono argued that the patent’s claims were anticipated by prior art teaching the administration of native interferon-β harvested from human cells to treat viral conditions.  The jury agreed with Serono, holding that all claims were invalid as anticipated.

Biogen moved for judgment as a matter of law, arguing that the claims were not anticipated.  The district court granted Biogen’s motion of no anticipation, reasoning that no reasonable jury could find anticipation because the prior art entailed administration of native interferon-β, which was undisputedly not recombinantly produced.  The district court declined to apply a product-by-process analysis to the method claim with a product-by-process limitation nested therein, concluding that no precedent required such an analysis.  In the alternative, the district court held that even by employing a product-by-process analysis, the structural differences between recombinant and native interferon-β precluded a finding of anticipation.

On appeal, the Federal Circuit held that there was sufficient evidence to support the jury’s finding and that it was improper for the district court to reject the product-by-process analysis and rely on structural differences between recombinant and native interferon-β.  The Federal Circuit reasoned that there was no logical reason to reject the novelty analysis of a product-by-process limitation based on its inclusion within a method of treatment.  Moreover, the Federal Circuit had previously applied the product-by-process analysis to a nested limitation in Purdue Pharma L.P. v. Epic Pharma, LLC, 811 F.3d 1345 (Fed. Cir. 2016).  Accordingly, the Federal Circuit explained that the source limitation of producing recombinant interferon-β by a non-human host cannot confer novelty unless the product itself is novel.  The Federal Circuit further explained that here, just as in Amgen Inc. v. Hoffman-La Roche Ltd., 580 F.3d 1340 (Fed. Cir. 2009), the recitation of a recombinant origin of a recited composition is not enough to avoid anticipation in view of the prior art non-recombinant product—native interferon-β.  The Federal Circuit provided that the rule from Amgen was a necessary outgrowth of the principle that an old product made by a new process is not novel and that logic compels extending that rule such that an old method of administering an old product made by a new process is not novel.  Lastly, the Federal Circuit explained that the structural differences between recombinant and native interferon-β were not distinguishing because such differences were absent from the claim limitations.  Accordingly, the Federal Circuit reversed the district court’s judgment as a matter of law of no anticipation and remanded with instructions to reinstate the jury verdict of anticipation.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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