PATENT CASE OF THE WEEK 

Polara Engineering Inc. v. Campbell Company, Appeal Nos. 2017-1974, -2033 (Fed. Cir. July 10, 2018)

In this wide-ranging opinion, the Court provided a rare and lengthy opinion on the public use bar under 35 U.S.C. § 102(b) and the experimental use exception.  The Court also reversed an award of enhanced damages.

The case involved a patent covering push buttons and signals for crosswalks.  Polara had installed a test device in its parking lot in 2002.  It also sought permission from Fullerton, California to install a test device at an intersection in the city that was close to its plant so it could monitor it daily.  That device was installed in 2002 and immediately failed.  After making repairs, Polara reinstalled it a few months later and left it operational for a couple of months.  It later installed a second device at a different intersection, which it left installed for about a year. Polara and the city of Fullerton did not enter into a confidentiality agreement, but Polara did not tell anyone at the city how it worked, and testimony indicated that it was not possible to know how it worked by looking at it.

The jury found these installations to be experimental use, and the district court denied Campbell’s post-trial motions to find to the contrary.  Although finding it to be a close case, the Federal Circuit affirmed.

The Federal Circuit noted the substantial similarities between this case and City of Elizabeth v. American Nicholson Pavement Co., 97 U.S. 126 (1877).  In both cases, the patent concerned public streets, and the patented item could only be adequately tested by exposing the prototype to actual use conditions for an extended period of time.  The testing in both cases was done at the patentee’s own expense.

Although Polara did not enter into a confidentiality agreement with the city of Fullerton, the Court found it sufficient that it maintained secrecy in other ways, such as by not telling the city how it worked, and that it installed and uninstalled the devices itself.  The jury held that the evidence was sufficient to support a jury finding of experimental use.

The Court also affirmed the jury’s finding of no invalidity over three pieces of prior art.  The dispute centered around the district court’s instruction that a particular claim term had its plain and ordinary meaning.  The Federal Circuit held that Campbell was judicially estopped from its argument, because it had requested that the district court offer “plain and ordinary meaning” as an alternate construction.  

With respect to enhanced damages, the district court found the case exceptional and awarded 2.5 times the actual damages found at trial.  The Federal Circuit remanded for the district court to articulate its reasoning, and expressed no opinion of the ultimate outcome.

Opinion can be found here.

ALSO THIS WEEK

Jazz Pharmaceuticals, Inc. v. Amneal Pharmaceuticals, LLC, Appeal Nos. 2017-1671, -1673, -1674, -1675, -1676, -1677, -2075 (Fed. Cir. July 13, 2018)

The Federal Circuit affirmed IPR decisions finding invalid as obvious claims of patents for aspects of a drug distribution and prescription tracking system.  The Court as an initial matter found that it had jurisdiction to hear the appeals from partially-instituted IPRs, in the absence of any request from the parties for relief based on the Supreme Court’s decision in SAS Inst. v. Iancu.  In upholding the obviousness determinations, the Court found that materials relating to an FDA advisory committee meeting, which had been announced in a 2001 Federal Register Notice containing a URL to access the materials, were publicly accessible and thus a printed publication under 35 U.S.C. § 102(b), and thus appropriately considered as prior art.  The Court also affirmed PTAB’s constructions of two disputed claim terms and upheld its obviousness analysis, rejecting appellant’s argument that finding a motivation to combine requires express subsidiary findings of a problem to be solved and a “finite universe of possible options.”

Opinion can be found here.

Endo Pharmaceuticals Solutions, Inc. v. Custopharm Inc., Appeal No. 2017-1719 (Fed. Cir. July 13, 2018)

In an appeal from a bench trial, the Federal Circuit affirmed the district court’s decision that two patents related to injectable testosterone replacement therapy were not proven invalid.  The Court rejected Custopharm’s arguments that the patents were invalid as obvious in view of the prior art. Finding no clear error, the Federal Circuit held that a skilled artisan would not have found the claims obvious, particularly where the evidence did not align with the “most prevalently applied guidelines in clinical practice.”

Opinion can be found here.

TF3 Limited v. TRE Milano, LLC, Appeal No. 2016-2285 (Fed. Cir. July 13, 2018)

In an appeal from an inter partes review, the Federal Circuit reversed the PTAB’s invalidity decision.  The patent concerned a hair styling device that automates the curling of hair.  The Court found that the PTAB relied on an incorrect claim construction for two claim terms, whereby the Board improperly enlarged the claims beyond the description in the specification.  Applying the proper construction, the Court determined that the patent is not invalid as anticipated.

Opinion can be found here.

Raytheon Company v. Indigo Systems Corporation, Appeal Nos. 2016-1945, -2050 (Fed. Cir. July 12, 2018)

In an appeal from a trade secrets case following a jury trial, the Federal Circuit affirmed the denial of JMOL and the denial of a motion for fees.  The case was originally brought for both trade secrets misappropriation and patent infringement.  Although the patent claims were dropped, the Federal Circuit kept jurisdiction over the case.  It held that substantial evidence supported the jury’s finding that the defendant and its employees, who used to work for Raytheon, did not misappropriate trade secrets in developing infrared detectors.  Regarding attorneys’ fees, Raytheon had dropped its assertion of trade secret misappropriation under Texas law and asserted it under California law.  Defendants argued that dropping its Texas misappropriation claims meant that Defendants were the prevailing party as to those claims.  The district court disagreed and the Federal Circuit affirmed.

Opinion can be found here.

Texas Advanced Optoelectronic Solutions, Inc. v. Renesas Electronics America, Inc., Appeal Nos. 2016-2121, -2208, -2235 (Fed. Cir. July 9, 2018)

The Court modified its precedential opinion issued May 1, 2018 following a petition for rehearing en banc.  Although the petition was denied, the panel modified its lengthy opinion to delete one paragraph of analysis that was unnecessary to support its decision in the case.

Read our write-up of the original decision here.

Opinion can be found here.