Patent Case Summaries - November 2020 #2

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A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.


Ferring, B.V., et al. v. Allergan, Inc., et al., No. 2020-1098 (Fed. Cir. (S.D.N.Y.) Nov. 10, 2020). Opinion by O’Malley, joined by Reyna and Chen.

The Federal Circuit vacated and remanded a district court’s determination on summary judgment that Ferring was equitably estopped from seeking to correct inventorship of certain patents under 35 U.S.C. § 256.

In the district court, Ferring alleged that its scientists should be substituted as the sole inventors or at least added as co-inventors alongside inventor Fein. Allergan moved for summary judgment that Ferring’s § 256 claims were barred by equitable estoppel. The district court granted the motion, deciding as a threshold matter that “conduct occurring before the issuance of the Fein patents could give rise to equitable estoppel of Ferring’s claims for correction of inventorship.” Pointing to written correspondence between Ferring and Fein’s attorney before the patents issued, the district court determined that “Ferring’s present application to correct inventorship contradicts its earlier position” and gave rise to equitable estoppel.

On appeal, the Federal Circuit first “decline[d] to adopt a bright-line rule that equitable estoppel cannot apply whenever the scope of the issued patent is different than what the parties discussed in communications leading to the allegedly misleading conduct.” “Thus, while differences in claim scope are relevant to the equitable estoppel inquiry, their mere existence does not render pre-issuance conduct or communications irrelevant.”

Turning to the facts, the Federal Circuit determined that the district court abused its discretion in granting summary judgment of equitable estoppel. The Federal Circuit explained that “a reasonable factfinder could find that Ferring did not mislead Fein regarding Ferring’s claims of inventorship.” The district court had drawn an inference against Ferring as to the interpretations of the prior written correspondence with Fein’s attorney, but the inference was unwarranted at the summary judgment stage “in view of the varying reasonable interpretations” of that correspondence. Thus, the court vacated the summary judgment of equitable estoppel and remanded for further proceedings.

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C. R. Bard Inc., et al. v. AngioDynamics, Inc., Nos. 2019-1756, -1934 (Fed. Cir. (D. Del.) Nov. 10, 2020). Opinion by Reyna, joined by Schall and Stoll.

Bard sued AngioDynamics asserting that certain power injectable vascular access port products infringed Bard’s patents. The district court awarded AngioDynamics judgment as a matter of law (JMOL) of noninfringement, no willful infringement, and invalidity because the asserted claims “were directed to printed matter as ineligible subject matter and were not inventive.” Bard appealed.

The Federal Circuit determined that the district court erred in granting JMOL. As to infringement, the Federal Circuit addressed the impact of Bard’s expert’s mistaken belief that there was an intent requirement “implied” in the court’s claim construction. The Federal Circuit ruled that the expert’s mistake did not undermine the factual basis of his infringement opinion and did not render his opinion legally insufficient. In addition, the Federal Circuit ruled that Bard, for its infringement case, was entitled to rely on AngioDynamics’s representations to customers and the FDA as to the flow rate and pressure capabilities of the accused products. The court explained that the weight to be assigned to that evidence is a question for the jury. Therefore, JMOL of noninfringement was inappropriate.

Turning to the district court’s JMOL of invalidity, the Federal Circuit ruled that it was procedurally improper because Bard had not been “fully heard on [the] issue” as required by Rule 50 of the Federal Rules of Civil Procedure. The Federal Circuit also determined that “although the asserted claims contain printed matter that is not functionally related to the remaining elements of the claims, each claim as a whole is patent eligible because none are solely directed to the printed matter.”

As a matter of first impression, the Federal Circuit held that “a claim may be found patent ineligible under § 101 on the grounds that it is directed solely to non-functional printed matter and the claim contains no additional inventive concept.” With that understanding, the Federal Circuit turned to the claims at issue here, concluding that “when each claim is read as a whole, the focus of the claimed advance is not solely on the content of the information conveyed, but also on the means by which that information is conveyed.” Thus, the claims were “not patent ineligible under § 101 because the claims in their entireties are not solely directed to printed matter.”

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Donner Technology, LLC v. Pro Stage Gear, LLC, No. 2020-1104 (Fed. Cir. (PTAB) Nov. 9, 2020). Opinion by Prost, joined by Dyk and Hughes.

Donner petitioned for IPR challenging several claims as obvious under 35 U.S.C. § 103, presenting three grounds of unpatentability that relied at least in part on the “Mullen” reference. The Patent Trial and Appeal Board rejected the challenges on the ground that “Donner did not prove that Mullen is analogous art.” Donner appealed, and the Federal Circuit vacated and remanded.

The technology at issue concerns a pedalboard for guitar effects pedals. The Mullen reference, by comparison, relates to electrical relays, which Donner argued was analogous to the structure claimed in the challenged ’023 patent. The parties did not dispute that the ’023 patent and Mullen are not from the same field of endeavor. Therefore, the only question was “whether Mullen is reasonably pertinent to one or more of the particular problems to which the ’023 patent relates.”

The Federal Circuit explained that “the dividing line between reasonable pertinence and less-than-reasonable pertinence is context dependent” and “ultimately rests on the extent to which the reference of interest and the claimed invention relate to a similar problem or purpose.” Thus, “the problems to which both relate must be identified and compared,” which the Board had not done. The Board instead applied an incorrect standard. The Federal Circuit thus vacated and remanded, explaining that “if the two references have ‘pertinent similarities’ such that Mullen is reasonably pertinent to one or more of the problems to which the ’023 patent pertains, then Mullen is analogous art.”

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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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