Tribal Immunity Does Not Save Allegan’s Patents from IPR

Posted on July 20, 2018 by bwheelock

In Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc., [2018-1638, 2018-1639, 2018-1640, 2018-1641, 2018-1642, 2018-1643] (July 20, 2018), the Federal Circuit affirmed the PTAB’s denial of the Tribe’s motion to terminate on the basis of sovereign immunity.

In an attempt to shelter its patents from IPR attack, Allegan assigned them to the Saint Regis Mohawk Tribe, who Allergan hoped could assert sovereign immunity to post grant challenges.

The Tribe argued that tribal sovereign immunity applies in IPR under FMC, because like the proceeding in FMC, an IPR is a contested, adjudicatory proceeding between private parties in which the petitioner, not the USPTO, defines the contours of the proceeding. Mylan argued that sovereign immunity does not apply to IPR proceedings because they are more like a traditional agency action — the Board is not adjudicating claims between parties but instead is reconsidering a grant of a government franchise. Mylan further argued that even if the Tribe
could otherwise assert sovereign immunity, its use here is an impermissible attempt to “market an exception” from the law and non-Indian companies have no legitimate interest in renting tribal immunity to circumvent the law. Finally, Mylan argued that the assignment to the Tribe was a sham, and the Tribe waived sovereign immunity by suing on the patents.

The Federal Circuit said that an IPR is neither clearly a judicial proceeding instituted by a private party nor clearly an enforcement action brought by the federal government, noting that in Oil States the Supreme Court said IPR is “simply a reconsideration of” the
PTO’s original grant of a public franchise.

Ultimately, several factors convinced the Federal Circuit that IPR is more like an agency enforcement action than a civil suit brought by a private party, and and thus tribal immunity is not implicated. First, although the Director’s discretion in how he conducts IPR is significantly constrained, he possesses broad discretion in deciding whether
to institute review. Although this is only one decision, it embraces the entirety of the proceeding. If the Director decides to institute, review occurs. If the Director decides not to institute, for whatever reason, there is no review. In making this decision, the Director has complete discretion to decide not to institute review. The Director bears the political responsibility of determining which cases should proceed. While he has the authority not to institute review on the merits of the petition, he could deny review for other reasons such as administrative
efficiency or based on a party’s status as a sovereign. Therefore, if IPR proceeds on patents owned by a tribe, it is because a politically accountable, federal official has authorized the institution of
that proceeding. In this way, IPR is more like cases in which an agency chooses whether to institute a proceeding on information supplied by a private party. According to FMC, immunity would not apply in such a proceeding.

The Federal Circuit added that the role of the parties in IPR suggests immunity does not apply in these proceedings. Once an IPR has been initiated, the Board may choose to continue review even if the petitioner chooses not to participate, which reinforces the view that IPR is an act by the agency in reconsidering its own grant of a public franchise.

The Federal Circuit also pointed out that although there are certain
similarities with the FRCP, the differences are substantial. Further a patent owner can seek to amend its patent claims during the proceedings, an option not available in civil litigation.

Finally, while the USPTO has the authority to conduct reexamination proceedings that are more inquisitorial and less adjudicatory than IPR, this does not mean that IPR is thus necessarily a proceeding in which Congress contemplated tribal immunity to apply. The mere existence of more inquisitorial proceedings in which immunity does not apply does not mean that immunity applies in a different type of proceeding
before the same agency.

Because it concluded that tribal sovereign immunity cannot be asserted in IPR, the Federal Circuit did not reach the parties’ other arguments.

District Court Improperly Imported Limitations into the Claims

Posted on July 16, 2018 by bwheelock

In Blackbird Tech LLC v. ELB Electronics, Inc., [2017-1703] (July 16, 2018), the Federal Circuit vacated judgment of noninfringement of claim 12 of U.S. Patent No. 7,086,747 because of the district court error in construing “attachment surface” and remanded.

The ‘747 patent was directed to an energy efficient lighting apparatus, and in one embodiment in particular, retrofitting an existing light
fixture with a more energy efficient lighting apparatus. The claim required a balast cover comprising “a housing having an attachment surface and an illumination surface.” The claim further required a fastening mechanism for securing the attachment surface of the lighting apparatus to the illumination surface. The district court construed “attachment surface” as “layer of the housing that is secured to
the ballast cover.” The parties disputed the meaning of “attachment surface,” specifically whether the attachment surface must be secured to the ballast cover.

The Federal Circuit rejected the district court’s construction, noting that the “plain language” of the claim does not require the attachment surface to be secured to the ballast cover. The Federal Circuit noted that while the claim expressly recites a fastening mechanism for securing the attachment surface to the illumination surface. It does not refer to any other fastening mechanism. It does not require the attachment surface be secured to anything other than the illumination surface.

The Federal Circuit said that the district court nevertheless read in a second fastening mechanism—this one to secure the attachment surface to the ballast cover. While an embodiment disclosed in the specification included this second fastening mechanism, the Federal Circuit did not not agree that this fastener limitation should be imported into the claim.

The Federal Circuit noted that there was no suggestion in the specification or prosecution history that this fastener is important in any way that would merit reading it into the claims. The specification does not refer to the disclosed fastener as the “present invention” or “an essential element” or uses any other language that would cause the
ordinarily skilled artisan to believe that this fastening mechanism is an important component of the invention or that it is critical to the invention for any reason.

The Federal Circuit said that the most important reason not to import the limitation into the claim was that the limitation was expressly eliminated during prosecution — albeit to resolve 112 issues. The Federal Circuit rejected the defendants’ argument that the amendment was ambiguous because no explanation was given for the amendment as “legally irrelevant to how a skilled artisan reading this history would understand the claim scope.” As a factual matter, no skilled artisan would understand this claim to require a fastening mechanism connecting the ballast cover to the attachment surface when that very limitation was expressly removed from the claim to secure patentability
with the examiner’s blessing and agreement.

The Federal Circuit concluded that the district court erred in construing “attachment surface,” and because the court’s entry of judgment of noninfringement was based on its erroneous construction, vacated the entry of judgment and remand for further proceedings.

Unreasonably Broad Construction Unlimited by the Specification, Resulted in Incorrect Finding of Anticipation

Posted on July 13, 2018 by bwheelock

In TF3 Limited v. Tre Milano, LLC, [2016-2285] (July 13, 2018), the Federal Circuit reversed the PTAB’s decision in IPR2015-00649 that the claims in U.S. Patent No. 8,651,118 on a hair styling device were anticipated, holding that on the correct claim construction, the claims are not anticipated.

The Federal Circuit said that the Board held that two references each shows the same device as claimed in the ’118 Patent, rendering
the claims invalid for anticipation. However, as is apparent, the devices are not the same. The Federal Circuit said that anticipation was
decided on a flawed analysis, whereby the ’118 Patent claims were construed to have a breadth beyond the scope supported by the device described in the ’118 Patent, the Board then holding that the unduly broad ’118 Patent claims read on the two different prior devices
and thus are anticipated.

The Federal Circuit said that the Board declined to construe “the length of hair can pass through the secondary opening,” as set forth in the specification, instead ruling that in accordance with the broadest reasonable interpretation, “claim 1 does not require that the length of hair is allowed to slide along the elongate member towards and subsequently off its free end.” The Federal Circuit found that the Board misconstrued the use of “i.e.” in the specification, explaining that the usage “i.e.” (“id est” or “that is”), “signals an intent to define the word to which it refers.” The Federal Circuit said that the ’118 Patent describes the device as improving curl retention by the structure that “permits a formed curl to be slid off the end of the elongate member without being
uncurled,” and neither of the allegedly anticipating references has such a structure. The Federal Circuit quoted itself that:

The claims, of course, do not stand alone. Rather, they are part of a fully integrated written instrument, consisting principally of a specification that concludes with the claims. For that reason, claims must be read in view of the specification, of which they are a part.

The Federal Circuit concluded that it is not reasonable to read the claims more broadly than the description in the specification, thereby broadening the claims to read on the prior art over which the patentee asserts improvement.

The Federal Circuit also noted that the Board construed “free end” to mean “an end of the elongate member that is unsupported when the movable abutment is in the open position,” because given their broadest interpretation, the ’118 Patent claims do not require that the movable abutment operates as described in the specification. Thus, the Federal Circuit observed, the Board construed the claims as “unlimited by the specification.” The Federal Circuit observed:

Claims are construed with reference to the specification and prosecution history, for these are the resources by which persons in the field of the invention understand what has been invented.

The Federal Circuit found that the Board’s construction was contrary to the specification, and concluded that The ’118 Patent claims, construed in light of the specification, do not read on the prior art and are not anticipated by the prior art.

Federal Circuit Finds No Error in District Court Determination the Claimed Invention was not Obvious

Posted on July 13, 2018 by bwheelock

In Endo Pharmaceutical Solutions, Inc. v. Custopharm Inc., [2017-1719] (July 13, 2018), the Federal Circuit affirmed the determination that the claims of U.S. Patent Nos. 7,718,640 and 8,338,395 on a long-acting injectable testosterone replacement therapy were not invalid for obviousness.

the district court found that the prior art did not disclose the 750 mg TU injection dosage, and that Custopharm had not shown, by clear and convincing evidence, that a skilled artisan would have been motivated to lower the dosage of TU from 1000 mg to 750 mg. The district court
found that articles about studies do not inherently disclose the particular co-solvent or the particular ratio of solvent to co-solvent claimed by the patents-in-suit simply because this formulation was what had been used in the studies forming the basis of the articles.

The claims required a 750 mg dosage, which the parties agreed was not disclosed by the prior art. However, Custompharm argued the district court erred in finding no motivation for a skilled artisan to lower the dose of TU from the 1000 mg disclosed in the prior art to 750 mg. After discussing the evidence, the Federal Circuit said the district court
reasonably rejected Custopharm’s argument that a skilled artisan would consider 1000 mg of TU to be an overdose and would have been motivated to lower the dosage to the patented 750 mg.

Custopharm also argued that the district court erred in finding that the
claimed formulation was not inherently described by prior art articles Articles. Although the formulation was not disclosed is the articles, Custopharm argues that the vehicle formulation was “necessarily present” in the articles because it was later revealed to be the actual formulation the authors of the Articles used in their reported clinical studies, but the Federal Circuit disagreed. The Federal Circuit noted that Custopharm has not demonstrated that a skilled artisan could extrapolate the vehicle formulation used in the Articles from pharmacokinetic performance data. It was Custopharm’s burden to present clear and convincing evidence that the Articles necessarily disclosed the vehicle formulation to one of skill in the art, and Custopharm’s expert’s testimony and briefing fall short of meeting this burden. The Federal Circuit said that under the circumstances
of this case, the incomplete description of the injection composition elements denied skilled artisans from having access to that composition, thereby precluding use of the inherency doctrine to fill in disclosure about the product missing from the articles.

Regarding the motivation to combine, the Federal Circuit said that the district court thus did not err in considering the obviousness inquiry from the perspective of a skilled artisan “confronted with the same problems as the inventor,” which in the present case is developing a commercially
viable long-acting testosterone therapy. Doing so, the district court properly found that Custopharm failed to meet its burden of showing that a skilled artisan would combine the lowered dose with the injection schedule in the manner claimed.

Materials Available at Internet Identified in Federal Register Before the Critical Date Were Printed Publications

Posted on July 13, 2018 by bwheelock

In Jazz Pharmaceuticals, Inc. v. Amneal Pharmaceuticals, LLC, [2017-1671, 2017-1673, 2017-1674, 2017-1675, 2017-1676, 2017-1677, 2017-2075] (July 13, 2018), affirmed the PTAB decision that claims of U.S. Patent Nos. 7,668,730, 7,765,106, 7,765,107, 7,895,059, 8,589,182, 8,457,988, and 8,731,963 on a drug distribution system for
tracking prescriptions of a “sensitive drug” were invalid for obviousness.

The Board’s obviousness determination relied upon certain materials from the regulatory review process, and primary the issue on appeal is whether these materials were sufficiently accessible to the public to
constitute prior art. The Board determined that the materials were publicly accessible on an FDA website over two months prior to the critical date. The Board found that a person of ordinary skill in the art that a person of ordinary skill “would have been familiar with
the Federal Register and motivated to look for notices related to drug distribution, safety, or abuse prevention,” and that a skilled artisan would have known that Xyrem® contained a “sensitive drug,” providing a person of ordinary skill with “sufficient motivation to have located the Federal Register Notice and FDA web-site. Such a person would have been capable of finding the Notice and following the links to the materials in the Notice.

The Federal Circuit said that a reference is considered publicly accessible upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons
interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it. If accessibility is proved, there is no
requirement to show that particular members of the public actually received the information.

The Federal Circuit agreed with Amneal that substantial evidence supports the Board’s finding that the materials were publicly accessible. The Federal Circuit examined the public notices, and observed that this is not the first time it has considered whether
materials disclosed in association with meetings or conferences
were “printed publications,” citing MIT, Klopfenstein, Cordis, and Medtronic.

Comparing the facts of the present case to those in MIT,
Klopfenstein, and Medtronic confirmed that the materials were disseminated more broadly and for a longer duration to persons of ordinary skill than the materials disclosed at individual meetings in those cases. In addition, unlike in Cordis, disclosure through public domain sources such as the Federal Register and a public federal
agency website plainly indicates that there was no reasonable
expectation that the materials would remain confidential.

The Federal Circuit found that:

The breadth of the dissemination here to persons of ordinary skill was significant
The materials were available online for a substantial time before the critical date
The materials were distributed via public domain sources with no possible expectation that the materials would remain confidential or not be copied

The Federal Circuit said that indexing or searchability is unnecessary for a reference to be a printed publication under § 102(b), although it noted that the Federal Register was meaningfully indexed. However the Federal Circuit cautioned that it was not applying per se rule that every notice in the Federal Register satisfies the requirements for prior art, nor was it endorsing a rule that would supplant the case-by-case
inquiry consistently applied throughout our case law. The Federal Circuit did reiterate that if accessibility is proved, there is no requirement to show that particular members of the public actually received the information.

The Federal Circuit went on to affirm the Board’s claim construction, and ultimate conclusion of obviousness

Hiring Away Employees May Look Bad, But Plaintiff Still Must Show Missappropriation

Posted on July 12, 2018 by bwheelock

In Raytheon Company v. Indigo Systems Corporation, [2016-1945, 2016-2050] (July 12, 2018), the Federal Circuit affirmed the judgment of no liability for misappropriation of trade secrets, and the denial of attorneys fees.

At issue on appeal was whether the jury’s verdict that Indigo did not misappropriate Raytheon’s Trade Secrets was supported by substantial evidence; whether the district court abused its discretion in denying Raytheon’s motion for a new trial; and whether the district court abused its discretion in denying Indigo’s motion for attorney fees.

The Federal Circuit found evidence at trial showed that Indigo employees independently developed Indigo’s technology without using Raytheon’s, and further that Indigo’s technology was “significantly different” from Ratheon’s. The Federal Circuit found that the jury reasonably found that Indigo did not misappropriate trade secrets, and the district court did not err in denying Raytheon’s motion for judgment as a matter of law regarding this claim.

As to Raytheon’s motion for a new trial, the Federal Circuit said that Raytheon’s failure to establish its entitlement to judgment as a matter of law on the trade secret mis- appropriation issue also means it has failed to establish its entitlement to a new trial. Thus, the district court did not abuse its discretion in denying Raytheon’s alternative
motion for a new trial.

As to Indigo’s challenge to the district court’s denial of attorneys’ fees, the Federal Circuit noted that an award of attorney’s fees to the prevailing party is mandatory when the statutory requirements under the TTLA are met. While Indigo argued that Raytheon’s dropping of its claim under Texas law made it the prevailing party, the Federal Circuit held that it had to establish: (1) it actually prevailed on the merits of a TTLA claim; (2) Raytheon dismissed the TTLA claim with prejudice; or (3) Raytheon
dismissed the TTLA claim without prejudice to avoid an adverse ruling on the merits. , and that . Texas courts have noted that such an award may be based on a
court decision on the merits for either party. The Federal Circuit held that none of these applied. The Federal Circuit noted that dismissing the TTLA claim without prejudice in favor of the CUTSA in this context appears to represent a preference by Raytheon to pursue its trade secret misappropriation claims under one state’s laws over another’s. The Federal Circuit agreed with the district court that it is far from clear that Raytheon’s focus on California law over Texas law was taken “to avoid an unfavorable ruling on the merits.”

Lack of Written Opinion Leaves Infringer Exposed in the Crosswalk

Posted on July 10, 2018 by bwheelock

In Polara Engineering Inc. v. Campbell Company, [2017-1974, 2017-2033] (July 10, 2018), the Federal Circuit affirmed in part, vacated in part, and remanded the district court’s determination that claims 1-4 of U.S. Patent No. 7,145,476 on accessible pedestrian signal systems were valid and willfully infringed, and awarding enhanced damages.

Cambell argued on appeal that the claims were invalid of prior public uses and over the prior art. Regarding the public uses, the Federal Circuit noted that an inventor who seeks to perfect his discovery may conduct extensive testing without losing his right to obtain a patent for his invention—even if such testing occurs in the public eye. A use may be experimental if its purpose is to test claimed features of the invention or to determine whether an invention will work for its intended purpose. The Federal Circuit found that that substantial evidence supported the jury’s finding of experimental use that negates application of the public use bar, noting that testing to perfect features inherent to the claimed invention, such as durability qualifies as experimental, and that in any event the testing did relate to claimed features. While there was evidence that the testing involved commercial features, rather than claimed features, the Federal Circuit could not say that the jury’s finding of experimental use lacked substantial evidentiary support.

Regarding invalidity over the prior art, the Federal Circuit agreed that Campbell was estopped from arguing that the district court erred in its claim construction instruction
because the court adopted Campbell’s proposed construction of “digital data signals.” The Federal Circuit found substantial evidence for the jury’s implied fact finding.

On the issued of enhanced damages, the Federal Circuit noted that enhanced damages are designed as a “punitive” or “vindictive” sanction for egregious
infringement behavior, and found that substantial evidence supports
the jury’s finding of willful infringement. The Federal Circuit said that the jury reasonably could have found that Campbell intentionally copied the ’476 patent despite a significant known risk that its two-wire AAPS would infringe the ’476 patent, having been advised by counsel that there were “areas of potential conflict.” While Campbell argued that it relied upon competent opinion of counsel, the Federal Circuit said that Campbell “has not pointed to any documentary or third-party evidence showing it received an opinion of counsel,” and the jury was entitled not to credit the testimony that there was such an opinion. While Campbell’s challenge that the jury instruction did not specify the time period during which Campbell’s conduct was willful may have had merit, Campbell waived this challenge by agreeing to a simple yes or no instructions.

Finally, on the amount of enhanced damages (the district court used a multiplier 2 1/2), the Federal Circuit said that the district court awarded almost the maximum amount
of enhanced damages, but did not adequately explain its basis for doing so, and failed to even mention Campbell’s public use defense, which presented a close question in
this case. The Federal Circuit found that the district court may have erred in its consideration of Campbell’s public use defense, and vacated the award of enhanced damages and remanded.

Federal Circuit Makes Minor Correction to May 1 Opinion in Texas Advanced Optoelectronic Solutions

Posted on July 9, 2018 by bwheelock

In Texas Advanced Optoelectronic Solutions, Inc. v. Renesas Electronics America, Inc., [2016-2121, 2016-2208, 2016-2235] (July 9, 2018), the Federal Circuit, after a petition for rehearing, reissued its opinion affirming liability for trade secret misappropriation and patent infringement, but vacating the monetary awards, and remanding for further proceedings. The reissued opinion only differs from the early opinion in the fifth paragraph of Section III.A.

A Chicken in Every Pot, A Patent in Every Portfolio

Posted on July 6, 2018 by bwheelock

So July 6 is National Fried Chicken Day. Who decides such things? Apparently no one, or perhaps more accurately anyone. However, the people of National Day Calendar are happy to endorse your declaration and put it on their calendar, if you need outside validation.

Assuming the bona fides of National Fried Chicken Day, a patent lawyer’s mind turns to Colonel Harland Sanders, who obtained two patents on his methods and apparatus for preparing fried chicken: U.S. Patent No. 3,1 56,177 on Food Preheating, Cooking and Warming Device:

and U.S. Patent No. 3245800 on Process of Producing Fried Chicken Under Pressure:

These are not just the patents of the day, but the patents of National Fried Chicken Day.

Have a Happy and Safe Fourth of July

Posted on July 4, 2018 by bwheelock

Patented technology can improve the most mundane aspects of life and on July 4 we recognize some patents that inject an element of patriotism into our daily routine. U.S. Patent No. D478,404 protects an American Patriotic Candy Cane: