Greenblum & Bernstein, P.L.C.
Recent Litigation News in Intellectual Property
In This Issue
· Federal Circuit Reverses Dismissal Of Complaints
· Federal Circuit Affirms Finding Of Collateral Estoppel
· Federal Circuit Reverses Grant Of Relief Under Rule 60(b)
· Federal Circuit Reverses Grant Of Summary Judgment Of Invalidity For Indefiniteness
· Federal Circuit Limits Patent Based On Prosecution Arguments
· Federal Circuit Finds Secondary Considerations Insufficient To Overcome Obviousness
In K-Tech Telecommunications v. Time Warner Cable et al. (Appeal No. 2012-1446), the Federal Circuit reversed the district court’s order dismissing K-Tech’s First Amended Complaints for patent infringement against Time Warner Cable, Inc. and DirecTV for failure to state a claim upon which relief can be granted.
On November 9, 2011, K-Tech filed complaints for patent infringement against Time Warner Cable (“TWC”) and DirecTV in the U.S. District Court for the Central District of California. On January 5, 2012, DirecTV and TWC each moved to dismiss the original complaints under Rule 12(b)(6), alleging that the respective complaints lacked sufficient factual specificity to state a cause of action for direct patent infringement. On February 21, 2012, the district court dismissed both complaints in substantially similar orders and granted K-Tech leave to amend. On February 28, 2012, K-Tech filed First Amended Complaints against TWC and DirecTV, and the defendants again moved to dismiss the complaints under Rule 12(b)(6). The district court again dismissed the complaints holding that Plaintiff had failed to allege sufficient factual detail regarding each Defendant’s accused product and the manner in which it is infringing Plaintiff’s patents.
The Federal Circuit reviewed the patented technology, and discussed the requirements of Form 18 and the holdings in the Twombly and Iqbal cases. The Federal Circuit stated that “Form 18 in no way relaxes the clear principle of Rule
8, that a potential infringer be placed on notice of what activity or device is being accused of infringement.” Additionally, the Federal Circuit stated: We do not read Form 18—or R+L Carriers—to require that a plaintiff identify an accused device by name.” The Federal Circuit went on to say that the “touchstones of an appropriate analysis under Form 18 are notice and facial plausibility. [citations omitted.] While these requirements serve as a bar against frivolous pleading, it is not an extraordinarily high one. The adequacy of the facts pled depends on the breadth and complexity of both the asserted patent and the accused product or system and on the nature of the defendant’s business activities.” The Federal Circuit then held that K-Tech’s amended complaints in both actions satisfied these standards.
Accordingly, the Federal Circuit reversed the judgments dismissing the actions with prejudice and remanded the cases for further proceedings.
Federal Circuit Affirms Finding Of Collateral Estoppel
In Aspex Eyewear, Inc. v. Zenni Optical, LLC (Appeal No. 2012-1318), the Federal Circuit affirmed the district court’s finding of collateral estoppel.
The complaint charged Zenni Optical with infringement of U.S. Patents Nos. 5,737,054 (“the ’054 patent”), 6,012,811 (“the ’811 patent”), and 6,092,896 (“the ’896 patent”), which are all directed to clip-on eyewear in which magnets secure the bridge portions of the eyewear. These same patents were asserted in an earlier litigation against Altair Eyewear, Inc., and ultimately found to be either not infringed or invalid. Applying the Altair rulings to the Zenni issues, the district court observed that Zenni’s accused magnetic clip-on sunglasses were materially indistinguishable from Altair’s magnetic clip-on sunglasses. Thus, the district court held that Aspex is collaterally estopped from pursuing the suit based on the earlier litigation between Aspex and Altair.
On appeal, the Federal Circuit noted that collateral estoppel “precludes a plaintiff from relitigating identical issues by merely switching adversaries” and precludes a plaintiff “from asserting a claim that the plaintiff had previously litigated and lost against another defendant.”
The Federal Circuit held that Aspex had had a full and fair opportunity to litigate the pertinent issues, and accordingly affirmed the district court’s order that Aspex is collaterally estopped from relitigating infringement of the patents against the accused Zenni products.
Federal Circuit Reverses Grant Of Relief Under Rule 60(b)
In Lazare Kaplan Int’l, Inc. v. Photoscribe Techs., Inc. (Appeal No. 2012-1247), the Federal Circuit reversed a grant of relief under Rule 60(b).
The district court had originally held that the patent claims were not infringed and not invalid. The patent owner, Lazare appealed the noninfringement ruling, but Photoscribe did not cross-appeal the finding of not invalid. On appeal, the Federal Circuit vacated the judgment of non-infringement and remanded.
On remand, the district court held that both infringement and validity were at-issue because of the Federal Circuit’s broadened claim construction, and granted Photoscribe’s motion for summary judgment of invalidity and denied Lazare’s motion as to infringement as moot. The district court also granted Photoscribe’s motion under Rule 60(b) for relief from the district court’s prior judgment finding the patent not invalid.
On appeal, the issue was whether, on remand, a district court may reopen a prior final judgment as to patent validity, not appealed by either party, based on a claim construction modified by the Federal Circuit. The Federal Circuit held that it cannot.
The Federal Circuit stated that it “is well-settled that a party must file a cross-appeal if, although successful in the overall outcome in the district court, the party seeks, on appeal, to lessen the rights of its adversary or to enlarge its own rights.” Since Photoscribe had not appealed the finding of invalidity, it could not reopen the issue on remand. Accordingly, the Federal Circuit held that Photoscribe could not obtain relief under Rule 60(b) because Photoscribe failed to cross-appeal. Judge Dyk dissented arguing that the majority allowed different claim constructions for infringement and validity.
Federal Circuit Reverses Grant Of Summary Judgment Of Invalidity For Indefiniteness
In Biosig Instruments, Inc. v. Nautilus, Inc. (Appeal No. 2012-1289), the Federal Circuit reversed the district court’s grant of summary judgment of invalidity for indefiniteness.
The patent-in-suit related to a heart rate monitor. The claims of the patent recited in pertinent part: an elongate member comprising a first half and a second half; a first live electrode and a first common electrode mounted on said first half in spaced relationship with each other; and a second live electrode and a second common electrode mounted on said second half in spaced relationship with each other. Nautilus filed a summary judgment motion for invalidity asserting that the “spaced relationship” term as recited in the claims was indefinite as a matter of law. The district court granted the motion because no actual parameters for the spacing were specified. Biosig appealed.
On appeal, the Federal Circuit held that the “disputed term ‘spaced relationship’ did not suffer from indefiniteness. Because the term was amenable to construction, indefiniteness here would require a showing that a person of ordinary skill would find ‘spaced relationship’ to be insolubly ambiguous—that it fails to provide sufficient clarity delineating the bounds of the claim to one skilled in the art. In this case, a skilled artisan would find such boundaries provided in the intrinsic evidence.” Furthermore, the Federal Circuit stated that “the claims provide inherent parameters sufficient for a skilled artisan to understand the bounds of ‘spaced relationship.’” Accordingly, the Federal Circuit reversed and remanded.
Federal Circuit Limits Patent Based On Prosecution Arguments
In Biogen Idec, Inc. v. GlaxoSmithKline LLC (Appeal No. 2012-1120) the Federal Circuit upheld the district court’s narrow claim interpretation of Biogen’s U.S. Patent No. 7,682,612, based on arguments made regarding enablement during prosecution.
The patent-in-suit relates to a class of antibodies known as “anti-CD20.” Anti-CD20 antibodies had previously been used to treat a class of cancers known as B-cell lymphomas. Biogen asserted it had discovered a class of anti-CD20 antibodies that treat another type of cancer, chronic lymphocytic leukemia (“CCL”). During prosecution, the Examiner rejected the pending claims as not enabled for the full scope, stating that the claims read on “any and all anti-CD20 antibodies, no matter the specificity or affinity for the specific epitope on the circulating tumor cells.” Biogen secured allowance by arguing that one of skill in the art could readily identify antibodies that bind to CD20 with similar affinity and specificity as rituximab (the preferred embodiment).
Biogen sued GlaxoSmithKline over GSK’s anti-CD20 product Arzerra. The district court held that Biogen’s statements amounted to a disclaimer, and limited the definition of “anti-CD20 antibody” to “rituximab and antibodies that bind to the same epitope of the CD20 antigen with similar specificity and affinity as rituximab.” Based upon this claim construction, Biogen stipulated to non-infringement, and appealed the claim construction to the Federal Circuit.
On appeal, the Federal Circuit acknowledged the “heavy presumption” that claim terms are normally given their plain and ordinary meaning. However, a majority of the panel (in a 2-1 decision) held that the prosecution history of the patent-in-suit was sufficient to overcome that presumption.
Judge Plager, dissenting, wrote that the prosecution history was nowhere near the level required to show a clear and unmistakable disclaimer. He wrote that at most, the argument that the majority relied on merely indicated certain subject matter that should be included within the claim, and does not amount to a disclaimer of subject matter excluded from the claim.
Federal Circuit Finds Secondary Considerations Insufficient To Overcome Obviousness
In Bayer Healthcare Pharmaceuticals, Inc. v. Watson Pharmaceuticals, Inc. (Appeal Nos. 2012-1397, -1398, -1400) the Federal Circuit reversed the district court’s finding that Bayer’s U.S. Patent Re 37,564 was not invalid for obviousness.
The Federal Circuit analyzed the secondary considerations relied on by the district court. Regarding “skepticism of experts,” Bayer cited to FDA requests for clinical studies on safety and on efficacy in order to justify the proposed dosing regimen. The Federal Circuit stated that this did not mean that FDA would have been surprised to get such results. Moreover, this is the sort of request that FDA regularly makes as part of its normal duties. Therefore, FDA’s requests for clinical studies do not constitute expert skepticism.
Regarding “praise by experts,” Bayer cited to several journal articles referencing publications of Bayer’s clinical trials, but the Federal Circuit stated that mere journal citations do not amount to praise. Bayer also cited another article describing Bayer’s product as “an innovative strategy,” but the Federal Circuit noted that the author was a named inventor on the patent-in-suit, and dismissed the statement as a self-referential commendation.
Regarding “evidence of copying,” Bayer argued that copying of its product by the defendant in the case supported Bayer’s non-obviousness position. However, the Federal Circuit (citing to Purdue Pharma Prods., L.P. v. Par Pharm., Inc., 377 F. App’x 978, 983 (Fed. Cir. 2010)), stated that because a showing of bioequivalence is required for FDA approval, evidence of copying in the ANDA context is not probative of non-obviousness.
Accordingly, the Federal Circuit held that the alleged
secondary considerations were insufficient to overcome the prima facie case of obviousness, and reversed
the district court’s finding that the patent-in-suit was not invalid for