Federal Circuit Holds
That Claim Preclusion Bars Second Suit On Reexamined Claims
In Senju Pharmaceutical Co. v. Apotex Inc. (Appeal No. 2013-1027), the Federal Circuit affirmed the district
court’s ruling that held that Senju’s action for
infringement was properly dismissed as barred by claim preclusion.
The patent-in-suit claimed an antimicrobial eye drop
solution. In a previous litigation involving the same parties, the claims
were found invalid and not infringed. Before final judgment was entered in
that litigation, the PTO issued a reexamination certificate PTO issued a
reexamination certificate cancelling claims 1–3 and 8–11, and certifying
amended claim 6, new independent claim 12, and new dependent claims 13–16 as
patentable. Senju subsequently sued for infringement of the reexamined claims.
The Federal Circuit noted that in the first suit, Senju alleged infringement based on Apotex’s ANDA No. 79-084. In the second suit, Senju requested a declaratory judgment of infringement based on Apotex’s submission of the same ANDA.
Thus, both actions involved the same ANDA product. The Federal Circuit held that because the
product in the second action completely overlaps with the product in the
first action, there was on that basis no new cause of action.
The
Federal Circuit next determined whether the same patent rights were
involved in both suits. The Federal
Circuit reasoned that while a patent owner during reexamination can make
certain changes in the patent, such changes are strictly circumscribed by the
original patent’s disclosure and claim scope. As a result, a reexamined patent claim cannot contain within its scope
any product or process which would not have infringed the original claims. “Put another way, because the patent
right is a right to exclude whose outer boundary is defined by the scope of
the patent’s claims, … reexamination does not provide larger claim scope to a
patentee than the patentee had under the original patent claims.” Thus, the Federal Circuit concluded that
the claims that emerged from reexamination do not create a new cause of
action that did not exist before, and the judgment of the district court was
affirmed.
Federal
Circuit Vacates District Court’s Order Denying Motions For A Preliminary
Injunction
In Endo
Pharmaceuticals Inc. v. Actavis, Inc. (Appeal
Nos. 2013-1658, -1662), the Federal Circuit district court’s order denying
motions for a preliminary
Injunction.
In earlier litigations, Endo
sued Actavis and Roxane for patent infringement based on their ANDAs to market generic oxymorphone, the same products as those at issue in the
present appeals. In the earlier litigations, the patents as issue were U.S.
Patent Nos. 5,662,933, 5,958,456, and 7,276,250. The earlier litigations were settled after
Endo granted to Actavis and Roxane licenses and covenants not to sue with respect to these patents.
In the present appeals, Actavis and Roxane assert that
they have express and implied licenses under the asserted patents, U.S.
Patent Nos. 8,309,122 (the ‘122 patent), 8,329,216 (the ‘216 patent), and
7,851,482 (the ’482 patent). The
asserted patents relate to the same generic oxymorphone product. None of the asserted patents
are continuations of the patents which were the subject of the licenses and
covenants not to sue. Rather, the
defendants argued that because the asserted patents claimed priority to the
same provisional application as the licensed patents, that they had both
express and implied licenses under the asserted patents.
The Federal Circuit found the
express license arguments meritless. With respect to the implied license arguments, the Federal Circuit
distinguished these cases on appeal from its holdings in TransCore and General Protecht, whether the Federal Circuit
explained the rule that a license or a covenant not to sue enumerating
specific patents may legally estop the patentee from asserting continuations
of the licensed patents in the absence of mutual intent to the contrary.
The Federal Circuit then held
that Endo is not estopped from asserting the patents at issue in these
appeals because none of the asserted patents is a continuation of any of the
licensed patents. The only familial relationship between the asserted and
licensed patents is that the ’122 and ’216 patents claim priority to the same
provisional application as the ’250 patent. That, however, does not make
these patents continuations of the ’250 patent. The ’482 patent is not
related to any of the licensed patents. The lack of a continuation
relationship between any of the asserted and licensed patents and explicit
disclaimer of any other licenses not within the literal terms of the contract
are dispositive.
The Federal Circuit therefore
vacated the district court’s denials of a preliminary injunction in both
cases and remanded the cases for further proceedings. Judge DYK dissented,
arguing that Actavis had an implied license.
Federal Circuit Reverses District
Court’s Claim Constructions
In Shire Development, LLC
v. Watson Pharmaceuticals, Inc.(Appeal No. 2013-1409), the Federal Circuit
reversed the district court’s constructions of “inner lipophilic matrix” and
“outer hydrophilic matrix,” and subsequent infringement determination.
The Federal Circuit held that
district court relied on the specification to correctly construe “matrix” to
mean “a macroscopically homogeneous structure in all its volume,” but erred
by construing “‘lipophilic matrix’ [as] a matrix that includes at least one
lipophilic excipient.”
The Federal Circuit stated
that such construction erroneously focuses on the lipophilic properties of an
excipient in the matrix, rather than the properties of the matrix
itself. The intrinsic evidence as a
whole revealed that the district court’s construction of “inner lipophilic
matrix” and “outer hydrophilic matrix” was overly broad. The term
“lipophilic” is an adjective that modifies matrix. The parties stipulated
that “lipophilic” means “poor affinity towards aqueous fluids.” The Federal
Circuit thus found that the matrix, not just an excipient within the matrix,
must exhibit the stipulated to lipophilic characteristic. In other words, a “lipophilic matrix” is
more than just a matrix with at least one lipophilic excipient; the matrix
itself must exhibit lipophilic characteristics.
Accordingly, the case was
reversed and remanded.
Federal Circuit Reversed In Part and Affirmed In Part the
District Court’s Claim Construction
In Ancora Technologies, Inc. v. Apple, Inc. (Appeal Nos. 2013-1378, -1414), the Federal Circuit reversed in part and
affirmed in part the district court’s claim construction.
Ancora owns
U.S. Patent No. 6,411,941, which claims methods for verifying that a software
program on a computer is properly licensed. In December 2010, Ancora sued Apple alleging that products running Apple’s
iOS operating system infringed the ’941 patent.
The
parties did not disagree about the ordinary meaning of the claim terms at
issue on appeal: “program,” “volatile memory,” and “non-volatile
memory.” However, Apple relied on the specification, and statements
made by the applicants and the examiner during prosecution, to argue that the
terms should not be construed using the ordinary meanings.
The
Federal Circuit concluded that the district court erred in construing
“program” to mean “a set of instructions for software applications that
can be executed by a computer.” The Court noted that a claim term
should be given its ordinary meaning in the pertinent context, unless the
patentee has made clear its adoption of a different definition or otherwise
disclaimed that meaning. However, the Court noted that nothing in the
specification or in the prosecution history would lead one of ordinary skill
in the art to understand that the claims use “program” in a sense narrower
than its ordinary meaning. The Court affirmed the district court’s rejection
of Apple’s challenge to “volatile memory” and “non-volatile memory” as
indefinite.
Federal Circuit Affirms Judgment of
Invalidity
In Solvay S.A. v. Honeywell International Inc. (Appeal No. 2012-1660), the Federal Circuit affirmed the district court’s
judgment that the ’817 patent is invalid under 35 U.S.C. § 102(g)(2).
The
central question on appeal was when an invention conceived by a foreign
inventor and reduced to practice in the United States qualifies as prior art
under §102(g)(2). This section states, “[a] person shall be entitled to a patent unless
. . . before such person’s invention thereof, the invention was made in this
country by another inventor who had not abandoned, suppressed, or concealed
it.” 35 U.S.C. § 102(g)(2). A patent is invalid under § 102(g)(2) if the claimed invention was made in this country by
another inventor before the patent’s priority date.
Solvay’s ’817 patent claims an
improvement to a method of making a hydrofluorocarbon (“HFC”) known as HFC-245fa which belongs to a group of HFCs. The ’817
patent has a priority date of October 23, 1995. In 1994, Honeywell and the Russian
Scientific Center for Applied Chemistry (“RSCAC”) entered into a research
contract. In July 1994, RSCAC sent Honeywell a report documenting the development
of a continuous process capable of producing high yields of HFC-245fa.
Honeywell personnel used the RSCAC report to run the same process in the
United States in 1995, before the ’817 patent’s October priority date.
Solvay sued Honeywell alleging
that the process Honeywell was using to manufacture HFC-245fa infringed
certain claims of the ’817 patent. Honeywell defended, inter alia, on the ground that the concerned claims of the ’817 patent were invalid under
§ 102(g)(2), because Honeywell’s engineers had
reduced the invention to practice in the United States following the Russian
inventor’s instructions before the ’817 patent’s priority date.
In
the district court, a jury determined that RSCAC had disclosed the invention
of claim 1 in the 1994 Russian patent application such that they did not
abandon, suppress, or conceal it. Based on the jury verdict, the district
court entered judgment for Honeywell, finding asserted claim 1 invalid under
§ 102(g)(2).
On
appeal, the Federal Circuit noted that prior case law did not support
Solvay’s contention that an inventor must make an express directive or
request to benefit from a third party’s reduction to practice. Rather, inurement exists if the inventor
authorizes another to reduce his invention to practice. Here, the research
agreement between the RSCAC and Honeywell confirmed that RSCAC authorized
Honeywell to practice its invention in the United States and contemplated
that Honeywell would do so. The
Federal Circuit therefore affirmed the district court’s judgment that the
’817 patent was invalid under § 102(g)(2).
Federal Circuit Confirms De Novo Review Standard For Claim
Construction
In Lighting Ballast Control LLC, v. Philips Electronics North America
Corporation (Appeal No. 2012-1014), the Federal Circuit sitting en banc confirmed the standard of de
novo review of claim construction set out in Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed. Cir. 1998).
The Federal Circuit undertook
rehearing en banc for the purpose
of reconsidering the Cybor standard of
appellate review of claim construction.
The Federal Circuit applied
the principles of stare decisis, and
confirmed the Cybor standard of de
novo review of claim construction, whereby the scope of the patent grant
is reviewed as a matter of law. After fifteen years of experience with Cybor, the Federal Circuit concluded that
the Court should retain plenary review of claim construction, thereby providing
national uniformity, consistency, and finality to the meaning and scope of
patent claims. The Federal Circuit commented that the totality of experience
has confirmed that Cybor is an
effective implementation of Markman II, and
that the criteria for departure from stare decisis are not met. |
