Fresh From the Bench: Latest Federal Circuit Court Cases
CASE OF THE WEEK
Medtronic, Inc. v. Mark A. Barry, Appeal Nos. 2017-1169, -1170 (Fed. Cir. June 11, 2018)
The Court affirmed-in-part and vacated-in-part a PTAB decision finding that petitioner Medtronic, Inc. had failed to prove that challenged claims were unpatentable. The Federal Circuit affirmed the Board’s determination that challenged claims were not obvious over two prior art references, but vacated and remanded the Board’s determination that another reference was not “publicly accessible” under 35 U.S.C. § 102(b) and therefore not prior art. The Court noted in a footnote that pursuant to the Supreme Court’s decision in SAS Institute, it expected that on remand, PTAB would also consider grounds previously raised in Medtronic’s petition, but on which it had not instituted trial.
The challenged method and apparatus claims were directed to a system for ameliorating certain spinal column conditions involving rotated vertebrae. The system comprised sets of pedicle screw wrenches and handles deployed across multiple vertebrae in order to distribute corrective derotational forces, and thereby reduce the risk of fracture during corrective surgery. The particular limitations at issue concerned (in the method claims) a requirement that vertebrae be “simultaneously rotat[ed],” and (in the apparatus claims) a “derotational tool” capable of simultaneously engaging a group of linked pedicle screws.
ALSO THIS WEEK
Stone Basket Innovations, LLC v. Cook Medical LLC, Appeal No. 2017-2330 (Fed. Cir. June 11, 2018)
In an appeal from a district court denial of a motion for attorney fees pursuant to 35 U.S.C. § 285, the Federal Circuit affirmed. Applying Octane Fitness, the district court denied attorney fees on the basis that the defendant’s evidence was insufficient to warrant a finding of exceptionality. The Federal Circuit considered (1) Cook’s application of a general statement of obviousness testimony to 32 prior art references, (2) the inventor’s testimony that “there is nothing novel about” one of the claim limitations, and 3) Cook’s conduct in the present litigation and in other litigation, concluding that the district court did not err, considering the totality of the circumstances, in finding that the case was not exceptional.
Opinion can be found here.
Xitronix Corporation v. Kla-Tencor Corporation, Appeal No. 2016-2746 (Fed. Cir. June 15, 2018)
In a precedential order denying rehearing en banc, Judge Newman dissented to address the Federal Circuit’s holding that it lacks jurisdiction in appeals regarding Walker Process antitrust claims. Applying the Supreme Court decision in Gunn v. Minton, 568 U.S. 251 (2013), the three-judge panel held that appealed issues of fraud and inequitable conduct do not present substantial issues of patent law. Judge Newman disagreed, stating that the panel’s holdings were contrary to the Federal Circuit jurisdictional statute 28 U.S.C. § 1295(a)(1), Supreme Court precedent, and Federal Circuit precedent.
To read our original write-up of the panel decision, see here.
Opinion can be found here.
Written by: Scott D. Eads and Nika F. Aldrich, Schwabe Williamson & Wyatt
Contributors: Jason Wrubleski and Angela Addae