Fresh From the Bench: Latest Federal Circuit Court Cases

CASE OF THE WEEK

Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., Appeal Nos. 2016-2691, 2017-1875 (Fed. Cir. Sept. 20, 2018)

In a reissued, slightly altered version of a July 3, 2018 decision, the Court showed the continued difficulties in applying the entire market value rule (“EMVR”), which determines the extent to which a patentee can seek damages based on the defendants’ products as sold to market, rather than damages based on specific components.

In the July 3, 2018 decision, a panel of the Federal Circuit vacated a jury’s damages award which had relied on the EMVR. Defendants had presented evidence that the accused products contained other valuable features besides the patented feature, and therefore argued that damages should not be based on the entire product as sold to market, but should instead be based on specific components. The Court in its July 3 opinion held that plaintiff/appellee Power Integrations was required to present evidence that the products’ other features were not relevant to consumer choice. Because Power Integrations had not done so, the Court found its evidence insufficient as a matter of law to invoke the entire market value rule (“EMVR”), and the damages award was vacated. Our write-up of the July 3 opinion can be found here.

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ALSO THIS WEEK

E.I. Dupont de Nemours & Co. v. Synvina C.V., Appeal No. 2017-1977 (Fed. Cir. Sept. 17, 2018)

In an appeal from a PTAB decision finding claims of a patent not invalid as obvious, the Federal Circuit reversed. The claims related to the production of a specific chemical called FDCA. The prior art disclosed means of manufacture of FDCA based on different temperature and pressure ranges that overlapped the claimed temperature and pressure ranges. The PTAB had found that the petitioner failed to meet its burden of persuasion to show that the claims were obvious over the prior art ranges. On appeal, the Court first addressed whether DuPont had standing for the appeal, notwithstanding that it had not been accused of infringement, and held that it did. The Federal Circuit then reversed the PTAB’s analysis and applied a burden shifting framework to cases involving overlapping ranges, following the framework it laid out in In re Peterson, 315 f .3d 1325 (Fed. Cir. 2003). The Court held that temperature and pressure were “result-effective variables” under the framework developed from In re Antonie, 559 f .2d 618 (CCPA 1977). Upon reanalyzing the facts, the Court held the claims to be invalid.

Opinion can be found here.

Written by: Scott D. Eads and Nika F. Aldrich, Schwabe Williamson & Wyatt

Contributor: Jason Wrubleski