Fresh From the Bench: Latest Federal Circuit Court Cases

CASE OF THE WEEK

Genetic Veterinary Sciences, Inc. v. LABOKLIN GMBH & Co. KG, Appeal No. 2018-2056 (Fed. Cir. Aug. 9, 2019)

Our case of the week features a foreign University sued for declaratory judgment of patent invalidity and the questions that follow concerning sovereign immunity, in addition to the underlying merits of the invalidity defense.

The patent at issue is owned by the University of Bern, an instrumentality of the Swiss government. It licensed the patent to a German company, LABOKLIN, J.A., which had the right to enforce it, with the consent of the University. LABOKLIN sent a cease and desist letter to a U.S. company, PPG, which filed a declaratory judgment action seeking judgment of invalidity under Section 101.

ALSO THIS WEEK

Eli Lilly and Co. v. Hospira, Inc., Appeal Nos. 2018-2126, -2127, -2128 (Fed. Cir. Aug. 9, 2019)

In this Hatch-Waxman case, the Federal Circuit affirmed a lower court decision finding infringement by two generic companies that filed ANDA applications relating to Eli Lilly’s cancer medication, Alimta. This is the fourth appeal concerning Alimta to reach the Federal Circuit, and the third concerning this particular patent in suit. During prosecution, Eli Lilly has narrowed the claims from reciting “antifolate” to instead reciting “pemetrexed disodium.” One set of defendants sought to use “pemetrexed ditromethanine.” Eli Lilly asserted the doctrine of equivalents, to which the defendants responded that prosecution history estoppel barred its application, as did the disclosure-dedication doctrine.

Following a lengthy discussion and analysis, the Court held that prosecution history estoppel did not bar application of the doctrine of equivalents, because the amendment in question bore only a tangential relation to the prior art it was meant to overcome.

It is suggested to the practitioner that this case may serve as a textbook-worthy discussion of these two doctrines.

The opinion can be found here.

Ajinomoto Co., Inc. v. Int’l. Trade Comm’n., Appeal No. 2018-1590, -1629 (Fed. Cir. Aug. 6, 2019)

In this second case in one week, the Court addressed the “tangential relation” exception to the doctrine of equivalents, providing a case study into the doctrine—an approach rejected to some extent in the Eli Lilly case discussed immediately above. In addition to affirming the district court’s application of that doctrine in this case involving biochemical patents relating to animal feed, the Court also engaged in an extensive claim construction analysis concerning the prosecution history of the patent. The Court also held the claims not invalid for lack of written description. Finally, the Court affirmed the infringement holdings by the ITC.

The opinion can be found here.

ATEN Int’l Co., Ltd. v. Uniclass Tech. Co., Ltd., Appeal No. 2018-1606 (Fed. Cir. Aug. 6, 2019)

Following a jury trial finding invalidity and noninfringement, the plaintiff appealed. The Federal Circuit reversed a jury finding of anticipation. The first of two references had firmware that could be dated to 2006, but could not be dated any more precisely than that. Given that the critical date for invalidity purposes was in the middle of 2006, the Federal Circuit found insufficient evidence that the reference predated the critical date. The Court also found insufficient evidence that the second reference disclosed all claim limitations. Thus, the Court reversed the finding of invalidity.

Regarding infringement, ATEN argued that defendant’s expert testified about claim construction issues in front of the jury, and that this affected the jury’s verdict. However, ATEN failed to object to the improper testimony at trial. On that basis, the Court affirmed the jury verdict of noninfringement.

The opinion can be found here.

ATEN Int’l Co., Ltd. v. Uniclass Tech. Co., Ltd., Appeal No. 2018-1922 (Fed. Cir. Aug. 6, 2019)

In a companion case to the one immediately above, the Federal Circuit affirmed a decision declining to find the case exceptional under 35 U.S.C. 285. The defendants had argued that the case was exceptional because the litigation costs far exceeded the amount of damages sought. For example, ATEN spent over $700,000 in expert witness fees, though that exceeded its total damages claim. The Federal Circuit, like the Court below, held that there is “no per se rule that a case is exceptional if litigation costs exceed the potential damages.” Citing a Delaware district court case as persuasive, the Court held that a plaintiff is not required to drop a case when the legal costs exceed the claimed damages, noting that, particularly in competitor cases, there can be other legitimate reasons to maintain suit, and that in some cases there are no damages, such as cases in the ITC or many Hatch-Waxman cases. In this case, an injunction was sought: “This alone undermines Appellants’ argument.” The Court also found the additional reasons raised by Appellants insufficient to warrant reversing the Court’s discretion denying attorney fees.

The opinion can be found here.

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