Fresh From the Bench: Latest Federal Circuit Court Cases

CASE OF THE WEEK

Due to technical issues, this week’s report covers the past two weeks.

HZNP Medicines LLC v. Actavis Laboratories UT, Inc., Appeal Nos. 2017-2149, et al. (Fed. Cir. Oct. 10, 2019)

In a lengthy decision following a bench trial, the Court addressed a matter of first impression concerning use of the term “consisting essentially of” as used as a transitional term in patent claims, finding the term in this case to be indefinite. The Court also addressed issues concerning induced infringement and non-obviousness.

The patents are pharmaceutical patents concerning treatments for osteoarthritis. The case is a Hatch-Waxman case, brought about by the filing of an ANDA application for a generic alternative to Horizon Pharma’s patented products.

ALSO THIS WEEK

Fraunhofer-Gesellschaft Zur Förderung Der Angewandten Forschung E.V. v. Sirius XM Radio Inc., Appeal No. 2018-2400 (Fed. Cir. Oct. 17, 2019)

In this appeal from the United States District Court for the District of Delaware, the Federal Circuit addresses issues relating to patent licensing in connection with a motion to dismiss. The Federal Circuit here reversed the district court’s dismissal for failure to state a claim because the contract at issue was ambiguous as to whether the rights of Sirius, a sub-licensee to a master license agreement between Fraunhofer and a third party, survived the termination of the master agreement after the third party filed for bankruptcy. As such, the Court reversed and remanded for further factual findings. The Court also reversed the denial of Fraunhofer’s motion to amend its complaint to include evidence of the parties’ intent and held the district court erred by not considering extrinsic evidence relating to same.

The opinion can be found here.

B.E. Technology, LLC v. Facebook, Inc., Appeal No. 2018-2356 (Fed. Cir. Oct. 9, 2019)

In this case, the Federal Circuit reviewed a determination of whether Facebook was the “prevailing party” for purposes of a Rule 54(d)(1) costs award. Plaintiff/patent owner B.E. Tech. had sued Facebook on claims that were subsequently held unpatentable in inter partes review proceedings. Facebook then moved in the district court for judgment on the pleadings under Fed. R. Civ. P. 12(c), but the district court instead dismissed plaintiff’s claims as moot in light of the IPR result. The district court nonetheless found that Facebook was the “prevailing party” and awarded $4,424.00 in costs. The Federal Circuit collected Supreme Court and its own authority on the “prevailing party” question, to the effect that while some judicial imprimatur on the case is required to confer “prevailing party” status, a decision on the merits is not a prerequisite. The Federal Circuit affirmed, finding that as in Raniere v. Microsoft Corp., 887 F.3d 1298 (Fed. Cir. 2018) (defendant was “prevailing party” where claims dismissed for lack of standing), the court’s dismissal for mootness placed the required judicial imprimatur on B.E. Tech.’s claim.

The opinion can be found here.

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

Contributors: Jason Wrubleski and Erin Forbes