Fresh From the Bench: Latest Federal Circuit Court Cases
CASE OF THE WEEK
Baxalta Inc. v. Genentech, Inc., Appeal No. 2019-1527 (Fed. Cir. Aug. 27, 2020)
In this week’s Case of the Week, an appeal from the United States District Court for the District of Delaware, the Federal Circuit deals with issues relating to claim construction.
Baxalta sued Genentech, asserting that Genentech’s Hemlibra product for the treatment of hemophilia infringes claims of U.S. Patent No. 7,033,590 (“the ’590 patent”). The ’590 patent relates to antibody or antibody fragment preparations used to treat patients with Hemophilia A who have developed antibodies that prevent standard treatments from working as they should. Hemophilia A is a form of hemophilia where the activity of a certain enzyme, “clotting factor VIII,” is functionally absent, thereby preventing coagulation (blood clotting) from occurring. These patients are typically treated with factor VIII preparations, but often develop antibodies that hinder the effectiveness of those treatments. The antibodies and antibody fragments claimed by the ’590 patent remedy this by binding to other clotting factors—factor IX or IXa—to compensate for the decreased factor VIII activity, thus allowing clotting to occur.
Egenera, Inc. v. Cisco Systems, Inc., Appeal Nos. 2019-2015, -2387 (Fed. Cir. Aug. 28, 2020)
In this case, the Federal Circuit reversed a district court’s finding of judicial estoppel where a patentee sought to re-add an inventor to its patent after petitioning to have him removed during concurrent inter partes review proceedings. The Court also affirmed the district court’s claim construction finding a limitation reciting “logic” to perform functions in a computing patent to be a means-plus-function term under 35 U.S.C. § 112(f).
During the IPR proceedings, appellant Egenera had petitioned the Patent Office to remove one of the listed inventors, Peter Schulter, apparently to support an IPR argument that the invention was conceived before the publication of a prior art reference around the time of Mr. Schulter’s contributions. While the inventorship petition was pending, however, the PTAB declined to institute the IPR, assuming the reference to be prior art but nonetheless rejecting the unpatentability arguments on the merits. Meanwhile, in the infringement case, the district court construed a term reciting “logic” to perform computer functions to be a “means-plus-function” term, and found in a bench trial that the structure recited in the specification for the function had been invented by Mr. Schulter. When Egenera then sought to have the court correct inventorship to re-add Mr. Schulter under 35 U.S.C. 256(b), the district court found that Egenera was barred by judicial estoppel in light of its earlier petition to the PTO, and held the patent to be invalid for failing to list all inventors.
The Federal Circuit affirmed the district court’s claim construction, but vacated its finding of judicial estoppel and invalidity judgment. Cisco first argued that there were no grounds for Egenera to re-correct inventorship at all, asserting that “error” in § 256 meant only inadvertent mistakes and precluded considered, tactical changes like Egenera’s. The Federal Circuit disagreed, holding that “‘error’ is simply the incorrect listing of inventors.” On judicial estoppel, the Federal Circuit also found that Egenera’s positions were not clearly inconsistent, since its later position was necessitated by the district court’s intervening claim construction, which Egenera opposed in district court. The Court also found that because the ministerial PTO petition was not examined and did not contain argument based on underlying fact, Egenera had not “persuaded” a “tribunal” to accept its position, as required for judicial estoppel. However, the Court characterized its holding on this point as narrow, noting that it did not hold that judicial estoppel could not apply to statements made to the PTO during prosecution, or that other forms of estoppel could not apply to ministerial submissions. Finally, the Court found that Egenera would gain no unfair advantage from the re-correction, noting that the PTAB did not rely on Egenera’s prior invention arguments in declining to institute the IPR, which might otherwise have resulted in inconsistent decisions based on different inventorships.
Neville v. Foundation Constructors, Inc., Appeal No. 2020-1132 (Fed. Cir. Aug. 27, 2020)
In this appeal, the Court affirmed the District Court for the Central District of California’s grant of summary judgment of non-infringement. The patents at issue, a divisional patent and its parent, were related to screw-type foundation piles—structures placed underground to add stability to a building’s foundation. Appellants argued that the district court erred in its construction of the claim term “end plate” as requiring an exterior-facing flat surface and that the claim terms “protrusion” and “end plate” referred to two distinct objects. The Court disagreed, finding that the plain language of the patent claims and prosecution history supported the district court’s holding. Because plaintiff failed to show that an “end plate” and “protrusion,” as construed, were present in the accused product, the Court affirmed the district court’s claim construction and grant of summary judgment of non-infringement.