Fresh From the Bench: Latest Federal Circuit Court Cases
CASE OF THE WEEK
Immunex Corp. v. Sanofi-Aventis U.S. LLC, Appeal Nos. 2019-1749, -1777 (Fed. Cir. Oct. 13, 2020)
In our Case of the Week, the Federal Circuit addressed the construction of the term “human antibodies.” In doing so, the Court addressed a few principles and issues concerning claim construction, including the construction of terms following expiration of a patent.
Antibodies come in a few forms. Some antibodies come directly from animals. Over time, scientists learned how to modify those antibodies to make them more receptive by humans. These are sometimes called “humanized” antibodies. Then there are antibodies that come from humans. The patent claimed “human antibodies,” raising the question whether the term encompassed both “humanized” and fully human antibodies, or only the latter.
St. Jude Medical, LLC v. Snyders Heart Valve LLC, Appeal Nos. 2019-2108, -2109, -2140 (Fed. Cir. Oct. 15, 2020)
In this case, the Court addressed various issues in cross-appeals from two inter partes reviews of a patent directed to an artificial heart valve and a system for its installation, wherein the heart valve can be installed via catheter without invasive surgery to remove the damaged native valve. Notably, the Court found that based on the patent specification’s criticism of the prior art, the Board erred in its construction of a limitation requiring the valve’s frame to be “sized and shaped for insertion in a position between the upstream region and the downstream region” on either side of the native valve. The Board had found that the limitation required only that the frame be sized and shaped for insertion in a position between the upstream and downstream regions—and not necessarily insertion into a damaged heart valve—and was therefore disclosed by a prior art reference, Bessler, teaching the removal of the damaged heart valve before insertion. The Court disagreed, relying on claim and specification language indicating that the frame is inserted into a damaged heart valve, and particularly noting that the specification expressly described Bessler as presenting problems overcome by the claimed invention, including that Bessler’s procedure was too invasive because it included removal of the native valve. The Court found that these passages “go beyond stating a general preference for leaving the native valve intact,” and rendered the Board’s construction encompassing removal of the native valve to be unreasonable even under a “broadest reasonable interpretation” standard.
The Court also rejected as “meritless” petitioner St. Jude’s argument that the Board failed to apply its own construction of a limitation requiring “a band attached to the frame,” where the Board had essentially adopted St. Jude’s proposed construction of “band” as requiring “a structure generally in the shape of a closed strip or ring,” and found that it was therefore not disclosed in prior art teaching a structure extending over another structure like a sleeve. St. Jude argued that the term “band” does not imply any limitations on width, but the Court found that St. Jude failed to present any argument as to why some width constraint isn’t implied by “strip” or “ring,” which were key elements of its own proposed construction. The Court also found that the Board’s determination that St. Jude had failed to show motivation to combine in an asserted obviousness combination was supported by substantial evidence, where it had not demonstrated why a skilled artisan would modify certain elements of the prior art while leaving others intact, as would be required by the asserted combination.
Warsaw Orthopedic, Inc. v. Rick C. Sasso, M.D., Appeal No. 2019-1583 (Fed. Cir. Oct. 14, 2020)
At issue in this appeal was whether the United States District Court for the Northern District of Indiana’s abstention and dismissal of Warsaw Orthopedic, Inc.’s (“Medtronic”) declaratory judgement action without prejudice was an abuse discretion. The underlying dispute arose from a disagreement whether Medtronic was required to pay Dr. Sasso royalties for certain products under a licensing agreement. Dr. Sasso initially sued Medtronic for breach of contract in Indiana state court. Medtronic unsuccessfully attempted to remove that action to federal court. After the state court refused Medtronic’s defense of invalidity because the validity of the patents at issue was “irrelevant to royalty payments under the [license agreement],” Medtronic filed a declaratory judgement action in federal court seeking to invalidate the patents at issue. Meanwhile, the state court proceeding proceeded to trial where the court entered a jury verdict in favor of Dr. Sasso. That verdict was appealed by Medtronic and pending at the time of this decision. Since the district court did not act until after the verdict was entered, it relied in part on that verdict and pending appeal when abstaining and dismissing Medtronic’s claims. Medtronic appealed, arguing that the district court abused its discretion because “patent validity [was] essential to Dr. Sasso’s claim and was wrongly excluded from the state court trial, producing a fatal flaw in the state court proceeding.” The Court disagreed. “Under what is known as the Wilton/Brillhart abstention doctrine, district courts possess significant discretion to dismiss or stay claims seeking declaratory relief, even though they have subject matter jurisdiction over such claims.” In light of Medtronic’s failed attempt to remove the state court proceeding to federal court and the status of the state court proceeding, the Court found that “the district court exercised ‘common-sense accommodation of judgment,’ and did not abuse its discretion in abstaining and dismissing without prejudice.” Accordingly, the Court affirmed the decision of the district court.