Fresh From the Bench: Latest Federal Circuit Court Cases
CASES OF THE WEEK
Teva Pharms. Int’l GmbH v. Eli Lilly and Co., Appeal Nos. 2020-1747, -1748, -1750 (Fed. Cir. Aug. 16, 2021) Eli Lilly and Co. v. Teva Pharms. Int’l GmbH, Appeal Nos. 2020-1876, -1877, -1878 (Fed. Cir. Aug. 16, 2021)
In this week’s Cases of the Week, the Federal Circuit reviewed .final written decisions from multiple inter partes reviews brought by Eli Lilly against Teva Pharmaceuticals patents relating to compositions and methods for treating headaches and other vasomotor symptoms. In Teva Pharms. v. Eli Lilly, the Patent Trial and Appeal Board had found that composition claims covering humanized antagonist antibodies targeting calcitonin gene-related peptide (“CGRP”) amino acids, such as the active ingredient in Teva’s AJOVY® and Lilly’s Emgality® migraine drugs, were obvious over the prior art. However, in Eli Lilly v. Teva Pharms., the Board had found that single-step method claims reciting administering an “effective amount” of the same compositions to treat vasomotor symptoms were not shown to be unpatentable over the same prior art. The Federal Circuit affirmed the Board’s decisions in both cases, in the process providing a helpful review of claim construction and obviousness issues relevant to composition and method claims, which may inform pharmaceutical patent practitioners’ approaches to both obviousness litigation and claiming strategies in prosecution.
Campbell Soup Company v. Gamon Plus, Inc., 2020-2344, 2021-1019 (Fed. Cir. Aug. 19, 2021)
This case involves an appeal of two final written decisions by the Patent Trial & Appeal Board (PTAB) in inter partes reviews (IPRs) challenging patentability of design patents claiming ornamental designs for gravity feed dispenser displays. As previously reported (here), in a first appeal, the Federal Circuit had vacated and remanded a PTAB ruling that appellants had failed to prove unpatentability. On remand, the PTAB again found that appellants had failed to prove unpatentability. In this second appeal, appellants raised arguments that (i) the claims are obvious over a prior art reference that has substantially the same overall appearance as the claimed designs; (ii) patent owner’s evidence of commercial success lacked nexus to the claims; and (iii) evidence of copying failed to overcome the evidence of obviousness. In reversing the PTAB’s decisions, the Federal Circuit found the evidence of obviousness compelling under the Graham factors, and did not reach the other two arguments.
Gilbert P. Hyatt v. Andrew Hirshfeld, Appeal Nos. 2020-2321 et al. (Fed. Cir. Aug. 18, 2021)
In a follow-up to a significant decision we wrote up as the Case of the Week in June this year, available here, this week, the Federal Circuit addressed the taxation of costs in that case.
As we wrote in June, Gilbert Hyatt sued the Patent and Trademark Office in district court pursuant to 35 U.S.C. § 145. The district court ruled in his favor, directing the Director of the PTO to issue Hyatt patents for some of his claims. The district court thereafter awarded him costs as the prevailing party. In June this year, a panel of the Federal Circuit reversed the district court’s underlying decision. Thus, Hyatt can no longer be considered the prevailing party. Accordingly, this week, the Court vacated and reversed the district court’s award of costs to Hyatt.
Separately, the Court affirmed the district court’s decision that Section 145 does not allow an award of expert witness fees to the Patent Office as part of the “all expenses of the proceedings” language in that statute. Citing the Supreme Court’s 2019 decision in Peter v. NantKwest, the Court held that this language does not overcome the American Rule presumption against shifting expert witness fees.
Valve Corporation v. Ironburg Inventions Ltd., Appeal Nos. 2020-1315, -1316, -1379 (Fed. Cir. Aug. 17, 2021)
In an appeal from IPR proceedings, the Federal Circuit addressed the sufficiency of authentication of prior art. This appeal involved two inter partes review proceedings for patents concerning a gaming controller. The PTAB found (i) certain claims were shown to be unpatentable as anticipated by another patent; (ii) other claims were not proven to be unpatentable as obvious over a claimed prior art reference because the reference had not been authenticated; and (iii) another claim was not unpatentable because a prior patent did not teach certain limitations. The Federal Circuit addressed each of the PTAB’s findings. Concerning the issue of authentication, the Court held that the PTAB erred in finding the claimed prior art reference had not been authenticated. In a lengthy analysis, the Court found that, on the facts, the claimed prior art reference had been authenticated by comparison and was publicly accessible before the priority date. The Court otherwise affirmed the factual findings concerning the prior art and its application to the claims.